Smith Light Pty Ltd v Golight Pty Limited
[2016] APO 37
•21 June 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Smith Light Pty Ltd v Golight Pty Limited [2016] APO 37
Patent Application: 2009295263
Title:Portable light assembly
Patent Applicant: Golight Pty Limited
Opponent: Smith Light Pty Ltd
Delegate: Dr N.R. Madsen
Decision Date: 21 June 2016
Hearing Date: 18 April 2016, in Canberra
Catchwords: PATENTS – a portable lighting assembly having a light head adapted to be housed within, and withdrawn from, a protective container – section 59 – opposition to grant of a patent – amendment to statement of grounds and particulars – grounds of entitlement, full description and best method, clarity, fair basis, novelty, inventive step – evidence of opponent fails to establish that entitlement does not lie with Golight Pty Limited – claims are clear and fairly based – specification is fully descriptive and provides a best method – claims are novel – claims are inventive – opposition unsuccessful – costs awarded against the opponent
Representation: Patent applicant: Julian Cooke of counsel instructed by Ray Hind of Davies Collison Cave and Julie Briscoe of Robinson Legal
Opponent: Anthony Franklin of counsel instructed by Paul Mahoney of Cotters Patent and Trademark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009295263
Title:Portable light assembly
Patent Applicant: Golight Pty Limited
Date of Decision: 21 June 2016
DECISION
The opposition is unsuccessful. Subject to any appeal I direct the application proceed to grant.
I award cost for a section 59 opposition in accordance with Schedule 8 of the Patent Regulations against the opponent. I award a further $1000 against the opponent to compensate for the hearing fee paid by the applicant during section 32 and 36 matters.
Background
This matter relates to patent application 2009295263 in the name of Golight Pty Limited (the applicant), filed on 17 September 2009. The application was filed under the Patent Cooperation Treaty as application number PCT/AU2009/001226. The application claims priority from Australian provisional application number 2008904852 and has an earliest priority date of 18 September 2008.
Prior to acceptance, requests under sections 32 and 36 were filed by Smith Light Pty Ltd (the opponent) challenging entitlement to the application. A hearing was initially set to hear the requests concurrently but was cancelled following withdrawal of these requests. The application was advertised as accepted on 8 May 2014. A notice of opposition to grant of a patent was filed on 8 August 2014 by the opponent. This notice was followed by a statement of grounds and particulars on 7 November 2014. Evidence in support, answer and reply was all filed without the necessity for any extensions of time.
Prior to the hearing, on 4 April 2016 the opponent filed their summary of written submissions. The applicant followed with their summary on 11 April 2016. An amended statement of grounds and particulars was also filed by the opponent before the hearing introducing a number of new particulars. The applicant objected to this new statement. I considered the proposed amendment to the statement of grounds and particulars at the hearing. At the hearing, the opponent pressed grounds that: the applicant was not entitled to the claimed invention; the specification failed to provide a full description and best method of performance of the claimed invention; and that the claimed invention was not clear, fairly based, novel or inventive.
The request for examination of the patent application was filed on 30 January 2012. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 do not apply to the present patent application. This includes the addition of subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Further to this point I note that the law that applies to the present grounds of opposition is that prior to amendment by the Raising the Bar Act.
Onus
It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
The Evidence
Evidence consists of:
Evidence in support in the form of a declaration by Paul John Mahony dated 6 February 2015 and 3 supporting exhibits (PJM-1 to PJM-3). This declaration exhibits declarations filed by the opponent prior to acceptance of the application in regard to section 32 and 36 matters as follows:
oSteven Fornasaro dated 6 May 2013 with 11 supporting exhibits (SF-1 to SF-11)
oChristopher Claudio Di Losa dated 7 May 2013 with 5 supporting exhibits (CDL1-1 to CDL1-5)
oChristopher Claudio Di Losa dated 7 May 2013 with 10 supporting exhibits (CDL2-1 to CDL2-10)
Evidence in support in the form of a declaration by Jeffrey Alan Pogson dated 6 February 2015 and 17 supporting exhibits (JAP-1 to JAP-17)
Evidence in answer in the form of a declaration by Julie Ann Briscoe dated 5 May 2015 and 2 supporting exhibits (JAB-1 and JAB-2). This declaration exhibits declarations filed by the applicant prior to acceptance of the application in regard to section 32 and 36 matters as follows:
oGlenn Leslie Smith dated 8 July 2013 with supporting exhibit GLS-1
oMark Ciampi dated 8 July 2013 with supporting exhibit MC-1
Evidence in answer in the form of a declaration by Angelo Kotsis dated 8 May 2015 and 10 supporting exhibits (AK-1 to AK-10)
Evidence in reply in the form of a second declaration by Jeffrey Alan Pogson dated 10 July 2015 and 4 supporting exhibits (JAP2-1 and JAP2-4)
The Amended Statement of Grounds and Particulars
Shortly prior to filing their written summary of submissions the opponent filed a request to amend their statement of grounds and particulars in accordance with Regulation 5.16. The applicant sought to oppose this amendment as part of the substantive hearing. I heard submissions from both parties regarding the amendment at the hearing. Relevantly regulation 5.16 (which was amended on 15 April 2013 and is in effect for oppositions filed after this date) reads as follows:
(1) An opponent may request the Commissioner in writing to amend the opponent's statement of grounds and particulars:
(a) to correct an error or omission in the grounds of opposition; or
(b) to update the grounds of opposition to reflect an amendment to the patent request or complete specification to which the statement relates; or
(c) to amend the facts and circumstances forming the basis for the grounds.
(2) The Commissioner must:
(a) notify the applicant of the opponent's request; and
(b) give the parties an opportunity to make representations about the amendment.
…
(4) The Commissioner must make the amendment if:
(a) subregulation (3) does not apply; and
(b) the Commissioner is satisfied that the amendment should be made.
(5) The Commissioner must, as soon as practicable:
(a) notify the parties of the Commissioner's decision; and
(b) if the Commissioner decides to make the amendment--give the applicant a copy of the amended statement.
There were three particular amendments made in this request to amend the statement of grounds and particulars. A first related to an assertion that the priority date is different to the earliest claimed priority date. A second related to the inclusion of three new documents (D19-D21) in the statement of grounds and particulars which had already been filed in evidence. A third related to new particulars argued under the grounds of paragraph 40(2)(a).
It is clear that any determination of priority date of the claims has no bearing on the outcome of the opposition as any possible priority date has no effect on the grounds of novelty or inventive step. On this basis I decided at the hearing that it was not necessary, as part of this decision, to make any determination of the priority date of the claims. I also considered that there was nothing in the legislation that would compel me to do so. Further, there exists no provision for the opponent to request the particular amendment involving priority dates under subregulation 5.16(1) as the new information does not form the basis for any ground. Regarding the newly particularised documents it was also clear at the hearing that the opponent would not be arguing any grounds in respect of these documents. Here, there is no reason for an exercise of discretion under paragraph 5.16(4)(b).
However, the inclusion of new particulars under the grounds of paragraph 40(2)(a) is an amendment to the statement of grounds and particulars that is appropriate under paragraph 5.16(1)(c), and given both parties had the opportunity to make submissions on these particulars there is no reason why such an amendment should not be made. Therefore, at the hearing I directed that the amendment to the statement of grounds and particulars was allowable contingent upon the opponent filing a new request involving only the third change.
After the hearing, on 21 April 2016, the opponent filed a new request to amend the statement of grounds and particulars consistent with my direction, which was forwarded to the applicant. The parties were provided an opportunity to make any further submissions and none were made. This amendment was subsequently allowed.
The Specification
The invention described in the specification relates to the field of portable lighting and provides a functional light assembly having a light head which is housed in a protective container when not in use and can be withdrawn from the container when required for use. As described in the specification under “Background Art” there are many sites which require illumination such as those relating to construction, mining, recreational or emergency services. A lighting device to be useful in such situations needs to be portable, easy to transport, powerful and robust. There also exists a desire for lighting of this type to be readily adapted for mounting to various locations (page 1 lines 16-21). The object of the present invention seeks to overcome disadvantages of the prior art or at least provide a useful alternative.
In providing a portable lighting device to address existing shortcomings the specification discusses the arrangement of various features within a portable light assembly. These arrangements are well depicted in the 52 figures provided in the specification. Figure 51 provided below is a useful depiction of the various features described in the specification.
Figure 51 shows a protective container 12 which attaches to a pedestal/base 18. At the bottom of the protective container is housed a battery 25 which provides power via pigtail cable 40 to a light head 26. Within the light head are light tubes 42 (or potentially LED lights) held in place by brackets 56. The light head is attached to a swivel bracket 28. This swivel bracket attaches to a lid 20 which encloses the protective container. A handle connects to the top of the lid and attaches to a handle extension 30 which consists of a plurality of telescopic posts 32 that can slide through a bore 33 in guides on either side of the protective container. A button 36, when pressed, inactivates or releases a sprung catch mechanism (not shown in figure 51) and allows the handle extension 30 to be slid upwardly by lifting the handle. In an operative position, the swivel bracket can be used to suitably direct the light. When the handle extension and lid are fully retracted the light head will be enclosed within the protective container. Also shown in figure 51 on item 18 are four threads that may be used to attach screws such that the assembly can be fixedly mounted to a mounting.
The claims
The specification ends in 13 claims whereby claims 1 and 11 are independent as follows:
1. A portable light assembly comprising a protective container having a body with a base on which the light assembly can stand in a condition for use, a slide assembly carrying a light head which is swivel mounted in the assembly, the slide assembly being mounted to the container and being guided for substantially vertical movement relative to the container between a lowered position in which the light head is within the container and a raised position for use, and a battery housed within the body of the container for powering the light head, wherein the base includes mounting means for releasable connection to at least one additional mounting whereby the light assembly can selectively either stand on the base in use or be supported in use by the additional mounting when connected to the base, and the slide assembly includes a handle for raising and lowering the slide assembly relative to the container, a lid for closing an open end of the container when the slide assembly is in a lowered position, and locking means for retaining the lid in its closed position, and the handle includes release means actuable to release the locking means to permit the slide assembly to be raised into the condition for use.
11. A portable light assembly comprising a protective container having a body and a lid for closing the container, a light head adapted to be housed within the closed protective container in a stored condition and to be withdrawn therefrom by opening the lid when required for use, the lid carrying the light head via a swivel mounting, a battery housed in the body of the container for powering the light head, and the container including mounting means for mounting the container at locations in need of illumination, wherein the mounting means is at a lower end of the container, the mounting means being a base on which the portable light assembly can stand, wherein the lid includes a handle by which the lid with attached light head can be raised from the container body, the container further comprising means for guiding the lid for linear movement relative to the container body in a substantially vertical direction, locking means for retaining the lid in its closed position, and release means actuable to release the locking means to permit the lid with light head to be raised into the condition for use.
Entitlement
Schedule 1 of the Patents Act provides that an “eligible person” is a person to whom a patent may be granted under subsection 15(1). Relevantly to the present case, subsection 15(1) states:
(1) Subject to this Act, 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) …
Section 33 provides for remedies in situations where the opponent is entitled, as an “eligible person”, to the invention. Relevant law to the question of entitlement can be found in the decision of the Full Court of the Federal Court of Australia in University of Western Australia v Gray [2009] FCAFC 116. The Court accepted that entitlement is assessed by considering three matters:
(i) identify the “inventive concept” of the invention as defined by the claims
(ii) determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice;
(iii) determine how many contractual or fiduciary relationships give rise to proprietary rights in the inventionIn terms of any transfer of ownership of an invention, subsection 13(2) provides that the exclusive rights given by a patent “are personal property and are capable of assignment and devolution by law”. From University of British Colombia v Conor Medsystems Inc. [2006] FCAFC 154 at [37] it is clear that that patent rights may be validly assigned otherwise than in writing before a patent is granted. Thus, it is the case that the question of entitlement can simply be determined on the basis of common law and equitable principles.
There appear to be two primary issues that the opponent raises in the statement of grounds and particulars to bring into question entitlement. Firstly, the opponent alleges that the currently named inventor, Glenn Smith, is not the sole inventor of the claimed invention. Here it is alleged that Christopher Di Losa is a co-inventor and as he is a director and shareholder of the opponent, entitlement may be shared with the opponent. Secondly the opponent alleges that due to agreements between the named inventor and the opponent, and related duties and obligations of the named inventor to the opponent, the opponent is the owner of the rights to the claimed invention.
I have reviewed the evidence of the parties regarding these issues (declarations of Fornasaro, Di Losa, Smith and Ciampi) and it appears to me that the opponent has fallen short of discharging their onus under this ground. As pointed out by the opponent, the evidence of the applicant largely contradicts the evidence of the opponent. Based on the evidence before me I am satisfied that Glenn Smith is the sole inventor and that there has been no transfer of ownership. In this regard Golight Pty Limited remains the sole eligible person. On these points the opponent submitted that:
“…it will not be possible for the Commissioner to make a finding that the Opponent has discharged the onus of proving its (written) version over the Applicant’s (written) version. This is not a case where there are inherent probabilities either way and resolution of the issue will depend entirely upon the credibility of the respective witnesses, which could only be tested after extensive cross-examination.
Accordingly, the Opponent concedes that for present purposes the ground of lack of entitlement needs to be rejected, but the Opponent does not abandon the ground.”
Consistent with this discussion I find that the ground of entitlement is unsuccessful.
Clarity
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
At the hearing the opponent pressed objections as to a lack of clarity in regard to claims 1 and 11.
Claims 1 and 11: “the condition for use”
The statement of grounds and particulars asserts that these claims lack clarity as to the meaning and scope of the term “the condition for use” and that there is no antecedent to this term.
Firstly I note that claim 1 does in fact contain explicit antecedent to the term in that claim 1 is directed towards:
A portable light assembly comprising a protective container having a body with a base on which the light assembly can stand in a condition for use… (my emphasis)
While there is no absolute articulation of an antecedent within claim 11, I note there is recitation of a stored condition and a withdrawn condition as follows:
…a light head adapted to be housed within the closed protective container in a stored condition and to be withdrawn therefrom by opening the lid when required for use…
I note that both claims refer to the slide assembly being either in a position wherein the light head is within the container enclosed by the lid or a position raised with the lid open, thereby not closing the container. See for example the wording of claims 1 and 11 respectively as follows:
…the slide assembly being mounted to the container and being guided for substantially vertical movement relative to the container between a lowered position in which the light head is within the container and a raised position for use… the slide assembly includes [a lid] for closing an open end of the container when the slide assembly is in a lowered position… the handle includes release means actuable to release the locking means to permit the slide assembly to be raised into the condition for use.
…a light head adapted to be housed within the closed protective container in a stored condition and to be withdrawn therefrom by opening the lid when required for use… and release means actuable to release the locking means to permit the lid with light head to be raised into the condition for use.
It is also quite clear from the description of the invention and associated drawings that the lid encloses the container to house the light head. Upon retraction of the slide assembly to lift the lid and thereby open the container, the light head will no longer be fully enclosed within the assembly. I make reference to figure 51 above which depicts a lid 20 which will enclose container 12 when the slide assembly involving telescopic posts is fully retracted. Opening the lid will enable light to escape from the light head 26 (if the light is “on”) to illuminate an area in the vicinity of the portable light assembly. Similarly, the specification also discusses that the invention relates to a portable light assembly that has a light head which is housed in a protective container when not in use and can be withdrawn from the container when required for use whilst maintaining power connection to a battery also housed in the container (page 1 lines 5-8).
In view of this operation, I consider “the condition for use” is analogous to a raised/withdrawn position suitable for use. In the context of the present application the phrase in question can only be construed as being any condition in which the portable lighting assembly might be used to illuminate by opening of the lid and inevitable withdrawal/raising of the light head.
In this regard I find claims 1 and 11 clear.
Claim 11: “mounting means”
The statement of grounds and particulars asserts that claim 11 is not clear as to its meaning or scope in regards to the expression “mounting means for mounting the container at locations in need of illumination, wherein the mounting means is at a lower end of the container, the mounting means being a base on which the portable light assembly can stand”.
As I understand the opponent’s submissions regarding this claim, they argue that the term “mount” is limited to attaching or fixing. From this limitation I understand that the opponent argues that it is not possible to place a clear construction on claim 11 because the mounting means as claimed is in fact a base, and it is not possible to characterise what physical features may be present for fixing or attaching. In illustrating their point, the opponent suggests that merely placing a jug on a surface without any attaching or fixing means cannot be considered as mounting.
In making their submissions the opponent makes reference to dictionary definitions of “mount” to arrive at a plain meaning for the word. The opponent also made extensive reference to the body of the specification and drawings which show a multitude of mounting means involving fixation. On this note I refer to the Macquarie Dictionary (The Macquarie Dictionary, 6th ed. 2013, which relevantly defines the word “mount” as follows:
“…to set or place at an elevation: to be mounted on stilts”
“…to fix on or in a support, backing, setting, etc.: to mount a photograph”
On this basis of these dictionary meanings, it appears that the term “mount” or “mounting” includes within its scope not only attaching/fixing to, in or on a support of some sort, but also locating at an elevation. To me the question of construction then becomes whether such a broad construction involving the identified plain meaning of the word “mount” is consistent with that suggested by the claim and the body of the specification.
The feature in question in claim 11 states that there is a base on which the portable light assembly can stand. The opponent had no issue with this aspect conceding that a base as defined is simply the bottom of the assembly identified as the pedestal, item 18. The pedestal can be seen in a number of figures including figure 3 (below) and figure 51 (above). Clearly the portable light assembly can stand on this base. The claim also recites that the mounting means is at a lower end of the container and is the base. As I understand the submissions, it follows that the opponent’s assertion of a lack of clarity relies on a mounting means being only for fixation, and that this renders the scope of the mounting means in claim 11 unclear.
The mounting means in claim 11 is for mounting the container at locations in need of illumination (my emphasis). In this regard, it appears appropriate to me to adopt the broad interpretation of mounting as identified in the Macquarie Dictionary so as to include simply placing an article at a location of elevation. Taking this construction renders the particular feature of the claim clear as the mounting means of claim 11 may simply be the base of the container, upon which the light assembly stands. Here the mounting means is at a lower end of the assembly and is suitable for mounting the container at locations in need of illumination. There is no requirement in the claim for the mounting means to include any further features. Of course the mounting means being the base may include further features such as the screw threads depicted in the base/pedestal 18 in figure 51.
Such a broad construction of the terms “mount” and “mounting” is not inconsistent with the body of the specification. In this regard, figures 1-3 all similarly show the portable light assembly simply being in an upright position having a base upon which the assembly can stand with no attachment or fixing to any location. Furthermore, the specification at page 2 lines 17 and 18 (which immediately follows a consistory statement reflecting claim 11 in lines 3-16) discusses that the mounting means may preferably include a screw mounting arrangement formed at the underside of the portable light assembly. Thus, the teaching of the specification appears consistent with the idea that “mounting” is not necessarily limited to fixation of some sort.
Hence I find claim 11 clear. The feature in question is to be construed as the mounting means simply being the base of the container upon which the portable light assembly can stand. The mounting means need not include any means for fixation.
Fair Basis
As noted by the High Court in Kimberly-Clark Australia Pty v Arico Trading International Pty Ltd [2001] HCA 8 at [15], the general principle underlying fair basis is:
‘... where the issue is one under a 40(3) of "fair basing" of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly.’
In other words, it is clear that in order for a claim to be fairly based, the claims must be consistent with what the specification as a whole describes as the invention. There are two subtests that were accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, [98]-[99] as being relevant to the consideration of fair basis:
...whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [1958] HCA 27; (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162; (1988) 81 ALR 79] or
...whether the claims travel beyond the subject matter of the invention described in the specification [Olin v Super Cartridge [1977] HCA 23; (1977) 180 CLR 236].
The opponent’s allegation as to a lack of fair basis to claim 11 is closely related to the construction of “mount” and “mounting” discussed above under clarity. I understand that the opponent essentially alleges that the broad construction I have applied above to claim 11 is inconsistent with the subject matter described in the specification. However for reasons analogous to the discussion in paragraph 38 above, the specification provides a real and reasonably clear disclosure of the broad concept of mounting by simply placing of the light assembly at a location. In this regard, the broad construction of claim 11 is described in a general sense in the body of the specification by way of at least figures 1-3 and page 2 lines 3-18.
Therefore I find claim 11 is fairly based.
Full Description, Best Method
The test for sufficiency of description under s40(2)(a) of the Patents Act is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [25]:
"... will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
Clearly, whether a specification is sufficiently descriptive may be determined with reference to evidence of the skilled addressee (Universal Oil Products Co v Monsanto Co (1972) 46 ALJR 658 at [661]).
The specification, in addition to fully describing the invention, must include the best method of performing the invention known to the applicant. In American Cyanamid Company v Ethicon Limited [1979] RPC 215 at page [269], it was stated:
"The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention."
Consequently, even if a manner of performing an invention is self-evident, applicants are nevertheless required to set out the best method of performing the invention known to them. The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification (Rescare Ltd. v Anaesthetic Supplies Pty. Ltd., 25 IPR 119). If the applicant identifies a better method at a time subsequent to filing, there is no obligation to amend the specification to include that method. In addition, if the specification does not include the best method, it can be amended to include the best method (as known to the applicant at the time of filing), at least until the time of grant (Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224).
The opponent generally argues that there are several areas where the specification is deficient in regard to both sufficiency of description and disclosure of the best method as follows:
“a. The first is the description in relation to the locking means for retaining the lid of the assembly in a closed position (integers 1.7.3 and 11.11) and the associated release means to release the locking means to permit the slide assembly of the portable light assembly to be raised into the condition for use (integers 1.8 and 11.12);
b. The second is the failure of the specification to describe important aspects of the invention known to the applicant in relation, in particular, to electrical details and specifications for a portable light assembly that performs the promises of the specification. These include the battery, the light source and the electric circuit;
c. The third relates to the material specifications for the protective container/body;
d. The fourth relates to a shock absorbing rubber shoe or base for the pedestal;
e. The fifth relates to specifications for ingress protection (IP) through waterproofing, seals etc.”
They submit that the evidence, particularly that of the inventor Glenn Smith, demonstrates detailed and lengthy correspondence with his Chinese designers/manufactures discussing designs and specifications. The opponent essentially argues that this evidence favours a finding of a lack of sufficiency and a failure to disclose the best method.
Sufficiency of description
Locking means and release means
The opponent submits that there is insufficient disclosure for performance of the features identified above at [48] regarding locking and release of the lid. Here the opponent points to the only discussion of the relevant features at page 8 lines 5-7:
A button 36, when pressed, inactivates or releases a sprung catch mechanism 37 and allows the handle extension 30 to be slid upwardly by lifting the handle 14 (see Fig. 15).
Figure 15 does not show an item 37 but does show some small “circular” features at the bottom of the posts 32. The opponent then points to figure 5 noting that the sprung catch mechanism 37 is positioned in the vicinity of the lid. On this basis the opponent argues that this described use of a catch mechanism “is clearly not the same as a locking means in ubiquitous luggage handles” and that this results in a failure to describe the invention.
On this point I make note that the test for full description asks whether the skilled addressee is provided with sufficient information to produce something within each claim without invention or difficulty. Importantly, there is nothing in the claim that limits the spring catch mechanism to a particular location within the device. Further, evidence of the applicant’s expert Mr Kotsis who is a design engineer states that he has no difficulty understanding how the claimed locking and release means would work and that he would not require any specific detail of the locking or release means to implement the invention (Kotsis declaration at [190] and [203]). At best, the evidence of the opponent simply states at [111] of the first Pogson declaration that:
“There is no description of how any “locking means” retains the lid in a closed position. There is no description of how a release means, which I assume is button 36, releases a “locking means”.”
To me the evidence of the applicant demonstrates that the person skilled in the art would have no difficulty in performing the relevant claimed features of the invention based upon that which is disclosed in the specification in relation to figure 15. While there may arguably be some difficulty in performing the embodiment of figure 5 which forms the basis for the opponent’s arguments, this embodiment is not positively claimed. To me figure 15 appears to be envisaging the location of a spring catch mechanism at the bottom of posts 32 in a similar manner to ubiquitous luggage handles. In this regard the disclosure of the specification does not detract from the knowledge possessed by the skilled addressee in the use of retractable luggage handles and their ability to be applied to the technology in question. I am satisfied that the specification is fully descriptive of the features relating to the locking and release means.
Aspects b. to e.: Electrical specifications, material specifications, shock absorbing shoe and ingress protection
Regarding these aspects, the opponent essentially argues that the specification does not provide details for these construction parameters and that the specification is subsequently insufficient. In this regard, there are a range of specifically optimised arrangements and parameters that have been designed by Glenn Smith with the assistance of his Chinese designers/manufactures and which appear in his evidence. On this face of this evidence the opponent argues that there are additions or prolonged study of matters presenting initial difficulty in performing the invention.
Evidence filed by the opponent’s expert Mr Pogson in regard to these optimisations essentially suggest that the specification fails to provide a description of these features (eg Pogson’s first declaration at [104]-[105]). Similarly to the discussion above at [52], the applicant’s expert Mr Kotsis states that he would have no difficulty in implementing for example, standard electrical design knowledge in constructing the invention (Kotsis declaration at [197]-[199]). I am inclined to agree with the applicant in the sense that the optimisations performed by Glenn Smith with the help of his designers/manufacturers were merely matters of design in achieving a particularly marketable and tailored product. This design and optimisation process by no means demonstrates that a person skilled in the art could not produce something within each claim without additions or difficulty.
It follows that I find the specification is fully descriptive of the claimed invention with regard to each of aspects a. to e. identified by the opponent.
Best Method
The best method requirement was recently considered in Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27. Here, their honours noted at [124] that:
“The key to understanding the obligation of the patentee is to understand that the section is directed to the method of performance of the invention. The monopoly is circumscribed by the claims but the nature of the invention is as described in the whole of the specification. This approach accords with that adopted by Lord Nicholls in Van Der Lely and by the Full Court in Firebelt.” (their emphasis)
In this regard, the nature of the invention may affect the nature and extent of the disclosure required to provide a best method. In other words, Servier (supra) (at [141]) makes is clear that for claims to a product there is an obligation for an applicant to disclose the best method known to them of performing the invention (making the product) that best fulfils the invention’s promises.
The opponent appears to argue that the promise of the invention is the provision of a portable, easy to transport, powerful and robust light assembly and on this basis, all of the developed features a. to e. identified above represent part of the best method of performing the invention. In other words, the opponent’s argument presses that optimised design arrangements relating to for example, the specific locking and release means, and the electronic and material specifications represent the best method of performing the invention that the applicant has withheld at filing. More specifically the opponent argues:
“…the general disclosures in relation to electrics to include simply a “battery”, a light source, a cable connecting the battery to the light source, and the vague disclosure of a locking means in the form of a sprung catch mechanism releasable by a button, are no more specific than “classical salification” (the elements of which were well-known to chemists at the priority date of the Servier patent). The evidence discloses that the inventor, in correspondence with his designers and manufacturers, considered options in relation to each of the five items identified above, considered advantages and disadvantages, and shows, in relation to each element, the “best” method of performing each relevant aspect of the invention. Having done so, the applicant was obliged to disclose the relevant best methods in the specification. Failure to do so was a breach of the obligations under section 40(2)(a) of the Act.”
As a first point, I see no reason to consider that the invention promises any particularly improved properties of portability, power and robustness suited to specific environments. The background to the invention (see paragraph [81] below) discusses a range of possible settings for the use of the invention and each of these may require different configurations and functionality to arrive at an optimally designed product. In view of this, and from a reading of the entire specification, the invention simply appears to promise to provide an alternative portable light assembly. This is achieved by a specific claimed combination of features which is depicted for example in figure 51. Hence, the invention as described in the whole of the specification appears to be the interrelation of the claimed components which includes the operation of the container to house a light head therein by closure with a lid, wherein the lid attaches to a slide assembly for withdrawal of the lid and light head from the container. The interrelation also includes the feature wherein a mounting means is located at the bottom of the container.
Having decided that the individual elements a. to e. do not form part of “the invention”, I must reject the opponent’s arguments. As pointed out by the applicant:
“Any lack of description of features complained of by Smith Light in their submissions does not make the Application fall foul of the best method requirement as those individual features are not the Invention.”
To me it is reasonable to suggest that the best method of performing the invention, being the particular combination of claimed features, is depicted in the figures which show a functional and positional relationship between the features of the claims (see for example figure 51). To me the particular activities engaged in by Mr Smith simply constituted the design and manufacture of a commercial product formed simply as an embodiment of the invention.
The present case is distinguished from Servier (supra). In that case the claims were directed to the arginine salt of perindopril and its hydrates whereby the claim was patentable because of particular properties of the claimed compounds. The applicant simply disclosed that the salt may be obtained by a method of “classical salification”. In 1986 and 1991 the applicant had successfully carried out two particular methods of obtaining the necessary salt that could be considered better than classical salification. Here the use of a particular non-disclosed salification processes were key to performing the invention in a manner that would best fulfil the promise of the invention relating to stable compounds. As a result their honours found that the specification failed to disclose the best method of performance. On the contrary, crucial to the present case is the fact that the invention lies in the particular combination of features in as much as the promise of the invention does not appear to lie in any specific properties of the individual features of the portable light apparatus. Thus it is the way in which the combination is formed in terms of the interrelation of claimed features that is relevant to the assessment of a best method. To me the figures appear to provide a best method of performing the claimed combination.
I follows that the opponent fails to establish that the applicant has not disclosed the best method of performing the invention.
Novelty
For the purposes subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information.
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at [235]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at [549]). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]).
I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at [576]:
“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”
The following document was raised as depriving the claimed invention of novelty:
JP 10-228801 A (Tanabe Seizo) 25 August 1998
I have reviewed the English translation of this document and confirm that it discloses a portable light assembly comprising a case 1 within which is situated a car battery. The battery powers a light emitting unit 2 having fluorescent tube lights 5, which can be raised using the handle 4 by extending the slide arms 3. The light emitting unit pivots on the upper end of the slide arms. Figure 1 below depicts the features of the disclosed portable light assembly.
The document describes the case as “accommodating” the light emitting unit. Also described is a power source apparatus 6 contained in the pivoting portion of the assembly. This apparatus contains inverters, switches, charging terminals, sockets and safety apparatuses. In this sense it appears that the main control electronics for the device are contained in the pivoting portion.
The disclosure of the figures makes clear that the light emitting unit 2 is not at any point, enclosed within the case 1 by a lid. Instead the figures show that the light emitting unit rests on top of the case in its retracted position, with the power source assembly on top of the light emitting unit. To address this deficiency, the opponent points to the disclosure of the abstract of the document whereby the case is said to “accommodate” the light emitting unit. Here the opponent says:
“A relevant meaning of “accommodate” is “to find or provide space for (something)”. Relevantly here, where it is the “case” that “accommodates” the “light emitting unit”, the meaning conveyed by the word includes being housed in the case... the description in the abstract conveys the possibility of the light unit being housed in the case.”
In arguing the presence of a novelty destroying disclosure, the opponent appears to admit that there is no explicit disclosure, and makes reference Bennett J’s approval in H Lundbeck A/S v Alphapharm (2009) 177 FCR 151 at [173], [180]-[181] of Nicaro Holdings Pty Ltd (supra) at 530-531. They argue that the missing information would be added by a skilled addressee in accordance with that noted by Bennett J:
“If the prior art discloses some but not all integers of a claimed patent to a product, such as a combination, there is anticipation if the skilled addressee would add the missing information as a matter of course and without the application of inventive ingenuity or undue experimentation”.
In making their argument the opponent appears to overlook the requirement that there must be a clear and unmistakable direction in the prior art, to the claimed invention. To me, the document in question plainly teaches nothing more than “accommodating” meaning that the light emitting unit is positionable on top of the case. This is consistent with the definition being “proving space for something”. In this sense a space is provided on top of the case for the light emitting unit. I see no reason to accept “accommodating” to mean “to be housed within”. The person skilled in the art is not taught by the document to place the light emitting unit in the case and I see no reason why they would add this information to the document in any way as a matter of course. The only feature described by the document as being within the case is the battery. Therefore there is no direction to a light head being housed within a container which is closed by a lid, as is required by claims 1 and 11.
Hence I find claims 1 and 11 novel in view of the document. Claims 2-10, 12 and 13 add further features to those defined in claims 1 and 11 and are therefore also novel.
Inventive Step
The test for obviousness was provided by Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at [286] as follows:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]-[53]; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187] in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base (Alphapharm [2002] HCA 59 at [41]; 212 CLR 411 at [41]; Minnesota Mining& Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at [116]; [1980] HCA 9; (1980) 144 CLR 253 at [293]).
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
The opponent simply relies on the document considered above under novelty in their allegation of a lack of an inventive step.
The Problem
The “Background Art” section of the specification (page 1 lines 13-19) discusses issues with prior art lighting arrangements as follows:
There are many worksites where work is conducted at night or in poorly illuminated areas, and that therefore require suitable lighting. In many cases, the worksites, such as those relating to construction, mining, recreational or emergency services, need one or more lights to be located in areas that provide the widest possible range of illumination. The lighting required to meet these needs must be portable, easy to transport, powerful and robust. It would also be desirable for such lighting to be readily adapted for mounting to various locations.
The specification then states that it is an object of the present invention to overcome, or at least substantially ameliorate, the disadvantages and shortcomings of the prior art, or at least provide a useful alternative. On this basis it appears to me that the problem can simply be formulated as the search for an improved or alternative portable lighting assembly.
Was the invention obvious?
There are a number of preliminary questions that the law articulates that one should ask when assessing obviousness. Having formulated a problem it is important to determine the person skilled in the art and then to determine whether relevant documents would have been ascertained, understood and regarded as relevant. It is also important to determine the relevant common general knowledge in the art. While there was contention between the parties in regard to whether certain experts could be considered persons skilled in the art and whether the relevant document could have been ascertained, I do not need to resolve these issues to arrive at a finding in regard to obviousness.
Having regard to the features discussed above under novelty that are not disclosed in the relevant document I see no teaching within the document that would lead any person skilled in the art directly to the claimed features. The opponent filed no specific evidence in regard to steps a person skilled in the art might have taken in seeking solutions to the identified problem. Instead the opponent simply submits that:
“…it would be obvious to ensure that the light emitting unit of JP 801 could be accommodated in the box (to protect it). It would also be obvious to have a locking mechanism and a release means so that the components could be held together or extended, when the latter use was required. If item 6 in JP 801 is not considered to be equivalent to a lid, if the light unit is accommodated inside the case it would be obvious to include a lid”.
I agree with the applicant’s submissions which state:
“There is no evidence to support a finding to the level of practical certainty that a skilled addressee would have been directly led to try the claimed portable light assembly with the claimed combination of features in the expectation that it might well produce a useful product… Mr Pogson merely summarises what he understands D1 to disclose at Pogson #1, [32] and does not provide any evidence of him being motivated, let alone being directly led, to modify the light assembly disclosed in D1 to try the light assembly with the combination of features claimed in the Application.”
In short, I see no reason why a person skilled in the art would start with the teaching of the document and add a light head which is housed within a container wherein the container is closed by a lid. The opponent’s submissions appear to be tainted with hindsight.
Hence I find claims 1 and 11 inventive in view of the document. Claims 2-10, 12 and 13 add further features to those defined in claims 1 and 11 and are therefore also inventive.
Conclusion
The request to amend the statement of grounds and particulars of 21 April 2016 has been allowed.
The opposition fails. All grounds are unsuccessful. Subject to any appeal, I direct the application proceed to grant.
Costs
The opponent has been unsuccessful in their opposition. Regarding any award of costs the applicant submits that they should be entitled to an award of costs reflective of the withdrawn section 32 and 36 matters. In response the opponent argues that the applicant has not been put to any additional cost and that there should be no variation.
Looking at the section 32 and 36 matters it is clear that the applicant paid a hearing fee of $1000 for the scheduled hearing that was cancelled on 20 March 2014. On 3 April 2014 the applicant requested a refund of this fee. A response was sent by a delegate of the Commissioner stating that:
“The applicant may request an award of costs in these matters. Please note that the hearing fee could be claimed under Schedule 8 Part 2 (Expenses and allowances), Division 1 Expenses.”
I also note that the applicant has paid a further hearing fee of $1000 in regard to the section 59 matter. Hence it appears appropriate to make an additional award of $1000. No further additional award is appropriate as all evidence from the section 32 and 36 matters was simply refiled in the section 59 opposition.
It follows that I consider it appropriate to not depart from the principle that costs should follow successful defence of an application under section 59 by way of an award in accordance with Schedule 8 of the Patent Regulations against the opponent. I award a further $1000 against the opponent to compensate for the hearing fee paid by the applicant during section 32 and 36 matters.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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