Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd

[1998] FCA 521

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	QG 182  of  1995

BETWEEN:

SPEEDY GANTRY HIRE PTY LIMITED
ACN 010 593 414
Applicant/Cross Respondent

AND:

PRESTON ERECTION PTY LIMITED
ACN 003 991 662
First Respondent/First Cross Claimant

JOHN CLEMENT PRESTON
Second Respondent/Second Cross Claimant

JUDGE:	EMMETT J
DATE:	13 MAY 1998
PLACE:	SYDNEY

FURTHER REASONS FOR JUDGMENT

HIS HONOUR: On 13 March 1998, I delivered my reasons for concluding that the cross-claim by Preston Erection and Mr Preston should fail.  I stood the proceedings over to enable the parties to consider my conclusion and the reasons for them and for further argument, if necessary, as to the appropriate relief.

Subsequently, the cross-claimants sought leave to amend their cross-claim. The amendment was to add the following as a basis for contending that the Patent did not comply with sections 40(2) and 40(3) of the 1990 Act:

“In respect of all claims of the Patent, each of them purport to claim a gantry module erected on site by combining the individual elements thereof whereas the invention disclosed in the Patent is the concept of having separate substantially identical modules fabricated in advance with adjustable legs and which are transported to a site and erected side by side.  To that extent, the claims are not fairly based on the matters set forth in the provisional or complete specification or in the alternative the said claims are ambiguous.”

That basis was said to be derived from findings and observations which I made in the course of my reasons of 13 March 1998.

The findings and observations in question contain references to the manufacture off-site of the modules which are the subject of the invention.  For example, when considering arguments of the cross-claimants relating to section 40 of the 1990 Act, I observed:

“The Speedy Gantry invention is essentially the concept of constructing a gantry or hoarding from a plurality of modules manufactured off site which have adjustable legs and a protective side and roof.”
[Emphasis subsequently added.]

When considering the issue of novelty and the Bidner Scaffolding System I observed:

“Mr Sydes said in cross-examination that he did not see how the structure was transported to the site, but assumed it came in pieces.  He did not see how the structure had been assembled, but assumed that it was ‘sort of put together like a meccano set on site’. In the light of that evidence, I do not consider that the structures observed by Mr Sydes in any way anticipated the modules described in the Speedy Gantry specification.”

In considering the obviousness claim, I accepted that it was common general knowledge that:

“Gantries were custom built structures which comprised a roof structure, legs and solid wall on the site side of the gantry, erected on site and dismantled on site;

……………………………………………………………………………………………

The modular parts and other custom built parts would be delivered to the site and the gantry would be erected from the parts and subsequently dismantled on the site.”
[Emphasis subsequently added.]

In considering the evidence of Mr Black in relation to the issue of obviousness I observed:

“He said that he would have chosen that form because it would enable a scaffolding construction company to prepare the gantry off site and have it transported to the site either as a whole or with elements to be fitted in on site.  That, of course, is the essence of the Speedy Gantry invention.”
[Emphasis subsequently added.]

Further, in considering evidence relating to the Bidner Scaffolding System I observed that Mr Sydes:

“…agreed that before he saw the Speedy Gantry system, he had never seen a modular hoarding system where all of the components were assembled off site.”

Finally, my conclusion in relation to obviousness included the following observation:

“The Speedy Gantry invention is the concept of constructing a gantry assembly from a plurality of modules manufactured off site which have adjustable legs and a protective wall and roof.”
[Emphasis subsequently added.]

The cross claimants relied on the principle that when considering a fair basis claim, the claims must not extend beyond the invention.  Reference was made to the observations of Lord McMillan in the Mullard Radiovalve Co LB v Philco Radio and Television Corporation (1936) 53 RPC 323 at 346-7, endorsed by the High Court of Australia in Olin Corporation v Super Cartridge Co (1977) 51 ALJR 525 at 532 and 537 and in Motecatini Edison S.p.A v Eastman Kodak Co (1971) 45 ALJR 593 at 597.

It was said that in applying that principle to my conclusion as to what constituted the invention, the claims are invalid.  It was said that the invention, as found by me, entailed the concept of erecting off site from a number of components a module which is then transported to a site together with a number of other modules for assembly as a gantry.  The cross-claimants contended that the claims are not so restricted.

For example, the fundamental claim to the gantry module is claim 7.  It was said that on a fair reading of that claim, there is no restriction whatsoever concerning off site construction and it would in its terms apply to a module erected on site from component elements.  That claim, it was said, and all claims depended upon it, must therefore be rejected.

It was also contended that claim 1 suffers from the same fundamental defect because there is no limitation in it to off site construction of the independently moveable gantry modules referred to in the claim.  It was contended, therefore, that that claim and all claims dependent upon it must also be rejected.

Having heard argument from counsel for the cross-claimants and Speedy Gantry, I have concluded that the application for leave to amend should be refused because it is based upon a misapprehension of what I intended to convey by my reasons.  It is desirable, therefore, that I clarify what I intended in the passages relied on by the cross-claimants.

In the passages set out above, I was not intending to indicate, by the term “off-site” that it is essential to the invention that a module be constructed any distance from the place where it is to be first used.  Indeed, a module might first be constructed at the very site where it is first used.  However, the essence of the invention is that it is not necessary for a module to be constructed on the site where it is to be first used.  Further, once it has been constructed, each module will be capable of being removed from the place of its construction to some other place for subsequent use. 

The advantage of the invention is that it obviates the need to transport numerous component pieces to the place where a gantry is to be erected.  It also obviates the need to dismantle a module once it has been constructed.  In other words, the place where the module is first constructed is not important.  What is important is that, once constructed, the module is then transportable and reusable without dismantling and re-erection.

It is accepted by counsel for the cross-claimants that if my reasons are to be understood in the way I have now indicated, the amendment would be futile.  Accordingly, I propose to refuse the application for leave to amend.  I should make clear, however, that my only reason for rejecting the application for leave to amend is that it would be futile. Bearing in mind the nature of a patent action, it is appropriate that all questions concerning the validity of the patent which can fairly be raised and determined, should be raised in one proceeding.  Further, it was not contended by Speedy Gantry that any prejudice would be likely to flow from the grant of leave to amend at this stage.  Accordingly, if I had been persuaded that there was any substance in the claim as amended, I would have granted leave, notwithstanding the time at which the application was made.

I certify that this and the preceding four (4) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett

Associate:

Dated:             13 May 1998

Counsel for the Applicant:	D. K. Catterns QC
Mrs D. A. Mullins
Solicitor for the Applicant:	Bennett & Philp
Counsel for the Respondent:	M.R. J . Ellicott
Solicitor for the Respondent:	Hazan Solicitors
Dates of Hearing:	6 May 1998
Date of Judgment:	13 May 1998