Sprintquip Pty Ltd v Lockit Systems (Aust) Pty Ltd - [2015] APO 85

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sprintquip Pty Ltd v Lockit Systems (Aust) Pty Ltd [2015] APO 85

Patent Application: 2007222896

Title:Assemblies and method for securing surface mounted articles to accommodate applied loads

Patent Applicant:  Lockit Systems (Aust) Pty Ltd
Opponent:  Sprintquip Pty Ltd
Delegate:  O L Haggar
Decision Date:  7 December 2015
Hearing Date:  28 October 2015 in Canberra

Catchwords: PATENTS – opposition under section 104 – construction of the specification considered – effect of the terms “comprises” and “includes” – whether the amendments proposed contravene sections 102(1) and 102(2)(a) and (b) – amendments refused – costs awarded against the patent applicant

Representation: Patent applicant: John Walsh of Walsh & Associates
Opponent:Charles Berman of FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007222896

Title:Assemblies and method for securing surface mounted articles to accommodate applied loads

Patent Applicant: Lockit Systems (Aust) Pty Ltd
Date of Decision: 7 December 2015
DECISION
The opposition succeeds. I refuse the amendments.
I award costs against Lockit Systems (Aust) Pty Ltd.
REASONS FOR DECISION
Background

Patent application 2007222896 in the name of Lockit Systems (Aust) Pty Ltd (Lockit) was advertised as accepted on 31 May 2012. An opposition by Sprintquip Pty Ltd (Sprintquip) to the grant of a patent on the application was upheld on a number of grounds (Sprintquip Pty Ltd v Lockit Systems(Aust) Pty Ltd [2014] APO 77) (the original decision), and Lockit was allowed time in which to propose suitable amendments to overcome the delegate’s adverse findings.
On 24 January 2015 Lockit duly filed a request for leave to amend the specification. Leave was granted and advertised on 23 February 2015. Sprintquip filed a notice of opposition under section 104 to the allowance of the amendments on 5 May 2015 followed by a statement of grounds and particulars on 5 June 2015.
A hearing to determine the section 104 opposition was held in Canberra on 28 October 2015. Lockit was represented by John Walsh of Walsh & Associates, and Sprintquip was represented by Charles Berman of FB Rice. Richard Gould, who is the named inventor, attended the hearing as an observer.
Subject matter
The subject matter of the specification was conveniently summarised in the original decision at [8]-[9] as follows:
“The specification states that the invention relates to an assembly for improving the physical security of articles such as an Automatic Teller Machine (ATM) or a safe that are mounted on a surface. ATMs are generally mounted on a ground surface of concrete or other hard surface with secure expanding anchor rods to prevent removal. Criminals have however resorted to ‘ram raids’ on ATMs, where a vehicle is driven into the ATM causing it to get detached from its anchorage whereby the criminals can then load the ATM into a vehicle and flee the scene …
The present invention is stated to be designed to withstand and absorb much of the horizontal load energy applied to the ATM during a ‘ram raid’ and thereby prevent the ATM from being separated from its anchorages. It achieves this by providing an additional anchorage in the form of a connecting member that can expand or extend on impact to thereby dissipate the energy of the impact. Dissipation of much of the energy minimises the likelihood of the ATM getting totally detached from all of its anchorages.”
The proposed amendments
Sprintquip has objected to the proposed amendments because of the result they would allegedly have, if made, on accepted claims 16, 27 and 29. Claim 29 is an independent claim whereas claims 16 and 27 are directly appended to claim 4 which is in turn indirectly appended to claim 1. To understand the basis of Sprintquip’s objection, it is necessary to set out all of the claims in issue as they have been proposed to be amended. These claims read as follows (with added text underlined and deleted text struck through):
“1. An assembly for securing an automatic teller machine (ATM) to a surface to dissipate energy in the event of an impact applied to the ATM, the assembly comprising:
at least one connecting ~~connecting~~ bracket each including means at a first location to secure said connecting bracket to said surface and means at a second location to secure said connecting bracket to said ATM; the at least one connecting ~~connecting~~ bracket capable of dissipating energy generated by an impact on the ATM such that in the event of a displacement of the ATM under said impact, the at least one connecting bracket including a part which is capable of at least partial deformation or displacement relative to a first plane of the bracket, thereby absorbing and dissipating energy from said impact; wherein the at least partial deformation or displacement of each said at least one connecting bracket thereby restraining the ATM from separation from said connecting bracket and from the surface; wherein the at least one bracket is formed from metallic plate.
2. An assembly according to claim 1 wherein each connecting ~~connecting~~ bracket moves upon an impact load on said ATM between a first state in which each connecting ~~connecting~~ bracket is not deformed and a second state in which each connecting ~~connecting~~ bracket is extended in at least one direction as said ATM is displaced.
3. An assembly according to claim 2 wherein each said at least one connecting ~~connecting~~ bracket is fastened to the first location to a ground surface and via said second location to said article via at least one fastener.
4. An assembly according to claim 3 wherein each said connecting bracket has a first part connected to the ground and a second part connected to the ATM.
16. An assembly according to claim 4 14 wherein the connecting bracket includes a helical spiral formed in the bracket between the connection of the bracket to the ATM and the connection of the bracket to the ground. ~~tabs formed by the cut outs in the plate form a helical spiral.~~
27. An assembly according to claim 4 wherein the connecting bracket ~~member~~ is comprises a helical spiral.
29. An energy absorbing bracket for dissipating energy generated by a force applied to an automatic teller machine fixed to a ground surface by the bracket,
the bracket comprising a first part at one end which is fastened to the ground surface, a second part at a second end fixed to said article;
the bracket including means to enable the bracket to displace along at least one of its dimensions in the event of an impact load applied to the machine secured by the bracket; wherein the connecting bracket includes a helical spiral formed between said first part of the bracket fastened to the ground surface and the second part of the bracket fixed to the article;
said displacement allowing dissipation of energy generated by a loading to the machine; thereby restraining the machine from separation from the bracket and from said ground surface.”
Grounds of opposition
The statement of grounds and particulars identifies three grounds of opposition: section 102(1), section 102(2)(a) and section 102(2)(b). All were pressed at the hearing.
Lockit filed its request for leave to amend after 15 April 2013, but requested examination of the application well before that date. As a result, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment(Raising the Bar) Act 2012 do not apply. These include the amendment to section 102(1) to preclude matter disclosed or claimed by the amended specification that extends beyond that disclosed in the specification as filed.
Construction of the specification
Before considering the grounds of opposition on which Sprintquip relies, it is necessary to first deal with the competing views of the parties as to the proper construction of the specification.
The principles that apply to the task of construction are well established (Flexible Steel LacingCompany v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [70] – [81], Pfizer Overseas Pharmaceuticalsv Eli Lilly and Company [2005] FCAFC 224; 68 IPR 1 at [247]-[250], HLundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118]-[120]). Of particular note is that the words used in a claim are to be given the meaning a skilled person would attach to them, having regard to their own personal knowledge and to textual disclosures in the body of the specification which, together with the claims, must be read as a whole.
Put simply, Sprintquip has objected to the terms of proposed claims 16, 27 and 29 insofar as they relate to the feature of a helical spiral. Lockit contends that this objection arises from a misconstruction by Sprintquip of the nature of the invention disclosed by the specification as a whole. Mr Walsh took me to page 3 of the specification where the invention in its most general form is said to comprise at least one connecting member each of which includes first and second securing means and energy dissipation means. He said that it was clear from this broad disclosure that the “essential features” of the invention were not confined to the energy dissipation means alone. Mr Walsh also made the point that these essential features are both common to all described embodiments of the invention and reflected in the independent claims. This line of argument is further developed in Lockit’s written submissions at [5] to [7] as follows:
“Applicant submits that the opponent’s interpretation takes one feature of one possible embodiment of the bracket in isolation, ignoring the essential features which must be present in each embodiment and which in combination make the bracket or bracket assembly work. The helical spiral is a variation which can be present in a bracket … along with the essential features as indicated in claim 1 … These features are disclosed in the specification and set the context in which the references to bracket is interpreted … A person skilled in the art would expect the embodiment of the bracket … to have features that it needs to work and to fulfil its function of fixation and energy dissipation in an embodiment which includes a helical spring as the means for energy dissipation.”
The repeated reference to a “bracket” or “bracket assembly” in the above submissions exposes the fundamental flaw in the case advanced by Lockit. As I have said, the specification discloses that the invention in its broadest sense comprises one or more connecting members each including, inter alia, energy dissipation means. The specification goes on to state on page 4 that the “connecting member may take many forms allowing various options for the construction of the energy dissipation [means]”. Examples given are “a series of brackets or plates or any combination of same”. I pause here to mention that in all of the claims in issue the connecting member is limited in form to a bracket. The specification then says on page 4 that the connecting member “may also be a helical spiral”. It is not in dispute that when in the form of a helical spiral, the connecting member is still required by the broad disclosure to include the features of first and second securing means. However, as a matter of plain language, it is clear that the body of the specification as filed has disclosed a helical spiral solely in the context of an alternative form of connecting member as compared to a bracket (or plate).
This is also the case with the claims as filed since original claim 26 (the only claim of relevance) specifies that the connecting member “is a helical spiral” (my emphasis).
I therefore agree with Mr Berman that the specification as a whole does not, as argued by Sprintquip, envisage a connecting member having the form of a bracket that incorporates a helical spiral as the energy dissipation means. The only disclosure in this regard is of a connecting member which is itself a helical spiral.
There is a further issue of construction worthy of comment. Mr Berman noted that the specification is silent as to whether the term “comprises” is used in an exhaustive or non-exhaustive sense in proposed claim 27, but as countered by Lockit’s written submissions at [11] “if ‘comprises’ is read as being used in an exhaustive sense, there would be no point to the proposed amendment of substituting ‘is’ by ‘comprises’ since the end result would still claim a connecting bracket which is a helical spiral.” I can see no logical reason why a non-exhaustive meaning should not also apply to the term “includes” in proposed claims 16 and 29.
Allowability under section 102(1)
Section 102(1) states:
“An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.”
Schedule 1 to the Patents Act defines that “claim” when used as a verb means “to claim in a claim (including a dependent claim) of a complete specification”.
It is well established that the question of whether matter is in substance disclosed is closely related to the test for fair basis in that there must be a real and reasonably clear disclosure of an amended claim when compared against the original disclosure (ICI Chemicals &Polymers Ltd v Lubrizol Incorporation Inc [2000] FCA 1349; 106 FCR 214 at [118]).
Proposed claim 16
The effect of the amendment proposed to claim 16 would be to define the connecting bracket of claim 1 (to which claim 16 is indirectly appended) as including “a helical spiral formed in the bracket between the [first and second securing means]”.
For the reasons already discussed in relation to the issue of construction, it is self-evident that there is no real and reasonably clear disclosure in the specification as filed of a connecting bracket having this form. As I have said, the specification as filed discloses a connecting bracket and a helical spiral as alternative, and not complementary, features of the invention.
Proposed claims 27 and 29
The effect of the amendments proposed to these claims would be to respectively define the connecting bracket as comprising or including a helical spiral. As in the case of proposed claim 16, the specification as filed does not provide a real and reasonably clear disclosure of either of proposed claims 27 or 29.
On the basis of the foregoing, I find that the amendments proposed to claims 16, 27 and 29 would result in the specification claiming matter not in substance disclosed in the specification as filed. The ground of opposition under section 102(1) therefore succeeds.
Allowability under section 102(2)
Section 102(2) states:
“An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).”
Section 102(2)(A) prescribes that for the purposes of section 102(2), “relevant time” means after the specification has been accepted.
Section 102(2)(a)
Consideration of the prohibition in this section requires a comparison between the proposed new claims and the claims of the specification immediately before amendment. However, the comparison is not between a particular amended claim and that claim before amendment. The expression “within the scope of the claims” directs attention to all the claims (Bristol-Myers Squibb Co v Apotex Pty Ltd [2010] FCA 814; 87 IPR 516 at [40]). For this reason a long standing practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment (Fina Research SA v Halliburton EnergyServices Inc [2003] FCA 251 at [29]).
In the present case the claims immediately before amendment are the claims as they existed at acceptance.
It will be recalled that the effect of the amendments proposed to claims 16, 27 and 29 would be to define the connecting bracket as comprising or including a helical spiral. The feature of a helical spiral is present in accepted claims 16 and 27. Accepted claim 16 speaks of a helical spiral formed by tabs which are in turn formed by cut outs in a ground engaging plate, while accepted claim 27 speaks of a connecting member which is itself a helical spiral. Mr Berman submitted that as amended claim 16 had been found in the original decision to lack fair basis, it was to be discounted from the comparison required by section 102(2)(a). However, this submission ignores the fact that the question of whether section 102(2)(a) is enlivened is to be assessed by looking at the claims as a whole. For his part Mr Walsh contended that the amendments proposed to claims 16, 27 and 29 simply serve to clarify their reliance on a helical spiral for energy dissipation. To this extent Mr Walsh seemed to imply that the proposed amendments have a limiting effect.
This may be the case in respect of proposed claims 16 and 29 (although it is to be noted that neither claim associates the helical spiral with energy dissipation), but I cannot agree that the same can be said of proposed claim 27 if, as definitely appears to be intended, “comprises” is read non-exhaustively. In this instance an assembly would not infringe claim 27 in its unamended form if it contained a helical spiral “along with other parts” (as put in Sprintquip’s written submissions at [40]). However, if claim 27 was amended as proposed, the same assembly would infringe that amended claim. Put differently in the context of section 102(2)(a), the effect of the amendment proposed to claim 27 would be to impermissibly broaden its scope.
This ground of opposition accordingly succeeds.
Section 102(2)(b)
Sprintquip has contended that accepted claims 1, 28 and 30 are not clear in their reference to “an assembly” given that they define a single component only, viz. a connecting bracket or plate. The very same contention was put before, but rejected by, the delegate in the original decision (at [19]). Matters that were decided in the original decision have been decided once and for all, and are not open to challenge in the context of these proceedings. This is made very clear by the High Court in Exparte Mole Engineering Pty Ltd [1981] HCA 25; 35 ALR 119 at [18]. Even if I were to disregard the delegate’s findings as to the clarity of the claims, the fact remains that any pre-existing deficiencies in the specification under section 40(2) or (3) which are unaffected by amendment are irrelevant for the purposes of section 102(2)(b) (Kornelis’Kunthars Producten Industrie BV v WR Grace & Co-Conn [1994] FCA 969; [1994] AIPC 91-056 at [24]). It is readily apparent that the lack of clarity alleged by Sprintquip has not been “the result of” any amendment proposed to the above claims.
The same applies to the lack of antecedent for “the connecting member” in line 6 of claim 28.
In its written submissions at [58], Sprintquip has additionally argued that:
“… the presence of the helical spiral in the connecting bracket as referred to in proposed amended claim 16 is said to be formed in the bracket ‘… between the connection of the bracket to the ATM and the connection of the bracket to the ground’. It is not clear whether the proposed amendments seek to claim a helical spiral which will only exist in circumstances where the bracket is connected to both the ATM and the ground, or whether the helical spiral is formed in the bracket itself and thus the word ‘between’ refers to the location of the helical spiral within the assembly.”
It is well settled that a specification is to be construed “with a generous measure of common sense” (Eli Lilly andCompany Limited v Apotex Pty Ltd [2013] FCA 214; 100 IPR 451 at [139]). In the present case it is clear on a sensible viewing that the specification does not contemplate the former arrangement.

Sprintquip has also challenged the fair basis of proposed claims 16, 27 and 29. It is important to note here that the body of the specification has not been amended since filing. As a consequence, and for the same reasons discussed under section 102(1), I agree that each of the proposed claims in issue lacks fair basis. In referring to the close relationship between the notion of “in substance disclosed” and the test for fair basis, the Full Court in ICI v Lubrizol said that it would be a rare case where a claim which claims matter in substance disclosed in the specification as filed is not, equally, fairly based on the matter described in the specification. In the present case where the body of the specification has remained unchanged, the converse must hold true.
This ground of opposition therefore succeeds.
Conclusion
The proposed amendments are not allowable in that they contravene sections 102(1), 102(2)(a) and 102(2)(b). I therefore refuse the amendments.
Costs
Sprintquip has been successful on all grounds of opposition relied on. I see no reason to depart from the usual practice that costs follow the event. I therefore award costs against Lockit.
O L Haggar
Delegate of the Commissioner of Patents