Stack v Brisbane City Council
[1999] FCA 1279
•15 SEPTEMBER 1999
FEDERAL COURT OF AUSTRALIA
Stack v Brisbane City Council [1999] FCA 1279
INTELLECTUAL PROPERTY - patents - petty patent - entitlement - nominated person - consideration of who may be granted a patent - divisional applications - discussion of co-inventors - assignment of patent - consideration of successor in title of patent and original grantee - entitlement of employee to workplace invention.
INTELLECTUAL PROPERTY - patents - invalidity - whether the claims of the petty patent are fairly based on the specifications - whether the claims lack clarity.
INTELLECTUAL PROPERTY - patents - priority date of the petty patent - divisional and associated applications - whether claims are fairly based on provisional specification to obtain earlier priority date.
INTELLECTUAL PROPERTY - patents - manner of manufacture within s 6 Statute of Monopolies - whether the invention claimed is a manner of manufacture - whether the invention was a mere collocation of well-known integers - whether inventive step disclosed in complete specification.
INTELLECTUAL PROPERTY - patents - obviousness - prior art base - whether invention claimed had inventive step when compared to the prior art base.
INTELLECTUAL PROPERTY - patents - novelty - compared with prior art base - discussion and application of the test “reverse infringement” for novelty.
Patents Act 1990 (Cth) ss 5, 7, 15, 18, 28, 29, 38, 40, 43, 138
Patents Regulations Regs 3.1, 3.12, 6.6, 19.1Stack v The State of Queensland (1996) 68 FCR 247 Cited
Martin and the Miles Martin Pen Coy Ld v Scrib Ld (1950) 67 RPC 127 Appr
Stack v Brisbane City Council (No 2) (1996) 67 FCR 510 Cited
Worthington Pumping Engine Company v Moore (1902) 20 RPC 41 Cited
Fine Industrial Commodities Limited v Powling (1954) 71 RPC 253 Cited
Sterling Engineering Co Ld v Patchet [1955] AC 534 Cited
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 Cited
Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 Cited
Electric & Musical Industries Ld v Lissen Ld and Boonton Research Corporation Ld (1939) 56 RPC 23 Cited
Henriksen v Tallon Limited [1965] RPC 434 (HL) Appl
No-Fume Ld v Frank Pitchford & Co Ld (1935) 52 RPC 231 (CA) Appl
Valensi v British Radio Corporation [1973] RPC 337 Appl
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (FC) Foll
Stauffer Chemical Company’s Application [1977] RPC 33 Cited
Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 FC Cited
NV Phillips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 Cited
National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 Cited
Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 Cited
British Celanese Ltd v Courtaulds (1935) 52 RPC 171 cited
Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 Cited
British Westinghouse Electric and Manufacturing Company Ltd v Braulik (1910) 27 RPC 209 Cited
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 Foll
Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 Appr
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 Cited
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 (FC) Foll
Winner v Ammar Holdings Pty Ltd (1993) 41 FCR 205 (FC) Cited
C Van der Lely NV v Bamfords Ltd [1963] RPC 61 FollGEORGE STACK AND G S TECHNOLOGY PTY LTD v THE BRISBANE CITY COUNCIL, DAVIES SHEPHARD PTY LTD AND DAVIES SHEPHARD (QUEENSLAND) PTY LIMITED
NO QG 28 OF 1994G S TECHNOLOGY PTY LTD v DAVIES SHEPHARD PTY LTD AND GSA INDUSTRIES (AUST) PTY LTD
NO QG 29 OF 1996
COOPER J
BRISBANE
15 SEPTEMBER 1999
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
QG28 OF 1994
BETWEEN:
GEORGE STACK
First ApplicantG S TECHNOLOGY PTY LTD
Second ApplicantAND:
THE BRISBANE CITY COUNCIL
First RespondentDAVIES SHEPHARD PTY LTD
Second RespondentDAVIES SHEPHARD (QUEENSLAND) PTY LIMITED
Third RespondentON APPEAL FROM THE COMMISSIONER OF PATENTS
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
QG29 OF 1996
BETWEEN:
G S TECHNOLOGY PTY LTD
ApplicantAND:
DAVIES SHEPHARD PTY LTD
First RespondentGSA INDUSTRIES (AUST) PTY LTD
Second Respondent
JUDGE:
COOPER J
DATE OF ORDER:
15 SEPTEMBER 1999
WHERE MADE:
BRISBANE
THE COURT DECLARES THAT:
1.George Stack is not, and was not at any material time, entitled under s 15 of the Patents Act 1990 (Cth) to the grant to him of a patent in consequence of the filing of the provisional specification PK2036.
2.George Stack is not, and was not at any material time, entitled under s 15 of the Patents Act 1990 (Cth) to a grant to him of a standard patent in consequence of the filing of application 85236/91.
3.George Stack was not entitled under s 15 of the Patents Act 1990 (Cth) to the grant to him of Australian Petty Patent Number 645740.
4.GST Technology Pty Ltd was not entitled under s 15 of the Patents Act 1990 (Cth) to a grant to it of Australian Petty Patent Number 645740.
5.GS Technology Pty Ltd is not entitled to Australian Petty Patent Number 645740 within the meaning of s 138(3)(a) of the Patents Act 1990 (Cth).
6.The invention claimed in each of the claims of Australian Petty Patent Number 645740 is a patentable invention within the meaning of s 18 of the Patents Act 1990 (Cth).
7.The specification of Australian Petty Patent Number 645740 complies with the requirements of s 40(2) and s 40(3) of the Patents Act 1990 (Cth).
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
QG28 OF 1994
BETWEEN:
GEORGE STACK
First ApplicantG S TECHNOLOGY PTY LTD
Second ApplicantAND:
THE BRISBANE CITY COUNCIL
First RespondentDAVIES SHEPHARD PTY LTD
Second RespondentDAVIES SHEPHARD (QUEENSLAND) PTY LIMITED
Third RespondentON APPEAL FROM THE COMMISSIONER OF PATENTS
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
QG29 OF 1996
BETWEEN:
G S TECHNOLOGY PTY LTD
ApplicantAND:
DAVIES SHEPHARD PTY LTD
First RespondentGSA INDUSTRIES (AUST) PTY LTD
Second Respondent
JUDGE:
COOPER J
DATE:
15 SEPTEMBER 1999
PLACE:
BRISBANE
REASONS FOR JUDGMENT
Background
On 17 March 1994 George Stack (“Stack”) and GS Technology Pty Ltd (“GST”) commenced proceedings QG28 of 1994 against the Brisbane City Council (“BCC”), Davies Shephard Pty Ltd (“DS”) and Davies Shephard (Queensland) Pty Ltd (“DSQ”).
The proceedings were brought by Stack as patentee of Australian Petty Patent No 645740 (“the petty patent”) and by GST as the registered patentee by assignment of the petty patent as and from 23 October 1995. The applicants claimed against the BCC a declaration that the BCC, as an authority of State, had exploited the petty patent within the meaning of s 163 of the Patents Act 1990 (Cth) (“the Act”) and sought orders fixing the terms for such exploitation pursuant to s 165 of the Act. The applicants sought against DS and DSQ, injunctive relief to restrain an alleged infringement by them of the petty patent and damages or an account of profits for such infringement.
DS and DSQ, by their defence and cross-claim, inter alia, alleged that each of the claims of the petty patent was invalid and sought revocation. In their particulars of objection filed with the defence and cross-claim, DS and DSQ alleged that Stack was not entitled to be granted the petty patent (paragraph 1), that the claimed invention was not novel (paragraph 2), that the claimed invention was obvious and did not involve an inventive step (paragraph 3), that the complete specification of the petty patent did not comply with s 40(2) or s 40(3) of the Act (paragraph 4), and finally, that the claimed invention was not a “manner of manufacture” within the meaning of s 6 of the Statute of Monopolies (paragraph 5).
On 19 December 1994 Stack applied for an extension of the petty patent for a further period of twelve months. The application was made pursuant to s 69 of the Act. On 20 December 1994, DS and GSA Industries (Australia) Pty Ltd (“GSA”) each filed a notice pursuant to s 28 of the Act notifying grounds upon which they contended the petty patent was invalid.
On 5 January 1996, a Deputy Commissioner of Patents delivered a preliminary decision on the objections taken in the s 28 notices filed by DS and GSA. On the basis of a priority date of 30 August 1990 he held that Claims 1 and 2, and on the basis of a priority date of 30 August 1991 for claim 3, were novel, involved an inventive step and that the invention was a “manner of manufacture” within the meaning of the Statute of Monopolies. Notwithstanding registration on 23 October 1995 of GST as patentee by deed of assignment dated 16 March 1994, the Deputy Commissioner was not satisfied that Stack was originally entitled to the petty patent. Over objection, the Deputy Commissioner allowed Stack three weeks to make an application to adduce further evidence of entitlement.
On 25 January 1996, DS filed a notice of appeal pursuant to s 69(7) of the Act from the decision of the Deputy Commissioner. Those proceedings (VG39 of 1996) were filed in the Victorian District Registry of the Court. On 29 January 1996 GSA also filed an appeal (VG40 of 1996) in the Victorian District Registry against the decision of the Deputy Commissioner. Each appeal sought revocation of the petty patent on the grounds contained in the s 28 notices. Those grounds replicated the invalidity grounds pleaded in the defence and cross-claim in QG28 of 1994.
On 29 January 1996, Stack also appealed against the decision of the Deputy Commissioner by proceedings QG11 of 1996. The Deputy Commissioner, on 27 February 1996, found that the further evidence tendered by Stack and GST did not establish a prima facie case that Stack was entitled to the grant of the petty patent. On that date the Deputy Commissioner refused to admit the further evidence and concluded that the petty patent was granted to a person who was not entitled to be granted the petty patent. As this circumstance was not capable of rectification by amendment, the Deputy Commissioner refused to extend the term of the petty patent and awarded costs against Stack and GST.
On 1 March 1996, GST appealed the decision of the Deputy Commissioner given on 27 February 1996. The appeal proceedings (QG29 of 1996) sought orders that the term of the petty patent be extended and that DS and GSA pay the costs of the appeal.
On 24 April 1996, Kiefel J ordered that QG11 of 1996 be heard with QG29 of 1996. In the Victorian District Registry, Heerey J, on 29 April 1996, ordered that VG39 of 1996 and VG40 of 1996 be transferred to the Queensland District Registry and be heard with QG11 of 1996 and QG29 of 1996.
Stack and GST commenced proceeding QG21 of 1996 on 14 February 1996 against the State of Queensland (“Queensland”) and the Commissioner of Patents in respect of another Australian Petty Patent No 662284 (“the second petty patent”). The second petty patent, like the petty patent, concerned water meter assemblies. The proceedings sought, as against Queensland, the fixing of terms pursuant to s 165 of the Act for exploitation of the second petty patent. The proceedings sought orders against the Commissioner that the assignment of the second petty patent to GST be registered. After a hearing before Kiefel J the assignment was registered and the proceedings against the Commissioner were dismissed by consent.
On 6 December 1996, Kiefel J ordered that proceedings QG28 of 1994, QG11 of 1996, QG21 of 1996, QG29 of 1996, VG39 of 1996 and VG40 of 1996 be heard concurrently. Her Honour made other orders to progress the various proceedings, including orders that :
(a) the validity issues be tried and determined before the issue of infringement;
(b)Queensland, the Commissioner of Patents and the BCC be excused from participation in the hearing of the validity issues;
(c)the witness statements, affidavits and other evidence filed and served, or to be filed and served in any one of the concurrent proceedings, be taken as filed and served in any other of the concurrent proceedings;
(d)the evidence filed by DS may be relied upon by DSQ and GSA.
The trial of the action, on the issues of entitlement and validity, was set down on 22 August 1997 for a period of fifteen days, commencing 1 December 1997. In the event, it went for thirty-seven days. At the commencement of the trial DS, DSQ and GSA tendered into evidence witness statements of those witnesses they intended to call on the trial of the issues. Stack and GST also tendered into evidence witness statements and documents which they intended to rely upon on the trial of the issues. DS, DSQ and GSA, having the onus of proof on the validity issues, undertook the carriage of the proceedings. The witnesses called by DS, DSQ and GSA were, for the main part, all cross-examined, and many cross-examined by reference to the witness statements tendered by Stack and GST, including statements of expert witnesses, and by reference to documents, including documents obtained upon subpoena.
After twenty-eight days of hearing, DS, DSQ and GSA closed their case. Stack and GST sought that the Court entertain a submission that Stack and GST had no case to answer on the issues of entitlement and validity as particularised in the Particulars of Objection. I refused to entertain submissions of no case to answer and gave reasons for my refusal. Subsequent to my ruling, Stack and GST, by their solicitor, advised the Court that they did not intend to call evidence on the entitlement and validity issues and sought to withdraw the witness statements which had been tendered in their case at the commencement of the trial. That course was objected to by DS, DSQ and GSA. In particular, they had relied upon certain evidence contained in the witness statements and they had conducted and closed their case on the basis that this material was in evidence.
In the result, I refused leave to withdraw the witness statements, but struck out so much of those statements as was objected to by DS, DSQ and GSA on the basis that the maker of the statement was not produced for cross-examination on the statement. As a result, a number of exhibits were wholly or partly struck out, including exhibits which had been the subject of substantial questioning when put to the witnesses of DS, DSQ and GSA in cross-examination.
The failure of Stack and GST to go to evidence leaves much of the evidence led by DS, DSQ and GSA unanswered or unexplained. It also leaves the evidence in a confused and unsatisfactory state, as certain concessions or answers were given upon the assumption that experts’ opinions put to the witnesses, or factual assertions put to the witnesses, would be proved up in evidence as part of the case of Stack and GST. The result has been the unnecessarily difficult task of attempting to isolate and evaluate the admissible evidence on each of the myriad issues argued on the trial.
The issues for determination
The issues which arise for determination are :
1.Whether Stack or GST were entitled to the grant of the petty patent.
2.Whether the complete specification of the petty patent complied with the requirements of s 40(2) or s 40(3) of the Act.
3.The priority date of the claims of the petty patent.
4.Whether the alleged invention was a “manner of manufacture” within the meaning of s 6 of the Statute of Monopolies.
5.Whether the alleged invention was obvious when compared with the prior art base as it existed at the priority date of the claims.
6.Whether the alleged invention was novel when compared with the prior art base at the priority date of the claims.
Entitlement
On 20 January 1994, the petty patent was sealed in the name of Stack as the patentee. The petty patent disclosed the names of the actual inventors as Stack and Alan Joseph Grieves (“Grieves”). DS, DSQ and GSA allege in the Particulars of Objection that Stack was not the inventor of the invention claimed in any of the claims of the petty patent. Nor, it is alleged, was he entitled to have the invention or inventions assigned to him, nor was he a person who derived title to the invention from the inventor, nor was he a person entitled to have the invention assigned to him.
DS, DSQ and GSA allege, and I find, that Stack applied in his own name for the petty patent on 25 August 1993. On 10 November 1993 a Notice of Entitlement was filed which recited that Stack and Grieves were the inventors of the invention claimed. It is alleged that until at least after 30 August 1990, when the first provisional specification in respect of the application for a standard patent PK2036 was lodged, Stack and Grieves were employees and officers of Russell Plastics Pty Ltd (“Russell Plastics”). If the provisional specification disclosed the claimed invention, then DS, DSQ and GSA allege that it was invented by Stack and Grieves as officers and employees of Russell Plastics for the purpose of supplying water meter assemblies to the BCC under contract WS34/90/91.
In these circumstances it is alleged that entitlement to the patent lay in Russell Plastics and not Stack, and further, that Stack did not satisfy the statutory requirements for the grant of the patent.
A person may apply for a patent for an invention by filing, in accordance with the regulations, a patent request and such other documents as are prescribed in s 29(1) of the Act. A body of persons, whether incorporated or not, may apply under s 29(1): s 29(5). Also, two or more persons (within the meaning of s 29 of the Act) may make a joint patent application: s 31. The other documents required are prescribed by Regulation 3.1 of the Patents Regulations 1991 (Cth) which, so far as is presently relevant, provides :
“3.1 (1)For the purposes of subsection 29 (1) of the Act (‘application for patent’), an abstract, and a copy of the abstract are required to be filed with a patent request made in relation to a complete application.
(2)For the purposes of subsection 29 (1) of the Act, if a complete application is made, the following documents are required to be filed before acceptance:
(a)a notice by the applicant stating the entitlement of the nominated person to the grant of the patent; and
(b)if the applicant claims priority from another application - a notice by the applicant stating the entitlement of the nominated person to claim that priority; and ...”
The term “nominated person” is defined in the Dictionary, Schedule 1 to the Act. It means “the person identified in a patent request as the person to whom the patent is to be granted”.
The entitlement of a person to the grant of a patent is provided for in s 15 of the Act, which states :
“15. Who may be granted a patent?
(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); or
(d)is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
(2)A patent may be granted to a person whether or not he or she is an Australian citizen.”
A patent may be granted to two or more nominated persons jointly: s 63.
Section 39 of the Act allows for divisional applications and provides :
“39. Divisional applications
(1)Where a complete patent application is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a standard patent or a petty patent for an invention:
(a)disclosed in the specification filed in respect of the first-mentioned application; and
(b)where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal - falling within the scope of the claims of the accepted specification.
(2)A patentee of a petty patent may, in accordance with the regulations, make a further complete application for a petty patent or a standard patent in respect of an invention disclosed in the complete specification filed in respect of the application on which the first-mentioned petty patent was sealed.”
On 26 March 1991, Stack filed an application for a standard patent for an invention entitled “Water Meter Assemblies”. The application was accompanied by a provisional specification which was given the provisional number PK5286. The invention was described as “an improvement of our co-pending application no PK2036”.
On 30 August 1991 Stack and Grieves filed an International Application PCT/AU91/00404 for processing according to the Patent Co-Operation Treaty. Stack was identified as the applicant and inventor and was the applicant for all designated countries. Grieves was also identified as an applicant and inventor, but was only an applicant for the United States of America. The application claimed priority dates of 30 August 1990 based on the filing of application PK2036 and 26 March 1991 based on the filing of application PK5286. The International Application designated Australia for a National Patent and was in consequence allocated Australian Application Number 85236/91. The application was accompanied by a complete specification which contained twenty-four claims defining the invention.
On 25 August 1993, Stack filed a patent request under s 29 of the Act for a Petty Patent. The application numbered 44897/93 identified in the appropriate place, Stack as the applicant, and as the Nominated Person. The “names of the actual inventor” were given as Stack and Grieves. Under the heading “DIVISIONAL APPLICATION DETAILS”, the following appeared :
“Original Application Number: 85236/91
Person to whom made: George Stack”The application was accompanied by a complete specification which contained three numbered claims defining the invention.
On 10 November 1993 a Notice of Entitlement was filed for the purpose of Regulation 3.1(2)(a) of the Patents Regulations. The notice stated, so far as is relevant :
“• George Stack and Alan Grieves are the actual inventors.
• The person nominated is entitled to the grant of the patent.”DS, DSQ and GSA allege that the alleged invention was, throughout, the property of Russell Plastics and that it was entitled, if any person was entitled, to the grant of the petty patent. GST, they allege, never became entitled to the petty patent, either in fact or under the Act. Further, they submit that the inventions claimed in the three numbered claims of the petty patent were made by persons other than Grieves and Stack. It is alleged that the invention claimed in claims 1, 2 and 3 were made by one or more employees of Reliance Manufacturing Company (“RMC”) which was a trading division of GSA, or at a minimum, co-invented by them.
Stack and GST filed a written response to the grounds of objection. In paragraph 2 of that document they allege that Stack was entitled to the grant of the petty patent because :
(a) Stack and Grieves were the inventors;
(b) Stack was a person to whom Grieves had agreed to assign his interest in the invention;
Alternatively :
(c) Stack derived title to the invention from the inventors in that :(i)Stack applied for the petty patent with the knowledge and consent of Grieves, the other inventor;
(ii)the application was done with the common intention that once the patent was obtained in Stack’s name it would be assigned to GST;
(iii)it was at all material times the common intention of Stack and Grieves that the petty patent (and all patent rights obtained by Stack in water assemblies invented by Stack or Grieves or either of them) would be transferred to GST;
(iv)on 30 August 1990, the date of filing PK2036, GST was not available, so the application was made in the name of Stack with the knowledge and consent of Grieves, with the intention that any patents granted in consequence of that application would be assigned to a company to be incorporated;
(v)the divisional application upon which the petty patent was based was number 85236/91 filed 30 August 1991 which in turn was based on PK2036 filed 30 August 1990;
(vi)application 85236/91 was made in the name of Stack because of the terms of s 39(1) of the Act.
Further, Stack and GST submit that GST, having been registered as the patentee in the Register of Patents (“the Register”) kept in the Patents Office (s 186), is for the purpose of s 138(3)(a) the patentee entitled to the patent. Thus, they submit the petty patent cannot be revoked under s 138 on the ground that the patentee is not entitled to the patent: s 138(3)(a). This follows, they submit, from the definition of “patentee” in the Dictionary: Schedule 1 to the Act. In the Dictionary, “patentee” means “The person for the time being entered in the Register as the grantee or proprietor of a patent”. Whether or not Stack was entitled to the original grant of the petty patent they submit becomes irrelevant upon registration of GST as proprietor of the patent by assignment.
DS, DSQ and GSA, in response to this latter submission, submit that the entitlement of GST to the patent is no better than the entitlement of its predecessor in title. So that, if Stack was not entitled to the grant of the petty patent because of the operation of s 15 of the Act and that the patent was thereby invalid, GST is at best the holder of an invalid patent which is subject to revocation at the suit of DS, DSQ and GSA.
The Act in Chapter 2 deals separately with the rights given by or attaching to a patent (Part 1), ownership of a patent (part 2) and validity of a patent (Part 3). In the present case it is important that the matters be treated separately notwithstanding that at different times in the Act the treatment of ownership and validity may overlap with respect to some proceedings which touch on the enjoyment or exploitation of the patent.
Section 15 deals with the entitlement of a person to be granted a patent for an invention (as defined by the Act). It is the entitlement to own the patent for the invention. When a patent is granted by the Commissioner of Patents, particulars of the patent are entered in the Register: s 186. The grantee of the patent, upon being entered in the Register, may deal with the patent as the absolute owner of it: s 189.
The original grantee of a patent obtains the exclusive rights given by s 13 of the Act. Those rights are personal property and are capable of assignment and of devolution by law: s 13(2). The transfer of ownership of the patent by the original grantee and thereafter by successive assignees, is dealt with by Regulation 19.1 of the Patent Regulations. Section 187 of the Act as well as requiring particulars of patents in force to be registered in the Register also makes such a requirement in respect of prescribed particulars. Regulation 19.1, so far as presently relevant, provides :
“19.1 (1) For the purposes of section 187 of the Act (‘registration of
particulars of patents etc’), the following particulars are prescribed, that
is, particulars of:(a)an entitlement as mortgagee, licensee or otherwise to an interest in a patent;
(b)a transfer of an entitlement to a patent or licence, or to a share in a patent or licence; ....
(2) A request for registration of particulars referred to in paragraph (1)(a) or (b) must be in the approved form and have with it proof to the reasonable satisfaction of the Commissioner of the entitlement of the person making the request.”
The entitlement of the person making the request referred to in Regulation 19.1(2) is the entitlement to be registered in respect of the particular interest specified in Regulation 19.1(1)(a) or (b). Thus, in the case of an assignment of the patent it is registration of a transfer of the proprietorship of the patent the subject of the assignment. The relevant entitlement is as to ownership of the patent: Stack v The State of Queensland (1996) 68 FCR 247 at 251 - 252. Until the particulars of the transfer of ownership are entered in the Register, a document in respect of which particulars have not been entered in the Register is not admissible in any proceedings as proof of the title to a patent, or to an interest in a patent, unless the court or tribunal in which proceedings are brought otherwise directs, or, the proceedings are of the type referred to in s 196(b) of the Act. Further, the rights of a patentee under the Act are those of a patentee as defined. In Schedule 1 to the Act, “patentee” is defined and means “The person for the time being entered in the Register as the grantee or proprietor of a patent.”
The underlying policy of the Act is to deal with ownership of a patent by registration of the original grant and by registration of any subsequent dealings in or with the patent in the Register. The scheme is to treat the registered proprietor as the owner of the patent subject to any interests in it created by the owner and registered in the Register and thereby to ensure some certainty and finality as regards title to patents: Stack at 251-2 citing with approval Martin and the Miles Martin Pen Coy Ld v Scrib Ld (1950) 67 RPC 127 at 133. Registration in the Register, while prima facie evidence of any particulars registered in it (s 195) and prima facie evidence of entitlement to ownership of the patent says nothing as to the validity of the patent.
Disputes as to ownership of patents and interests held in or over them are to be resolved primarily, but not exclusively, in proceedings for rectification of the Register between the rival claimants to the property interests: s 192. Such proceedings assume the continued existence of the patent, with patent rights being held by those properly entered in the Register.
In the instant case, the registration of GST as the assignee of the petty patent in the Register on 23 October 1995 is evidence of nothing more than that. The entry is prima facie evidence that GST became the owner of the patent by assignment from the registered grantee, Stack. Neither the registration, nor the subsequent decisions in Stack, and Stack v Brisbane City Council (No 2) (1996) 67 FCR 510, resolve the issues of validity or revocation in favour of GST.
The requirements for a valid patent are contained in Part 3 of Chapter 2. The granting of a patent does not guarantee that a patent is valid. Validity issues are concerned with whether the patent could properly have been granted. The Part makes provision for the giving of notice by a person to the Commissioner of matters affecting validity of a proposed standard patent (s 27) or a petty patent (s 28).
Section 28 of the Act provides :
“28 Notice of matters affecting validity of petty patents
(1) A person may, within the prescribed period after the grant of a petty patent, notify the Commissioner, in accordance with the regulations, that the person asserts, for reasons stated in the notice, that the petty patent is invalid on one or more of the following grounds:
(a)that the patentee was not entitled to be granted the petty patent;
(b)that the invention is not a patentable invention because it does not comply with paragraph 18 (1) (a) or (b);
(c)that the specification does not comply with subsection 40 (2) or (3).
(2) The Commissioner must inform the patentee in writing of any matter of which the Commissioner is notified and send the patentee a copy of any document accompanying the notice.
(3) If the Commissioner becomes aware, otherwise than by a notification under subsection (1), of any matter that may affect the validity of a petty patent on one or more of the grounds mentioned in that subsection, the Commissioner must inform the patentee in writing of the matter.
(4) A notice given to the Commissioner and any document accompanying it are open to public inspection.”
The prescribed period, for the purposes of s 28(1), is eleven months from the date of which the petty patent was granted: Regulation 2.6.
Section 28 is concerned with the grant of the petty patent. In the context of s 28(1), the patentee is the original grantee and the provision is concerned with the eligibility of the original grantee to become the owner of the petty patent. In this context, the definition of “patentee” in the Dictionary in Schedule 1 to the Act is not applicable, as a registered assignee from the grantee after grant would never satisfy s 28(1)(a) because it could not satisfy the description in s 15(1). This follows because s 15(1) is only concerned with the eligibility to receive a grant and to become the owner of the patent upon the granting of it by the Commissioner.
In the present case, for the purposes of s 28(1)(a), Stack is the relevant patentee whose entitlement to be granted the petty patent is in issue.
The giving of the notice under s 28 entitles the person giving the notice to be heard on any application for extension of the term of the petty patent: s 69(3). Such an application must be made within eleven months of the date of sealing the patent: Regulation 6.5(1)(b). On the hearing of the application for an extension of the term of a petty patent the Commissioner must decide the application in accordance with the Patent Regulations: s 69(2). Regulation 6.6 relevantly provides :
“6.6(1) For the purposes of subsection 69 (2) of the Act (‘extension of term of petty patent’), in deciding an application for an extension of the term of a petty patent, the Commissioner must consider:
(a)any notice under subsection 28 (1) of the Act (‘notice of matters affecting validity of petty patents’) in relation to the petty patent; and
(b)any matter of which the Commissioner has informed the patentee under subsection 28 (3) of the Act.
(2) If the Commissioner is satisfied that a ground mentioned in subsection 28 (1) of the Act is made out, the Commissioner may refuse to grant an extension of the term of the petty patent.
(3) If the Commissioner is satisfied that no ground mentioned in subsection 28 (1) of the Act is made out, the Commissioner must grant the extension of the term of the petty patent.”
The circumstance specified in s 28(1)(a) is a ground of invalidity which, if made out, may lead to the refusal of the application for extension.
Therefore in the proceedings before the Deputy Commissioner for an extension of the petty patent, the entitlement of Stack to be granted the petty patent at the time of original grant was a ground of invalidity, and, was in issue.
The consequence of invalidity in terms of s 28 is that the extension of the petty patent beyond its original term of twelve months may not be granted.
Section 138 of the Act, in the circumstances specified in sub-clauses 3(a) to 3(f) inclusive, provides for revocation of letters patent which have been granted under the Act in respect of the invention claimed in the patent. Revocation involves cancellation of the letters patent (the document conferring the rights given by s 13 of the Act) and to annulment of the rights given by the letters patent: In re Rainsfords Patent; Ex parte Fielding & Co Ltd which is reported as a note in (1936) 57 CLR at 422. Revocation under s 138 involves the annulment of patent rights where those rights ought not to have been granted for one of the reasons contained in subsections 3(a), (b), (d), (e) or (f). The section also provides for annulment where the patent rights were granted subject to a condition contained in the patent and the condition has not been fulfilled or has been subsequently breached: s 138(3)(c).
When s 138(3)(a) speaks of the “patentee” it is referring to the then registered patentee. The entitlement of the patentee to the patent depends upon whether or not the patentee is the original grantee or a successor in title from the original grantee. In the case of the original grantee remaining the registered holder at the time of the revocation proceedings, the entitlement of the grantee will depend upon the eligibility of the grantee under s 15 of the Act to receive a grant of letters patent in respect of the claimed invention.
The position of a later registered patentee is different, although the question of entitlement to the patent remains to be determined by reference to the eligibility of the original grantee under s 15 of the Act. This is because any subsequent holder of the title to the patent stands in the shoes of the person from whom title was acquired by assignment or by devolution by law. No holder in the chain of title obtains a better entitlement to the patent than the immediate predecessor in the chain and ultimately of the original grantee. An original grantee who was not entitled to a grant under s 15 of the Act cannot make good an improper grant by assigning the patent to another person. Therefore although assignment or devolution by law of the patent prior to revocation carries an entitlement to registration as the proprietor of the patent, registration does not cure a defect in the title which renders it liable to revocation because it should never have been granted originally.
In the present case the issue in the revocation proceedings under s 138 is whether GST is entitled to the petty patent. The evidence establishes, and I find, that GST became patentee by registered assignment from Stack. The evidence establishes, and I find, that Stack was the original grantee of the patent. The question then is whether Stack was entitled to the grant of the patent by virtue of being an eligible person under s 15 of the Act?
From the above it follows that the question of entitlement for the purpose of the notice under s 28 of the Act, for the extension proceedings under s 69, and the revocation proceedings under s 138 ultimately involves the question of the eligibility of Stack under s 15 to the grant of the petty patent.
The evidence tendered on behalf of GST and Stack as to Stack’s entitlement to the original grant of the petty patent consists of the statutory documents, paragraphs 1 to 5 inclusive of a witness statement of Stack dated 8 September 1997 (Exhibit 25), paragraphs 5 to 8 and 24 to 30 inclusive of a witness statement of Grieves dated 11 September 1997 (Exhibit 30), documents contained in Exhibit 24 (other than documents 8 and 9), together with documents relating to the dealings between Russell Plastics and RMC to negative the contention that certain employees of RMC were co-inventors of the invention claimed in the petty patent, and finally, drawings of GST passing to RMC to establish that the original invention as contained in the application for standard patent PK2036 was further developed by GST and not RMC.
The application for the second petty patent was filed on 17 February 1994. The request was filed by Pizzey & Company, Patent Attorneys on behalf of the applicant Stack. The nominated person was specified as Stack. The actual inventors were stated as Stack and Grieves. The application therefore was for the grant of a petty patent for an invention entitled “WATER METER ASSEMBLIES” the co-inventors of which were Stack and Grieves.
The notice of entitlement filed on 9 June 1995 by the patent attorney on behalf of Stack again states that the actual inventors were Stack and Grieves. It states that “[t]he person nominated [Stack] is entitled to the grant of the patent”.
On 22 June 1995 the patent attorney filed another notice of entitlement. The notice stated that the “persons nominated for the grant of the patent are the applicants of the original application.” The original application as disclosed in the request for the second petty patent, was number 85236/91 the application for a standard patent. The applicant in 85236/91 was Stack alone. Further, Grieves was not nominated for the grant of the second petty patent in the request filed 17 February 1994. The notice of entitlement for the second petty patent filed 22 June 1995 was incorrect.
On 28 June 1995 the patent attorney, on behalf of Stack, filed a further notice of entitlement. It stated :
“1.George Stack and Alan Grieves are the actual inventors.
2.The person nominated for the grant of the patent is the applicant of the original application.
3.The person nominated is entitled to the grant of the patent.”
The Act does not permit one of two or more co-inventors to obtain a patent to the invention to the exclusion of the other co-inventors. Co-invention gives a right under s 15(1)(a) as co-inventor to the joint grant of letters patent. Disputes as to entitlement and as to rights of co-inventors inter se are dealt with by other sections of the Act eg s 32, and where a patent issues jointly, s 16 and s 17.
Although the basis of Stack’s entitlement as disclosed in the notice is far from clear, I do not read it as a claim to entitlement as the inventor under s 15(1). Rather, I construe the final notice as claiming an entitlement to the grant which supersedes the rights of the original co-inventors or an entitlement to the rights of Grieves as co-inventor which Stack holds in addition to his own rights as original co-inventor. That is the way that Stack and GST argued the entitlement issue before the Deputy Commissioner on the extension hearing and that is the substance of paragraphs 4 and 5 of Stack’s statement.
Stack, in his statement, said :
“4.On 30 August 1990 a provisional patent application was filed for an invention entitled ‘Water Meter Assemblies’. Alan Grieves and I were the inventors of the inventions contained therein.
5.It was our common intention that rights in respect of the inventions and other intellectual property rights would be held by a Company in which we would each hold an interest. This was the subject of discussions and agreements between us in August and September 1990. At that time we did not have a suitable company and by agreement, the patent applications were made in my name with the intention that when a Company was established, and a patent issued those patents would be transferred to the Company. The applications for patents were made in my name with the knowledge and consent of Alan Grieves.”
Stack did not give evidence and was not cross-examined on these statements. The statements were relied upon by DS, DSQ and GSA as admissions that :
(a)Stack was a co-inventor and not the sole inventor of the invention claimed in the provisional patent application PK2036 filed on 30 August 1990;
(b)Grieves did not give up or assign his interest in the invention claimed in PK2036 to Stack or his entitlement to a grant of patent as co-inventor;
(c)the authority of Stack, if any, from Grieves was to make the application filed on 30 August 1990 because Grieves and Stack did not then hold interests in a company which could apply for the grant of the patent the subject of PK2036;
(d)the inventions and other intellectual property contained in the application filed on 30 August 1990 would be held by a company in which Grieves and Stack held interests when such a company was obtained.
Grieves in his statement says that he joined the “HM Russell Group” in February 1990 and was a director of Russell Plastics until 16 December 1992. He states that from February 1990 “George Stack and I continued the development of a non return valve and a water meter manifold which was in plastic and contained a ball isolating valve and a single non return valve.” Grieves, in paragraphs 24 to 30 of his statement, states his and Stack’s involvement in the development work is shown in Figure 1 to the application PK2036 and in the delivery to the BCC on 27 July 1990 of a prototype in gun metal of the water meter assembly shown in Figure 1.
Grieves was not called as a witness and was not cross-examined on so much of his statement as remained in evidence. There was, in the result, no evidence that Grieves assigned his interest to the invention in PK2036 to Stack. The only evidence that Grieves knew or consented to any dealings by Stack in respect of the application PK2036 or in respect of the petty patent filed on 25 August 1993 comes from the statement of Stack which is untested by cross-examination.
It was common ground on the pleadings that, at all material times up to and including the filing of application PK2036 on 30 August 1990, Stack and Grieves were employees of Russell Plastics. I am satisfied that at the time Grieves and Stack made the invention claimed in PK2036, they were performing their duties as employees of Russell Plastics and the invention made by them was made in their capacity as such employees. The whole of the evidence points to the invention claimed in PK2036 resulting from work done by Stack and Grieves for the purpose of Russell Plastics tendering for the supply of water meter assemblies to the BCC which it did consequent upon the release of tender documents WS34/90/91 by the BCC on 8 August 1990.
GST was acquired as a shelf company in September 1990. It was not a tenderer to the BCC for the supply of water meters under BCC contract WS34/90/91. Grieves and Stack were appointed directors on 6 September 1990. Grieves resigned as a director on 16 December 1992. The statutory records tendered by Stack and GST show other persons holding directorships at different times. They also show that the share allocation in September 1990 was 45,000 ordinary shares to a company HM Russell & Co Pty Limited, 36,000 ordinary shares to Stack and 9,000 shares to Grieves. Although Stack and GST admit that Stack and Grieves were employees of GST, there is no evidence as to what duties were performed by them for GST after September 1990 and whether Grieves performed any duties as an employee of GST after his resignation as a director on 16 December 1992.
The case of Stack and GST is that Stack and Grieves were the co-inventors of the invention claimed in the petty patent. They are shown in the Register in respect of the petty patent as the actual inventors. Such an entry is prima facie evidence of that fact: s 195(1). They submit that there is no other evidence to displace this evidence.
Even if this submission is correct, it does not assist Stack or GST.
As the co-inventors, Stack and Grieves were entitled under s 15(1)(a) to the grant of a patent jointly. Stack, as the nominated person, was not entitled to the grant of a patent to the exclusion of Grieves simply on the ground that he was a co-inventor.
On 25 August 1993 Stack was not entitled, on the evidence, to apply for the petty patent in his own name to the exclusion of Grieves. There is no evidence as to what the relationship was between Stack and Grieves in August 1993. Nor is there evidence which would enable a finding to be made that GST was, at the time of its acquisition or in January 1994, the corporate vehicle that was to be the assignee of any patent arising from PK2036. If in fact GST was the contemplated company, then such authority, if any, as Stack had, was limited to making an application in his name wherein GST was nominated as the eligible person. The entitlement of GST would in that case have had to be made out under s 15(1)(b) of the Act or s 15(1)(c).
There is a further difficulty for Stack and GST. It lies in the fact that Stack applied for the petty patent as a divisional application under s 39 of the Act. It was also the basis of entitlement set out in paragraph 2 of the notice of entitlement filed on 28 June 1995. Section 38 and s 39 contemplate that the entitlement to the petty patent will be the same as the entitlement claimed in respect of the provisional application: s 38(1) and s 39(3). This is subject to any intermediate dealing with the invention or interests in it or in respect of the provisional application as provided for in s 113: see s 38(2) and s 113.
The prima facie evidence of entitlement of Stack and Grieves which flows from the entry in the Register will be displaced if the entitlement to the invention claimed in PK2036 is with Russell Plastics, their then employer.
So far as the evidence goes, Stack and Grieves were employed by Russell Plastics to develop the invention claimed in PK2036, which they did. The evidence of Grieves is that the prototype water meter assembly delivered to the BCC in July 1990 was the embodiment of Figure 1 to PK2036. The invention claimed in PK2036 was, I find, made by Stack and Grieves in the ordinary course of their duties as employees of Russell Plastics. Both were required to act in the interest of Russell Plastics while so employed and were not to do anything inconsistent with the duty of good faith which they owed as employees of Russell Plastics. The circumstances of their employment with Russell Plastics, and in the case of Stack, his position as a director of that company, were inconsistent with their retaining for their personal benefit the invention claimed in PK2036: Worthington Pumping Engine Company v Moore (1902) 20 RPC 41 at 46; Fine Industrial Commodities Limited v Powling (1954) 71 RPC 253 at 257. Further, the right of Russell Plastics to the invention, in the circumstances of the employment and the making of the invention for the purposes of the employer’s business, was an incident of the employment of Stack and Grieves by the company: Sterling Engineering Co Ld v Patchet [1955] AC 534 at 543-4; 547, 548, 549. There is no evidence of any special contract or term of the employment which would have entitled Stack and Grieves to retain the invention to the exclusion of their employer.
It follows, in my view, that Stack was not entitled under s 15(1) of the Act to the grant of a patent for the invention claimed in PK2036. The consequence is that he was not entitled, nor were he and Grieves jointly entitled, to make any divisional application and to have granted a patent, including the petty patent, on the basis of an entitlement to Stack or Stack and Grieves under s 15(1) of the Act.
As the entitlement of GST to the petty patent is sourced solely in the assignment from Stack which entitled it to registration in the Register of patents, it follows that GST as the patentee is not entitled to the patent within the meaning of s 138(3)(a) of the Act. Nor was Stack, as patentee, entitled to be granted the petty patent within the meaning of s 28(1) of the Act.
It was submitted by Stack and GST that it was not open to DS, DSQ and GSA to make out an entitlement in Russell Plastics, when Russell Plastics did not itself challenge the validity of Stack’s entitlement to the petty patent, and through him GST’s entitlement to it. It was further submitted that, in the absence of a “just claim” by another, including DS, DSQ or GSA, of which it was submitted there was none, it was not open to DS, DSQ or GSA to challenge the entitlement of Stack or GST to the petty patent, or to the original grant of it. In my view the submissions are misconceived.
The policy of the Act is to ensure that the monopoly rights given by s 13 are only available to persons who are properly entitled to them. Thus, where the patentee seeks to exclude others from the patent area or take action for infringement of the claims of the patent, the Act allows persons interested in challenging the entitlement of the patentee to the patent to do so by a notice under s 28 or by revocation proceedings under s 138. It is sufficient that, for the purposes of s 28, 69 or 138 the person alleging no entitlement make out such a case on the balance of probabilities. This it may do by proving up to the requisite standard the existence of the entitlement in a person who, for whatever reasons, does not wish to come forward and assert that entitlement in proceedings against the patentee.
Finally, I turn to the question of contribution of others to the invention claimed in the petty patent.
If the employees of RMC made any inventive contribution to the inventions claimed in the petty patent, the entitlement to claim a patent, whether alone or jointly, was in either Russell Plastics, the employees personally, or RMC. It is unnecessary to decide between these possibilities; it is sufficient to find that the entitlement was not in Stack.
In my view the work of the employees of RMC made no inventive contribution to the invention claimed in Claim 1 of the petty patent.
Russell Plastics, I find, contracted with RMC to manufacture water meter assemblies to the design submitted by Russell Plastics to the BCC with its successful tender for contract WS34/90/91. Russell Plastics was awarded contract WS34/90/91 and was notified by letter dated 29 November 1990 to that effect. Stack thereafter sought prices from DS and RMC to manufacture and supply the water meter assemblies for the contract. For this purpose Stack, on behalf of Russell Plastics, supplied to DS and to RMC a set of drawings. So far as is presently relevant, the drawings were supplied to RMC on or before 12 December 1990. Stack obtained written undertakings that RMC would not infringe Patent No PK2036. The undertaking and drawings are Exhibit 146 in the proceedings. They disclose the use of a backflow protection assembly being two valves tandemly encased in a single sleeve which slides into the flow path in the manifold to be supported co-axially with the access port through which it has been slid. The tops of the valves are conical in shape. The valves were designed to be used in a water meter assembly which included an Andrae Leonberg water meter. On 13 December 1990 RMC quoted in writing a price for the work of manufacturing and assembling the item shown in the drawings.
In the result Russell Plastics could not obtain Andrae Leonberg measuring elements. It sought and obtained from the BCC a variation to the contract to allow for the supply of assemblies with a Zenner meter fitted.
On 29 January 1991 Russell Plastics placed a written order with RMC for 60,000 gun metal manifolds to be delivered in accordance with a specified schedule. The price was “as per the RMC quotation of 13.12.90”. The work was to include assembly and testing and delivery to the BCC or nominated contractor.
The change to a Zenner meter required that an adaptor be used. Russell Plastics supplied to RMC a drawing for an adaptor. It was for a part number ZN2AP and in a revised form (as to the material from which it was to be constructed) it is Exhibit 137 in the proceedings. In order to achieve the test results required by the BCC specification, workshop variations were made to the original adaptor. The results of the workshop variations were carried over into a drawing of RMC WN95 dated 23 May 1991, a copy of which with highlighting of the reworking is Exhibit 122. Similarly, work was performed with respect to the sleeve encasing the non-return valves and the heads of the valves themselves to overcome head loss which was beyond the BCC requirement. The work of RMC was done pursuant to its contract with Russell Plastics to construct a product which complied with the BCC requirements and to do the necessary testing to confirm that it did so. The evidence establishes that there is no scientific method to calculate head loss and the effect of turbulence on it in a particular water meter assembly. Accordingly, it is a matter of trial and error and continual testing to modify the parts that may effect the degree of head loss until the required pressure is achieved. That is what the employees of RMC did and while it went to producing a working water meter assembly which satisfied the requirements of the BCC, it did not touch or contribute to the invention claimed in Claim 1 of the petty patent.
Claims 2 and 3 are dependent claims and relate to water meter assemblies with non-return valves having particular defined characteristics. To the extent that the shape of the non-return valve in claim 3 was the result of the work of Mr Cornish, which I find that it was, the flattening of the head was not an inventive step and Mr Cornish did not claim that it was. He described his work as normal trial and error to eliminate the head loss problem.
Neither RMC nor its named employees are co-inventors of the invention claimed in the petty patent.
Section 40 Invalidity
Section 40 of the Act provides :
“40 Specifications
(1) A provisional specification must describe the invention.
(2) A complete specification must:
(a)describe the invention fully, including the best method known to the applicant of performing the invention; and
(b)where it relates to an application for a standard patent - end with a claim or claims defining the invention; and
(c)where it relates to an application for a petty patent - end with a single claim, or a single independent claim and not more than 2 dependent claims, defining the invention.
(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
(4) The claim or claims must relate to one invention only.”
DS, DSQ and GSA submit that the claims of the petty patent are not fairly based on the complete specification contrary to the requirements of s 40(3). They also submit the claims lack clarity, in that the monopoly claimed is uncertain and does not define the invention claimed contrary to the requirement of s 40(3). Finally, they submit that the complete specification does not fully describe the best method known to the applicant for the petty patent for performing the invention contrary to the provision of s 40(2)(a) of the Act.
I turn first to the complete specification to determine what exactly is the invention which it describes, and for which a monopoly is claimed: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 609.
The specification begins with a reference to the subject matter to which the invention relates. It says :
“This invention relates to water meter assemblies.
This invention is particularly adapted to water meter assemblies for connecting water services to mains supplies, however the present invention is not limited to such application and can be utilized in other applications as required.”
The specification goes on to describe the disadvantages of “traditional water meter assemblies” as follows :
“Water meter assemblies are traditionally installed below the ground in covered housings in order to record usage of mains water through branch lines supplied by the mains. Because such meter assemblies are often located at or adjacent property boundaries, such meter assemblies must be extremely reliable in use and require only infrequent servicing. Traditionally water meter assemblies include separate components for performing the desired functions required by local authorities for protecting the water mains from contamination due to back flow through branch lines. Typically the separate components include a stop cock at the upstream end of the meter assembly such that the branch line may be isolated from the mains, a non-return valve means downstream from the stop cock and a measuring element for monitoring flow through the branch line.
While such assemblies operate efficiently they are often cumbersome, difficult to service and expensive to install. For example it may be necessary to freeze the water in the branch line upstream of the stop cock in order that the separate components of the assembly may be serviced. Of course this is an expensive procedure.”
The object of the invention is “to alleviate at least one of the abovementioned disadvantages and to provide water meter assemblies which will be reliable and efficient in use.”
The specification next contains a consistory clause in the following terms :
“With the foregoing in view, this invention in one aspect resides broadly in a water meter assembly of the type including a unitary manifold forming a flow passage having an inlet, an outlet and two upwardly opening access ports intermediate said inlet and outlet and comprising a stop valve access port adjacent said inlet and a threaded meter access port adjacent said outlet, a removable flow-through measuring element assembly threadedly engaged in said meter access port, a manually operable on/off stop valve assembly engaged in said stop valve access port for closing the flow passage upstream of the access port and a removable back-flow prevention assembly whereby water may flow through the water meter assembly only from the inlet through the measuring element assembly and thence through the back-flow prevention assembly to the outlet, characterised in that :-
said manually operable on/off valve assembly is a stop valve which co-operates with a valve seat formed in said manifold upstream of said threaded meter access port;
said removable back-flow prevention assembly includes a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein;
said sleeve-like housing is sealably and slidably supported in a cylindrical portion of the flow passage disposed substantially co-axially with said threaded access port and downstream thereof whereby water must flow through said sleeve-like housing to said outlet;
said sleeve-like housing has stop means limiting its movement into said cylindrical portion and an upper end which forms an annular land against which said measuring element assembly sealably engages so as to restrict water flow from said measuring element assembly to flow into said sleeve-like housing, and
said removable back-flow prevention assembly is retained in its operative position in said cylindrical portion of the flow passage only by said removable flow-through measuring element assembly whereby said removable back-flow prevention assembly may be removed from said manifold through said threaded meter access port after unscrewing said removable flow-through measuring element assembly from said threaded meter access port.”
The next patent is the Evans patent GB2210465. This patent was held by the Deputy Commissioner of Patents not to deprive the claims of the petty patent of novelty because it differed by having a single non-return valve, which was retained in place by a threaded collar separate from the measuring element. Mr Lancaster and Mr Manthey agreed with that description also. Patent GB2210465 does not contain as one of its integers a removable backflow prevention assembly as described in the petty patent together with the defining characteristics claimed in it. Nor does the Evans patent disclose such a removable backflow prevention assembly with such defining characteristics. Accordingly, the invention claimed in GB2210465 would not infringe the claims of the petty patent upon the application of the reverse infringement test.
The next patent is the Hudson patent EP061908. The Deputy Commissioner described the Hudson patent as disclosing a water meter with a non-return valve. The valve he described as being retained by a member which was held in place by a number of screws. He observed that a measuring element was explicitly an optional feature of the device. The non-return valve assembly was not in his view retained by the measuring element only. Mr Lancaster and Mr Manthey also agreed with this description. As I have stated earlier in these reasons, the problem which this patent seeks to address is different to those sought to be overcome by the petty patent. It is not an integer of the invention claimed in patent EP061908 that there be a removable backflow prevention assembly as described in the petty patent together with the defining characteristics claimed in it. Nor does the patent disclose such a removable backflow prevention assembly with such defining characteristics. The invention claimed in EP061908 does not therefore infringe the claims of the petty patent.
The next patent relied upon by DS, DSQ and GSA is the Daghe patent US4614113. This patent, on the evidence and as is evident from Figure 1, while disclosing the use of a removable backflow prevention valve, does not disclose a unitary manifold having the defining characteristics of the unitary manifold of the petty patent; a water meter box does not satisfy such an integer. Nor does the Daghe patent have as integers a backflow prevention assembly as described in the petty patent including the defining characteristics. In particular, the backflow prevention assembly is not supported in the flow passage disposed substantially co-axially with a threaded access port and is not held in its operative position by the removable flow through measuring assembly only. Nor are such features disclosed in the patent. Accordingly, it would not infringe the claims of the petty patent.
The next patent is the Coughlin patent US3894432. This patent was described in a witness statement of Mr Arthur Chaseling. So much of the witness statement as dealt with this patent was put to Mr Lancaster for comment. Mr Chaseling made the following observations :
“12 Coughlin drawings show two flow control plugs containing an inlet strainer on the inlet side of a first vertical shell, in the middle a housing for a meter in a second vertical shell, and on the outlet side two check valves in a third vertical shell.
12.1 The three shells are shown connected together along vertical joints.
12.2 The control plugs in the first shell channel the water to direct flow through the meter to the outlet, to backflushing the inner strainer, or draining the unit to prevent freezing.
12.3 The manifold has seven openings.
12.4 One type of a meter 21 from commercial sources referenced at page 2, lines 43, to 46, line 53 to 54 is contained in the central shell.
12.5 The valve plug (75) is not removable from the top of the assembly. It must be removed by first removing cap (70) which is a cap covering the lower opening of the first shell.
12.6 The shut-off plug check valve 25 is retained by ring 106 ref. Page 4, lines 31 to 32, lines 34 to 35.
12.7 The meter 21 is housed separately in the centre shell.
12.8 Two check valves 110, 111 of different diameters are housed in valve plug 105 and retained by plug 107, referenced at page 4, line 37, lines 44 to 45, lines 49 to 50, line 60; Fig 1.
12.9 The drawings of Coughlin do not show:
‘A removable back-flow prevention assembly’ including ‘a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein’, or
‘A threaded meter access port’
‘Complementary frusto-conical surfaces’
as described and claimed in Patent 645740 (Annexure 8).”
Mr Lancaster said with respect to these observations :
“THE WITNESS: I've read section 12.
MR ABAZA All right. And you have had a look at the Coughlin specification? --- Yes, I have.
And worked your way through it. Is there anything with which you wish to disagree as recorded in paragraph 12, or wish to add to the matter relative to Mr Coughlin? --- Some of the points at 12.9 there is removable backflow prevention assemblies, but not necessarily contained in a cylindrical sleeve like housing. They are tandemly arranged, and I think there is a threaded meter access port. Apart from that I don't think I want to contest anything else.
So that to the extent that paragraph 12 has subparagraphs 12.1 through to 12.8 there is nothing there that you would wish to challenge? --- That seems to - seems to described it, without reading the whole document. It seems to describe the diagram.”
Mr Flynn was of the opinion that the invention disclosed in the Coughlin patent was essentially different to the petty patent. He also specifically agreed with paragraphs 12, 12.1, 12.3, 12.4, 12.5, 12.6, 12.7, 12.8 and 12.9 of Mr Chaseling’s statement. Mr Kleins declined to make any comment on the Coughlin patent as he “wouldn’t be confident making comment” due to his unfamiliarity with it. Nothing was said by any other witness to cast doubt on the conclusion in paragraph 12.9. Although the Chaseling statement was ultimately struck out in circumstances referred to earlier in these reasons, it was adopted by experts called by DS, DSQ and GSA as a correct statement and there was no contrary evidence which I accept.
It follows that the Coughlin patent does not have as integers of the invention it claims those integers described in paragraph 12.9 and does not disclose such features. It would not infringe the claims of the petty patent.
Mr Lancaster, whose evidence on this point I accept, was asked to review the patents in the context of the suggestion that the patents taught away from the integer of retention of a non-return valve by the measuring unit assembly item 67 in the petty patent only. He gave the following evidence :
“Can I direct it in this way. I think you agreed, did you not, Mr Lancaster, that a measuring element assembly is something understood from the patent as the unit 67, which has been separately constructed and calibrated and is available to be installed in the manifold as part of a water meter assembly? --- In the terms of this document TAL1, I think that is correct.
Right. Now this difficult question which I am asking you now in a very broad way, perhaps too broad. If we want to take them individually, Glynwed, perhaps? --- In the case of Glynwed, there is a separate component that appears to be holding the check valve.
And the Evans was the one with the - oh, it has a number of things, but I do not wish, by my short questions, to - - -? --- Yes, Evans is a little bit difficult to follow. There does appear to be another component there.
And Mr Hudson, which is perhaps the easiest? --- Yes, in the case of Hudson, there is a separate component that holds the check valve in place.
And Dargie also pretty clear that we have that sequence of bolts? --- Yes.
You will recall, for example, page 3 line 19? --- Yes, - - -
Dual check valves in the passage of the cartridge insert member? --- Yes, Dargie is a different sort of arrangement.
I have picked up some references. At line 33, the valve is removed axially that is at page 3 line 33? --- Yes.
And the valves are in an elongated extension member 58, which is referred to on page 5 line 27? --- Yes.
Bolted on by bolts, 86, which is referred to on page 6 at line 19? --- Yes.
And there is some nuts referred to, item 88? --- Yes.
With slots, 104? --- Yes.
And lugs, 102? --- Yes.
And indeed, further nuts, 106? --- Yes.
And an alternate arrangement is shown at page 6 line 38, where the bolt 86 is inserted inside the meter box? --- Yes.
So that - remember we were worried about whether we would pull the valve toward the meter or the other way; there is an alternate arrangement there? --- Yes.
Now, again, that is a specification which appears to teach away from the retention of the non-return valves by the measuring element assembly? --- Well, they don't - they don't show that. And the Coughlin - I cannot put a good copy of Coughlin in front of you, but you will remember it from exhibit 35, which is to your right - left, I am sorry - that was the one with the - virtually three cavities and the non-return valve cavity was quite separate from the other two? --- That is correct.”
In my judgment none of the patents cited in paragraph 2A(a) of the objections deprives the claims of novelty.
I turn to the BCC tender WS34/90/91 and to drawing WM8.
My earlier remarks with respect to WM8 should be borne in mind without the need to repeat them. There is however some necessary overlap in the treatment of the tender specification and the drawing under this ground of objection.
The evidence given as to the disclosures in the specification and drawing has to be treated with extreme caution. I have formed the clear impression that many of the witnesses with the integers of the petty patent before them are looking at the specification and the drawing with the purpose of seeing whether they can find in the documents the integers of the claims of the petty patent. Further, I reject the evidence of Phillips and Bellingham as to what they sought to achieve or represent by the wording of the specification or by the depiction in the diagrammatic drawing WM8.
The decision of the Deputy Commissioner of Patents (Exhibit 23) included the following analysis of what was shown by the drawing WM8 in the context of the requirements of the tender specification. The Deputy Commissioner wrote :
“Drawing WM8 of the tender documents shows a water meter with two non-return valves. The valves are not in a common housing. The depicted dimensions of the measuring element and its supporting ‘meter transition piece’ are such that the measuring element could not engage the non-return valves. The drawing shows no means of retaining the non-return valves in position, other than an abutment at the bottom end, and the tender clearly envisages the particular arrangement for retention will be specified by the tenderer.”
Mr Lancaster agreed with this analysis. Mr Hubbard was also of the opinion that WM8, in diagrammatic form, showed two mushroom-shaped valves each in a separate container. He continued :
“And the top mushroom-shaped valve seems to be retained by a member which is embedded into the side of the manifold because it extends beyond the edge of the container; would you agree with that? --- It does seem to go beyond, yes.
And that the references that one finds to the options which might be available in respect of such backflow prevention is in clause 27 of the contract? --- 27 - yes, I - - -
That is to the best of your recollection? --- Yes - yes, I do remember that, yes.”
Notwithstanding his original contentions as to what was depicted in WM8, Mr Bellingham from the BCC proffered the opinion that the drawing could be read as showing either one or two cylinders housing the non-return valves and that it was not clear which was the case.
As to fixing the non-return valves, Mr Bellingham said :
“And the method of fixing the non-return valve or valves was not intended to be shown by that drawing? --- That's correct.
And that method of fixing was an option which was left open to tenderers to see what would be available? --- Yes.
And that what you thought of easily as four options to stop the backflow prevention device from travelling up in the manifold and turned into, when read with the specification particularly clauses 19 and 27, a total of 137 tenders; is that right? That is shown in your - - - ? --- I believe there were 137.
- - - GRB7? --- Yes. From memory, it is a number like 137. I think that is right.
Yes. I think you refer to that in your witness statement? --- Yes.
And those tenders came from 12 companies, I think you said in your declaration? --- 12 and 137, that is correct.
So that what might have appeared to you yesterday as obvious - namely, that the cylinder piece of the meter would bear down onto the top of the backflow prevention device was not in fact obvious to at least 11 companies and 134 tenderers? --- I can't recall without trying to look at the summary of tenders again whether any of the others put in anything similar to that.”
I was referred to no competing tender wherein the method of retention described by the claims of the petty patent was adopted in the context of a manifold meter as depicted in WM8 when read with the specification.
One further observation can usefully be made as to the prior art base in August 1990. As Mr Hubbard observed, the use of dual non-return valves tandemly retained in a single sleeve in the water meter assembly industry was not common, and as Mr Flynn put it, “Backflow was in its infancy in that period”.
The tender documents and WM8 do not disclose in clear, unequivocal and unmistakable terms, an arrangement wherein a backflow prevention assembly as described in Claim 1 of the petty patent, including all the defining characteristics, is retained in its operative position by the measuring element or measuring element assembly only. In these circumstances Claim 1 of the petty patent is not deprived of its novelty by the content of the tender specification WS34/90/91 or the drawing WM8.
Finally, I turn to paragraph 2A(c) of the objections.
The provisional specification PK0921 was filed in the Patents Office Canberra on 29 June 1990. So much is proved from that part of the statement of Mr Pizzy tendered into evidence by Stack and GST which was not struck out in the circumstances recorded at the beginning of these reasons. The provisional specification was for a water meter assembly. It was for a combination patent.
The requirement of the petty patent that the claimed combination contain a backflow prevention assembly that includes a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein is an essential integer of the claim. It is not an integer of the invention disclosed in PK0921 which has a single non-return valve only. It does not overcome the failure of PK0921 to satisfy the reverse infringement test to submit that a single non-return valve is not an essential integer of PK0921 or that a dual valve backflow prevention assembly is but a mechanical equivalent of a single valve non-return prevention assembly. The absence of an essential integer cannot be overcome in this way: Nicaro Holdings at 532.
Claims 2 and 3 are dependent claims. There was no submission that any of the material relied upon would deprive claims 2 and 3 of novelty if Claim 1 was itself found to be novel.
The pleaded objections in respect of lack of novelty as at 30 August 1990 are not made out.
The priority date of claim 3 is 30 August 1991. There was no submission that any of the material pleaded as occurring after 30 August 1990 was such as to deprive claim 3 of novelty at that date.
The objections as to novelty fail.
Orders to be made on the determination of the separate questions:
The court finds and declares that:
1.George Stack is not, and was not at any material time, entitled under s 15 of the Patents Act 1990 (Cth) to the grant to him of a patent in consequence of the filing of the provisional specification PK2036.
2.George Stack is not, and was not at any material time, entitled under s 15 of the Patents Act 1990 (Cth) to a grant to him of a standard patent in consequence of the filing of application 85236/91.
3.George Stack was not entitled under s 15 of the Patents Act 1990 (Cth) to the grant to him of Australian Petty Patent Number 645740.
4.GST Technology Pty Ltd was not entitled under s 15 of the Patents Act 1990 (Cth) to a grant to it of Australian Petty Patent Number 645740.
5.GS Technology Pty Ltd is not entitled to Australian Petty Patent Number 645740 within the meaning of s 138(3)(a) of the Patents Act 1990 (Cth).
6.The invention claimed in each of the claims of Australian Petty Patent Number 645740 is a patentable invention within the meaning of s 18 of the Patents Act 1990 (Cth).
7.The specification of Australian Petty Patent Number 645740 complies with the requirements of s 40(2) and s 40(3) of the Patents Act 1990 (Cth).
I certify that the preceding two hundred and thirty-seven (237) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Cooper. Associate:
Dated: 15 September 1999
Solicitor for the Applicant: A Abaza Counsel for the Respondent: P D McMurdo QC and G A Thompson SC Solicitor for the Respondent: Minter Ellison Dates of Hearing: 1, 2, 3, 4, 5, 8, 9, 10, 11, 12, 15, 16, 17, 18 & 19 December 1997
27, 28 & 29 January 1998
2, 3, 4, 5, 9, 10, 11, 16, 17, 18, 19, 20 & 26 February 1998
2, 3 & 4 March 1998
1, 2 & 3 June 1998Date of Judgment: 15 September 1999
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