Strang International Pty Ltd v Kamag Transporttechnik GmbH & Co

[1999] APO 64

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Petty Patent  :          No. 689431 in the name of STRANG INTERNATIONAL PTY LTD

Title:          Materials handling and transportation system

Action:          Application for an extension of term of the petty patent and s.28 notice by KAMAG TRANSPORTTECHNIK GMBH & CO

Decision:          Issued            .

Abstract

Further evidence was not allowed to be served by the petty patentee because no evidence was originally served.

The ground of lack of entitlement was not made out because it had not been clearly established what the invention was that the patentee was allegedly not entitled to nor was it established that the patentee was not actually entitled to the present invention.

The claims were found to lack novelty in the light of an earlier German patent specification.

As the present specification did not contain any patentable subject matter not disclosed in the earlier German specification, the extension of term of the petty patent was refused.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent No. 689431 by Strang International Pty Ltd, an application for an extension of the term of the petty patent and a s.28 notice filed by Kamag Transporttechnik GmbH & Co.

BACKGROUND

Petty patent 689431 was filed on 17 November 1997 as petty patent application 45243/97 by Strang International Pty Ltd (hereinafter Strang).  45243/97 was filed as a divisional application of standard patent application 56235/96.  This application, which was filed on 28 June 1996, is associated with provisional applications PN 3852 and PN 5245 which were filed on 29 June 1995 and 5 September 1995 respectively.

Petty patent 689431 was sealed on 26 March 1998 and, on 14 December 1998, Strang filed an application under s.69 of the Patents Act 1990 for an extension of the term of the petty patent. On 10 February 1999, Kamag Transporttechnik GmbH & Co (hereinafter Kamag) filed a notice under s.28 asserting that the petty patent was invalid on certain grounds. This notice was accompanied by two statutory declarations in support of the grounds identified. On 17 May 1999, Strang's attorneys filed written submissions in relation to the s.28 notice but no evidence in response to the s.28 notice was filed at the time of the hearing.

The matter was heard in Canberra on 24 August 1999.  Strang was represented by telephone by Mr Peter Maxwell, patent attorney of Peter Maxwell and Associates, Sydney.  Kamag was represented by Mr Helmut Eichberger, patent attorney of Cullen & Co, Brisbane.

Subsequent to the hearing, Strang applied to serve further evidence.  The further evidence consists of a statutory declaration by Mr Maxwell with a copy of an agreement between Strang and Kamag exhibited to it.

THE SPECIFICATION

The specification identifies the invention as relating to the handling and transportation of materials such as load modules.  Bulk shipment or load modules are usually assembled, packaged and stored in a form ready for lifting aboard ships or other transport modes.

The specification indicates that the invention will be described in the particular context of USLM (Unit Strap Lifting Method) units.  Such units may comprise a series of arrays of bundles of products such as metal ingots.  For example, the present invention is described in relation to aluminium ingot modules in which the ingots are stacked or strapped together or encapsulated to from modules although the invention is not intended to be limited thereto.

The specification includes a consistory statement identical in wording to claim 1.

There is a detailed description of the invention as illustrated in 14 drawings.

There are three claims as follows:

"1.       A transporter for loading, conveying and unloading an elongated load module having longitudinally extending lifting lugs on each side of the module adjacent the bottom of the module, said load being located at a loading station, said transporter comprising:-

(i)        an elongated frame having opposed sides, a closed front end and an openable rear end which define therebetween a load module receiving chamber,

(ii)       a substantially horizontal lifting lip extending inwardly from each side wall adjacent to the bottom thereof, the lifting lips being adapted to engage the lifting lugs of the load module,

(iii)      means for moving the transporter so that the receiving chamber may be driven in reverse so as to locate the load module in the receiving chamber with the lifting lips beneath the lifting lugs,

(iv)      means for raising the frame, and hence the lifting lips, so that the lifting lips engage the lifting lugs to raise the module from the loading station and load it onto the transporter so that the module may be conveyed by the transporter,

(v)       means for lowering the frame, and hence the lifting lips, so that the load module may be lowered onto a receiving station with the lifting lips disengaging from the lifting lugs when the load module is at a receiving station so that the transporter may be driven forward to leave the load module at the receiving station.

2.        A transporter according to claim 1 wherein the frame has a plurality of ground engaging wheels on each side wall, hydraulic means connected between the wheels and the frame, and means for operating the hydraulic means so that the side walls may be raised or lowered.

3.        A transporter according to claim 1 or claim 2 including a gate at the rear end of the elongated frame, said gate being adapted to be opened to allow the load module to enter the receiving chamber as the transporter is reversed and adapted to be closed when the load module is in position."

SECTION 28 NOTICE

The section 28 notice sets out the three available grounds listed under section 28(1).  However, the evidence served in conjunction with the s.28 notice is directed at the ground of lack of entitlement of the patentee to be granted the petty patent and the ground of lack of novelty.

At the hearing, Mr Eichberger pursued these two grounds as well as the ground of non-compliance with section 40.

EVIDENCE

There are two statutory declarations accompanying the s.28 notice.  There is a declaration by Karl Weinmann who resides in Germany.  Mr Weinmann indicates that he was employed by Kamag between 1969 and 1996.  The thrust of the declaration is that Kamag and Strang entered into an agreement which inter alia required Strang to purchase a prototype of a U frame trailer truck produced by Kamag.  The exhibits provided with the Weinmann declaration include an engineering drawing which Mr Weinmann asserts was made by an employee of Kamag before the earliest priority date of the present petty patent claims and which discloses a truck which falls within the scope of the present petty patent claims.

The second declaration is made by Helmut Eichberger, Kamag's Australian patent attorney. There are three exhibits including a letter from IP Australia listing the publication dates of some patent documents as well as four patent documents and translations of those four patent documents.

SUBMISSIONS

Written submissions were provided by both patent attorneys prior to the hearing.

I will refer to relevant submissions where appropriate in the body of my decision.

DECISION

The Patent Regulations 1991 set out the requirements of the Commissioner in deciding on an application for an extension of term of a petty patent.  Sub-regulation 6.6 states:

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.

Therefore, I need to satisfy myself whether or not any of the grounds in the section 28(1) notice have been made out.

Further evidence

Before considering the s.28(1) grounds, I need to decide whether or not to allow the application to serve further evidence filed subsequent to the hearing.

In oral submissions made subsequent to the hearing, Mr Eichberger argued that the patentee should not be permitted to serve further evidence at this stage because the patentee had not chosen to file evidence in response in the time allowed for this.  He made the point that if no evidence at all has been served originally then there can be no "further" evidence.

I agree.

I refuse to allow the application to serve further evidence.  I will not consider the statutory declaration by Mr Maxwell in this decision.  As it turns out, however, I do not think that the further evidence would affect the ultimate outcome of this decision.

Entitlement

The relevant ground set out in s.28(1)(a) is that the patentee was not entitled to be granted the petty patent.  It has been recognised in a number of decided cases that this ground involves the same issues as that of obtaining.

In Space-Cell Systems (Aust.) Pty. Ltd. v. E.P.M. Concrete Pty. Ltd (1979) 49 AOJP 2018, it was stated that to prove obtaining, it is necessary to establish:

a)What the invention is that has allegedly been obtained;

b)Whose invention it was when the alleged obtaining occurred;

c)That the claim defines, or includes within its ambit, the invention allegedly obtained;

d)That the applicant actually obtained the invention from the opponent, or from a person of whom the opponent is the legal representative, assignee, agent or attorney, prior to the priority date of the claim.

While Mr Eichberger did not refer to each of these issues specifically, he did provide me with submissions which cover each of these issues.

What is the invention allegedly obtained?

Mr Eichberger submitted that the transporter which has been depicted in a number of drawings provided as exhibits to the Weinmann declaration is the invention in question.  The drawings in question include three undated drawings which Mr Weinmann declares were prepared by Kamag and supplied to Strang "prior to the delivery date of 20 May 1995".

I am not sure what delivery date is being talked of here.  The Weinmann declaration refers to a delivery date in Australia of 9 July 1995 when an actual transporter or truck was unloaded in Melbourne.  The declaration also refers to the shipment of the truck from Bremerhaven on 30 May 1995.  Therefore, 20 May 1995 is not a date which is supported by the rest of the declaration and exhibits.  I note that these three drawings themselves are undated.

Mr Eichberger submitted that the three drawings are substantially the same as some of the drawings of the petty patent specification.  He conceded that there are some differences but argued that the main features are similar.  I agree that the drawings which depict elevation and plan views of a transporter are similar to those in the petty patent specification.

However, I have some concern that there is no evidence from a person skilled in the art as to what the three drawings actually disclose to him or her without the benefit of the description in the present specification.  The closest there is to such evidence is a statement by Mr Weinmann that truck type 9631 falls within the scope of the claims of the present petty patent.  Truck type 9631 is said to be shown in these three unlabelled drawings.

There is also an engineering drawing which is labelled with the number 9631 and dated 1 March 1995.  The drawing has a side elevation and a plan view of a transporter.  These views are similar to but not the same as some of the drawings in the petty patent specification.  For example the side elevation view of the transporter in the engineering drawing shows three sets of wheels each at different vertical positions.  The problem with the drawing not being accompanied by any explanatory text is that one could assume that the drawing discloses a transporter or trailer which allowed each set of wheels to be independently raised or lowered.  There is nothing in the drawings to suggest that the wheels are all raised and lowered to allow loading and unloading of load modules from the transporter or trailer as required by the claimed transporter arrangement.

Therefore, on the evidence before me, it is somewhat unclear what the invention is that was allegedly obtained.  Certainly the drawings provided bear a strong similarity to some of the drawings in the petty patent specification but there is no evidence about what the exhibited drawings actually depict other than that they show a U-frame trailer truck type 9631.

Whose invention was it?

The Weinmann declaration asserts that there was an agreement between Strang and Kamag for Kamag to produce a transporter identified as a U frame trailer truck type 9631.  No copy of this agreement was initially served in evidence by either party.  However, an exhibit to the Weinmann declaration includes an order form from Strang to Kamag.  The form includes a description of the goods to be ordered as follows:

"To (sic) construction of a U-frame trailer truck type 9631 as per Kamag quotation No. 7981-002-Y subject to technical changes as discussed and approved by J.F.R. Strang and K. Baldock."

This seems to me to throw some doubt on Kamag's assertion that the trailer truck type 9631 was developed by it.  I note that the date of this order is 6 September 1994 whereas the engineering drawing labelled 9631 is dated 1 March 1995.  It is not clear to me what technical changes were discussed by Mr Strang and K. Baldock with Kamag.  It is quite probable, given the relative dates, that these changes were incorporated into the drawing labelled 9631.  As Mr Maxwell suggested, just because a person drafts a drawing depicting a particular trailer does not mean to say that that person has actually invented the trailer.  Indeed, although Mr Eichberger suggested that it was not important which employee of Kamag actually invented the trailer, the fact that the particular inventor has not been identified by Kamag does not assist its case.

I am not convinced that Kamag has adequately established that someone in its employ was the inventor.

Do the claims define, or include within their ambit, the invention allegedly obtained?

This is somewhat difficult to determine because the invention allegedly obtained has not been clearly identified.  The only clear statement in this regard is made in the Weinmann declaration that truck type 9631 falls within the scope of the claims of the present petty patent.

As I have been unable to determine the invention which has been allegedly obtained, I am unable to determine this question.

Did the applicant actually obtain the invention from the opponent, or from a person of whom the opponent is the legal representative, assignee, agent or attorney, prior to the priority date of the claim?

Given the doubt as to what was the invention allegedly obtained, who the alleged inventor is and who actually owned the invention before the priority dates of the present claims, I cannot, on the evidence before me, find that Strang obtained the presently claimed invention from Kamag.

Mr Eichberger also raised a further issue of the entitlement of Strang to the petty patent.  He pointed out that the notice of entitlement filed with the petty patent applicant indicated that Strang was entitled to the petty patent due to an assignment between the actual inventor John Francis Roderick Strang and the petty patentee Strang.  However Mr Eichberger argued that Strang had not provided a copy of that assignment in evidence.  Therefore, Mr Eichberger concluded that there was no such assignment and Strang did not have any entitlement.

I am not surprised that Strang did not have a copy of the assignment in evidence as this particular issue was only raised by Mr Eichberger at the hearing. 

Prima facie, Strang is entitled to the petty patent.  There is nothing before me to suggest otherwise.

I find that the ground of lack of entitlement has not been made out.

Novelty

The Eichberger declaration exhibits four patent specifications together with English language translations of those specifications.  Mr Eichberger submitted that these four specifications, all published before the earliest priority date of the present claims, anticipate the claimed invention.

While neither side provided me with a summary of the law in relation to the ground of lack of novelty, I think it is well established that the basic test for anticipation is set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235, that is:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement".

As to what constitutes infringement, I am guided by the view expressed by Lord Upjohn in Rodi & Wienenberger A.G. v. Henry Showell Ltd (1969) RPC 367 at 391 which view was adopted by Gibbs J. of the High Court of Australia in Olin Corporation v. Super Cartridge Co Pty Ltd andAnother 14 ALR 149 at 157 as follows:

"To constitute infringement the article must take each and every one of the essential integers of the claim.  Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement."

It follows that if a citation discloses all the integers of the claim, the claim will lack novelty.  If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim, but if the essential integers are not disclosed in the citation, the claim is novel - Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183.

With respect to the present invention, there was some discussion about the scope of claim 1.  Mr Eichberger submitted that, just because the transporter of claim 1 was for loading a load module with lifting lugs did not mean that the transporter was restricted to such types of load modules.  Mr Maxwell indicated that the present invention was directed at transporters which could lift aluminium ingot modules.  I note that the third paragraph of page 2 of the petty patent specification indicates that the invention is not restricted to aluminium ingot modules but could also be used for large dimension float plate glass, metal plates, coils, concrete slabs, paper pulp or paper products.  Mr Maxwell suggested that, if the claims are not restricted to lifting aluminium ingot modules at the moment, they could be easily amended to so restrict them.  However, it was not made clear to me by Mr Maxwell what features of the invention were specific to the carrying of aluminium ingot modules compared with the other types of loads I have referred to above.

Taking all this into account, I believe that the essential integers of claim 1 include all the defined integers of the transporter.  I take Mr Eichberger's point that the claim is not limited to a transporter which is used exclusively for load modules which have longitudinally extending lifting lugs.  Nevertheless I believe that it is an essential integer of the claim that the claimed transporter has lifting lips which are capable of engaging the longitudinally extending lifting lugs of a load module.  It is not an essential integer of the present claim 1 that the load module is formed of aluminium ingots nor is it essential that the transporter is used exclusively to carry such load modules.

I now turn to the four patent specifications provided in Mr Eichberger's declaration.

DE 4027864

This specification is aimed at solving the problem that the rear doors of fully laden U shaped loaders cannot sometimes be shut.

The loader has a pair of support elements which engage with lugs on the load pallet.  These support elements have angled rather than substantially horizontally extending lifting lips.  However, these lips can be adapted as shown in Figure 2b and Figure 4 of DE 4027864 so that the adapted lips are basically horizontally extending for engaging complementary horizontally extending lugs on the load module.

While there is no specific disclosure of a closed front, the loader of DE 4027864 is described as having a rearwardly open U-shaped chassis.  This seems to me to indicate that there is a closed front.

The loader includes air bellows associated with the wheels to lower and re-lift the loader for loading and unloading of the pallets.

The loader is described as being capable of being pushed around the load to be transported so that the load can be lifted.  From this I deduce that the loader or transporter is capable of being driven in reverse to locate the load in the loader's chamber.

I am therefore of the opinion that the loader of DE 4027864 includes all the essential integers of claim 1.

In relation to claim 2, there is no disclosure in DE 4027864 of hydraulic means to raise and lower the side walls of the transporter.  The German specification discloses the use of pneumatic means instead.  However, it seems to me that pneumatic means is clearly a technical equivalent of hydraulic means and that, as the medium used for raising and lowering the side walls does not materially affect the way the claimed invention works, the particular type of medium is not an essential integer of claim 2.

I therefore find that claim 2 is not novel in the light of DE 4027864.

In relation to claim 3, there is disclosed a gate or door arrangement in DE 4027864 although other alternatives are also disclosed.

In summary, I find that all of the claims lack novelty in the light of DE 4027864.

DE 3516914

This specification discloses a transporter for carrying large-scale glass pane packs.  The thrust of the specification is to an arrangement for ensuring that the glass pane packs are secured when being transported.  However, the transporter has a drop bed configuration.  Mr Eichberger submitted that the drop bed configuration means that the bed can be raised and lowered by rams depicted in one of the drawings.  However, there is no particular description of this.

The means for contacting the glass pane packs takes the form of square cross section support beams compared with horizontal lifting lips of the claimed transporter.  There is no evidence before me to suggest that support beams and lifting lips are mechanical equivalents although the support beams in DE 3516914 appear to be capable of engaging what could be argued to be lifting lugs on the load pack.

I find that not all the essential integers of the present claim 1 are disclosed in DE 3516914.

EP 317375

This specification is similar to DE 3516914 in that it is directed at ensuring that glass pane packs are secured when being transported.  Although Mr Eichberger has argued that all the essential integers of claim 1 are disclosed, EP 317375 is even less specific than DE 3516914 in how the transporter operates in relation to loading and unloading.  There is not even any mention of a drop bed configuration.  Therefore, even though the drawings may hint at arrangements which may be similar to the present invention, I do not believe that the prior publication contains "clear and unmistakable directions to do what the patentee claims to have invented": General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457. Certainly there is no evidence before me from a person skilled in the art as to what the particular drawings might disclose to him or her over and above what is described in the EP specification.

In my view, EP 317375 does not anticipate any of the claims.

DE 3728565

This specification is directed at a loader for transporting plate glass.

The loader has pneumatic spring bellows to raise and lower the loader to allow loading and unloading of a transportation trestle.  The trestle has angular beams parallel with angular support elements on the loader.  There is no specific disclosure that the support elements engage the beams of the trestle although Figure 2 may possibly disclose this.  There is no specific disclosure of horizontally extending lifting lips on the loader engaging lifting lugs on the trestle.

Therefore, I believe that DE 3728565 does not include all of the essential integers of claim 1.

Claim 1 is novel in the light of DE 3728565.

In summary, I have found that all of the claims lack novelty with respect to DE 4027864.

Section 40 issues

Mr Eichberger raised a couple of matters in relation to lack of compliance with section 40.

He submitted that claim 1 is not fairly based on the matter described in the specification because it refers to separate means for raising the frame and lowering the frame.  He argued that the body of the specification only disclosed a single means for performing both the rasing and lowering functions.

Mr Maxwell argued that the claim did not specify that the means were separate.

While I have no evidence from a person skilled in the art as to what the body of the specification discloses, I note that Mr Weinmann has declared that the arrangement shown in the technical drawing, which possibly has one means for raising and lowering the frame, falls within the scope of the present claim 1.  Therefore, I am satisfied that claim 1 is fairly based on the matter described in the specification.

Mr Eichberger also suggested that claim 2 is not clear and not fairly based because it appears to include the extra feature of hydraulic means for raising and lowering the side.  The specification does not disclose such an extra feature.

Again I note that Mr Heinmann believes that the invention defined by the claims includes the truck type 9631.  This would not be the case if Mr Eichberger's interpretation were correct.  Indeed, in arguing the ground of lack of novelty, Mr Eichberger has not interpreted claim 2 to include an extra means over and above the raising and lowering means defined in claim 1.

I find that the ground of lack of compliance with section 40 has not been made out.

CONCLUSION

I have found that the grounds of lack of entitlement and non-compliance with section 40 have not been made out.

However, I have found that all of the claims lack novelty in the light of DE 4027864.

Mr Maxwell argued at the hearing that the invention was really restricted to the transportation of aluminium ingot modules.  However, he did not provide any satisfactory explanation of how such a restriction to the claimed transporter would overcome the present lack of novelty.  In considering the present specification, I am unable to find any features in relation to the transporter which might be included into the claims to provide patentable subject matter.

In the light of this, I do not think it appropriate to allow the petty patentee an opportunity to amend the specification.

I refuse to grant an extension of the term of the petty patent.

COSTS

Normally, in cases such as this, costs follow the event.

While Kamag has not been successful in establishing the grounds of lack of entitlement and non-compliance with section 40, it has been successful under the ground of lack of novelty.

Accordingly, I award costs against the petty patentee, Strang International Pty Limited.

R Hallett
Delegate of the Commissioner of Patents

Patent attorneys for the patentee:    Peter Maxwell and Associates, Sydney

Patent attorneys for the informant:  Cullen & Co, Brisbane