TCT Group Pty Ltd v Polaris IP Pty Ltd

[2024] APO 5

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

TCT Group Pty Ltd v Polaris IP Pty Ltd [2024] APO 5

Patent Application:                2017201858

Title:Hinge

Patent Applicant:                   Polaris IP Pty Ltd

Requestor/Opponent:             TCT Group Pty Ltd

Delegate:  Dr W.E. Guinea

Decision Date:  9 February 2024

Hearing Date:  24 August 2023, in Canberra, by videoconference

Catchwords:  PATENTS – s59 – novelty – no claims found to lack novelty – inventive step – no claims found to lack inventive step – s40(2)(a) clear enough and complete disclosure – lack of clear enough and complete enough disclosure for all claims – s40(3) support – lack of support for all claims – utility – no claims found to lack utility – costs – opposition successful – further submissions sought on award of costs

Representation:  Counsel for the Applicant: Andrew Fox SC

Patent Attorney for the Applicant: Simon Reynolds and David Müller-Wiesner of GLMR

Counsel for the Opponent: Gilbert Tsang

Patent attorney for the Opponent: Philip Gehrig of Wrays

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2017201858

Title:Hinge

Patent Applicant:                   Polaris IP Pty Ltd

Date of Decision:                   9 February 2024

DECISION

The opposition under s59 is successful. All the claims lack a clear enough and complete enough disclosure under s40(2)(a) and also lack support under s40(3). No other grounds of opposition are made out.

I allow both parties two (2) weeks from the date of this decision to provide submissions on the nature and quantum of costs to be awarded.

I allow the Applicant two (2) months from the date of this decision to propose amendments overcoming the deficiencies identified in this decision.

REASONS FOR DECISION

Background

1. Patent application 2017201858 (the “application”) entered national phase on 17 March 2017 from PCT/AU2017/050133.  PCT/AU2017/050133 was filed on 16 February 2017 in the name of Michael Christopher Stuart.  By virtue of a request filed under s113 on 12 June 2019, the Applicant of record became Polaris IP Pty Ltd (the “Applicant”).  The application has an earliest priority date of 17 February 2016.

2. On 3 March 2021 the Opponent filed notice of opposition to the application under s59 of the PatentsAct 1990.  The statement of grounds and particulars (“SGP”) for the s59 opposition was filed on 3 June 2021. Amendments, which were allowed, were proposed to the SGP on 18 August 2021, in response to a direction for further and better particulars. Hereon, references to the SGP will be to the amended version of the SGP.

3. Amendments to the specification were requested on 30 August 2022.  These were incorporated into the specification on 4 January 2023.  References to the specification from hereon are to the specification as it stands as a result of those amendments.

4. The filing of evidence in support (“EIS”) was completed on 1 December 2021.  This consisted of:

   ·     a declaration by Mr John Mannex O’Brien (“O’Brien”), dated 28 October 2021, with supporting annexures JMO-1 to JMO-9;

   ·     a first declaration by Mr William Samuel Hunter (“Hunter1”), dated 1 December 2021, with supporting annexures WSH-1 to WSH-11; and

   ·     a declaration by Mr Philip Walter Gehrig (“Gehrig”), dated 1 December 2021,with supporting annexures PWG-1 and PWG-2.  I note that:

   o   PWG-1 comprises a declaration by William Lewis Mackrell dated 9 October 2021 (“Mackrell”) with supporting annexures WLM-1 to WLM-5; and

   o   PWG-2 comprises a declaration by Weizhong Chen dated 7 October 2021 (“Chen”) with supporting annexures WC-1 to WC-8.

5. The filing of evidence in answer (“EIA”) was completed on 21 April 2022. This consisted of:

   ·    a declaration by Mr Ian Wilson (“Wilson”), dated 20 April 2022, with supporting annexures IW-T1, IW-T2 and IW-1 to IW-10.

6. The filing of evidence in reply (“EIR”) was completed on 28 July 2022  This consisted of:

   ·     a second declaration by Mr William Samuel Hunter (“Hunter2”), dated 27 July 2022, with supporting annexure WSH-12.

7. Before continuing, it is perhaps helpful to note that both Mackrell and Chen (and their annexures) were filed in connection with Federal Court proceeding NSD 1013/2020.  This proceeding concerned, amongst other things, a validity challenge by the Opponent and another party to innovation patents 2020100485 (the “485 patent”) and 2020102918 (the “918 patent”).  Both of these are divisionals of the present application.  Judgement was provided by Justice Burley in TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493; 170 IPR 313 (“TCT”).  Some of the issues traversed in this opposition are virtually identical as in TCT, so it is perhaps unsurprising that both parties referred to TCT and in several instances agreed to findings of fact from that decision. 

8. Conveniently, how such prior findings of fact should be treated in later decisions by the Commissioner has been elucidated in SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 8 (“SNF”) in the context of considering matters of estoppel. The relevant passages for present purposes can be found at [50] to [52]:

   “50. In other words, the question is one of evidence. The Tribunal can inform itself of the previous decisions and the findings of fact that were made. In appropriate cases, new evidence should not be admitted to defeat those findings. However, to the extent that evidence is necessary to apply those facts to the new claims that are brought, then new evidence can be considered.

   51. I consider that these principles are equally applicable to the present opposition. The parties have informed me of the Federal Court decision, and it is clear that decision makes many findings of fact that are relevant to the present opposition. Those findings have not been upset by the Full Court or the High Court.

   52. However, evidence has been filed by the parties as part of the evidence procedures laid down in the Regulations. That material is properly in evidence and is available to me to consider. However, the weight to give to that evidence, and how to weigh that against the findings of fact that have been made in the Federal Court decision, is a matter for me to decide. I consider that I should start with the findings of fact made in the Federal Court decision, and then ask whether there is any evidence that contradicts those findings of fact. Where there is contradictory evidence I will need to decide how much weight to give to each. Further, to the extent that the present opposition raises a ground not considered in the Federal Court decision (that is, lack of inventive step), the evidence filed in the present opposition will assume greater significance.”

9. Whilst an appeal of TCT has been filed, no decision on that appeal has yet manifested, nor, as I understand it, has the appeal been heard as yet.  Consequently, there is no judicial disturbance to Justice Burley’s reasons.  Therefore I will proceed as per SNF – I will accept relevant findings of fact from TCT unless there is contradictory evidence, and where this exists, I will need to weigh that evidence and the previous findings of fact accordingly.

10.  Both parties filed written summaries of submissions prior to the hearing.  The Opponent filed their written summary of submissions (“OS”) on 10 August 2023.  The Applicant filed its written summary of submissions (“AS”) on 17 August 2023, along with an annexure A that comprised a novelty table indicating whether features of the claims were present in CN 203755860 U (“D2”),  WO 2011/035499 A1 (“D5”) and AU 2011101327 A4 (“D6”).  The Applicant filed an updated version of annexure A on 22 August 2022.  This version compared the claims between the application and the 485 patent, clarifies where a “no” comes from Mr Wilson’s evidence and the Applicant’s acceptance of Justice Burley’s findings in TCT regarding certain claim features being present.  At the hearing, Mr Tsang indicated that the Opponent did not have any issues with my having regard to the late filed annexure A.

The Invention as Described

11.  The invention for this application relates to a hinge, particularly in the context of glass panels for gates or showers. 

12.  The specification commences with a “Background” section at [003] that exclusively discusses some features and issues with a prior art hinge as given in WO 2009/018615.  The shortcomings identified with this hinge include:

·     Significant vibration of glass panels on closing, particularly in the direction orthogonal to the glass panel, thereby leading to wear of the structure over time;

·     Increased thickness of the hinge due to dampeners being orientated orthogonal to the plane of the hinge members;

·     Increased thickness in the hinge plates to accommodate sufficiently large, and overlapping, magnets to bias the hinge to a closed position;

·     Increased manufacturing costs stemming from increased thickness of the hinge, including the need to use additional steel.

13.  The “Summary” of the invention then runs from [010] to [029].  Most of this section simply comprises consistory statements that essentially reflect the claims, however at [010] it is stated that:

“It is an object of the present invention to substantially overcome or at least ameliorate one or more disadvantages of existing arrangements.”

14. 

There then follows a “Brief Description of the Drawings” and “Detailed Description of Embodiments” which comprise the remainder of the description.  The nature of the invention described is best understood by reference to the figures.  A first embodiment of a hinge 10 in the closed position is illustrated in figure 1A, reproduced below.  The hinge 10 comprises a first leaf assembly 20 and a second leaf assembly 30.  The leaf assemblies 20, 30 comprise respective first and second front leaf portions 22, 32 and first and second rear leaf portions 24, 34. 

15.  Further details of the hinge 10 can be seen on figure 3, reproduced below.  Sandwiched between the front and rear leaf portions 20, 30 are a series of components including:

·     first and second panel portions 500, 600 (note these panels are both erroneously labelled 700 on figure 3; I also note that these do not form part of the hinge as such, but represent door/fence panels that engage with the hinge 10);

·     first and second insert portions 40, 60;

·     (optional) first and second magnetic elements 50, 70;

·     rubber gasket 700; and

·    first and second spacers 80, 90.

16.  With reference to figures 3 and 4B (reproduced below) the first and second insert portions 40, 60 comprise respective cavities for receiving first and second magnetic elements 50, 70.  The “mouse ear” shape of the corners of the first and second inserts 40, 60 assists in preventing rotational movement between the hinge 10 and the panels 500, 600.  Complementary shaped spacers 80, 90 are respectively interposed between the first and second magnetic elements 50, 70 and the first and second front leaf portions 22, 32.

17.  The first and second panel portions 500, 600 form part of the gate/fence material attached to the hinge 10.  These comprise respective cut out sections 510, 610 as can be seen rather more clearly on figure 2A, reproduced below.  

18.  The cut outs 510, 610 tight fittingly receive the first and second inserts 40, 60 between front leaf portions 22, 32 and rear leaf portions 24, 34.  This is perhaps best illustrated by figures 6A to 6C (for the first insert component 40) and 6D to 6F (for the second insert component 60).  These figures are reproduced below.  As can be seen from these figures, the first and second inserts 40, 60, fit closely to respective cut outs 510, 610, with only a small portion extending beyond the plane of the panels 500, 600.  As can be seen from figures 6C and 6F, most of the first and second magnetic elements 50, 70 are located between respective faces 502, 504 and 602, 604 of first and second panels 500, 600.

19.  The components of the hinge 10 and the first and second panel portions 500, 600 are coupled together using fasteners 801, 802, 803, 804 via holes in the first and second rear leaf portions 24, 34, holes 48, 49, 68, 69 in the first and second inserts and respective threaded stems 112, 114, 122, 124 in the first and second front leaf portions 22, 32.  The threaded stems 112, 114, 122, 124 are best illustrated on figures 5A and 5C, reproduced below.

20.  With reference to figures 3, 5A and 5C, the first front leaf portion 22 comprises an intermediate knuckle 130 which receives bushes 170, 180, these components collectively cooperating with first and second knuckles 132, 134 of second front leaf portion 32 to form a hinge barrel that receives first cap 150, second cap 160 and torsion spring 190 coupled between caps 150, 160.  This arrangement pivotally connects the first front leaf portion 22 to the second front leaf portion 32, and thereby structurally completes the hinge 10 in conjunction with fasteners 801, 802, 803, 804.

21.  In use, the torsion spring 190 biases the hinge 10 back towards a closed position when the hinge is moved towards an open position.  Optional first and second magnetic elements 50, 70 also bias the hinge 10 towards the closed position and are particularly useful where the spring 190 becomes worn.

22.  Figures 3 and 8, 9A and 9B (reproduced below) illustrate a spring loaded component 220 that is used to hold the hinge 10 in an open position.  The spring loaded component 220 is mounted to the first insert component 40, and comprises a ball 222.  During movement of the hinge 10 the ball 222 comes into contact with, and rolls along, a cylindrical inner surface of the neck 162 of the second cap 160.  The ball 222 can continue to roll along the inner surface of neck 162 until it is partially received by indentation 164, and is biased to remain so by spring loaded component 220.  This releasably holds the hinge 10 in an open position until sufficient force is applied to dislodge the ball 222 from indentation 164.

23.  As can be seen from figures 3, 6G to 6I, 7C and 13 (reproduced below), first insert 40 comprises hollows 44 that facilitate dampeners 100.  A first portion 102 of the dampeners 100 is fixed within first insert component 40, whilst a second portion 104 is free to partially retract within the first insert component 40, along an axis perpendicular to the hinge barrel and located within the plane of first panel 500, when end of second portion 104 contacts striking surfaces 64 of second insert 60 (see figure 7E reproduced below).  In this way, the dampeners 100 slow movement of the hinge 10 towards the closed position, whilst being located between opposing faces 502, 504 of first panel 500.

24.  The effect of the dampeners is characterised as follows at [090]:

“As shown in Figure 7A, 7B and 7C, the first insert component 40 includes a plurality of hollows 44 which have a longitudinal axis which is orthogonal to the hinge axis 290 and coplanar with the plane of the first panel 500. The hollows 44 are located along adjacent longitudinal edges of the cavity 42 for housing the first magnetic element 50. Each hollow 44 is configured to house at least a portion of a dampener 100 as shown in Figures 3 and 13 for reducing the speed which the hinge approaches the retained position. As shown in Figure 13, at least a portion 102 of each dampener 100 is located within a respective hollow 44 of the first insert component 40 and a second portion 104 of the dampener 100 at least partially retracts within the respective hollow 44 of the first insert component 40 when the second portion 104 of the dampener 100 comes into contact with the second insert component 60 during hinged movement toward the retained position. The second portion 104 of the dampener 100 extends and retracts along an axis which is coplanar with the first panel 500. The first portion 102 of the dampener 100 is a dampener pin which is coupled within a respective hollow 44 of the first insert component 40. Furthermore, the second portion 104 of the dampener 100 is a dampener body which at least partially extends from and at least partially retracts within the respective hollow 44 of the first insert component 40. As shown in Figure 13, the dampener pin 102 is substantially thinner than the dampener body 104. Due to the dampener pin 102 being secured within the respective hollow 44 and the dampener body 104 having a cross sectional profile which substantially corresponds to the cross sectional profile of the respective hollow 44, the dampener pin 102 is less likely to deflect and bend during hinge movement toward the retained position. The substantially similar cross sectional profiles between each dampener body 104 and the hollow 44 effectively acts as a guide such that each dampener body 104 receives therein the dampener pin 102 along the longitudinal axis of the respective hollow 44. As the orientation of the longitudinal axis of the one or more dampeners 100 is substantially coplanar with the first panel 500, the overall thickness of the hinge leaf component 20 can be reduced thereby providing material efficiencies in relation to manufacture of the hinge. Additionally, due to the orientation of the dampeners 100, a majority of the vibrational force experienced by the hinge 100 when approaching the retained position is transferred in a direction substantially parallel to the planes of the faces 502, 504, 602, 604 of the panels 500, 600, thereby reducing the stress on the panels when moving toward the retained position.”

25.  The nature and location of the dampeners and magnetic elements is also characterised as follows at [087]:

“Due to the dampeners 100 being located between the planes of the opposing faces 502, 504 of the first panel 500, and optionally the first magnetic element 50 and the second magnetic element 70 being substantially located between opposing faces 502, 504, 602, 604 of the first and second panels 500, 600 respectively, the first leaf assembly 20 and the second leaf assembly 30 can be manufactured with a thinner profile meaning that the hinge 10 can be manufactured using less material. Furthermore, as shown in Figure 4B which depicts the hinge in the closed or retained position with the front leaf components 22, 32 being removed for clarity, the first and second magnetic elements 50, 70 are substantially collinear in the retained position and orthogonal to a hinge axis. The collinear arrangement avoids an overlapping magnetic element arrangement in the retained position thereby providing a more efficient packing of the hinge 10 compared to prior art hinges. As the packing of the hinge leaf assemblies 20, 30 can be reduced due to the collinear arrangement of the magnetic elements 50, 70 in the retained position, the hinge 10 can be manufactured more economically.”

26.  Figure 15, reproduced below, illustrates a second embodiment of hinge 10.  The only significant difference from the first embodiment of figure 3 is that different shaped inserts 40A, 60A are used.  These inserts have rather more pronounced “mouse ears” compared to inserts 40, 60.  As the second embodiment is otherwise materially identical to the first embodiment, I will not discuss any further details of the second embodiment.

27.  Figure 17A, illustrated below illustrates a third embodiment of hinge 10.  This comprises an alternate first cap 150A, having an angled surface.  The angled surface prevents the alternate first cap 150A from being used as a step.  As the third embodiment is otherwise materially identical to the first embodiment, I will not discuss any further details of the third embodiment.

28.  Figures 18A and 19, reproduced below, illustrate a fourth embodiment comprising hinge 300.  This comprises a first leaf assembly 20 that is the same as leaf assembly 20 used in the first embodiment, except for the use of first insert 40A as per the second embodiment.  Unlike the first embodiment, instead of a second leaf assembly 30, there is a mounting assembly 310 that cooperates with the first leaf assembly 20 to create hinge 300.  Mounting assembly allows the hinge 300 to be fixed to a wall, post etc. via mounting surface component 350.

29.  Mounting assembly 310 is configured to provide similar functionality as for the second leaf assembly 30.  In this regard the following perform the same functions in a similar way as per the corresponding components of the second leaf portion 30 indicated: first and second knuckles 332, 334 of intermediary housing 315 correspond to first and second knuckles 132, 134; and cavity 320 of intermediary housing 315, mounting insert 330, second magnetic element 340 and cavity 370 of mounting insert 330 correspond to the second insert 60 and second magnetic element 70.

30.  Other than the components just discussed, the fourth embodiment is materially similar to the first embodiment.  Consequently, there is no need to provide any further discussion on the fourth embodiment.

31.  A fifth embodiment comprising hinge 300 is provided on figure 20, reproduced below.  This comprises a cover 400 attached to the rear leaf component 24 via fasteners (not shown), and respective holes 27, 420 in the rear leaf component 24 and cover 400.  Cover 400 overlies fasteners 801, 802 which secure the front leaf component 22 to the rear leaf component 24.  The effect of this is to prevent unauthorised dismantling of hinge 300 when it is in the closed position, noting that the cover fasteners are inaccessible when the hinge 300 is closed.

32.  Other than the components just discussed, the fifth embodiment is materially similar to the fourth embodiment.  Consequently, there is no need to provide any further discussion on the fifth embodiment.

33.  Figure 21, reproduced below, illustrates a sixth embodiment comprising hinge 300 (unlabelled).  This comprises a curved mounting surface component 450 fastened to planar mounting surface component 350, to allow for mounting to curved objects, such as a pole.  Other than the components just discussed, the sixth embodiment is materially similar to the fourth or the fifth embodiments.  Consequently, there is no need to provide any further discussion on the sixth embodiment.

The Claims

34.  The application comprises 19 claims of which claims 1 and 10 are independent.  The independent claims are reproduced below; the full claim set can be found at Annex A to this decision.  For convenience I have provided feature labels for claims 1 and 10, and have provided indentations to help demonstrate sub-features of other features in these claims. 

1.1 A hinge including:

1.2 a first leaf assembly including a first front leaf component coupled to a first rear leaf component for accommodating therebetween a portion of a first panel having a first cut-out section,

1.3 wherein the first leaf assembly further includes a first insert component,

1.4 wherein the first insert component is tight fittingly receivable within the first cut-out section;

1.5 a second leaf assembly, hingedly coupled to the first leaf assembly,

1.6 including a second front leaf component coupled to a second rear leaf component for accommodating therebetween a portion of a second panel having a second cut-out section,

1.7 wherein the second leaf assembly further includes a second insert component,

1.8 wherein the second insert component is tight fittingly receivable within the second cut-out section;

1.9 a spring, operatively coupled to the first leaf assembly and second leaf assembly, to bias the hinge toward a closed position; and

1.10 a dampener to slow movement of the first and second leaf assemblies to the closed position,

1.11 wherein at least a first portion of the dampener is located within the first insert component and a second portion is configured to at least partially retract within the first insert component when coming into contact with the second leaf assembly during hinged movement toward the closed position under bias from the spring,

1.12 wherein the second portion of the dampener extends and retracts along an axis which is coplanar with the first panel.

10.1 A hinge including:

10.2 a leaf assembly including a front leaf component coupled to a rear leaf component for accommodating therebetween a portion of a panel having a cut-out section,

10.3 wherein the leaf assembly further includes an insert component,

10.4 wherein the insert component is tight fittingly receivable within the cut-out section;

10.5 a mounting assembly hingedly coupled to the leaf assembly;

10.6 a spring, operatively coupled to the leaf assembly and the mounting assembly, to bias the hinge toward a closed position; and

10.7 a dampener to slow movement of the hinge toward the closed position,

10.8 wherein the dampener includes a first portion located within the insert component and a second portion which at least partially retracts within the insert component when coming into contact with the mounting assembly during movement toward the closed position under bias from the spring,

10.9 wherein the second portion of the dampener extends and retracts along an axis which is coplanar with the panel.

The Opposition

1. In the SGP the Opponent pursued grounds under:

   · s59(b) and s18(1)(b)(i) – the invention as claimed is not novel in view of the prior art base as it existed before the priority date of the claims;

   · s59(b) and s18(1)(b)(ii) – the invention as claimed is not inventive in view of the prior art base as it existed before the priority date of the claims;

   · s59(b) and s18(1)(c) – the claimed invention lacks utility;

   · s59(c) – the specification does not comply with s40(2)(a);

   · s59(c) – the specification does not comply with s40(2)(aa);

   · s59(c) – the specification does not comply with s40(3), in that the claims are not clear and succinct; and

   · s59(c) – the specification does not comply with s40(3), in that the claims are not supported by matter in the specification;

2. In the OS the Opponent did not pursue grounds under s40(2)(aa) or that the claims were not clear and succinct.  The Opponent did not suggest otherwise at the hearing.  Consequently, this decision is limited to the remaining grounds pressed by the Opponent.

Onus and Standard of Proof

1. The application was filed on 16 February 2017.  Consequently, substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 apply to the application.  This includes the amendment to subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.  Notably it is the Opponent who bears the onus of proving their case to the requisite standard during opposition proceedings.

Who is the Skilled Addressee?

1. The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to possess the common general knowledge (“CGK”) in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”

2. Both parties accepted Justice Burley’s formulation of the skilled addressee from TCT; see the OS at [16] and the AS at [13].  I respectfully agree that this is an appropriate way to characterise the skilled addressee, and thus adopt the skilled addressee as stated at [86] of TCT; that is “…a person engaged in, or who has experience in, the design of mechanical devices and, in particular, in respect of hinges used in domestic and commercial applications”.

3. I have reviewed the declarations, and, where given, the CVs provided by each of the expert declarants and I am satisfied that each is able, at least in some way, to adequately represent the views of the skilled addressee as I have defined it.  In this regard I note that:

   ·     Mr Hunter is a mechanical engineer with bachelor’s and master’s degrees in that discipline (Hunter1 at [5] and [6]).  He has extensive experience in product design and development, including of hinges (Hunter1 at [7] to [11] and WSH-2);

   ·     Mr Mackrell was a director of a company, Opus Manufacturing Ltd, that, from 2003 to 2021, manufactured hinges for glass panels (Mackrell [1] to [3]).  Mr Mackrell designed hinges for glass pool gates whilst director, including shortly after purchasing the company in 2003 and in 2008 and 2014 (Mackrell [6] to [11]).  

   ·     Mr O’Brien has extensive experience in making, supplying and installing glass shower screens, including, since about 1989, supply and installation of hinges for glass shower screens (O’Brien [1] to [18]).  Since about 2001, and from 2002 via his company Estelle Pty Ltd Mr O’Brien was directly involved in the design, manufacture and supply of hinges for glass shower screens and from 2010 this also included hinges for glass pool fencing (O’Brien [19] to [34]).

   ·     Mr Wilson has a bachelor’s degree in industrial design.  He has extensive experience in the design, testing, quality assurance and manufacture of a variety of electrical and/or mechanical appliances (Wilson at [1] to [5]).  This has included many products requiring the design and engineering of pivots, latches and hinges (Wilson at [5]).

4. In the OS the Opponent challenged Mr Wilson’s ability to represent the skilled addressee:

   “It is unclear whether Mr Wilson can comfortably be considered to fall within the description at paragraph 16 above, given that: he has no formal qualifications in mechanical engineering, his previous employment (until 2000) was at Sunbeam (which specialises in kitchen appliances) and thereafter he describes his experience in designing, developing and manufacturing products as being ‘predominantly’ in ‘electrical appliances’.” (OS at [19])

5. Unsurprisingly, the Applicant pushed back against this at [14] of the AS:

   “At OS [19] the Opponent questions whether Mr Wilson is a relevant person skilled in the art. It should be noted that none of the experts, including Mr Hunter, has designed hinges subject to the types of load encountered by the hinges of the Opposed Application. There is a substantial technical difference between an undampened hinge subject to at most a few kgs of swung weight, and the dampening of a robustly closed door of tempered glass weighing more than 40 kg conducted within a hinge body. Both Mr Wilson and Mr Hunter appear to be skilled individuals in the general field of industrial design, Mr Wilson having led the design team of one of Australia’s most successful consumer product engineering companies.”

43.  I understand that otherwise the parties accepted the other experts as being able to represent the skilled addressee.

44.  There is some force to the Opponent’s arguments.  Industrial design, as I understand it, incorporates a wide variety of aspects in product development, not just mechanical engineering.  Therefore, I do not consider it to be simply equivalent to mechanical engineering.  In this regard attempting to equate Mr Hunter’s experience as simply being that of an industrial designer is ignoring his extensive qualifications and experience in mechanical engineering per se. 

45.  Nevertheless, one may suggest that the skilled addressee typically does not literally exist in reality but is brought into legal existence to suit the purposes of the Act.  Because of this it is rather unsurprising that no one person would generally represent the entire gamut of the skilled addressee’s knowledge and experience.  Typically, one declarant or the other may be better positioned to provide evidence on certain aspects of what the skilled addressee would know or do based on their knowledge or experience. 

46.  I do not propose to make any general statements or conclusions here about the relative suitability of any of the experts to represent the skilled addressee.  Suffice to state that where the declarants disagree on a factual point that I intend to rely upon, or where I seek to make findings of fact based on the expert evidence, it will be up to me to weigh each declarant’s evidence accordingly in view of the particular context concerned and their skills, knowledge and experience.

Claim Construction Matters

47.  Rules of construction have been provided by the authorities to assist in determining the ambit of claims.  These have been conveniently summarised in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (“Pfizer”) at [247] to [250]. At [249] Pfizer cites the following from Re Décor Corporation Pty Ltd (Formerly Brian Davis and Company Pty Ltd) and Rian Tooling Industries Pty Ltd v Dart Industries Inc [1988] FCA 399):

“1. The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.

2. It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.

3. Nevertheless, in approaching the task of construction, one must read the specification as a whole.

4. In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.

5. If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.

6. A patent specification should be given a purposive construction rather than a purely literal one.

7. In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.

8. The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.

9. Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.

10. If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.”

48.  Three additional principles were also cited in Pfizer (at [250]) from Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56:

“1. There is a danger in considering the integers of a claim individually and in isolation. This could yield a literal rather than a purposive construction – see Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 243 (Lord Diplock).

2. The Court should avoid too technical or narrow a construction of claims.

3. A construction according to which the invention will work is to be preferred to one according to which it may not do so.”

49.  Whilst construction of the claims mostly appears to be straightforward and not in dispute, there are several terms or phrases from the claims that are either in dispute or important to delineate due to their impact on matters to be determined in this decision.  I will now construe terms or phrases specifically raised by the parties.

“Insert component”

50.  Both parties accepted the meaning of this phrase as determined by Justice Burley in TCT at [102], which in essence is that the insert component may be a separate part that is placed in the hinge or something that is integral to one or both of the front and rear leaf components; see the AS at [26] and the OS at [22] to [24]. While Mr Wilson considers that the phrase means a separate, as opposed to an integrated, component, this interpretation was not adopted by the Applicant. I do not see Mr Wilson’s evidence as necessitating any deviation from Justice Burley’s construction, and indeed I respectfully note that I would construe the phrase in the same manner as his Honour even in the absence of TCT.  I am satisfied that it is appropriate to adopt Justice Burley’s construction of this phrase.

“Tight fittingly receivable”

51.  While not appearing in the claims for either the 485 or 918 patents, Justice Burley discussed construction of this phrase in conjunction with the “adapted to locate” integer from those patents.  As pointed out in the AS at [27], Justice Burley took this phrase “…to mean that the insert must fit tightly within the cut-out such that there is little or no room for movement” (TCT at [115]). Whilst the Applicant has embraced that construction, it argues that this “…does not encompass the use of packing chips or wedges in order to limit movement – such a construction of the term would align it with ‘adapted to locate’, which is a broader concept (AS at [27]).

52.  Conversely, the Opponent points to Mr Wilson’s interpretation of this phrase at IW-T1, and evidence of Mr O’Brien pointing to the well-known use of packers or shims to fit mouse ear components in a cut out, to contend that the “tight fitting” can be achieved by packers or shims.  As stated at [27] of the OS:

“Accordingly, in this context, i.e., in the context of the hinge body in isolation of a cut-out section or recess into which it is to be inserted or mounted, the term ‘tight-fittingly receivable’ simply describes the capacity or ability to be received and fitted – typically via the use of wedges (‘shims’), packers or sleeves – tightly or snugly within the recess.”

53.  Notably his Honour’s construction includes the possibility of some movement between the cut out and the insert, which, to my mind, implies the possibility of using shims or packers of some kind to remove this movement, however small it may be.  Mr Wilson’s evidence at IW-T1 appears to accept the use of “chips” in the context of the insert being tight fittingly receivable in the cut out.  Mr O’Brien’s evidence at [74](f), [81](w) and [81](x) of his declaration, as cited by the Opponent, merely serves to establish that it was known to create a tight fit between an insert and glass cut out using sleeves or wedges, but does not really shed any light on what “tight fittingly receivable” means in the context of the claims.  Similarly, Mr Hunter appears to acknowledge the use of shims to achieve a tight fit (see for example Hunter2 at [19]), but does really delve into what “tight fittingly receivable” means in terms of closeness of the fit between the insert and the cut out.  I do not see that any of the evidence warrants a departure from Justice Burley’s construction of this phrase, which I respectfully adopt. 

54.  In view of the above, I cannot agree with the proposition put by the Applicant that the use of packers or shims are necessarily excluded by the phrase “tight fittingly receivable” as this appears in the claims.  This does not mean that “adapted to locate” and “tight fittingly receivable” are synonymous.  The distinction in my view is one of the degree of movement/fit between the cut out and the insert, there being little or no movement between the insert and the cut out where the insert is “tight fittingly receivable”.

55.  At the hearing, in discussing D6, Mr Tsang argued that Justice Burley “misspoke” when he suggested at [114] of TCT that “tight fittingly receivable” “…necessitates a closer correlation between the insert component and the cut-out than its function would require”. As I understood it, Mr Tsang was suggesting that his Honour was, in effect, confounding “tight fittingly receivable” and “tight fittingly received”, in a similar manner (allegedly) as per [80] of the AS, where the Applicant refers to the feature concerned as being “tight fittingly received”. I feel Mr Tsang may have selected the wrong venue to critique his Honour’s construction, but, in any case, I respectfully fail to see how his Honour confounded “receivable” and “received” in the manner suggested. His Honour, at [114] and [115] of TCT was clearly discussing the constructional differences between “tight fittingly receivable” and “adapted to locate”. 

“Panel”

56.  This term was not in dispute in TCT, nor as I understand it, was there a material dispute over its meaning in this matter.  Both parties (AS at [28], OS at [21]) accepted Mr Hunter’s evidence at [48] of Hunter1: “…a member with a large surface area in a primary facing plane relative to its thickness dimension”.  This essentially accords with the most relevant definition of panel for present purposes from the Macquarie English Dictionary (Macquarie Dictionary Online, 2023, Macquarie Dictionary Publishers, an imprint of Pan Macmillan Australia Pty Ltd,  hereinafter the “Macquarie Dictionary”): “a comparatively thin, flat piece of wood or the like”.  I accept Mr Hunter’s definition.

57.  There was some discussion in the written submissions as to what could constitute a panel within the ambit of the claims.  For example, the Opponent noted, at [21] of the OS, that a corrugated sheet could still be a panel.  I did not take the Applicant as materially disagreeing with the Opponent on this point.  What I gathered from this discussion is the rather trite proposition that not everything that could be called a “panel” would fall within the scope of the claim, whilst something that is not literally “flat” may still legitimately be called a “panel”.  For example, a prefabricated concrete panel used in constructing a building would not fall within the scope of the claim, whilst a thin piece of material comprising corrugations that do not have the effect of materially increasing the effective thickness of the panel to approach that of Mr Hunter’s primary facing plane would still be considered “panel”.

“Coplanar”

58.   I did not understand this term to be in contention in TCT. 

59.  It is perhaps helpful to reproduce the part of claim 1 that includes the term “coplanar (noting that claim 10 uses materially the same language, except there is only a single “panel”):

“…wherein the second portion of the dampener extends and retracts along an axis which is coplanar with the first panel.” (emphasis added)

The plain meaning of “coplanar” from the Macquarie Dictionary is “lying in the same plane”.  Consequently, in my view. “coplanar” as used in the claims simply means the second portion of the dampener extends and retracts along an axis which lies within the first panel (or just the panel for claim 10 and claims appended thereto) – this also means that the axis concerned is parallel to the comparatively large “faces” of the first panel, otherwise the axis would extend through the first panel.

60.  At [29] of the AS, the Applicant contended for the plain meaning of “coplanar”, whilst adopting Mr Hunter’s construction of the term at [29] of Hunter1:

“‘Assuming that the panel is relatively thin and flat, as is typical of glass panels, I interpret that this simply means that if one were to trace a line of movement of the dampener body during extension and retraction, that line would need to be in a plane which was parallel to the planes of the first panel outer surfaces’. The Applicant embraces that construction.” (italics in original)

61.  In functional terms, I take this as being no different, in a material sense, from the construction I have adopted, noting that the fact the dampener is at least partially located within the first insert component means that being parallel in the sense of Mr Hunter’s construction inevitably means it lies between the “faces” of the first panel as discussed above.

62.  There was some discussion of “coplanar” at [29] to [32] of the OS.  This included some exposition as to what this might mean in the context of, say, a “corrugated” panel and possible orientations of the dampener.  However, as I understand it, the Opponent essentially agrees with the construction taken by the Applicant. 

“Coming into contact”

63.  Although not directly in dispute in TCT (neither the 485 nor the 918 patent claims recite “coming into contact”), this phrase was considered as part of his Honour’s determination of the priority date of those patent claims in view of the present application. Notably at [186] of TCT, his Honour stated, in discussing the disclosure of the present application:

“In my view the reference to the dampener ‘coming into contact’ with the second leaf assembly is unambiguous. It requires that the dampener make contact or touch the second leaf assembly. The language does not admit for a construction that would permit an intermediate part or indirect contact to be made.”

64.  That much is agreed by the parties; see the AS at [36] and the OS at [33].  I respectfully agree with and adopt this aspect of his Honour’s construction of the phrase.

65.  However, as pointed out at [35] of the AS:

“The point to be made is that, in construing the phrase ‘coming into contact’, the Court was not required to determine (and did not determine) whether that phrase also encompassed within its proper meaning that there was a point in time where there was no contact between the components, and then a later point in time when they were in contact.” (emphasis in original)

66.  Whether the “contact” is necessarily transitory or may be continuous is an active point of contention between the parties.  The Opponent favours a construction, espoused by Mr Hunter at [42] of Hunter2, that the phrase encompasses, with regard to claim 1, continuous contact between the second portion of the dampener and the second leaf assembly (OS at [35]).  Mr Tsang, in discussing the disclosure of D2, reiterated this aspect of the Opponent’s arguments at the hearing, arguing that there need only be direct contact, with there being no functional difference in terms of effect of the retraction as to whether there is continuous or intermittent contact.  Mr Tsang suggested that this is consistent with the specification when read as a whole.  The Applicant contends, partially based on Wilson at IW-T1, in a lengthy passage of the AS at [37] to [45], that such continuous contact does not fall within the scope of the phrase. 

67.  Again, it is perhaps helpful to reproduce the part of claim 1 that comprises the phrase “coming into contact with” (noting that claim 10 uses materially the same language, except there is only an “insert”):

“…wherein at least a first portion of the dampener is located within the first insert component and a second portion is configured to at least partially retract within the first insert component when coming into contact with the second leaf assembly during hinged movement toward the closed position…” (emphasis added)

68.  It is quite clear that the second portion of the dampener partially retracts within the first insert component on this making contact with the second leaf assembly during the hinge moving towards the closed position.  The language indicates that at some point prior to hinged movement toward the closed position the second portion of the dampener and the second leaf assembly were not in contact; otherwise the words “when”, “coming” and “into” have no work to do.  Although different features, I note that Justice Burley reached a similar conclusion with regard to “striking surface to cooperate with the dampener” at [123] of TCT.

69.  As will be seen, another important constructional aspect of this phrase, as determined in TCT, comprises the possible orientation of the dampener that follows from the construction of “coming into contact”. However, I consider it convenient to leave this for discussion as part of my s40(2)(a) consideration.

s40(2)(a) – Clear Enough and Complete Enough Disclosure

70.  The requirement for clear enough and complete enough disclosure was introduced into the Act as part of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“RTB”) reforms. Specifically, s40(2)(a) reads as follows:

“(2) A complete specification must:

(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;…”

71.  As indicated in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 (“Encompass”) at [167] the requirements of s40(2)(a) equate to enablement of the invention; I note that this was undisturbed in the appeal to Encompass in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161. As explained in the Explanatory Memorandum (“EM”) to the RTB legislation at item 8, enablement amounts to a requirement that “…sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention”.

72. The nature of s40(2)(a) was considered in some detail by a Dr Barker in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (“CSR”), including an extensive consideration of a number of UK and EPO decisions relevant to an understanding of this part of the Act. After this consideration Dr Barker provided a test for s40(2)(a) at [95]:

“In order to decide whether a specification provides a disclosure as required by section 40(2), it is necessary to:

i)construe the claims to determine the scope of invention as claimed,

ii)construe the description to determine what it discloses to the person skilled in the art, and

iii)decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.”

73.  In Evolva SA [2017] APO 57; 133 IPR 147 (“Evolva”) at [45], a Deputy Commissioner provided some further analysis and consideration of UK and EPO decisions relevant to the question of s40(2)(a). After having done so, the Deputy Commissioner expanded on the third point from the test in CSR as follows (at [45]):

“Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims, and in particular:

(a) Is it plausible that the invention can be worked across the full scope of the claim?

(b) Can the invention be performed across the full scope of the claim without undue burden?”

74.  I note that the above approach was approved by Justice Burley in Cytec Industries Inc. v Nalco Company [2021] FCA 970; 162 IPR 202 at [143] to [146]. It was also adopted by his Honour in TCT, at [154], in the context of determining priority dates, albeit without reference to the sub-test from Evolva.

75.  As a final observation, it can be seen that the expanded consideration from Evolva nominally comprises two extra sub-tests.  However item (b), relating to undue burden, can be understood as being inherently encompassed by iii) from CSR due to the fact that “enabling disclosure” includes a requirement for the absence of undue burden as understood from the EM.  Thus Evolva can be seen as adding a plausibility requirement as a kind of threshold test in assessing s40(2)(a); that is, there can hardly be said that there is an enabling disclosure where it is implausible that the invention can be worked across the full scope of the claim.

The Opponent’s s40(2)(a) Arguments

76. Before delving into the Opponent’s s40(2)(a) arguments, it will be helpful to elaborate on some matters pertinent to s40(2)(a) in this opposition from TCT. 

77.  In considering whether the 485 and 918 patents could claim priority from the application, Justice Burley, at [193] and [194] of TCT, stated:

“In my view it is not only [011] of the specification that confines the scope of the invention disclosed and described to one where the dampener is aligned to be orthogonal to the axis of the hinge. In the balance of the specification of the parent this is the only arrangement described. The description of the preferred embodiments specifically emphasises that the dampener makes (direct) contact with the second leaf assembly, thereby ensuring the orthogonal arrangement: see, for example, [090] (485 patent at [68]), [114] ([093] of the 485 patent) and also [99] ([078] of the 485 patent), which relevantly provides:

‘[099] [this is [090], rather than [099] in the present state of the application] As shown in Figure 7A, 7B and 7C, the first insert component 40 includes a plurality of hollows 44 which have a longitudinal axis which is orthogonal to the hinge axis 290 and coplanar with the plane of the first panel 500. … Due to the dampener pin 102 being secured within the respective hollow 44 and the dampener body 104 having a cross sectional profile which substantially corresponds to the cross-sectional profile of the respective hollow 44, the dampener pin 102 is less likely to deflect and bend during hinge movement toward the retained position. … As the orientation of the longitudinal axis of the one or more dampeners 100 is substantially coplanar with the first panel 500, the overall thickness of the hinge leaf component 20 can be reduced thereby providing material efficiencies in relation to manufacture of the hinge. Additionally, due to the orientation of the dampeners 100, a majority of the vibrational force experienced by the hinge 100 when approaching the retained position is transferred in a direction substantially parallel to the planes of the faces 502, 504, 602, 604 of the panels 500, 600 thereby reducing the stress on the panels when moving toward the retained position.’

The teaching in this passage is not only of the advantages of the coplanar aspect of the hinge arrangement, namely that the overall thickness of the hinge may be reduced thereby addressing the manufacturing problem and the alignment of the majority of the vibrational force to reduce stress on the panels. It is also of the arrangement of the dampener pin which is less likely to deflect and bend during hinge movement.

The expert evidence indicates that the person skilled in the art reading the parent would understand that the advantage of the orthogonal arrangement of the dampener relative to the hinge axis is that it addresses a problem that would otherwise arise in dealing with lateral forces that would be applied to the dampener at other angles.” (emphasis added)

78.  After further discussion of the evidence and the parties’ submissions, his Honour stated at [215] of TCT:

“For the reasons set out in more detail above, claim 1 of the 485 patent is for an invention that is broader in terms than the invention disclosed in the parent. Claim 1 contains no limitation as to the orientation of the dampener or the means by which it effects dampening upon the closing of the hinge. By contrast, the disclosure of the parent describes the invention by reference not only to the co-planarity feature, but also by reference to limitation that the dampener come into contact with the second leaf assembly, being arranged such that it is orthogonal to the hinge axis. The person skilled in the art would understand that limitation to be the means by which the inventor has resolved the problem of constructing a hinge with a dampener which will be subject to lateral forces when closing.” (emphasis added)

79.  And this at [217]:

“These matters serve to elucidate that the invention as disclosed in the parent is not as broad as Polaris contends. The parent does not disclose a hinge mechanism whereby the axis of the dampener is simply coplanar with the first panel. Although it may be accepted that the disclosure of the parent in a number of parts serves to emphasise the importance of the longitudinal axis of the dampener being coplanar with the panel in order for vibratory force to be transferred in a direction parallel to the plane of the panel (see, for instance, parent at [090], [091], [099], respectively [0069], [0070] and [0078] of the 485 patent), the parent also emphasises that the dampener comes into direct contact with the second leaf assembly. That requirement limits the scope of the invention as disclosed and described to a particular hinge mechanism in which the longitudinal dampener axis is more or less orthogonal to the hinge axis. I say “more or less” because plainly there will be scope for some variance from the perpendicular. However, the range will be modest, having regard to the lateral forces.” (emphasis added)

80.  Subsequently, at [227] and [228] of TCT, his Honour concluded that none of the claims from the 485 or 918 patents could validly claim priority from the application, due to the fact there was no limitation on the orientation of the dampener with respect to the hinge axis, in contrast to the disclosure of the application, wherein the only embodiments described have the damper axis being orthogonal to the hinge axis. Whilst made in the context of determining priority, the same analysis, unsurprisingly and respectfully, resulted in his Honour concluding that all claims of the 485 and 918 patents were invalid for failing to comply with s40(2)(a) of the Patents Act; see TCT at [236].

81.  Although subject to a lengthy exposition, at [42] to [64] of the OS, and with reference to the evidence of Mr Hunter and Mr Wilson, the Opponent’s arguments, as I understand them, are that the claims are lacking under s40(2)(a) for similar reasons as outlined by Justice Burley in TCT with regard to the claims of the 485 and 918 patents.  The Opponent explicitly states at [50] of the OS that Justice Burley’s analysis from [215] and [217] of TCT applies equally to this application.  At [62] of the OS, the Opponent states that:

“Accordingly, Mr Wilson’s evidence is consistent with the evidence given by Mr Hunter. The totality of the expert evidence supports the conclusion that the specification of the Opposed Application does not permit the skilled addressee to make, without undue burden or inventive ingenuity, ‘all things’ falling within the scope of claim 1. The complete specification of the Opposed Application therefore fails to disclose the invention in claim 1 in a manner which is ‘clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’ as required by s 40(2)(a). Burley J reached substantially the same conclusion in the FCA Decision at [227] and [236].”

82. Helpfully, the Applicant does not contest Justice Burley’s findings on s40(2)(a) for the purposes of this matter:

“Consistent with what is said above, although the earlier judgment is under appeal, the Applicant’s contentions in defence of this opposition ground [s40(2)(a)] do not seek to deviate from relevant findings made in that proceeding, so far as they might be applicable or of assistance in the present opposition.” (AS at [47]).

Does the Claimed Invention Fail under s40(2)(a)?

83.  In line with step i) from the test in CSR and Evolva, the scope of the independent claims is the first port of call in considering s40(2)(a). Notably, whilst both parties agree with Justice Burley’s conclusions regarding s40(2)(a) in TCT, differences between the parties arise as to the applicability of his conclusions to the claims in suit. In particular, the Applicant contends that the phrase “coming into contact” as used in the claims in suit means that Justice Burley’s conclusions on s40(2)(a) do not apply to the present matter. Consequently, construction of the phrase “coming into contact”, as that appears in the claims, is key to my decision under s40(2)(a). I will now consider the construction of this phrase, including whether there are findings in TCT that necessarily import certain limitations of orthogonality as contended by the Applicant.

84.  In this regard, the Applicant, at [53] to [55] of the AS, points to his Honour’s discussion of “coming into contact”, as cited above, in support of its contentions:

“It can therefore be seen from the above that the Court has made clear findings that the phrase ‘coming into contact’ limits the scope of the disclosure of [011] to a hinge with a dampener axis that is more or less orthogonal to the hinge axis; and that the phrase also requires direct contact to be made, and that direct contact implies orthogonality of the dampener to the hinge axis, as shown in the above excerpts.

Since the language of claims 1 and 10 is substantially identical to [011] as considered by the Court, the Applicant submits that these findings should be applied equally to claims 1 and 10.

The Opponent accepts that the findings at J[215] and [217] should be applied in the present case: see OS [50]. The Opponent relies on these findings for the purposes of determining the nature of the invention disclosed in the Opposed Application, but appears to have overlooked that the same findings also bear on the scope of the claims which have identical language. As a result, the entirety of the Opponent’s case in relation to sufficiency, which solely relies on a difference between the claim scope and the scope of disclosure in relation to the angle of the dampener, must logically fail.”

85.  Paragraph [011] of the parent as it was before Justice Burley and reproduced at [160] of TCT with integer numbers is as follows:

“[011] (1) In a first aspect of the invention there is a hinge including:

(2) a first leaf assembly including a first front leaf component coupled to a first rear leaf component for accommodating therebetween a portion of a first panel having a first cut-out section, wherein the first leaf assembly further includes a first insert component, wherein the first insert component is tight fittingly receivable within the first cut-out section;

(3) a second leaf assembly, hingedly coupled to the first leaf assembly, including a second front leaf component coupled to a second rear leaf component for accommodating therebetween a portion of a second panel having a second cut-out section;

(4) one or more biasing components to bias the hinge toward a closed position;

and

(5) a dampener to slow movement of the first and second leaf assemblies to the closed position, wherein at least a first portion of the dampener is located within the first insert component and a second portion is configured to at least partially retract within the first insert component when coming into contact with the second leaf assembly during hinged movement toward the closed position under bias from the one or more biasing components, (6) wherein the second portion of the dampener extends and retracts along an axis which is coplanar with the first panel.”

86.  Although I am not sure I would necessarily agree with the proposition that claims 1 and 10 in suit are substantially identical to [011] as it was before the Court, it is clear to me that the differences are immaterial for present purposes.  In particular integers (5) and (6) from [011] as quoted by his Honour are substantially identical to integers 1.10 to 1.12 of claim 1 in suit, except that the “one or more biasing components” are now a “spring” in the present claims.

87.  However, what is material is the fact that his Honour was construing the description for the purposes of s40(2)(a), rather than the claims. Notably, there were no claims in suit before his Honour that recited the “coming into contact” feature, such that his Honour was not at all determining what limitation this feature might bring to a claim comprising the same. Noting that the starting point for a s40(2)(a) assessment is to construe the claims, it follows that his Honour’s discussion of the description of the application (as it then was) respectfully does not, in my view, create binding determinations for me in construing the claims, and therefore leaves that task entirely open to me.

88.  Of course, the Applicant points to aspects of his Honour’s reasoning in discussing the description that they would take as findings of fact, regarding “coming into contact”, that I must necessarily follow, for example as discussed at [50] to [55] of the AS.  Whilst there are indeed aspects of his Honour’s reasoning, for example as quoted above, that appear favourable to the Applicant’s position, I am unable to conclude that “coming into contact” necessarily limits the scope of the claims in suit to where the dampener is orthogonal to the hinge axis.  There are several reasons for this.

89.  Firstly, as noted above, his Honour was construing the phrase “coming into contact” as this appears in the description.  Unsurprisingly, it is quite apparent that other aspects of the disclosure of the description informed his Honour’s analysis and in the conclusions he reached – it is not as though his Honour simply latched onto the phrase “coming into contact” and concluded that orthogonality of the dampener axis to the hinge axis necessarily follows from that phrase absent any other disclosure in the description.  This is highlighted by the fact that his Honour points to, for example, [099] of the parent (at [193] of TCT) which explicitly states that the dampener axis is orthogonal to the hinge axis, with the effect of this, in terms of meaning that the dampener is less likely to deflect and bend, being commented on by his Honour at [194] and [195]. Other passages cited by his Honour at [193], such as [090] and [114], refer to some features that concern the dampener, such as the insert component 40 and, more particularly, hollow 44 that are elsewhere described in such a way as to mean the dampener axis is necessarily arranged perpendicular to the hinge axis irrespective of whether the dampener “comes into contact” with the second leaf assembly or not.

90.  This is reinforced by the fact that his Honour, in construing “coming into contact” from [011] of the application (as it was then) at [186] of TCT simply states that this phrase means that there can be no intermediate part between the dampener and the second leaf assembly – he does not indicate that this phrase on its own within the context of [011] necessarily imports a requirement of orthogonality between the axes of the dampener and the hinge.

91. Secondly, his Honour, elsewhere in his analysis under s40(2)(a), appears to accept that the “coming into contact” and “orthogonality” features are distinct, if related requirements. For example, his Honour, in accepting the views of TCT at [184] of TCT would seem to be accepting that these are related for the purposes of disclosure of the invention as described but are otherwise distinct requirements. This is apparent from part of his Honour’s summary of TCT’s submissions at [167] and [168] of TCT:

“TCT submits that the disclosure of the parent is narrower, as set out in the Summary of the invention at [011], which requires a second portion of the dampener ‘coming into contact with the second leaf assembly during hinged movement toward the closed position’. It submits that this description of the dampener is critical, and describes the means by which the improved dampener mechanism of the parent addresses the problems of the prior art. TCT submits that the disclosure of the parent more generally makes clear that the axis of the dampener identified in [011] is coplanar with the panels because the dampener described is always oriented orthogonally to the hinge axis, as set out in the embodiments, relying also on [090], [091], [096] and [099] of the parent (being, [0069], [0070], [0075] and [0078] of the 485 patent). In this way, it submits, the requirements of direct contact and orthogonal angle of the dampener are interdependent and complementary throughout the description, such that there is no disclosure of a broader description of the invention claimed in the patents in suit in the parent…

…TCT contends that the ‘coplanar’ aspect of the invention disclosed in the parent is not a principle of general application, because the disclosure of the specification does not enable the skilled person to make available all variants within the range of the claims citing, amongst other authority, Merck at [532]-[543]. It submits that the only invention disclosed in the parent is one where the dampener retracts within the first insert component when coming into contact with the second leaf assembly along an axis which is coplanar with the first panel and where the dampener axis is orthogonal to the hinge axis.” (emphasis in original)

92.  Thirdly, if I construe “coming into contact” as it stands in the claims in suit, absent recourse to the description, there is simply nothing that would lead one to believe that this feature must import a requirement for the dampener axis to be orthogonal to the hinge axis.  The plain meaning of these words in context certainly do not lead to the orthogonality requirement, and there is no expert evidence indicating that “coming into contact” and orthogonality of the dampener to the hinge axis are a going concern. 

93.  Mr Hunter, at [49] et seq of his first declaration indicates that the orientation of the dampener is not limited by the “coming into contact” feature.  Mr Wilson does not indicate that “coming into contact” necessitates a requirement of dampener orthogonality to the hinge axis at 1.5 of IW-T1.  Mr Wilson was asked, as part of his discussion at 1.6 of IW-T1 “…whether there would be any difficulty in arranging the dampener proposed in the design of the Opposed Application at a different angle while still being coplanar” (emphasis added).  In effect, I take this to be a question and discussion regarding whether it would be difficult to have the dampener orientated at an angle other than orthogonal to the hinge axis as described.  Despite IW-T1 being a claims construction table (see Wilson at [34] and [35]), it is apparent that this is a question and discussion concerning the disclosure of the application, rather than what legitimately falls within the ambit of the claims.

94.  For the above reasons, I am of the view that “coming into contact”, as it appears in the claims, does not import a requirement for the dampener to the arranged orthogonal to the hinge axis.  

95.  It is quite apparent, from the TCT passages cited above, and not disputed by the parties to this opposition, that Justice Burley found that the invention disclosed in the application is limited to one whereby the dampener axis is orthogonal to the hinge axis, and that there was no enabling disclosure in the specification for claims that did not comprise this feature; while perhaps superfluous, I further point to [211] and [220] of TCT in this regard.  I do not see the amendments made to the application subsequent to TCT as materially impacting in any way the relevance of his Honour’s conclusions regarding the disclosure of the application to the present matter.  Indeed, it is hard to envisage an allowable amendment that could do so.

96.  It follows, as per SNF, that the application is also wanting under s40(2)(a) for the similar reasons as outlined in TCT, unless there is evidence to the contrary in the present matter that supports a contrary conclusion. 

97.  The only evidence that could be taken as contrary to the conclusions reached by Justice Burley is that provided by Mr Wilson at 1.6 of IW-T1 discussed above.  However, even this evidence does not clearly indicate that modifications from the orthogonal arrangement requires no more than routine skill from the skilled addressee.  As can be seen, if anything it posits problems that would be faced without commenting on how these might be overcome or of any difficulties faced in doing so:

“I was asked whether there would be any difficulty in arranging the dampener proposed in the design of the Opposed Application at a different angle while still being co-planar. In my view, such an arrangement will require some type of force-redirection mechanism, such as a cam, to avoid side loads on the dampener. That mechanism would likely suffer from the types of well-known problems of any cam application I mentioned earlier, such as friction and wear. However, the dampener will have a longer distance to act over, which may be seen as advantageous. One could use the same dampener, but it would experience higher forces for the same dampening force, due to the cam angle, so I would need to check whether a different dampener component should be used that is rated to a higher force. The general arrangement of the dampener imparting the dampening force onto the glass panel without creating moments, however, is undisturbed and I would expect the same advantage of decreased vibrations. In my view, it is relatively unimportant how the forces are transmitted to the dampener, and more important that they are absorbed in the plane of the glass panel to avoid causing moments or out-of-plane forces about the panel.” (IW-T1 at 1.6)

98.  Unsurprisingly, Mr Hunter disagrees with this position at [35] to [37] of his second declaration:

“In association with feature 1.6 in the table of Exhibit IW-T1, Mr Wilson also states that he was asked whether there would be any difficulty in arranging the dampener proposed in the design of the Opposed Application at a different angle while still being co-planar. Mr Wilson comments that, in his view, ‘such an arrangement will require some type of force-redirection mechanism, such as a cam, to avoid side loads on the dampener’. Mr Wilson therefore refers to ‘some type of force-redirection mechanism’ in general terms and does not explain or illustrate how such a force-redirection mechanism might look or work. He does, however, observe that such a force redirection mechanism would likely suffer from problems, such as friction and wear. I would therefore consider that changing the dampener angle to a different angle while still being co-planar is undesirable.

As explained in paragraph 54 of my declaration dated 1 December 2021, claim 1 of the Accepted Application covers the dampener axis being potentially angled at 45 degrees to the hinge axis (or to the striking surface of the second leaf assembly when the hinge is fully closed). To illustrate this, a modified version of Figure 13 of the Opposed Application is illustrated in Figure 3 below [not reproduced here]. This modified version is based on the coloured version of Figure 13 of the Opposed Application, which is reproduced in Figure 11 of my declaration of 1 December 2021, but with the angle of orientation of the dampeners 100 changed to be at an angle of about 45 degrees to the original orientation, though with the dampeners still co-planar with the panel.

In my view, such a change in the orientation of dampeners 100 would necessitate a redesign of the hinge in the Opposed Application because the horizontal actuating force imparted to the dampeners 100 during the closing of the hinge would include a significant component of force acting in a direction transverse to the dampener axis - i.e., generating side loads that Mr Wilson notes are to be avoided.” (emphasis in original)

99. There is simply no evidence, in my view, that would allow me to make determinations under s40(2)(a) contrary to his Honour’s conclusions. Mr Wilson’s evidence does not support a contrary position, whilst Mr Hunter’s evidence concords with his Honour’s conclusions.

Clear Enough and Complete Enough Disclosure – Conclusion

1. In view of the above, it inexorably follows that the specification is wanting under s40(2)(a) as there is a lack of enabling disclosure for all the claims. The Opponent has been successful in making out this ground of opposition.

Support – s40(3)

1. The requirement that the claims be supported was introduced into the Act as part of the RTB reforms.  Specifically, s40(3) reads as follows:

   “(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.”

2. In Encompass Perram J noted (at [170]) that with the insertion of the support requirement by the RTB legislation, the previous requirement for fair basis was no longer relevant.  Justice Perram, on considering the nature of support then quoted the following passage from the EM:

   “‘[T]he terms ‘support’ and ‘full support’ pick up two concepts:

   ·there must be a basis in the description for each claim; and

   ·the scope of the claims must not be broader than is justified by the extent of the description, drawings or contributions to the art.’”

Other than this Justice Perram did not elaborate further on the nature of support.

1. As I apprehend it, the first detailed judicial consideration of support post RTB was undertaken by Justice Burley in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 (“Merck”). After extensive analysis of the secondary materials and the law in Europe and the United Kingdom, from [511] to [543], his Honour summarised the law on support in Australia as follows at [545] to [547]:

   “545. The theme common to each ground, however, reflects what the Minister described in his Second Reading Speech as the cornerstone of the patent system, namely that in exchange for a monopoly on commercialisation, the patentee must tell the public how their idea works. As said in the Explanatory Memorandum, in exchange for the exclusive rights given to the patentee, the patentee must share with the public the information necessary to make and use the invention. This is the essential exchange between inventors and the public which has long been a feature of patent law in Australia: see Lockwood No 1 at [57].

   546 In CSR Building ProductsLtd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):

   ‘…to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.’

   547. That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed.”

2. This approach was reiterated by his Honour at [241] of TCT.

3. His Honour also observed in connection with his formulation of the law on support in Australia, at [242] of TCT:

   “This statement of the position has been adopted without criticism by other judges of this Court: Rakman International Pty Ltd v Trafalgar Group Pty Ltd [2022] FCA 464; 166 IPR 264 at [120] (Yates J); Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540; 167 IPR 1 at [370]-[372], [481] (Rofe J) [“Jusand”].”

It may also be added that Justice Burley’s formulation of the law on support was undisturbed, as I understood it, in the recent decision of the Full Court in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (“Jusand FC”), being the decision on appeal to Jusand.

1. As may be understood from the preceding discussion, the nature of support was considered prior to any judicial reckoning in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [109] to [116], where Dr Barker considered caselaw from Europe and the UK relevant to the nature of support. After doing so Dr Barker outlined a three-step test to determine whether the claims are supported at [115]:

   “Thus the task is to:

   i)construe the claims to determine the scope of the invention as claimed,

   ii)construe the description to determine the technical contribution to the art, and

   iii)decide whether the claims are supported by the technical contribution to the art.”

2. I take the test and considerations of technical contribution from CSR to be congruent with the EM as cited by Justice Perram in Encompass and of the approach cited above by Justice Burley from Merck.  Dr Barker’s three step test from CSR provides a convenient means of analysing support, and I shall adopt his test in this matter, although as shall be seen, there is little need for extensive analysis on support.

1. It is not entirely clear to me how a hinge that otherwise falls within the scope of the claims, but is not as described per [090] of the accepted specification would fail to achieve the advantages outlined in the specification.  Even assuming this to be the case, Mr Hunter’s suggestion that arriving at integer 1.11 is obvious is little more than conclusory, with no explanation to support it.  Assuming that the skilled addressee is motivated to economise space, Mr Hunter has not explained why the skilled addressee would wish to further modify D1, which already has arranged the dampener so as to economise space.  The OS at [116] refers to [090] of D1 for such motivation that the skilled addressee would seek to reduce the dampener angle to be coplanar with the first panel.  However, as pointed out by the AS, at [112], [090] of D1 simply refers to thickness advantages due to the angled nature of the dampener; it does not teach or necessarily suggest any further reduction in the dampener angle.

2. Assuming the skilled addressee would wish to economise space even further in the embodiments of D1, Mr Hunter has not explained why it would be obvious to do so via mounting the dampener 123 within the walled structure 116, 117 (which I take to be commensurate with the relevant insert of the claims).  This is particularly important, in my view, noting that there are other structures either within or associated with the walled structure 116, 117, such as the hinge pin mechanism and the magnetic elements 102, 104.  The presence of these features associated with the walled structure 116, 117 means that significant redesign of the hinge 100 would be needed in order to accommodate dampener 123 within the walled structure 116, 117.  Mr Hunter in no way explains why the skilled addressee would embark on such a process, nor, if they decided to do so, why this would necessarily lead to integer 1.11, at least in his first declaration.

3. While not referred to in the OS (or at the hearing), I note that some further, and new, reasoning on why it would be obvious to arrive at integer 1.11 is given in Hunter2.  At [18] of Hunter2, Mr Hunter argues that it would be obvious to extend the walled structure 116, 117 so as to encompass the dampener 123:

   “As I observed in my declaration dated 1 December 2021 , the dampener 123 in Figure 7 is not shown located in an ‘insert component’. In my view, however, it would not only be a mere workshop variation to extend the wall 117 below the cylindrical threaded parts 115 along the periphery of the red-highlighted recesses to encompass the dampener 123 within the ‘insert component’, it would be common sense to do so. Such an extended wall 117 would follow a periphery of the mouse-ear shaped cut-out (highlighted yellow) thereby forming the ‘insert component’ and mirroring the shape formed by the walls 116 and the cylindrical threaded parts 115 on the first rear plate 110. This would reduce a need for packing or 'shims' at the sides of the cut-out and would also protect the dampener(s) 123 from lateral knocks during installation.”

4. An illustration of what this looks like is provided via an annotated copy of figure 7 at [16] of Hunter2, with the existing “insert” outlined in yellow and Mr Hunter’s extensions outlined in red:

1. Assuming I took this evidence at face value, something to which I will return to later below, this still leaves the matter of integer 1.12.  As far as that goes, Mr Hunter states at [20] of Hunter2:

   “As I explained in paragraphs 121 and 122 of my declaration dated 1 December 2021 in this matter, D1 specifically teaches that the angled orientation of dampener 123 to the second rear plate 112 in Figures 5 and 7 provides significant packaging advantages and minimises the thickness of the hinge assembly compared to that of D10. (See, D1 paragraph [090]). D1 also does not impose any limits on the angle of the dampener in this regard. Considering Figures 4 to 7 of D1, it is clear to me that the packing and thickness advantages increase as the angle of the dampener 123 relative to the rear plate 112 decreases towards zero. It is also clear to me that, as this angle of the dampener 123 decreases relative to the plate 112, the magnitude of vibrations transmitted via that dampener in a direction perpendicular to the plane of the (glass) panel will also decrease. At least for the purpose of economising space in the hinge, therefore, a skilled person would have been directly led by the teaching in D1 to reduce the angle of the dampener even more to lay it flat along the rear plate 112, or this would be no more than a mere workshop variation of the arrangement in D1.”

2. This evidence, however, does not address any further redesign that would be needed to facilitate integer 1.12.  For example, what else, if anything, needs to be done or changed in the design to allow for integer 1.12?  There appears to be a tacit assumption that it can just be done by the skilled addressee, but it is not clear whether such re-design would still result in other features of the claimed invention.  For example, is it the case that, on arriving at integer 1.12, would the skilled addressee do so in a way that allows for the “coming into contact” of integer 1.11 or would they have some form of continuous contact?  None of these issues are addressed in any way in the evidence.

3. It is also instructive at this point to reproduce [91] of Hunter:

   “I have been asked to comment on whether, in respect of those integers of the Accepted Claims which I have indicated in the Integer Table are not disclosed in the relevant one of the Prior Art Documents, in the light of the common general knowledge in the art as at: (a) 17 February 2016; or (b) 17 February 2017; the invention claimed in the Accepted Claims only varies from the information in the relevant one of the Prior Art Documents in ways that a skilled person would have been directly led to try and/or to adopt and in ways that would be no more than mere workshop variations to a person skilled in the art of such hinges.”

4. It is thus clear that Mr Hunter was provided with the solution in the form of the claimed invention, and then asked to opine on whether any differences between the invention and the prior art were obvious.  Such an approach is liable to be infected with hindsight, and, indeed, Mr Hunter’s highly conclusory remarks in his first declaration are suggestive of that.  While rather more detail is provided in his declaration in reply (I will put aside for the moment my rather grave concerns as to whether this evidence is properly in reply), the process by which Mr Hunter arrives at integers 1.11 and 1.12 is still rather brief and I cannot be satisfied that Mr Hunter did not simply follow a path to the invention from D1 because he already knew, even if subconsciously, where that path should lead to.  This is reinforced by the fact that there is no consideration of re-design difficulties the skilled addressee may have taken on starting with D1 with a view to economising space.

5. Further, Mr Hunter was simply instructed to “assume” a swath of CGK “…in the field of hinges designed for use with glass panels typical in showers or swimming pool fencing…” (Hunter1 at [93]).  I note that this “field” is somewhat narrower than that of the skilled addressee as outlined by Justice Burley in TCT and presented at [39] above. In some respects this suggests that Mr Hunter being asked to “assume” matters of CGK is not overly important, because the field is not so limited. In addition, it is not clear to me that the present argument in relation to D1 hinges on whether any of these items are CGK or not.

6. However, the “assumed” CGK clearly forms a subset of the wider field.  The embodiment discussed above in D1 is specifically a hinge “…designed to couple to a frameless glass door for a shower” although it “…may be used for other hinged items” (D1 at [84]) (as an aside, factual matters of CGK relevant to inventive step were not considered in TCT, since this concerned innovation patents). Mr Hunter concurs with Mr Wilson, at [13] of Hunter2, that the hinge of D1 is designed for glass panels. Given this, the fact that Mr Hunter needs to assume a significant body of CGK specific to hinges used for glass panels somewhat undermines his ability to represent what the skilled addressee would know or do to or with the hinge of D1.  To the extent the hinge of D1 could or would be used for other materials, it is not apparent how or whether any difference in the material used, as opposed to glass, has impacted on Mr Hunter’s evidence.  This further undermines the probative value of Mr Hunter’s evidence.

7. For the above reasons I cannot be satisfied that any of the claims lack inventive step in view of D1 and the CGK. 

D3 + CGK

1. D3 is titled “Damped Hinge and Control Device Thereof”.  Paragraph [0002] indicates that the “…instant disclosure relates to a hinge for glass doors; more particularly, to a damped spring hinge and a control device thereof.” 

2. Problems with the prior art are then outlined at [0004] and the aim of the invention provided at [0005]:

   “Glass doors are frequently used in public buildings and shower rooms. Most glass doors can be closed automatically. Conventional glass doors are usually hinged to fixed walls or glass panels. Springs are normally used for the self-closing hinges, which tend to generate excessive impacts as the doors close.

   To address the above issue, the inventor proposes the following solution.”

3. Two aspects of the invention disclosed are provided at [0006] and [0007]:

   “One aspect of the instant disclosure is to provide a damped spring hinge and a control device thereof. An elastic unit would generate the self-closing action, while the control device provides damping with hydraulic oil to reduce door impact.

   Another aspect of the instant disclosure is to provide a damped spring hinge and a control device thereof, wherein a throttle valve is used to adjust the flow of hydraulic oil for controlling the door closing speed.”

4. Figures 1 to 3, reproduced below, illustrate an embodiment that is relevant for present purposes.  These show a hinge comprising first and second connecting members 8, 9 a shaft seat 1 and shaft 2.  Ends of the shaft 2 extend beyond the shaft seat 1 for connection to second connecting member 9, while the first connecting member 8 is attached to the shaft seat 1.  Shaft 2 can rotate in shaft hole 12 of shaft seat 1, this being facilitated by bearings 15.

1. As best understood by reference to figures 1 and 3, seat body 11 of shaft seat 1 also comprises a receiving hole 13 that perpendicularly impinges on shaft hole 12.  Receiving hole 13 has mounted therein a tubular sleeve 3, sliding member 4 and an elastic unit 5.  Elastic unit 5 comprises first and second springs 51, 52, these abutting the sleeve 3 at one end and the sliding member 4 at the other.  The sliding member 4 abuts fixing surface 21 of shaft 2, whilst the sleeve 3 is mounted within a hole (unlabelled) in first connecting member 8. 

2. Along with the operation of other hydraulic elements, not important for present purposes, the elastic unit 5 provides a dampening effect on the hinge closing, via abutting the fixing surface 21 of shaft 2.  From paragraphs [0030] and [0031] it is apparent that the elastic unit 5 collapses when the hinge is moved towards an open position and expands when moving towards a closed position.

3. The Opponent addresses D3 for inventive step purposes at [119] to [120] of the OS.  Again, this rather brief synopsis refers to the integer table in WSH-10 with respect to which claim features are discussed in D3 and which are not.  Based on this and the OS, I take it that the Opponent at least concedes that integer 1.11 is not present, due to the fact that the elastic unit 5 in D3 expands on moving to a closed position, rather than retracting as per the integer. 

4. The Opponent’s case regarding the “retraction” feature in integer 1.11 largely rests on [98] to [100] of Hunter1.  These are repeated below:

   “D3 discloses that the components of the dampener are configured such that the hydraulic oil of the oil reservoir 42 can flow readily in the direction from the valve seat 61 to the thru hole 41 i.e. during retraction of the dampener components. However the effect of closing member 62 is that hydraulic oil flow is blocked in the reverse direction i.e. back into the oil reservoir during expansion of the dampener. During closing the dampener components in D3 provide dampening by expansion of the dampener (rather than contraction).

   In my view, compared to the hinge of D3, it makes no material difference whether during dampening the dampener components are retracting or expanding. In both cases a dampening effect is delivered.

   Accordingly, the variation between a retracting dampener in claim 1 of the Accepted Claims and the expanding dampener of D3 is a variation that in the light of the common general knowledge as at the relevant dates set out in paragraph 91 would be no more than a mere workshop variation of the dampener in D3.”

5. I struggle to see how it would simply be obvious to substitute an expanding dampener in D3 with a contracting one as suggested by Mr Hunter.  Mr Hunter has in no way addressed why a skilled addressee would seek to change the method of operation of the dampener of D3, and undertake the redesign this would appear to require, nor has Mr Hunter outlined in any way how this would be achieved, or that doing so would be a matter of routine and would result in something that is commensurate with the claimed invention.  For example, it is quite apparent that the elastic unit 5 of D3 never comes into contact with the second connecting member 9, and Mr Hunter has in no way addressed how the change from an expanding to a contracting dampener would necessarily result in this feature of integer 1.11, which is also missing from D3.

6. I also note, as pointed out by the Applicant in the AS at [116], Justice Burley concluded that there is a material difference between a dampener that contracts and expands; TCT at [339] and [340]. Whilst this was in the context of assessing innovative step of the 918 patent in comparison to D3, this further indicates that the difference cannot merely be summarily dismissed as being immaterial in the context of D3 as Mr Hunter has done.

7. With respect to the “coming into contact” feature, I observe, that, at the hearing, Mr Gehrig argued that the elastic unit 5 was in fact in contact with the second connecting member 9 by virtue of it being in contact with the shaft 2, which was said by Mr Gehrig to form part of the second connecting unit, and thereby formed part of the second leaf assembly for the purposes of the claim.  Mr Tsang pointed to [313] of TCT in support of these contentions.

8. Even if I accepted that that the shaft 2 was part of the hinge leaf assembly comprising second connecting unit 9 (or the mounting assembly of claim 10), the elastic unit 5 is always in contact with shaft 2 as I understand it.  Mr Gehrig’s suggestion that there could be a loss of contact between the elastic unit 5 and shaft 2 when the hinge is in the fully open position is as speculative as similar arguments made in connection with D2.  Arguments by Mr Gehrig that it would be obvious to implement D3 with a loss of contact are unpersuasive for similar reasons as discussed above with regard to D2.

9. I am not satisfied that any of the claims lack inventive step in view of D3 and the CGK.

D12 + CGK

1. This hinge is evidenced via photos provided in WSH-11.  These photos appear to be identical to photos of what I understand is the same hinge at WLM-3 and WLM-5.  I note that while Mr Mackrell provided evidence in his declaration concerning D12 in the TCT matter, neither his evidence nor D12 were considered in TCT.  Technical drawings of D12 are provided at WLM-2.

2. Other than some discussion of D12 in Mackrell and Hunter1, there is not a separate description of D12 per se.  I have therefore reproduced drawings/photos below from WSH-11/WLM-3 and WLM-5 and WLM-2 to assist in illustrating the features of D12.

3. As best understood from the images below, the hinge of D12 appears to comprise first and second leaf assemblies and a dampener that extends and retracts along an axis coplanar with part of a (first) leaf assembly.  I understand integer 1.9 is present, noting that D12 is stated by Mr Mackrell to be a soft close version of an earlier hinge (“PHB1”), which comprised a torsion spring in the hinge barrel; see Mackrell at [7] and [11] and WLM-1.

1. However, integers 1.3, 1.4. 1.6, 1.7, 1.8, and 1.11 are missing as D12 does not comprise insert components at all – the glass panels are simply held in place between the leaf assemblies using bolts that go through holes in the glass panels.  This also means there are no “cut outs” to be “tight fittingly receivable” with respect to the insert components.  Integer 1.12 is also missing as the dampener does not extend and retract along an axis coplanar with the first panel.

2. Again, the Opponent, at [121] to [124] of the OS, primarily relies on Mr Hunter’s evidence to make out its s7(3) case with respect to D12.  In this regard, Mr Hunter discusses D12 with respect to claim 1 at [154] to [158] of Hunter1.  Here Mr Hunter accepts, at [156], the fact that D12 “…is not designed for use with glass panels that have mouse ear shaped cutout sections, and therefore does not include corresponding insert components in the leaf assemblies to be tight fittingly received in the cut-out sections.”  In the same paragraph, Mr Hunter also accepts that the “vibration problem” discussed in the application in suit does not arise in D12.

3. The crux of Mr Hunter’s contentions of obviousness is provided at [157]:

   “Furthermore, as I understand it, glass-to-glass type hinges for glass panels having mouse ear shaped cutout sections and including correspondingly shaped insert components in the leaf assemblies to be tight fittingly received in the cut-out sections were well known at the relevant dates in paragraph 153. Accordingly, in my view, a skilled person would, at the relevant dates, have been directly led to try an adaptation of the Opus Hinge configuration to a hinge designed for use with glass panels having mouse ear shaped cutout sections and including correspondingly shaped insert components or insert features. This adaptation would have entailed a straight-forward re-positioning or re-location of the dampeners of the Opus Hinge into the respective insert component or insert feature of the leaf assembly. In my view, this would have been motivated by the thickness problem and the space available for accommodating the dampener within the cutout section with the dampener axis coplanar with the glass panel rather than parallel next to the outer face of the glass panel. In my view, such an adaptation would have involved a mere workshop variation of the Opus Hinge configuration.”

4. I first note that this argument is premised on “assumed” items of CGK as discussed earlier in this decision.  However, it does seem that having mouse ear glass cut outs and corresponding inserts were well known in the art before the priority date, as per Mr O’Brien’s declaration at [81](r) to [81](u), which was not in any way challenged by Mr Wilson in reply.  Whilst Mr O’Brien gave evidence at [81](aa) to [81](ee) about the use and location of dampeners in hingers, there is no evidence that specifically establishes it was CGK to have dampeners located within inserts in the manner defined in the claims

5. Overall, I find Mr Hunter’s suggestion, essentially reiterated by Mr Gehrig at the hearing, that the skilled addressee would simply be led to include cut outs in D12 because these are well known, due to the “thickness problem” difficult to accept.  There is some force to the suggestion that D12 suffers from a thickness problem, due to the dampeners being located within part of the leaf assemblies, besides Mr Hunter’s evidence – Mr Wilson specifically comments on the additional depth in one side of the leaf assembly due to the location of the dampeners at [32] of his declaration.  However, Mr Hunter’s suggestion that the modifications needed, and placing the dampeners within the newly created inserts as per the claimed invention would be “straightforward” is quite peremptory and lacking in detail for what, on the face of it, amounts to a significant redesign of D12.  In my view, Mr Hunter’s evidence here smacks of the ex post facto analysis discussed earlier in this decision. 

1. Mr Hunter’s evidence is further undermined by his apparent lack of specific knowledge concerning hinges for glass panels as also discussed earlier in this decision.

2. For the above reasons I cannot be satisfied that any of the claims lack an inventive step in view of D12 and the CGK.

Dependent Claims

1. The entirety of the OS concerning the dependent claims is provided at [125] therein:

   “In view of the evidence in [101]-[106], [108], [109]-[111], [113]-[115], [123]-[125], [135]-[138] and in [140]-[152] of Hunter1, the Opponent submits that the hinge of dependent claims 2-9 and 11-19 of the Opposed Application is not novel or does not involve an inventive step in light of the referenced prior art.”

Some further oral submissions on the dependent claims were provided by Mr Gehrig at the hearing.

1. However, given my findings above, it is unnecessary for me to consider inventive step in any detail with regard to the dependent claims. 

Inventive Step – Conclusion

1. I am not satisfied, based on the evidence before me, that any of the claims lack inventive step pursuant to s7(3).  This ground of opposition is unsuccessful.

Utility

1. Section 18(1)(c) requires a claimed invention to be “useful”. Section 7A was introduced with RTB, and defines the meaning of “useful” as follows:

   “(1)  For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.

   (2)  The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.

   (3)  Subsection (1) does not otherwise affect the meaning of the word useful in this Act.”

2. The effect of subsection 3 is such that the insertion of section 7A adds the specific, substantial and credible use criteria to the existing case law on utility, rather than displacing the same. This is apparent from the Explanatory Memorandum to RTB:

   “The specific, substantial and credible use test is not intended to displace the existing Australian case law on usefulness. An invention must have both a specific, substantial and credible use that is disclosed in the patent specification and meet the requirements of the existing case law (broadly that the invention must achieve the promised benefit).

   …

   The item bolsters the existing requirement that the claimed invention be useful with the requirement that the invention has a specific, substantial and credible use. The intent is that specific, substantial and credible be given the same meaning as is currently given by the US courts and the United States Patent and Trade Mark Office (USPTO).

   Currently, the US courts interpret the terms as follows:

   ·     ‘specific’ means a use specific to the subject matter claimed and can ‘provide a well-defined and particular benefit to the public.’

   ·     ‘substantial’ means the claimed invention does not require further research to identify or reasonably confirm a ‘real world use’. ‘An application must show that an invention is useful to the public as disclosed in its current form, not that it prove useful at some future date after further research’

   ·    an asserted use will be ‘credible’ ‘unless there is evidence that the invention is inoperative (i.e. does not operate to produce the results claimed by the patent application) or there is reason to doubt the objective truth of the statements in the specification.’” (At pages 44 to 45, emphasis in original, footnotes removed)

3. In terms of the existing case law on utility, the Full Court of the Federal Court provided a useful summary at [119] to [121] of Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29; 245 FCR 485; 117 IPR 210:

   “It is ‘no objection’ to the validity of an innovation patent granted under the Act that it is ‘commercially impracticable’. The utility of the patent depends upon whether, by following the teaching of the specification, the result claimed is produced:  Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 at 187 [24], Brennan CJ, Gaudron, McHugh and Gummow JJ adopting and citing Lane Fox v Kensington & Knightsbridge Electric Lighting Co [1892] 3 Ch 424 at 430‑431.

   The ‘basic principle’ of inutility is that if an invention ‘does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention’:  Fawcett v Homan (1896) 13 RPC 398, Lindley LJ at 405, adopted by Gummow J as a correct statement of principle in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 96 (“Rehm”). What the invention is ‘intended’ to do is a matter to be gathered from ‘title and the whole of the specification’: Rehm, Gummow J at 96.

   Put another way, the two questions are:  first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee?:  Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 394 (‘Décor v Dart’), Lockhart J (in the Full Court); Welcome Real‑Time SA v Catuity Inc (2001) 113 FCR 110 at 144 [160], Heerey J; H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151 at 198 [217] (‘Lundbeck’), Bennett J; Ranbaxy Australia Pty Ltd v Warner‑Lanbert Co LLC (2008) 77 IPR 449 at 479 [141], Emmett, Weinberg and Bennett JJ. Further, “everything” that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee: Lundbeck at 172 [81], Emmett J.”

The Parties’ Utility Submissions

1. As I understood it, the Opponent’s arguments were based wholly on the claimed invention not meeting the promise of the invention as described.  This much is apparent from [130] of the OS:

   “For the following reasons, claims 1 and 10 (and hence all dependent claims) of the Opposed Application lack utility so far as each claim covers a hinge with a dampener orientated in a direction that is not substantially orthogonal to the hinge axis.”

2. Developing this line of reasoning, the OS at [131] to [134] states:

   “Paragraph [010] of the Opposed Application identifies ‘an object’ of the invention being to substantially overcome or at least ameliorate one or more of the disadvantages identified at [003]-[009], namely significant vibrations in directions orthogonal to the panel ([005]), and higher manufacturing costs caused by the need to use hinges with relatively large overall thickness ([006]) and relatively greater amounts of steel ([008]).

   But as noted in Boehringer at [302] [Boehringer Ingelheim

   Animal Health USA Inc v Intervet International BV [2020] FCA 1333], identifying the relevant promise involves identifying what it is that the invention is intended by the patentee to do, and this is a matter to be gathered from the title and the whole of the specification. In this regard, the title of the Opposed Application is ‘Hinge’. What can be taken from this, together with the balance of the specification taken as a whole, is that quite apart from the stated desire to achieve one or more aspects of the stated ‘object’ identified in paragraph [010], as a matter of substance all inventions claimed in the Opposed Application are intended by the patentee to at least produce a functioning hinge.

   Mr Hunter’s evidence is that, so far as the claimed hinges cover dampener orientation angles that are +10 degrees to + 89 degrees and from -10 degrees to -89 degrees to 0 degrees at orthogonal to the hinge axis, the dampener would be subjected to ‘significant’ or even ‘substantial’ asymmetrical and lateral loading forces: Hunter1, [57(a)]. In Mr Hunter’s words, this is ‘a matter of simple geometry’. The result would be that the dampener would be forced against any cavity in which it is located, thus materially increasing the tendency of the dampener to jam: Hunter 1, [56(d)]. This in turn would mean that the hinge would fail to close.

   Thus, in order for the hinge of the Opposed Application to operate properly, the second portion of the dampener need not only extend and retract along a dampener axis that is parallel with a primary plane of the glass panel, that axis must also be orientated to be substantially orthogonal to the hinge axis. In other words, this feature is essential to a reliable operation of the Alleged Invention disclosed by the Applicant. Without reciting that the dampener axis is orthogonal or substantially orthogonal to the hinge axis, the claims of the Opposed Application cover a large range of hinges that simply would not work.” (italics in original)

3. These arguments were essentially reiterated by Mr Tsang at the hearing.  In effect, I take it that the Opponent is not suggesting that the specific promises, in terms of dealing with vibration or thickness problems, were not met, but that the hinge so defined in the claims extends to embodiments that would tend to jam and thereby fail to perform as a hinge at all. 

4. In AS at [137], the Applicant argues that the jamming problem does not arise as the claims do not encompass embodiments where the dampener axis is not substantially orthogonal to the hinge axis. These arguments are essentially the same as those presented under s40(2)(a).

5. The Applicant also argues, at [134] to [136] of the AS, that, even if the jamming problem does occur, it is irrelevant as the claims address the vibration and/or the thickness problem:

   “Mr Hunter’s evidence is that the dampener would be subjected to ‘significant’ or even ‘substantial’ asymmetrical and lateral loading forces which could lead to an increase in the tendency of the hinge jamming (the jamming problem): Hunter 1, [57(a)]. However, avoidance of jamming was not an object of the Opposed Application. The jamming problem of Mr Hunter’s evidence is irrelevant when considering whether the claimed invention addresses the vibration problem and/or the thickness problem.

   As explained in Mr Wilson’s evidence (Annexure IW-T1, at 1.6), the second portion of the dampener extending and retracting along an axis which is coplanar with the first panel ‘causes fewer out-of-plane forces on the panel, leading to decreased vibrations’, thereby ameliorating the vibration problem. Mr Hunter’s evidence acknowledged that the invention of claims 1 and 10 address the thickness problem: Hunter 1, [56(d)].

   On the basis that the claims address or ameliorate the vibration problem and/or the thickness problem, the invention as claimed in claims 1 and 10 (and hence all dependent claims) have utility.” (emphasis in original)

Do any of the claims lack utility?

1. I have found earlier in this decision that the claims encompass embodiments wherein the dampener axis is not substantially orthogonal to the hinge axis.  It is therefore necessary to understand what the promise of the invention is and whether claims which extend to non-orthogonal to hinge axis dampener arrangements fail to meet that problem. 

2. It appears reasonably clear that the promise of the invention relates to addressing the vibration and thickness problems as discussed by the parties.  It does not appear to be in dispute that the claimed invention meets those promises, nor do I have any reason to doubt that.  On the face of it, then, it would seem that the invention as claimed comprises the promised benefit and thereby has utility.

3. However, it would seem odd to me that an invention that met the specific promises outlined in the specification, but is otherwise unable to perform as or carry out the basic functions or purpose that the skilled addressee would reasonably expect from or as a result the claim, in this case a hinge, could be said to have utility.  The Opponent’s contentions that hinges falling within the scope of the claim would not effectively function as a hinge raises this possibility, although in my view this would seem to be better characterised as an issue going to the credibility of the claimed invention, rather than the promised benefit.

4. The difficulty for the Opponent’s case, whether this is couched as a failure to achieve the promised benefit or as a credibility issue, is that the evidence does not go so far as to indicate that the hinges covered by the claims will not work or would work so poorly as to be ineffective as hinges. It is true that Mr Hunter raises issues regarding the hinge jamming due to dampeners that are not orthogonal to the hinge axis (see Hunter1 at [56](d)), however this does not, in my view, rise to such a level to suggest these hinges are simply inoperable or so poor as to be unfit for purpose. I note that questions as to whether the skilled addressee can perform the invention across its full scope, as opposed to whether that scope is useful, are matters for s40(2)(a) and support under s40(3).

5. I am not satisfied that any of the claims lack utility.

Conclusion

1. Grounds under s40(2)(a) and support under s40(3) have been made out with respect to all the claims. No other grounds of opposition are made out. The opposition is successful.

2. I allow the Applicant two (2) months from the date of this decision to propose amendments overcoming the deficiencies identified in this decision.

Costs

1. Costs usually follow the event.  However, the Applicant submitted (AS at [145]) that, if the opposition was successful,  there should be a reduction in costs of at least 50%.  The reasons for this are given at AS [140] to [144] and are premised on the Opponent’s conduct during the opposition causing delay and putting the Applicant to unnecessary expense:

   “Firstly, while the original deadline for Evidence in Support was due on 3 September 2021, the vast bulk of the evidence being relied on was not filed until 2 December 2021. In their letter of 16 November 2021, the Opponent’s attorneys stated that this delay was due to the selection process of the expert (Mr Hunter) from May 2021 to July 2021. However, as is apparent from exhibit WSH-1, Mr Hunter had been engaged by the Opponent since 6 October 2020. The delay in service of its evidence could not have been caused by the timing of Mr Hunter being engaged.

   Secondly, the Opponent has filed an extraordinarily large amount of evidence in this matter that is not being relied upon in its submissions. The Opponent’s evidence exceeds 1,000 pages. As an illustrative point, the O’Brien declaration has a length of 280 pages and has not been relied upon for any submission, except for his agreement with Mr Hunter’s views at OS [27], [114], [119] and [123]. It is plainly apparent that the Opponent could have prosecuted this matter without the O’Brien evidence. The Applicant was put to the unnecessary expense of having to review and consider the O’Brien evidence.” (AS at [142] and [143])

2. At the hearing, Mr Tsang, in response to the AS on costs, noted that a lot of material had been filed, but, as per litigation generally, an approach had been taken to narrow to the strongest arguments.  Mr Tsang argued that the Opponent should not be criticised for that.

3. Mr Fox essentially pointed to the AS on costs, but also noted that the Opponent had in fact expanded their case by raising additional documents for inventive step at the hearing.

4. In terms of the volume of evidence and the use made thereof, I do not see this as departing from what would be reasonable during the course of an opposition.  I do not see a basis for varying costs in view of this.

5. With respect to the extension to file evidence, there are relatively stringent requirements that need to be met to gain an extension under Regulation 5.9, that in effect ensure that the reasons to grant such an extension inherently outweigh other interests impacted by the delay so introduced into the opposition.  The fact that an extension of time to file evidence has been granted is not an occasion per se that should necessarily lead to adverse cost imputations against a party for the delay thereby caused. 

6. However, a party’s behaviour during the course of an opposition may be taken account of in awarding costs.  The fact that Mr Hunter gave evidence in TCT suggests that the Opponent considered him suitable to provide evidence in that matter, so it appears reasonable to believe that the Opponent would also consider him as an appropriate person to give evidence in this opposition.  The Applicant’s point about Mr Hunter being engaged from 6 October 2020 has some force and appears to bring into question the need or basis for the extension of time to file evidence to begin with – I note that the delegate allowing the extension was not privy to WSH-1. 

7. In addition, the material expansion of the case put to the Applicant at the hearing, by adding three new documents for s7(3) purposes is not appropriate.  The failure to provide any submissions regarding how one of those documents was relevant for s7(3) compounds the egregiousness of the Opponent’s actions in this regard.

8. Consequently, despite the fact that the opposition has overall been successful, I am of the preliminary view that, due to the Opponent’s conduct outlined in the preceding two paragraphs, it would be appropriate to make no award of costs.  However, as noted, that is a preliminary view, and I allow both parties two (2) weeks from the date of this decision to provide submissions on costs, including which party should have costs awarded against it and the quantum of costs.  I will then make an award of costs in view of any submissions so received, noting that if I receive no submissions or these do not persuade me otherwise, I will award costs according to the preliminary view expressed in this decision.

Dr W.E. Guinea

Delegate of the Commissioner of Patents

Annex A – Claims of the 2017201858 Application.