Tramanco Pty Ltd v BPW Transpec Pty Ltd
[2012] FCA 613
•14 June 2012
FEDERAL COURT OF AUSTRALIA
Tramanco Pty Ltd v BPW Transpec Pty Ltd [2012] FCA 613
Citation: Tramanco Pty Ltd v BPW Transpec Pty Ltd [2012] FCA 613 Parties: TRAMANCO PTY LTD (ACN 010 101 872) v BPW TRANSPEC PTY LTD (ACN 006 645 272), BPW TRANSPEC PTY LTD (ACN 006 645 272) and TRAMANCO PTY LTD (ACN 010 101 872) File number: QUD 114 of 2009 Judge: DOWSETT J Date of judgment: 14 June 2012 Supplementary reasons for judgment: 5 September 2012 Catchwords: PATENTS – construction – method of logging the performance of a vehicle suspension system – impact loading of a vehicle
PATENTS – skilled addressee – sufficiency of description – whether a skilled addressed would be a person familiar with the performance characteristics of heavy vehicle suspensions and the inter-relationship of suspension performance with road damage
PATENTS – novelty – s 7 Patents Act 1990 (Cth) – prior art relied on as anticipating the patent – whether reverse infringement test should be applied
PATENTS – invalidity – invalidity pursuant to s 40(2)(a) and s 40(3) Patents Act 1990 (Cth) – failure to describe the invention fully - failure to describe the best method known of performing the invention - claims not fairly based on the matter described in the specification
Legislation: Patents Act 1990 (Cth) ss 7(1), 7(3), 13, 18(1)(b), 40(2), 40(3), 117, 119, 121A, 138(3) Cases cited: Aktiebolaget Hässle & Anor v Alphapharm Pty Ltd (2002) 212 CLR 411
The British Hartford-Fairmont Syndicate Ltd v Jackson Bros (Knottingley) Ltd (1932) 49 RPC 495
The British Hartford-Fairmont Syndicate Ltd v Jackson Bros (Knottingley) Ltd (1934) 51 RPC 254
Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20
Kimberley-Clark v Arico Trading International Pty Ltd (2001) 207 CLR 1
Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178
Kirin-Amgen Inc and Others v Hoechst Marion Roussel Ltd and Others (2004) 64 IPR 444
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173
Meyers Taylor Pty Ltd v Vicarr Industries Ltd & Ors (1976-1977) 137 CLR 228
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545
Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157
Re ICI Chemicals and Polymers Ltd v Lubrizol Corp Inc (1999) 45 IPR 577
Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59New Shorter Oxford English Dictionary (Clarendon Press, 1993)
Macquarie Dictionary (5th ed, Macquarie Dictionary Publishers Pty Ltd, 2009)
Moulton HF, The Present Law and Practice Relating to Letters Patent for Inventions (Butterworth & Co, 1913)
Dates of hearing: 18-22; 25-29 October 2010 and 4-8 April 2011 Date of last submissions: 7 July 2011 Place: Brisbane Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 315 Counsel for the Applicant: Mr A Franklin SC Solicitor for the Applicant: Bennett & Philp Lawyers Counsel for the First, Second and Third Respondents: Mr P Collinson SC with Ms S Gatford Solicitor for the First, Second and Third Respondents: Madgwicks Lawyers
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 114 of 2009
BETWEEN: TRAMANCO PTY LTD (ACN 010 101 872)
ApplicantAND: BPW TRANSPEC PTY LTD (ACN 006 645 272)
First RespondentBPW TRANSPEC PTY LTD (ACN 006 645 272)
Cross ApplicantTRAMANCO PTY LTD (ACN 010 101 872)
Cross Respondent
JUDGE:
DOWSETT J
DATE:
5 SEPTEMBER 2012
PLACE:
BRISBANE
SUPPLEMENTARY REASONS FOR JUDGMENT
In these proceedings the applicant (“Tramanco”) alleged that the first respondent BPW Transpec Pty Ltd (“BPW”) had infringed its patent. BPW denied infringement and sought revocation of the patent for want of novelty, want of inventiveness and failure to comply with s 40 of the Patents Act 1990 (Cth) (the “Patents Act”). I published my reasons for judgment on 14 June 2012, indicating that I might make editorial changes in the course of further proofing. The reasons in their final form have now been provided.
The parties have made submissions as to appropriate orders, including orders as to costs. There is a substantial issue as to costs. I propose to defer dealing with that matter until it is more convenient to do so, having regard to my other commitments. However I propose to deal with other orders so that they may be the basis of any notice of appeal. I shall endeavour to deal with the issue of costs within a period of time which will allow any appeal as to costs to be heard with any appeal on substantive issues.
The parties agree that there should be a declaration that the patent is invalid and an order for its revocation. I shall order accordingly. It is also agreed that there should be an order discharging certain interlocutory orders made on 22 May 2009 and on 4 May 2011. I shall order accordingly.The parties agree that there should be an order as to the assessment of compensation payable pursuant to an undertaking, given by Tramanco as a condition of the grant of interlocutory relief. There is, however, a dispute as to whether such assessment should be limited to compensation payable to the respondent or should extend to compensation payable to “… any other person adversely affected”. The undertaking extends to such other persons. The order should reflect the wording of the undertaking. The assessment should extend, to the extent that it may be relevant, to compensation payable to BPW or any other person adversely affected. It is also agreed that there should be directions as to the conduct of the assessment proceedings. I shall order accordingly. It is proposed that BPW be relieved from undertakings given to the Court on 4 May 2011. This seems appropriate.
Tramanco seeks the following additional order:
Upon the Applicant undertaking to the Court that, during the period of the stay made by this Order, it will not threaten, commence or pursue proceedings for infringement of Australian Patent 2004264997 against any person or entity (including, but not limited to, the Respondent), that it will not seek to amend any of the claims of the said patent other than in the course of or in connection with any Appeal it makes against any of these Orders, and, further, to expeditiously prosecute any such Appeal, the operation of paragraphs 2, 4 and 5 of these Orders be stayed until the later of:
(a) 28 days from the date of the making of these Orders; or
(b)the date on which any Appeal against the whole or any part of these Orders is finally determined.
BPW submits that the following order should be made by way of stay:
Upon the Applicant by its counsel undertaking to the Court:
(a) to prosecute any appeal expeditiously;
(b)during the period of the stay, not to threaten any person with proceedings for infringement of Australian Patent No 2004264997; and
(c)during the period of the stay, not to seek to amend any claims of the Australian Patent No 2004264997 other than in the course of or in connection with these proceedings;
the operation of paragraph 2 of this Order be stayed:
(d)for 21 days from the date of the Order; and
(e)if the Applicant within that 21-day period lodges an appeal against paragraph 2 of this Order, until the determination of that appeal or further order.
Order 2 is the proposed order for revocation. Orders 4 and 5 contain directions as to the assessment of compensation. Thus the parties agree that there should be a stay of the order as to revocation. Tramanco also seeks a stay of the orders relating to the assessment.
Apart from the matters in dispute between the parties, I was concerned by the reference in the proposed orders to an application for amendment of the patent. In the final submission at the trial no application was made for any such amendment. Hence I cannot see how the question could arise in the course of any appeal. The argument seems to be that s 105 of the Patent Acts 1990 (Cth) contemplates an application being made to the Court at any time. Similarly, s 104 contemplates an application to the Commissioner. In my view any difficulties which may arise in this regard can best be met by requiring Tramanco to give an undertaking not to make any such application to the Court or the Commissioner other than upon seven days’ notice in writing to BPW. As to the orders relating to assessment of compensation, I see no reason why they should be stayed. I need not, at this stage, set a date for hearing.
I propose to give the parties one more opportunity to work co-operatively together in order to bring this litigation to finality. Hopefully they will demonstrate a more constructive approach than has, until now, been demonstrated. I direct the parties to bring in, within seven days from the publication of these reasons, appropriate draft orders.
I have previously invited the parties to seek any further findings of fact which they may consider to be appropriate. Neither party has sought such findings. As I have not yet disposed of the question of costs, the proceedings must remain on foot. I adjourn then to a date to be fixed.
I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett. Associate:
Dated: 5 September 2012
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 114 of 2009
BETWEEN: TRAMANCO PTY LTD (ACN 010 101 872)
ApplicantAND: BPW TRANSPEC PTY LTD (ACN 006 645 272)
First RespondentBPW TRANSPEC PTY LTD (ACN 006 645 272)
Cross ApplicantTRAMANCO PTY LTD (ACN 010 101 872)
Cross Respondent
JUDGE:
DOWSETT J
DATE:
14 JUNE 2012
PLACE:
BRISBANE
REASONS FOR JUDGMENT
THE PATENT
The applicant and cross-respondent (“Tramanco”) holds Australian Patent No 2004264997, (the “Patent”), said to concern a “method for logging the performance of a vehicle suspension system”. The Patent was granted pursuant to the Patents Act 1990 (Cth) (the “Patents Act”). The priority date is 19 August 2003.
The suspension system of a vehicle is the mechanism which connects the road wheels of the vehicle (including the axles) to its body. Trucks, trailers and other heavy haulage vehicles are usually equipped with self-levelling suspension systems, designed to compensate for changes in load so that the vehicle always remains at approximately the same height off the road, whether empty, partially laden or fully laden. Self-levelling is generally effected by devices which measure the vertical distance between, for example, the trailer bed and the extension arm. The greater the load, the smaller this distance tends to become. An initial variation in the distance operates a valve which controls the height adjustment system. Usually, height adjustment takes place at both ends of the vehicle and at each axle or group of axles. The suspension is also designed to ameliorate the effects of vertical forces on the vehicle. I shall deal with this aspect in more detail at a later stage.
The suspension may be comprised of springs or shock absorbers, but many vehicles have air suspension, using collapsible, pressurized air containers in place of those mechanisms. In such a system, the upward movement of a wheel reduces the volume of contained air, raising the pressure within the container so that it tries to expand again. A height control valve connects the air container to a high pressure air reservoir so that air flows into the container when the load is increased. When the load is reduced, pressure is released to the atmosphere. Air suspensions generally have dampers, often referred to as “shock absorbers”. Dampers are designed to damp out vibrations so as to minimize bouncing of the suspension in response to an impulsive load. They do so by absorbing energy stored in the suspension. A damper may be “single action” or “double action”, depending upon whether it acts in one or both directions (ie up and/or down).
Logging the performance of a suspension system may be useful in assessing the condition of the suspension and, therefore, the need for maintenance. It may also facilitate assessment of the “road-friendliness” of the vehicle. As I understand it, the term “road-friendliness” describes the likely adverse effect of a motor vehicle upon roads which it uses. The National Road Transport Commission (the “NRTC”) is responsible for assessing the road-friendliness of vehicles according to established standards. In April 1999 the NRTC issued Vehicle Standards Bulletin 11 (“VSB-11”). It prescribed four criteria which a suspension had to meet in order to be considered “road friendly”. They were:
·the frequency of the sprung mass above the axle or axle group in free transient vertical oscillation must not be higher than 2.0 Hz;
·the mean damping ratio must not be more than 20% of critical damping for the suspension in its normal operating condition;
·the damping ratio of the suspension with all dampers (if fitted) removed or incapacitated must not be more than 50% of the damping ratio; and
·static load share between axles in the axle group must be within 5%.
The level of road-friendliness determines whether or not a vehicle may use particular roads and/or the loads which it may carry. The Patent specification (the “specification”) asserts that “conventional” suspension testing may not be consistently reliable, particularly for larger vehicles. In particular, it may not accurately reflect the combined effect of vehicle weight, suspension geometry, shock absorber characteristics and other considerations. The specification also identifies the need, in some cases, to remove components from the vehicle for testing, resulting in the vehicle being out of service, and the substantial cost associated with removing and replacing such components. Further, it is said that testing of shock absorbers, whilst isolated from their operating environment, may be unsatisfactory as it involves measurement against an arbitrary standard rather than relative to the suspension system of which it is a part. The invention is said to be directed to a method for logging the performance of a vehicle suspension system “which may at least partially overcome the above-mentioned disadvantages or provide the consumer with a useful or commercial choice”.
One form of the invention resides in
a method for logging the performance of a vehicle suspension system including the steps of measuring the dynamic effect of an impulsive load with an electronic weighing system, wherein the electronic weighing system is mounted on board the vehicle, and determining one or more parameters selected from the group consisting of the dampening ratio of the suspension, the oscillation frequency of the suspension and the impact loading of the vehicle.
This form of the invention is the basis of claim 1. The “dampening” (damping) ratio is measured in percentage terms, the percentage indicating the extent of reduction in the amplitude of the oscillation which the suspension undergoes in response to an impulsive load. To be “road friendly”, the damping ratio must be greater than 20%. The frequency of oscillation is measured in Hertz. I understand this concept to involve the number of oscillations produced in response to the application of an impulsive load. To be road-friendly, the oscillation frequency must be less than 2 Hz. The meaning of the term “impact loading” is not so clear. I shall return to that matter, and to the term “dynamic effect of an impulsive load”. When a wheel rises after going over an irregularity in the road surface, it places pressure on the suspension from below. The suspension will absorb some of the force so transmitted. The rest will pass into the body which will rise off the suspension and then fall back onto the suspension. The suspension will again have a damping effect on the force, the remaining force passing to the wheels and ultimately, the road. Any stored energy in the suspension may result in force again being applied upwards.
The specification discloses existing methods for testing suspensions as including:
·application of force to the body of the vehicle, with visual identification of any responsive rocking motion;
·the European drop test, in which a set of axles is mounted on a test rig and driven over a sheer drop of approximately 80 mm, the responding damping ratio and frequency being measured using load cells attached to the test rig;
·the bump test, in which a vehicle is driven at a particular speed over a “nominal” bump; and
·road testing on a normal, uneven road at speed.
I assume that in the bump test and road test, load cells are also used. I shall discuss the term “load cell” in the context of novelty. Broadly speaking, the specification identifies a method of logging suspension performance using an onboard electronic weighing system to measure and/or collect data. It may be inferred from the specification that such data is to be used in calculating the damping ratio, frequency of oscillation and/or impact loading of the vehicle. However it is not clear that such use is an element of the invention as claimed. I shall return to that matter.
The method may include a meter displaying the data and/or collated results. It may also include a capacity for storing such information. The relevant data may be collected from various points in the suspension, in particular, from areas in the vicinity of the axles, using load cells or pressure transducers associated with signal amplifiers. The collected information may be stored according to date, time or “particular dynamic parameters” which may be pre-set or varied to suit operating conditions. I understand the reference to “dynamic parameters” to mean, in this context, that information may be recorded or not, depending upon the magnitude of the impulsive load. The meter may be connected to a tool for analysis of collected information, either on board or elsewhere, in the latter case using a transmitting system. The vehicle may also have a vehicle locating means, preferably a satellite global positioning system (“GPS”). Alternatively other means, such as a trip meter, may be used. The method may also utilize some form of “remote interrogation” to allow access to the data, presumably from some distant point.
Another embodiment of the invention assesses performance of the suspension over a variable road section at different times, with the vehicle’s location being known at all times. This test may be described as a “trip test”. It yields data concerning road conditions and vehicle performance. The test may be triggered by an impulsive load of pre-set magnitude.
At pp 12-18 of the specification, there is a description of a test carried out on a newly constructed 34 tonne, four-axle trailer using the patented method. The suspension of the trailer was tested using a version of the European drop test, the bump test and on-road testing. The specification asserts that the drop test produced no data capable of meaningful analysis. The bump test was deemed successful. I infer that the on-road test was also deemed to be successful.
THE CLAIMS
The relevant claims in the Patent, for present purposes, are claims 1, 12, 13, 14, 19, 20, 21, 22 and 23 as follows:
1.A method for logging the performance of a vehicle suspension system including the steps of measuring the dynamic effect of an impulsive load with an electronic weighing system, wherein the electronic weighing system is mounted onboard the vehicle, and determining one or more parameters selected from the group consisting of the dampening ratio of the suspension, the oscillation frequency of the suspension and the impact loading of the vehicle.
…
12.A method according to claim 1 wherein the performance of the vehicle suspension system is logged over a standard road section at different times to test the performance of an individual axle or group of axles to an impulsive load.
13.A method according to claim 12 including the step of comparing the performance of the vehicle suspension system to predetermined standards.
14.A method according to claim 12 wherein the performance of the vehicle suspension system when the suspension is new is compared to performance at various periods throughout the life of the suspension in order to ensure that the performance of the suspension remains within the predetermined standards.
…
19.A method according to claim 12 including a test in which the variation in a mass signal is recorded as the combination test rig vehicle travels along a normal, uneven road at speed.
20.A method according to claim 19 wherein a location device is linked to the data collected, to precisely locate the portion of road upon which the test was conducted for future comparison.
21.A method according to claim 12 wherein the performance of the vehicle suspension system is logged over a variable road section at different times, the position of the vehicle being identifiable at all times during the logging process, allowing data to be collected about the condition of the roads which a test vehicle travels over.
22.A method according to claim 21 wherein the logging is triggered by the application of a particular preset magnitude impulsive load.
23.A method according to claim 22 wherein the location of the vehicle is ascertainable with precision using locating means.
It is worth noting that all other claims are dependent upon claim 1, and that it claims a method for logging the performance of a vehicle suspension system. The dependent claims should be read in that context. Claims 13, 14, 19, 20, 21, 22 and 23 are also dependent upon claim 12. Further, claim 22 is dependent upon claim 21, and claim 23 is dependent upon claim 22. Claim 1 is expressed in very general terms. Such generality is significant in this case.
THE RESPONDENT
The respondent (“BPW”) is a wholly owned Australian subsidiary of a German company, BPW Bergische Achsen KG (the “parent company”). The parent company manufactures trailer axles and electronic braking systems for trailers. BPW conducts business throughout Australia. It has offices in New South Wales, Victoria, Queensland and Western Australia. Tramanco asserts that BPW has infringed the Patent by importing, making, selling or otherwise dealing with an electronic braking system manufactured by the parent company. It asserts that the system incorporates a vehicle suspension system logging method in a computer programme, with associated hardware and devices. BPW admits that it has imported the component parts of an electronic braking system and assembled and sold, in Australia, an electronic braking system (the “BPW EBS”). For the sake of clarity I shall hereafter generally use the acronym “BPW EBS” to describe both the braking system as mounted on a vehicle and associated hardware and software used in connection with it. However I shall later discuss that associated hardware and software. Where necessary I shall distinguish the braking system from other items of hardware or software.
BPW further admits that it had proposed to market, in Australia, a version of the BPW EBS which includes a software programme to utilize information captured by an air pressure transducer connected to a vehicle’s airbag suspension, in order to provide an indication of the overall condition of the roads over which the vehicle has travelled (the “RCM feature”). However, after the commencement of these proceedings, BPW arranged for the removal of the RCM feature from the BPW EBS being sold in this country. Apart from the BPW EBS, three other BPW products are relevant. Trailer Manager software is not usually sold by BPW. It is used internally to create trailer-specific brake programmes for installation in the BPW EBS when installed in a trailer. BPW does not plan to release the Trailer Manager software on the general market as it prefers to retain control over programming and testing. Trailer Manager software can also be used to generate fault reports.
The Trailer Monitor Unit is a small “side of vehicle” device which can be connected to a BPW EBS fitted to a trailer, for the purpose of reading some information stored in the BPW EBS. Information is generally shown in text. It has only limited graphic capacity. It is an optional extra which may be acquired in conjunction with a BPW EBS.
Trailer Analyser software is separate software which runs on a personal computer (“PC”). The PC must be connected to a valve in the BPW EBS (the “valve”). I shall say more about the valve at a later stage. The connection is via a dongle. The Trailer Analyser software is used to download data from the valve whilst the trailer is stationary. In order to view the data, the PC must be connected to the valve and to the computer. The Trailer Analyser software and dongle are not presently being supplied to Australian customers. At a later stage, I shall discuss the data available using the Trailer Analyser software.
Although the Patent is for a method, BPW imports and supplies a product, the BPW EBS. It denies performance of the method. At a very late stage, Tramanco sought leave to add a claim pursuant to s 117 of the Patents Act. Leave was given.
TRAMANCO’S CLAIM
At para 12 of its amended statement of claim Tramanco pleads that the BPW EBS possesses each of the integers of claims 1 and/or 12 and/or 13 and/or 14 and/or 19 and/or 20 and/or 21 and/or 22 and/or 23 of the patent. In para 12 of the further amended statement of claim this allegation is particularized as follows:
(a)The [BPW] method contains a “road conditions monitoring” function which … “logs the pressure spikes in trailer air bags to give a road roughness count”;
(b)The system … for monitoring road conditions … [by] logging the pressure spikes in trailer airbags … must contain the following features:
(i)a method for logging the performance of a vehicle’s suspension system;
(ii)within or as part of that method, steps for measuring the dynamic effect of an impulsive load;
(iii)a form of electronic system for logging that performance;
(iv)that weighing system being mounted on board the vehicle;
(v)the program in that system containing means for measuring the damping ratio of the suspension or means of extrapolating data from the [damping] ratio, the oscillation frequency of the suspension and the impact loading of the vehicle;
(vi)a means of so logging the performance of a vehicle over a standard road section at different times to test the performance of an individual axle or group of axles on a trailer or on a prime mover or truck (or other form of vehicle) to an impulsive load;
(vii)a program for recording the variation in a mass signal as the vehicle travels along a normal, uneven road at speed;
(viii)a program which enables the data collected to locate the portion of road upon which the vehicle was travelling at the time that the testing was carried out using the [BPW] method and/or the [BPW] device and a means of retaining that data for future comparison;
(ix)a program wherein the performance of the vehicle’s suspension system is logged over a variable road section (thus measuring varying road conditions) at different times, the position of the vehicle during that logging process being identifiable at all times and thus allowing data to be collected at the condition of the roads over which the vehicle was travelling at the time of testing; that is to say, testing the roughness of the road conditions over which the vehicle is travelling at the time of the testing and thus being able to monitor damage that may be caused to the vehicle by the roughness of those road conditions at the time of the test;
(x)a further programming means whereby the logging is triggered or activated by the Applicant (sic) of a particular, preset magnitude impulsive load;
(xi)a means within the program whereby the location of the vehicle at the time of the test is ascertainable with precision using some form of locating means (including but not necessarily limited to some form of global positioning system or like means or any other means of location);
(xii)a means within the program whereby a predetermined standard is set as to the performance of a vehicle’s suspension system. [BPW’s] system provides for a means of capturing and monitoring peak loads in the vehicle’s suspension system. Data is accumulated on a trip made by the vehicle and used as a reference for further tests on later trips made by that vehicle. The program provides for the measurement from time to time of the performance of the suspension or wear against the standards as so predetermined. Further, there is a “Compare” function provided in [BPW’s] Trailer Analyser Software that is used to compare a suspension’s performance against a predetermined standard or standards.
BPW’S DEFENCE AND CROSS-CLAIM
BPW pleads that para 12 of the further amended statement of claim is embarrassing and liable to be struck out on the ground that it fails to particularize the alleged infringements and to identify components, if any, which infringe. BPW also denies each of the allegations in para 12. In particular it denies the assertion or assumption in para 12(b) that the BPW EBS “must contain” features (i) to (xi). BPW pleads as follows:
·as to subparas (i) to (iii), it denies that the BPW EBS with the RCM feature contains a method for logging the performance of a vehicle suspension system;
·as to subpara (iv), it admits that the BPW EBS with the RCM feature is mounted on board a vehicle, but pleads that it is an electronic braking system and that, to the extent that it records data referable to variations in mass, it does so imprecisely and so as to regulate braking performance;
·as to subpara (v), it denies that the programme within the RCM feature contains a means for measuring the damping ratio of the suspension or for extrapolating data from the damping ratio, or that it contains a means of measuring the oscillation frequency of the suspension;
·as to subpara (vi), it again denies that the RCM feature contains a means of logging the performance of a vehicle suspension system;
·as to subpara (vii), it admits that the RCM feature processes variations in air pressure in the airbags of the air suspension of the vehicle;
·as to subpara (viii) it denies that there is a programme in either the BPW EBS or the RCM feature which records data as to location of the vehicle on which the BPW EBS is fitted or which time stamps any data collected; and
·as to subparas (ix), (x) and (xi), it denies that the RCM feature contains programmes of the kinds alleged.
Although BPW generally denies subpara (xii) it has not pleaded specifically to it.
BPW also pleads prior use and cross-claims for revocation of the Patent on the grounds that the claims:
·lack novelty;
·lack an inventive step; and
·fail to disclose the best method of performing the invention and are not clear, succinct and fairly based on the specification.
A PRELIMINARY MATTER
It is fair to say that Tramanco’s case lacks a degree of precision and has changed in the course of the trial. BPW’s response to Tramanco’s case has similar characteristics. As a result, much time has been spent in cross-examining various witnesses on issues which, in the end, may not be relevant. Out of fairness to Tramanco, I should say that, to some extent, its problems arise out of BPW’s inability to provide it with certain “source codes” relevant to the operation of the BPW EBS or elements thereof. Out of fairness to BPW, I should say that it attributes such inability to the fact that the source codes are within the knowledge of a third party supplier to the parent company. Out of fairness to counsel, I should add that their closing submissions did much to remedy the lack of focus which characterized the trial.
The course of the trial has also caused difficulty. It was conducted over ten days in October 2010 and five days in April 2011. I received final written submissions in July 2011.
CONSTRUCTION OF THE PATENT
In Kimberley-Clark v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [15], the High Court said:
… Where the question concerns infringement of a claim or the sufficiency of a claim to “define” the invention, it has been held in this Court under the 1952 Act that the plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification. However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.
This principle is of particular importance in the present case. In Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 at [44]-[45], the Full Court said:
44The principles of construction applicable were not in dispute. When determining the nature and extent of the monopoly claimed, the specification must be read as a whole. But as a whole it is made up of several parts which have different functions. The claims mark out the legal limits of the monopoly granted. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that. Although the claims are construed in the context of the specification as a whole, 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. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document. It is legitimate, however, to refer to the rest of the specification to explain the background of the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. See Flexible Steel Lacing Co v Beltreco Ltd [2000] 49 IPR 331 at [73]-[75] (Hely J).
45Other more specific principles of construction collected in Flexible Steel at [81] are:
•a specification should be given a purposive construction rather than a purely literal one;
•the hypothetical addressee of the specification is the non-inventive person skilled in the art before the priority date;
•the words used in a specification are to be given the meaning the hypothetical addressee would attach to them, both in the light of the addressee’s own general knowledge and in the light of what is disclosed in the body of the specification;
•as a general rule, the terms of the specification should be accorded their ordinary English meaning;
•evidence can be given by experts on the meaning those skilled in the art would give to technical or scientific terms and phrases, and on unusual or special meanings given by such persons the words which might otherwise bear their ordinary meaning;
•however, the construction of the specification is for the Court, not for the expert. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the Court reads the patent in the same way.
Lord Hoffmann said, in Kirin-Amgen Inc and Others v Hoechst Marion Roussel Ltdand Others (2004) 64 IPR 444 at [32]-[35]:
32Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, “the meaning of the words the author used”, but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience. … .
33In the case of a patent specification, the notional addressee is the person skilled in the art. He (or, I say once and for all, she) comes to a reading of the specification with common general knowledge of the art. And he reads the specification on the assumption that its purpose is both to describe and to demarcate an invention – a practical idea which the patentee has had for a new product or process – and not to be a textbook in mathematics or chemistry or a shopping list of chemicals or hardware. It is this insight which lies at the heart of “purposive construction”. If Lord Diplock did not invent the expression, he certainly gave it wide currency in the law. But there is, I think, a tendency to regard it as a vague description of some kind of divination which mysteriously penetrates beneath the language of the specification. Lord Diplock was in my opinion being much more specific and his intention was to point out that a person may be taken to mean something different when he uses words for one purpose from what he would be taken to mean if he was using them for another. The example in the Catnic case was the difference between what a person would reasonably be taken to mean by using the word “vertical” in a mathematical theorem and by using it in a claimed definition of a lintel for use in the building trade. The only point on which I would question the otherwise admirable summary of the law on infringement in the judgment of Jacob LJ in Rockwater Ltd v Technip France SA … is when he says in subpara (e) that to be “fair to the patentee” one must use “the widest purpose consistent with his teaching”. This, as it seems to me, is to confuse the purpose of the utterance with what it would be understood to mean. The purpose of a patent specification, as I have said, is no more nor less than to communicate the idea of an invention. An appreciation of that purpose is part of the material which one uses to ascertain the meaning. But purpose and meaning are different. If, when speaking of the widest purpose, Jacob LJ meant the widest meaning, I would respectfully disagree. There is no presumption about the width of the claims. A patent may, for one reason or another, claim less than it teaches or enables.
34“Purposive construction” does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.
35One of the reasons why it will be unusual for the notional skilled man to conclude, after construing the claim purposively in the context of the specification and drawings, that the patentee must nevertheless have meant something different from what he appears to have meant, is that there are necessarily gaps in our knowledge of the background which led him to express himself in that particular way. The courts of the UK, the Netherlands and Germany certainly discourage, if they do not actually prohibit, use of the patent office file in aid of construction. There are good reasons: the meaning of the patent should not change according to whether or not the person skilled in the art has access to the file and in any case life is too short for the limited assistance which it can provide. It is however frequently impossible to know without access, not merely to the file but to the private thoughts of the patentee and his advisors as well, what the reason was for some apparently inexplicable limitation in the extent of the monopoly claimed. One possible explanation is that it does not represent what the patentee really meant to say. But another is that he did mean it, for reasons of his own; such as wanting to avoid arguments with the examiners over enablement or prior art and have his patent granted as soon as possible. This feature of the practical life of a patent agent reduces the scope for a conclusion that the patentee could not have meant what the words appear to be saying. It has been suggested that in the absence of any explanation for a restriction in the extent of protection claimed, it should be presumed that there was some good reason between the patentee and the patent office. I do not think that it is sensible to have presumptions about what people must be taken to have meant but a conclusion that they have departed from conventional usage obviously needs some rational basis.
The skilled addressee
Tramanco takes a pragmatic approach to identification of the skilled addressee, apparently accepting that all of the expert witnesses who offered opinions as to construction of the Patent and associated matters fitted the description. BPW takes a more focussed approach. It identifies the skilled addressee as “a person who is familiar with the performance characteristics of heavy vehicle suspensions and the interrelationship of suspension performance with road damage”. It submits that the notional skilled addressee “would know that oscillation frequency and damping ratio were performance characteristics of a suspension and know of the VSB-11 requirements, the reason for their adoption by regulators … and how to test them”. It further submits that such an addressee would not necessarily have conducted those tests but would understand the principles behind them. These aspects seem to be common ground.
BPW also submits that the skilled addressee would understand the phrase “impact loading of the vehicle” to refer to the force exerted by the tyres on the road surface, a matter which is of some importance in this case. Further, the skilled addressee would know that the impact loading of vehicles has been determined in the past “through the determination of dynamic load co-efficients”. I accept that the skilled addressee is a person who is familiar with the performance characteristics of heavy vehicle suspensions and the inter-relationship of suspension performance with road damage. Most of the other attributes referred to by BPW are matters to be proven as part of the relevant common general knowledge rather than characteristics of the skilled addressee. The meaning of the term “impact loading” is very much in dispute.
BPW’s identification of the skilled addressee accurately reflects the nature of the problem to be addressed in this case. The evidence demonstrates that there are recognized standards and tests which are relevant to that problem, that there are persons with relevant training and/or experience and that there is a national body engaged in the area, the NRTC.
BPW submits that Dr Sweatman and Mr Di Cristoforo (both called by BPW) are skilled addressees. BPW also accepts that Dr Blanksby (called by Tramanco) “was perhaps a skilled addressee by 2010, although not in 2003”. BPW at least implies that Dr Gilmore (called by Tramanco) was not a skilled addressee, or that his evidence should, for other reasons, be given little weight. Having regard to the evidence, and in the absence of any submission to the contrary by Tramanco, I accept that Dr Sweatman and Mr Di Cristoforo are skilled addressees. Dr Sweatman’s curriculum vitae clearly demonstrates as much, as does Mr Di Cristoforo’s. As to Dr Blanksby, between 2000 and 2004 his work was unassociated with heavy road vehicles. However he had previous experience in that area and re-entered it in about 2006. I accept him as a skilled addressee. Dr Gilmore’s curriculum vitae does not disclose a close association with heavy road transport. However, in cross-examination, he claimed some engagement in that area, including vehicle suspension. I am inclined to accept him as a skilled addressee, but to note that he has limited experience in the relevant area as compared to that of the other three witnesses. I am not sure whether Mr Sack, the managing director of Tramanco, is advanced as a skilled addressee. I proceed on the basis that he is a skilled addressee.
Although the expert witnesses were cross-examined at some length concerning the meaning of terms used in the claims, the construction remains a matter for the Court. The differences between the parties concerning construction are manifested in two ways. First, Tramanco seeks to minimize the importance of demonstrating road-friendliness as an object of the claimed invention whilst BPW tends to emphasize it. There can be no doubt that a major purpose of the invention, according to the specification, is to assist road users in complying with NRTC requirements associated with road-friendliness. However it is also clear from the specification that the claimed invention is said to serve other purposes, particularly facilitating vehicle maintenance and improving safety. The second aspect of the case which demonstrates the differences between the parties is the extent to which Tramanco seeks to rely upon the specification effectively to narrow the very broad terms used in claim 1 and, indeed, all other claims in the Patent. For that reason it is most important that I keep in mind the views expressed in Kimberley-Clark.
A system for logging
As a noun the New Shorter Oxford English Dictionary defines the word “log” to mean:
… A systematic record of things done, found, experienced, etc., as (a) a record of discoveries or variations at successive depths in drilling a well; a graph or chart displaying this information; (b) a record with details of journeys kept by a lorry driver; (c) a record of what is broadcast by a radio or television station.
As a verb the word is said to mean:
Enter (esp. the distance made by a ship) as information in a log or logbook; … enter (information) in a regular record.
The Macquarie Dictionary (5th ed) defines the word as a noun to mean:
… official record which a ship’s master is obliged by law to keep, of particulars of a ship’s voyage as weather, crew, cargo, etc … the record which the engine room and bridge officers keep of the particulars of each watch … also, “flight log” a listing of navigational meteorological and other significant data concerning an air journey … any similar record of a journey … the register of the operation of a machine.
As a verb the word is said to mean:
To enter in a ship’s log … to record in an aeroplane’s log (the number of hours spent in the air).
Clearly, and relevantly for present purposes, the word is primarily used in connection with journeys by ship, aircraft or motor vehicle. It is also used in relation to the operation of machinery. The definitions suggest that the process of logging is generally consistent and ongoing. I take the word “logging” to mean “recording in a systematic way”. The words “a method for logging” should be so read.
Performance of a vehicle suspension system
The meaning of the expression “performance of a vehicle suspension system” is in dispute, but, as far as I can see, the controversy relates only to the meaning of the word “performance”. I do not understand there to be any challenge to the following description of the term “vehicle suspension system”, which description appears in the specification:
Generally, trucks and trailers and other heavy haulage vehicles are equipped with self-levelling suspension systems. The systems are designed to compensate for changes in the load by modifying the springing or dynamic characteristics of the suspension so that the vehicle(s), always remain approximately the same height off the road, whether empty, partially loaded, or fully loaded.
The systems are designed to ensure that, even when the vehicle is fully laden, the full upward travel of the suspension system is available for absorbing bumps. Other related effects are things such as the headlights are kept in proper focusing alignment, whatever the distribution of the load.
Any form of self-levelling is generally operated by one or more load-sensing devices which measure the vertical distance between, for example the trailer bed and the suspension arm. The greater the load, the smaller this distance tends to become. An initial variation in the distance operates a valve which controls the height-adjusting system. Usually, height adjustment takes place at both ends of vehicle, and in particular generally takes place at each axle or group of axles.
Air suspensions are relatively simple in principle. Collapsible, pressurized air containers take the place of conventional springs or shock absorbers; the upward movement of the wheel reduces the volume of the air spring, raising its pressure, so that it tries to extend itself again. If the air spring is inflated more, it can carry a heavier load before contracting to a given height. A height-control valve connects the air spring to a high-pressure air reservoir when the load is increased, and pressure is released through the valve to the atmosphere when the load is reduced.
Air suspensions generally also comprise dampers, often referred to as “shock absorbers”. Dampers are designed to damp out vibrations so that the suspension does not continuously bounce up and down in response to an impulsive load. The purpose of dampers is to reduce oscillation by absorption of energy stored in the suspension. A damper may be single action or double action in which damping is controlled in both directions.
Tramanco’s position with respect to the word “performance” is that:
Evidence in relation to the meaning of this word is irrelevant. It is an ordinary English word that does not bear any special meaning different from its English meaning.
BPW submits that “the context of the patent is the road-friendliness or otherwise of vehicle suspensions”. It submits that in such context the word “performance” in claim 1 should be construed as meaning performance in terms of one or more of the three “parameters” identified in the claim. As I have said, I do not read the Patent as addressing solely the question of road-friendliness. The starting point should be that urged by Tramanco, namely identification of the plain English meaning of the word. According to the New Shorter Oxford English Dictionary “performance” means:
The execution or accomplishment of an action, operation, or process undertaken or ordered; the doing of any action or work; the quality of this, esp. as observable under particular conditions; … the capabilities of a machine, esp. a motor vehicle or aircraft, measured under test.
The Macquarie Dictionary offers the following meaning:
… execution or doing, as of work, acts or feats. … a particular action, deed, or proceeding … an action or proceeding of a more or less unusual or spectacular kind … the act of performing … the way in which something reacts under certain conditions or fulfils the purpose for which it was intended.
Clearly, the specification is concerned with the extent to which a suspension system performs its function in varying conditions, at particular points in time, and over time. In that context, “performance” means, adopting the words of the New Shorter Oxford English Dictionary, “the quality with which a suspension system performs its function”, or, adopting the words of the Macquarie Dictionary, “the way in which a suspension system fulfils the purpose for which it was intended”. In my view the expression “logging the performance of a vehicle suspension system” means recording, in a systematic way, the quality of the suspension system’s performance of its intended function.
Including the steps of
Clearly, the method must include the two steps which are subsequently identified, one being described as “measuring” and the other as “determining”. However the claim does not disclose any necessary connection between the measurement of whatever is to be measured and the determination of whatever is to be determined. The specification suggests that the measurement is to be utilized in the determination, but the claim does not say that. The specification demonstrates methods for calculating oscillation frequency and damping ratio from weight. Clearly, the drafter understood that oscillation frequency and damping effect were established criteria for determining the effectiveness of a suspension system. However no such disclosure is made concerning the method of calculating impact loading.
Measuring the dynamic effect of an impulsive load
As I understand it, the parties accept that the term “dynamic effect” describes a result caused by a force not in equilibrium. The term “impulsive load” is a force applied momentarily to an object or system. The method is for logging the performance of a vehicle suspension system. The impulsive load will often, but not always be the force applied to a vehicle’s suspension system as the result of the vehicle’s encountering an irregularity in the road surface. The dynamic effect is the effect of such application. The logging will be of the effectiveness with which the suspension system accommodates the impulsive load. By reference to the specification, Tramanco submits that the measurement is to be of forces acting at various points in the suspension, but claim 1 does not say that. Tramanco submits that the dynamic effect is to be measured by weighing, and the outcome weight used in calculating the three parameters – damping ratio of the suspension, oscillation frequency of the suspension and impact loading of the vehicle. As I have said, claim 1 does not say, in terms, that the weight is to be the basis for calculating the parameters. I proceed on the basis that the claim is not so limited.
Electronic weighing system
I turn to the meaning of the words “electronic weighing system”. According to the New Shorter Oxford English Dictionary, the word “weigh” means:
(d)etermine or measure (a) weight … (d)etermine the heaviness of (a body or substance), esp. by balancing it in a pair of scales or against a counterpoise of known heaviness.
Physicists distinguish between mass and weight, but the distinction is not of great significance in this case. I shall return to the question of “weighing” in considering the question of novelty and other aspects of the case. Both parties submit that the words are wide enough to encompass any electronic form of weighing. They also submit that, in the words of the specification, such a system “may comprise at least one load measuring element, usually a load cell or pressure transducer, each associated with one or more suspension component”. I accept these submissions.
Determining one or more parameters selected from the group consisting of the damping ratio of the suspension, the oscillation frequency of the suspension and the impact loading of the vehicle
The other step in the logging process is to determine one or more of three identified parameters. According to the New Shorter Oxford English Dictionary, the word “determine” means “(s)ettle or decide ... (c)onclude from reasoning or investigation, deduce …”. That dictionary defines the word “parameter” to mean:
A distinguishing or defining characteristic or feature, esp. one that may be measured or quantified; an element or aspect of something; a boundary, a limit.
In the present case the term seems to mean the performance characteristics of a suspension system in responding to impulsive loads, particularly those caused by variations in road conditions, and over time.
The meanings of the expressions “dampening (or damping) ratio” and “oscillation frequency” appear from the specification and are set out above. Both terms are used in claim 1 to describe characteristics “of the suspension”. The term “impact loading of the vehicle” is not so easily defined. However it is significant that the term “impact loading” is used in relation to the vehicle, and not its suspension. BPW submits that the impact loading of the vehicle is, in effect, the force transmitted to the road surface through the tyres. Tramanco now submits that the term refers to loads within the suspension. However, in particulars provided by letter dated 28 August 2009, Tramanco’s solicitors said:
“(I)mpact loading” is the “weight or force” transmitted to the road by the impact (namely the “action of one body coming forcibly into contact with another”) of the vehicle, commonly transmitted by its tyres.
There is conflicting evidence from the witnesses skilled in the art. Dr Blanksby said:
In the context of the patent, I understand “impact loading” to be referring to the transient forces on the tyres as they move over an uneven road surface, and the subsequent transient forces on the body as forces on the tyres are transmitted through axle and the suspension. Impact loading would, more commonly, refer to the first part of the preceding definition (often also referred to as dynamic wheel loads). However, as I understand the patent, it puts forward a method that aims to measure the load transmitted through the suspension, and from that makes inferences about the performance of the suspension or about the axle loads generated by variations in the road surface, hence the broader definition.
Dr Gilmore initially suggested that the term “impact loading” is “a dynamic force applied to an object or system”. However he subsequently said that:
A “parameter” is a value derived normally through calculation that characterises the system to which it relates. Thus, an “impact loading of the vehicle parameter” is a value derived through calculation that characterises the impact loading of the vehicle. As an example, “maximum trip load” would be an impact loading parameter as it is dependent on all of the impact loadings of the vehicle over the trip. However, the specific impact loading at any given time would not be a parameter as it is not derived from calculation, and does not characterise the system.
I understand Dr Gilmore to be saying that the parameters identified in claim 1 are not the individual results of particular driving incidents, but rather characteristics of the vehicle, having a degree of permanence, although perhaps declining over time. I doubt whether, in claim 1, the word “parameter” is used in this sense. It is rather used to describe the process by which data is collected, which data may be used to calculate the values to which Dr Gilmore refers.
Dr Sweatman said:
“Determining one or more parameters selected from the group consisting of the dampening ratio of the suspension, the oscillation frequency of the suspension and the impact loading of the vehicle” is poorly expressed and confusing. I assume that a group of parameters is being invoked. Parameters are metrics for characterizing a given mechanical system. The “parameters” referred to apply to different mechanical systems: the damping ratio and frequency are suspension parameters. The “impact loading of the vehicle” is not a single or specific parameter, and of course applies to the whole vehicle. I therefore assume that the claim refers to the two suspension parameters as well as a more general measurement of the dynamic wheels loads of the vehicle, such as the dynamic peak force applied at a particular point of the road. To be clear, the frequency and damping are specific suspension parameters which relate to, but do not equate to, the dynamic wheel forces imparted to the road; the impact loading is a general reference to the dynamic wheel forces imparted to the road (and appropriate parameters would need to be formulated and specified).
I therefore assume that the claim refers to both specific suspension parameters (frequency and damping) as well as general measurement of dynamic wheel forces.
Mr Di Cristoforo said that:
In my opinion there is no formal engineering definition for the impact loading of a vehicle. In the context of the patent, “impact loading of a vehicle” speaks to the force with which a vehicle’s tyres press onto the road and induce wear or damage in the pavement layers below the road surface, with particular interest in the high dynamic (varying) forces applied during the period of transient motion after a wheel has been disturbed in the vertical direction by road surface unevenness when travelling at speed (e.g. after hitting a bump or pot-hole in the road). Such forces need to be measured instantaneously at rapid time intervals, using electronic sensors and computers, to capture the variation in force as the force oscillates about a mean value over time. The sampling frequency should be about an order of magnitude greater than the highest frequency of interest in order to be able to capture the peak loads with sufficient confidence. For a heavy vehicle, where axle hop frequency is typically in the range 10-15 Hz, a sampling frequency of at least 100 Hz is desirable.
In my opinion the impact loading of a “vehicle” per se cannot be measured directly. An engineer may measure the impact loading of individual wheels and then form a subjective opinion of the impact loading of the vehicle, or may undergo the process of summarising wheel load information into a single value for an axle group, or perhaps for an entire vehicle, using an appropriate formula or algorithm. This is analogous to measuring the ‘price’ of the Australian stock market; one may measure the price of a single stock, or of many different stocks separately, and may form an opinion of the overall condition of the market based on those prices, but the overall market ‘price’ can only be measured indirectly using a formula to convert individual stock prices into a summary value such as the All Ordinaries Index.
In my opinion impact loading is very difficult to measure accurately using only vehicle mounted equipment, even under controlled experimental conditions. Blanksby et al. (2009) performed a literature review to examine the methods used in previous research involving the measurement of heavy vehicle wheel loads dynamically. Most of the previous research was conducted well before July 2003. The methods examined each included a different form of vehicle-mounted transducer calibrated to vertical wheel load in the laboratory and then tested on the road. The transducers included tyre pressure, wheel hub force, optical sensing of axle-to-ground distance, and axle bending strain (but not airbag pressure). Each method was found to have its drawbacks, with some being used to produce reasonable but qualified research outcomes only under strictly controlled experimental conditions. In my opinion there is no accepted method of accurately and reliably measuring the impact loading of the tyres of a commercially operational heavy vehicle using only equipment mounted on-board the vehicle.
Impact loading is measured in units of force which, in the metric system, is Newton (N). At times engineers use the Dynamic Load Coefficient (DLC), which is the standard deviation of instantaneous wheel force divided by the mean wheel force; DLC has no units. DLC indicates how much the wheel force varies about its mean value as a proportion of the mean value and does not indicate the absolute magnitude of the wheel force. This is a good way of comparing the dynamic loading characteristics of different suspensions loaded to different steady-state axle loads, as the values of the dynamic loads are in effect normalised.
Dr Blanksby focuses on the effect of a force passing through the tyres to the suspension and the rest of the vehicle. Such an approach would be relevant to a consideration of the performance of the suspension upon vehicle condition and maintenance. The approach taken by Dr Sweatman and Mr Di Cristoforo addresses the effect of the vehicle upon the road, having relevance, one would expect, to road-friendliness. I found Dr Gilmore’s evidence on this aspect to be of no assistance.
The body of the specification is somewhat equivocal concerning this question. At one level it appears to be concerned with forces within the suspension. However there is also the question of road-friendliness which one would expect to focus upon the forces applied to the road through the tyres. See the Patent at p 3 ll 2-9 and at p 4 ll 1-9. Clearly, at least one purpose of the invention is to facilitate the testing of road-friendliness. Road-friendliness is concerned with the effect of road usage upon roads. Of the criteria identified in VSB-11 for measuring road-friendliness, three deal with vertical oscillation and damping effect. The fourth deals with the sharing of loads between axles in an axle group. This criterion clearly seeks to ensure the relatively even distribution of weight amongst axles within axle groups, so as to spread the overall weight of the vehicle and thus minimize impact on the road.
As a noun, the word “impact” is defined in the New Shorter Oxford English Dictionary as “The striking of one body on or against another; a collision”. As a verb, the word means “Come forcibly into contact with a (larger) body or surface”. The dictionary also suggests that an “impact” may, in a more abstract sense, describe an effect, including a non-physical effect. There is a similar verbal meaning. In the more concrete sense, the obvious impact is by the vehicle and its load upon the road. No doubt other parts of the vehicle impact upon the suspension, and the suspension impacts upon other parts of the vehicle. However claim 1 speaks of the impact loading of the vehicle, not of the inter-relationship of forces within the vehicle. I conclude that the term “impact loading of the vehicle”, must describe the effect of the vehicle upon something else, in this case, a road surface. The impact loading of the vehicle is the force transmitted to the road surface through the tyres. This was, of course, the position taken by Tramanco’s solicitors in the letter of 28 August 2009. I should add that BPW submits that Tramanco ought not be allowed to depart from the particulars provided in that letter. Whilst that is an attractive option, given the difficulty in resolving the evidence on this point, the case was conducted by both parties upon the basis that the issue was in dispute. The extent of the dispute was clearly identified. It is not appropriate now to dispose of the question on a technical pleading point.
One other matter requires consideration. It involves the meaning of the word “determining” and the inter-relationship between the process so denoted and the measuring of the dynamic impact of an impulsive load. Tramanco seems to assert that the determination must depend upon the measured dynamic impact. BPW, at least implicitly, submits that no such limitation is contained in claim 1. As much is implicit in its reliance on an item of prior art knowledge discussed subsequently and described as “Tal”.
As I understand it, measurement of the oscillation frequency involves counting the number of times that the suspension (and the load above it) rises and falls following the vehicle’s encounter with an uneven point in the road surface. In some of the prior art this is done by detecting upward and downward movements and counting them. The specification may suggest that it is to be done by counting the number of increases and decreases of weight carried by the suspension on the axle as that weight rises and falls. The damping ratio is presumably to be calculated by comparing the variations in the extent of each rise and fall cycle, either in height or, according to the specification, in weight. As I understand the matter, the object is to measure the performance of the suspension in coping with a particular impulsive load.
As I have said, claim 1 does not assert any particular relationship between the measured weight and any of the three parameters. The specification certainly discloses use of weight, but claim 1 is wide enough to include measurement of weight using an electronic weighing system and determination of oscillation frequency and damping ratio in other ways disclosed in the evidence, such as by use of vertical accelerometers. The question is complicated by uncertainty as to the meaning of the term “impact loading of the vehicle”. Variations of the weight on the suspension or of that weight and that of the suspension on the axle would not yield the weight on the road surface. In the former case it would not include the weight of the suspension, axle and wheels. In the latter case, it would not include the weight of axle and wheels.
Tramanco submits that this difficulty is a reason for rejecting the construction of the term “impact loading” which I have adopted. However, as I have observed I see no other acceptable construction.
I conclude that claim 1 is not limited to determination of any of the three parameters by reference only to dynamic impact measured by weight.
A standard road section; a normal, uneven road; a variable road section
Claim 12 refers to logging of the performance of a suspension system over “a standard road section at different times to test the performance of an individual axle or group of axles to an impulsive load”. This claim picks up the language of the specification at p 6 ll 9-11. Claims 19 and 20 are also dependent upon claim 12, save that the standard road section is to be a normal, uneven road, picking up the language of the specification at p 7 ll 3-5. Claim 20 differs from claim 19 only in that a location system is included. Claims 21, 22 and 23 are dependent upon claim 12 so that a “standard road section” may also be a “variable road section”, picking up the language of the specification at p 7 ll 13-16. Each includes a location system.
Tramanco submits that these descriptions of road conditions use English words with ordinary English meanings, and that expert evidence is not necessary in order to construe them. BPW submits that in their letter of 28 August 2009 the solicitors for Tramanco particularized the terms “standard road section” and “variable road section”. The former term was said to be “a road section used as the standard in tests as described in the body of the specification …”. The term “variable road section” was said to be “a section of road that has variations in surface or characteristics (bumps, straight sections, corners, etc) …”.
In my view the words “a standard road section” in claim 12 should be construed as referring simply to an identified road surface which is capable of identification and re-use. The expression “a normal, uneven road” in claim 19 clearly identifies a road in general use. The New Shorter Oxford English Dictionary relevantly defines the word “uneven” as “(n)ot smooth or level; irregular; inconsistent; variable; not uniform”. Claim 12 does not require such unevenness. Pursuant to claim 19, unevenness is to be identified and recorded according to variations in the mass signal.
As to claim 21 and dependent claims 22 and 23, the road section is to be “variable”. Although the word “uneven” may mean “variable”, the words are not necessarily synonymous. The New Shorter Oxford English Dictionary defines the word “variable” as meaning “Varying or liable to vary in state or quality; mutable, changeable, fluctuating, uncertain …”, although other meanings are given. Such variability may be over time. This seems to be the meaning in claim 21 which speaks of logging performance over a variable road section at different times. The data might therefore disclose information about changes in road conditions over time or changes in the suspension system. Claims 22 and 23 should be similarly construed.
I accept that there may be difficulties in deciding whether a road section is variable or uneven, but each concept is clear enough in theory. I do not, at this stage, wish to pre-empt any issue as to adequacy of the claims or fair basing.
Tramanco submits that the reference in claim 20 to a “location device” should be construed as including a trip meter, referring to p 5 l 32 to p 6 l 3 of the specification which states:
According to the present invention, each vehicle utilising the method of the present invention may be provided with a vehicle locating means. According to a particularly preferred embodiment, the vehicle locating means may preferably be a satellite global positioning system. However, other locating means, such as trip meters, may be used according to the invention.
I accept that the locating device referred to in claim 20 may be a trip meter.
INTEGERS OF CLAIM 1
Tramanco identifies the integers of claim 1 as follows:
(a) a method for logging the performance of a vehicle suspension system,
(b)including the steps of measuring the dynamic effect of an impulsive load,
(c)with an electronic weighing system,
(d)wherein the electronic weighing system is mounted on board the vehicle, and
(e)determining one or more parameters selected from the group consisting of:
ithe dampening ratio of the suspension,
iithe oscillation frequency of the suspension, and
iiithe impact loading of the vehicle.
BPW identifies the integers as:
(a)logging the performance of a vehicle suspension system (integer 1.1) including the steps of
(b)measuring the dynamic effect of an impulsive load (integer 1.2)
(c)with an electronic weighing system (integer 1.3), wherein the electronic weighing system is mounted on-board the vehicle (integer 1.4), and
(d)determining one or more parameters (integer 1.5) selected from the group consisting of
(i) the dampening ratio of the suspension (integer 1.5.1),
(ii) the oscillation frequency of the suspension (integer 1.5.2), and
(iii) the impact loading of the vehicle (integer 1.5.3).
There is no significant difference between the two approaches. It may be easier to adopt that proposed by BPW simply because it provides a more unified, shorthand system for describing the various aspects of the claim. In other words, it is marginally easier to refer to integer 1.5.3 than to integer (e)iii.
INVALIDITY
Pursuant to s 138(3) the Court may revoke a standard patent upon numerous bases including that the invention is not a patentable invention, and that the specification does not comply with subs 40(2) or (3). Section 18(1) of the Patents Act provides:
Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b)when compared with the prior art base as it existed before the priority of that claim:
(i) is novel; and
(ii) involves an inventive step; and
(c) is useful; and
(d)was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.
NOVELTY
The question of novelty is dealt with in s 7(1) which provides:
(1)For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a)prior art information (other than mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b)prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c)prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
As I understand it, upon the basis of my construction of the claims, BPW now relies upon three items of prior art as anticipating the Patent. They are:
·a paper by Dr Sweatman entitled “A Study of Dynamic Wheel Forces in Axle Group Suspensions of Heavy Vehicles” (“Sweatman 1983”);
·a further paper by Dr Sweatman entitled “Ranking of the Road Friendliness of Heavy Vehicle Suspensions: Low Frequency Dynamics” (“Sweatman 1994”); and
·United States Patent No 5,973,273 entitled “A Method for Determining Weight of a Vehicle in Motion” (“Tal”).
Tramanco accepts that each of these items is prior art information for the purposes of s 7(1).
In Meyers Taylor Pty Ltd v Vicarr Industries Ltd & Ors (1976-1977) 137 CLR 228 at 235, Aickin J said:
The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement … .
In Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at 560, Gummow J said:
There was some discussion before us as to the significance of the reverse infringement test as a criterion for judging anticipation. In the Meyers Taylor case … Aickin J was dealing with alleged anticipation of a combination patent; none of the alleged anticipations incorporated all the integers of any one of the claims. Therefore, as his Honour said … none of them “could therefore possibly constitute an infringement”. In such a situation, the adequacy of the reverse infringement test will be readily apparent, given the fatal effect upon an infringement suit of omission from the alleged infringement of an essential integer. But Aickin J described this test only as “generally” applicable. Where the alleged anticipation is a paper publication, particularly a prior patent specification, there may be ground for debate in a comparison with the specification in suit as to the presence of inessential integers and mechanical equivalents. … There may also be dispute whether what has been disclosed sufficiently reveals an essential integer, in the light of the principals in Hill v Evans … .
In Hill v Evans (1862) 31 LJ Ch 475; 1A IPR 1 at 7, Lord Westbury LC said at 6-7:
The only peculiarity attending the specification of a prior patent is this, that it must of necessity be considered as a publication. … With regard to a specification there can be no doubt, because the specification is that which the patentee gives to the public and makes the matter publici juris in return for the privilege which he receives. But upon all principle a specification is not to be distinguished from any prior publication contained in a book published in the ordinary manner. The question then is, what must be the nature of the antecedent statement? I apprehend that the principle is correctly thus expressed: the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent. … If, therefore, in disproving that allegation which is involved in every patent, that the invention was not previously known, appeal be made to an antecedently published book or specification, the question is, what is the nature and extent of the information thus acquired which is necessary to disprove the novelty of the subsequent patent? There is not, I think, any other general answer that can be given to this question than this: that the information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication.
An integer of claim 1 is that there be a determination of one or more of three “parameters”, namely “the dampening ratio of the suspension, the oscillation frequency of the suspension and the impact loading of the vehicle”. The parties accept that infringement may be proven by demonstrating that the BPW method and/or BPW device involves the determination of any one of the three parameters, together with the other aspects of the claim. BPW submits that for the purposes of anticipation it need only show that a relevant item of prior art information discloses any one of the three parameters, together with the other features of the claim. However Tramanco asserts that the test for anticipation will only be satisfied if the relevant prior art information discloses all three. In this respect it submits that the reverse infringement test should not be applied. Tramanco submits that:
The patentee’s “invention” is not limited to a method which determines only one parameter. What the patentee has invented is a method of using an onboard electronic weighing system in a method which determines a “group” of parameters. (Italics in original.)
At para 179 and 180 of its outline of submissions Tramanco submits:
179There appears to be no Australian authority supporting the respondent’s argument. Accordingly it is submitted that the court should approach the matter by applying the fundamental rule as set out in the oft approved Hill v Evans namely that the information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that by the subsequent patent. The invention must be shown to have been before made known. Whatever, therefore, is essential to the invention must be read from the prior publication.
180It is submitted that what is essential to the invention is a method that is capable of determining the group of parameters, of dampening ratio, oscillation frequency and impact loading of the vehicle. Part of the invention is the group of parameters and their determination by the novel method disclosed. The fact that, on a proper construction of the language of the claim there is infringement if a subsequent method determines only “one or more” selected from that group, does not mean that the whole of the invention is disclosed in a prior document which only describes determining one of the parameters.
BPW simply submits that the reverse infringement test should be applied. It submits that it would be “an extraordinary result” if infringement could be established by the presence of one of the three integers together with the other features of the Patent, whilst anticipation required the presence of all three in one piece of prior art information. Perhaps more persuasively, BPW relies upon the decision in The British Hartford-Fairmont Syndicate Ltd v Jackson Bros (Knottingley) Ltd (1932) 49 RPC 495 (at first instance and in the Court of Appeal); (1934) 51 RPC 254 (in the House of Lords). That case concerned a method of feeding molten glass where the shape of certain “masses or gathers” of glass was to be controlled:
… by variation of the movement of a movable controlling member adapted to act as a piston in the outlet, or by the means for separating the mold charges, or by variation of the location of the controlling member or of the said separating means relatively to the outlet.
Road Condition Monitoring information is displayed using the Trailer Analyser software as rough road count (RRC) per kilometre in the histogram section and on a “per trip” basis for the most recent trips in the “trip logs”. The RRC number in the trip log is an average derived by taking the total number of RRC events recorded for the trip and dividing it by the total kilometres travelled on that trip. The RCM histogram is not trip-based. It displays the number of rough road kilometres over which the valve has been driven. The number of RRC events for each kilometre travelled is recorded and included in the RCM histogram. Thus the histogram shows the number of kilometres a particular valve has travelled over roads that have zero to four RRCs per kilometre, five to nine RRCs per kilometre, and so on.
The RCM feature provides data as to frequency, not magnitude of load. In other words it records the number of events, not the size of those events. Further, the trip log RRC figure is an average for a trip. The RCM histogram screen continuously accumulates data on a “counts per kilometre” basis over the life of the valve. The analyzer has no capacity to determine when or where, during a trip, a certain rough road event occurs or which part of the trip was the roughest.
In the course of his cross-examination Mr Thomson agreed that the BPW EBS information produces weight information in kilograms, but subject to the qualification that it would not measure a “dynamic load”. This qualification presumably reflects other evidence which suggests that there is a filtering process which has the effect of excluding loads above and below certain specified levels and the potential for inaccuracy in the sensing of air pressure. The load in question is the load on the suspension.
Mr Colosimo
Mr Mario Colosimo is the product centre manager, Trailer Equipment Division, of BPW. He is an engineer by profession. At paras 27 and 28 of his affidavit he said:
27Unless a commercial onboard weighing system is calibrated to some degree of accuracy, it will be ineffective in providing an estimation of the weight a trailer is carrying. A simple way of calibrating an onboard weighing system is for the driver to drive the trailer over a weigh bridge to obtain the weight of the vehicle, and enter the weight of the vehicle into the weighing system.
28The BPW EBS gives an indication of onboard mass but it is not calibrated. In order to calibrate a BPW EBS a technician would need to plug a laptop into the valve while the trailer was over a weigh bridge, and then make changes to the valve’s settings using the Trailer Manager software. If the weight showing on the weigh bridge is not the same weight that is indicated by the valve, and the valve is calibrated to the weigh bridge, then the settings of the valve will be affected and the performance of the EBS itself will be affected, particularly the load sensing settings. This is acceptable if done correctly, but if done incorrectly, not only will the weight read-out be wrong (which is not a serious problem), but the brake settings will be affected due to the load sensing functionality of the valve, which may be a major safety issue. The process is therefore not one that could or should be carried out by a fleet operator or a driver, as it requires technical knowledge of the Trailer Manager software (which is not currently available commercially), and a high level of understanding as to how to program the valve. For this reason, in my opinion the BPW EBS as supplied by [BPW] in Australia (without Trailer Manager software) is not and cannot be marketed as a commercial onboard weighing system.
At para 31 he said:
I also note that variations in air bag pressure or axle loads can occur in numerous circumstances, such as a change in tyre pressure, driving up or down inclined roads (hills), or applying the brakes. When the brakes are applied, and when tyre rolling resistance is increased due to, for example, tyre pressure reduction, the force supported by the air bags increases (which increases the air bag pressure) in order to balance the moments applied to the axle/suspension, even though the load supported by the axle group has not changed. With severe brake applications, there may also be significant weight shift either from or onto an axle group, depending on the trailer geometry. Since the BPW EBS relies on air bag pressure measurements for determining axle load, and variations in air bag pressures can occur due to a number of external factors, air bag pressure, in my opinion, is not a reliable indicator of suspension performance. The readouts available in Trailer Analyser give the transport operator a good overview of the trailer’s operation, to help the operator manage his fleet, not to determine suspension performance.
The screens
The various screens in the Trailer Analayzer software offer an insight into the capacity of the BPW EBS and associated software. They are best described in the cross-examination of Mr Meyers. His evidence should be read in light of a document described as “Ecotronic EBS Trailer Analyser Operating Instructions”. It states that:
With the Trailer Analyser you can read analysis data stored in the ECO Tronic EBS ECU to a PC and evaluate this data.
It is also said that:
The vehicle data is stored in the ECO Tronic EBS ECU. It remains stored even when the power to the EBS system is switched off.
The ECU is the electronic control unit located in the valve.
The start screen for the programme identifies five tabs under which information may be located, namely “Overview”, “Snapshots”, “Histograms”, “Trip Log” and “User Info”. The first tab, “Overview”, is illustrated on p 8 of the document. The term “trip” is of some relevance in examining the various screens. It is defined as follows:
A trip describes the transports in which the vehicle reaches at least 10 km/h per hour and covers a distance of at least one km thus excluding travel over very short distances.
The second tab, “Snapshots”, is discussed at pp 9-10 of the document. The term “snapshot” is defined to mean:
The recording of data at a particular moment in time. The recording is triggered by threshold values previously set in the Trailer Analyzer or the occurring faults. The default values of these thresholds are described on the following page.
The snapshots only show the most current events.
One snapshot is of suspension pressure expressed in bars. A suspension snapshot is recorded when a “certain limit value” is exceeded. It is said to be “130%”. However the figure may be varied. Tramanco reads this reference to mean 130% of the fully loaded weight of the vehicle. However the pressure is measured in bars, not kilograms. Further, it is the bellows pressure in the air bags.
On p 11 of the document the histogram menu is discussed. Mr Meyers agrees that a histogram is a means of displaying the distribution of a collection of data according to particular parameters. The witness also agrees that in the case of Trailer Analyser the histograms display the allocation of data over the life of the vehicle. With one exception the data cannot be erased. The exception concerns brake performance.
At the top of p 12 are two examples of the RCM histogram. It is a bar graph showing, on the x axis, the number of RCCs per kilometre, apparently in increments of 5. The y axis shows total kilometres travelled over the life of the vehicle. Thus the first column shows the total kilometres travelled on roads having five or fewer RRCs, the second column, 6-10, and so on. These figures may be inconsistent with some of Mr Ignatius’s evidence but, as I have said, any inconsistency may be attributable to differences between devices marketed in Europe and those marketed in Australia. Alternatively, there may have been different versions of the system at different times. In the first histogram it appears that by far the greatest part of the vehicle’s history involved travel over roads showing zero to five rough road counts per kilometre. The second histogram shows a much wider variation in the road surfaces encountered.
On p 14 diagram 11 plots distance travelled and axle load, again over the life of the vehicle. After each kilometre travelled the bellows pressure is monitored, the axle load is calculated from the bellows pressure using parameters stored in the ECU by the Trailer Manager. The result is a “load profile” as displayed in the diagram. On the horizontal axis it plots axle load and, on the vertical axis, total distance travelled. In other words it shows the cumulative distance, over the life of the vehicle, during which it was loaded within various specified ranges.
On p 15 there are examples of “Trip Logs”. This facility stores information by trip for up to 1,000 trips. When data is recorded for more than 1,000 trips, older trips are overwritten. The trips are numbered. The numbering system continues even after 1,000 trips have been performed. Information available includes date, trip distance in kilometres, trip distance with axle lifted, brake demand average in bars, brake applications, brake applications 24 N (presumably 24 newtons), average speed, maximum speed, stability events, ABS events (the anti-locking mechanism), axle load average (in kilograms), axle load maximum (in kilograms), minimum reservoir pressure, maximum reservoir pressure, trip duration in minutes, lift axle (number of operations), steer axle (number of operations), warning lamp ignored in minutes, residual pressure time in minutes, rough road count per kilometre and event codes. On p 18, diagrams 12 and 13 display axle load averages per trip and maximum axle loads per trip.
Mr Meyers agrees that the average axle load and maximum axle load information are not snapshots. In other words, the information is not attributable to any particular point in time or, inferentially, any geographical location. They are, however, attributed to particular trips.
On p 20 diagram no 21 shows RRC per kilometre. It is said that:
This diagram displays the number of rough road counts per trip divided by the number of kilometres travelled per trip. This allows the direct comparison of the number of rough road counts/km for the different trips. For trip 10, for example, a mean value of 5.13 rough road counts/km was registered.
Mr Meyers suggested at para 8.5.4 of his report, (exhibit “DM-4” to his affidavit filed on 24 September 2010) that trip data could be compared in order to determine road conditions by having the same vehicle with the same driver on the same route with different vehicles with the same driver on the same route and the same vehicle with different drivers on the same route.
This focus on the RCM function appears to have been prompted, at least in so far as concerns Mr Meyers, by his perception that:
Of the inputs available to the [BPW EBS] the only one that could be used to deduce road conditions is the suspension pressure.
Does the BPW EBS infringe?
Tramanco submits that BPW has infringed its exclusive right to exploit the invention conferred by s 13 of the Patents Act. The term “exploit” is defined in relation to an invention as:
(a)where the invention is a product – make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or
(b)where the invention is a method or process – use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use.
This being a method claim, Tramanco depends upon para (b) of the definition. However BPW submits that it has not, in that sense, exploited the method. The submission seems to be that supplying a product manufactured by another may only be an exploitation in the extended sense contemplated by s 117 of the Patents Act. Section 117 provides:
Infringement by supply of products
(1)If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent.
(2)A reference in subsection (1) to the use of a product by a person is a reference to:
(a)if the product is capable of only one reasonable use, having regard to its nature or design–that use; or
(b)if the product is not a staple commercial product–any use of the product, if the supplier had reason to believe that the person would put it to that use; or
(c)in any case–the use of the product in accordance with any instructions for the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier.
At a very late stage Tramanco sought. and was granted leave to amend by adding an alternative claim based upon s 117.
The fundamental question on infringement is whether or not the BPW EBS demonstrates exploitation of the patented method by either the parent company or BPW. The primary question is whether the BPW EBS contains the combination of integers claimed in claim 1. Tramanco seems to rely upon the feature of the BPW EBS which I have identified above as evidence of infringement. Those features are:
·the suspension pressure snapshot;
·the RCM feature histogram;
·the distance vs axle load histogram; and
·the trip log, particularly the RRC per kilometre, and the axle load average and axle load maximum.
Having regard to my construction of claim 1, the first question must be whether the BPW EBS logs the performance of a vehicle suspension system. In other words, does it record, in a systematic way, the quality of a suspension system’s performance of its intended function? In its written submissions Tramanco seems to submit that sensing air pressure changes in an air bag and inferring actual loads is logging the performance of a vehicle suspension system. Such an approach overlooks the meaning of the word “performance” which involves the quality of such a system’s performance of its intended functions. Logging fluctuations in air bag pressure may provide information from which suspension performance can be assessed. However, by itself, it does not necessarily constitute logging of such performance. Thus calculation of one or more of the three integers is an essential element of logging the performance of a suspension system as described in claim 1. The “weight” measured in the suspension may be the result of an impulsive load or of the way in which the suspension has dealt with such a load. Ascertainment of weight at any particular point in the vehicle, or at any particular moment in time, is not necessarily a logging of the performance of the suspension system. The BPW EBS measures pressure in the air bags and/or weight on the axle to adjust the braking system. In so doing it accepts and uses the outcome of the performance by the suspension system of its function, but does not log performance of that function.
Similarly, the RCM feature is not designed to log, nor to be used for the purpose of logging suspension performance. It is designed and used for the purpose of identifying and logging the number of rough road counts which occur per kilometre of travel over the life of the vehicle or per trip. The RCM feature may use as raw data the outcome of the performance of the suspension system of its function, but it does not log such performance. Further, the filtering process disclosed by Mr Ignatius suggests a much more complex exercise than that involved in measuring and recording weight. It actually excludes some fluctuations in the weight as being attributable to factors other than road roughness. This is because the focus is on road roughness and not on the performance of the suspension system.
Nothing in the screen data suggests the purpose of logging performance of the suspension system.
The next question is whether the system uses an electronic weighing system mounted on board the vehicle. In my view, an electronic system, used to sense air pressure and convert it into a mass or weight figure, is an electronic weighing system. There clearly is such a system in the BPW EBS. It is mounted on board the vehicle.
I turn to the question of whether the electronic weighing system is used to measure the dynamic effect of an impulsive load. The RCM feature sorts such effects into three classes, according to the evidence of Mr Ignatius. The events over each time period are weighted accordingly, and the weighted outcome used in calculating the RRC per kilometre. Such a process may involve measuring the dynamic effect of an impulsive load. However it is a filtered process which is designed, as far as possible, to exclude effects attributable to loads created by causes other than the road surface. Claim 1 does not require that the method measure the dynamic effects of all impulsive loads. However I doubt whether a system which seeks to measure only the dynamic impact of impulsive loads attributable to the road surface would be sufficient to constitute logging of the performance of the vehicle’s suspension system, given that such performance will include accommodation of loads which the BPW EBS seeks to exclude. I need not take that matter any further. I accept that the BPW EBS measures the dynamic impacts of some impulsive loads.
As to the three parameters, Tramanco now asserts only that the BPW EBS determines the impact loading of the vehicle. In its final written submissions it addresses only that issue. I have defined the impact loading as being the force acting between the tyre and the road. Clearly, the BPW EBS does not determine that force. It may measure the force at the axle or on the suspension. However, in neither case is that force the impact loading of the vehicle.
In those circumstances the BPW EBS, with or without the associated software, does not infringe. It is not necessary to consider whether exploitation must be determined by reference to s 117 of the Patents Act. It is also not necessary that I consider an argument based on s 121A of the Patents Act. BPW has abandoned reliance on s 119 of the Patents Act.
DEPENDENT CLAIMS
My finding that claim 1 is not infringed disposes of Tramanco’s submissions that some of the dependent claims are also infringed. However I should say a little about those claims. Claim 12 claims logging of the performance of a vehicle suspension system over a standard road section at different times “to test the performance of an individual axle or group of axles to an impulsive load”. As far as I can see nothing in the BPW EBS suggests that it can or may be used in that way. There is no sensible way of locating the road sections which have produced RRCs. Tramanco’s submission is based upon possible use of the features of the BPW EBS for purposes for which they were not designed. Claim 13 claims a method according to claim 12 which includes the step of comparing the performance of the vehicle suspension to pre-determined standards. Again nothing in the BPW EBS suggests such a function. Tramanco suggests that the 130% threshold which triggers a snapshot of the suspension pressure in the air bags is “a pre-determined standard against which the impact loads experienced in the suspension air bags are tested”. I do not accept this submission. The measurement of air pressure (in bars) occurs because a threshold is exceeded, but the occurrence of that event says nothing about the performance of the suspension system, particularly as none of the three parameters is to be calculated. The threshold of 130% is not said to be a “standard”. It is rather a limit.
Claim 14 depends upon claims 1 and 12. It claims a system in which performance of the suspension system at various periods throughout its life is compared with its performance when new, in order to ensure that the performance of the suspension remains within “pre-determined standards”. Tramanco submits that the first trip log will contain information relating to the suspension system when new, which information can be compared with subsequent trips. Even if this be so, in the absence of any determination of the parameters, there is no relevant basis for assessing performance of the suspension system. Further, the BPW EBS contains no predetermined standard.
Tramanco also asserts infringement of claims 19, 20, 21, 22 and 23. Claim 19 claims a method according to claim 12 which includes a test in which the variation in a mass signal is recorded as the vehicle travels along a normal, uneven road at speed. This claim has the complication of requiring that a road surface be both a standard road, as stipulated in claim 12, and a normal uneven road, as stipulated in claim 19. Claim 12 necessarily involves the comparison of performance over the same road section at different times. The BPW EBS does not perform this function; nor does BPW suggest that it may be performed. For the same reason, there is no infringement of claim 19 or claim 20.
Claims 20, 21, 22 and 23 all involve a location device capable of “precisely” locating the portion of a road upon which the test was conducted for future comparison. The BPW EBS is clearly not designed to perform such a function. Nor does BPW suggest that it be used in this way. It has no GPS. It has a trip meter. Whilst I have accepted that a trip meter may be a locating device, there must be limits upon its capacity to provide precise locations. Pursuant to claims 20 and 21, it will be necessary only that it be able to locate a particular section of road. It may be adequate for that purpose. However, for the purposes of claims 22 and 23, the location device is to be used to locate actual bumps or potholes. One must wonder about a trip meter’s capacity so to do.
Claim 22 claims a method according to claim 21 wherein the logging is triggered by the application of a particular pre-set magnitude impulsive load. Tramanco submits that this claim is infringed by virtue of the snapshot of the suspension pressure being triggered by its exceeding 130% of the static laden weight of the vehicle. I again point out that the pressure is measured in bars, not kilograms. Suspension pressure snapshots are recorded when a programmed threshold is exceeded. Recording of the pressure in such limited circumstances can hardly be described as logging the performance of a suspension system.
ORDERS
It follows that the Patent should be revoked and any interlocutory relief or other arrangements discharged. However I shall allow the parties an opportunity to agree on appropriate orders, including orders as to costs. If consent orders are not filed within 14 days of the publication of these reasons, the parties are, within a further seven days, to file written submissions as to appropriate orders. Should any party require further findings of fact, it should apply within 14 days.
I certify that the preceding three hundred and fifteen (315) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett. Associate:
Dated: 14 June 2012
0
4
1