Vuly Pty Ltd v Wei Yang
[2020] APO 13
•28 February 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Vuly Pty Ltd v Wei Yang [2020] APO 13
Patent Applications: 2017216515, 2014268206 and PCT/CN2015/085447
Titles:A type of frame structure for trampolines and the trampolines (2017216515 and 2014268206)
Frame for trampoline and trampoline (PCT/CN2015/085447)
Patent Applicant: Wei Yang
Requestor: Vuly Pty Ltd
Delegate: O L Haggar
Decision Date: 28 February 2020
Hearing Date: 6 November 2019 in Canberra
Catchwords: PATENTS – request under section 36 – whether the requestor is an eligible person – change to the requestor – change not prejudicial to the applicant – whether the requestor is impermissibly seeking to revisit the merits of a previous decision by the Commissioner that it is not an eligible person – section 36 request found to introduce evidence not previously made available to the Commissioner – nature of the inventive concept – whether the inventive concept was communicated to the applicant when employed by the requestor – whether the applicant subconsciously benefitted from this information after ceasing employment with the requestor – requestor found to be the sole eligible person – no award of costs – requestor asked to file further information
Representation: Patent attorney for the applicant: Jogias Patent and Trade Mark Attorneys
Counsel for the requestor: Jesmini Ambikapathy
Patent attorney for the requestor: Lachlan Mullane and Nick Salmon of IP Solved (ANZ) Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Applications: 2017216515, 2014268206 and PCT/CN2015/085447
Titles:A type of frame structure for trampolines and the trampolines (2017216515 and 2014268206)
Frame for trampoline and trampoline (PCT/CN2015/085447)
Patent Applicant: Wei Yang
Date of Decision: 28 February 2020
DECISION
I declare under section 36(1) that Vuly Pty Ltd is the sole eligible person in respect of applications 2017216515, 2014268206 and PCT/CN2015/085447. I make no award of costs according to Schedule 8.
I allow Vuly Pty Ltd two (2) months in which to provide the further information requested in the final paragraph of this decision
INTRODUCTION
These proceedings concern an ongoing dispute as to the ownership of a number of related applications essentially involving the same parties and the same subject matter.
THE RELATED APPLICATIONS
Vuly Property Pty Ltd is the named applicant for patent application 2017201197 (the Vuly application). The Vuly application is a divisional application of PCT application PCT/CN2015/085447 (the PCT application).
Mr Wei Yang is the named applicant for the PCT application. Mr Yang is also the named applicant for patent applications 2017216515 (the 515 application) and 2014268206 (the 206 application). The 515 application is a divisional application of the 206 application. The 206 application was examined but lapsed without gaining acceptance. Examination of the 515 application was requested on 4 October 2017, but this request was overtaken by the ownership dispute before examination had commenced. The PCT application did not enter the national phase in Australia the effect of which is that the national phase application (application 2015296115) pending at the time no longer exists for the purposes of the Act. On the other hand, the PCT application continues to be recognised under the Act as a complete application for a standard patent by virtue of section 29A(1).
Mr Yang is the named inventor for the PCT application, the 515 application and the 206 application (collectively, the Yang applications). Mr Joe Andon is the named inventor for the Vuly application.
The Yang applications and the Vuly application each claim priority from Chinese application 201420425826 (the priority application) filed by Mr Yang.
SUBJECT MATTER
The Yang applications
The 515 and 206 applications are directed to a frame structure for a trampoline, and in particular a trampoline that has a bounce mat surrounded by a safety net held in position by a number of safety pole assemblies.
The 515 and 206 applications describe various embodiments of the invention with reference to a series of drawings. The embodiment illustrated in Figure 1 is reproduced below to assist in understanding the issues in contention.
A key feature common to all embodiments is the use of safety pole assemblies 20 each comprising a pair of safety pole units that are “upwardly cross-joined” and follow a different path around the frame loop 10 which supports the bounce mat 11. A number of optional features are described. For example the safety pole units can be straight or arc shaped. The frame loop can also be supported above the ground by support assemblies 30.
The 206 application includes only one independent claim. Claim 1 as filed was directed to a type of frame structure used for trampolines having the following features:
(a)a frame loop around a jump mat, consisting of multiple tubes connected end to end; and
(b)a plurality of safety pole assemblies assembled around the frame loop, comprising a first safety pole unit and a second safety pole unit upwardly cross-joined following different routes around the frame loop.
A number of amendments were proposed to the claims during the course of examination of the 206 application, but on each occasion the proposed amendments were disallowed by the examiner under section 102. As a result, the scope of the claims as they stood at filing (including claim 1) remained unchanged upon lapsing of the 206 application.
The independent claims of the 515 application do not refer to first and second safety pole units that are “cross-joined”, but instead require the safety pole units to be joined at their upper ends after crossing each other at a location above the frame loop. This difference in language aside, the independent claims of the 515 application essentially define the same features as the 206 application in addition to:
(a)a plurality of supporting assemblies to raise the frame loop and the jump mat above the ground, comprising a first support frame and a second support frame cross connected to the ground at a first end and the frame loop at a second end;
(b)a safety net connected to the upper end of each safety pole assembly and to the outer edge of the jump mat; and
(c)various mechanisms to join and connect the above features to form a trampoline structure.
As mentioned earlier, the 515 application has not yet been examined.
The PCT application is in the Chinese language. The accompanying English language abstract refers to first and second “guardrail rods” that are connected “in a mutually crossed mode”, and it is readily apparent from the drawings of the PCT application that these guardrail rods are equivalent to the cross-joined safety pole units of the 206 and 515 applications.
The Vuly application
The Vuly application is directed to a trampoline “with safety poles organised in a lattice type of formation with multiple joints.” The drawings of the Vuly application duplicate all but Figure 22 of the drawings of the 206 and 515 applications, thus clearly inferring that the expression “a lattice type of formation” is to be read synonymously with “cross-joined”.
The independent claims of the Vuly application (other than claims 15 and 16) define the same features as the 515 application, except that the frame loop is referred to as an “enclosed frame”, the supporting assemblies are referred to as “leg units”, and the safety pole assemblies are referred to as “safety units”. Claims 15 and 16 include safety units, but these do not cross each other at a location above the enclosed frame.
THE OWNERSHIP DISPUTE
The first section 36 request
The ownership dispute initially arose on 11 December 2015 when Vuly Property Pty Ltd (the first requestor) requested a declaration under section 36(1) that it alone is an eligible person in respect of the 206 application (the first request). The first request was declined by a Deputy Commissioner of Patents (the first decision),[1] and an appeal to the Federal Court against the first decision was dismissed without a hearing on the merits of the appeal.[2]
[1] Vuly Property Pty Ltd v Wei Yang [2016] APO 69
[2] Vuly Property Pty Ltd v Yang (No 2) [2017] FCA 592
Ownership of the Vuly application
Mr Yang has not at any stage of the ownership dispute made a request of his own under section 36(1) in relation to the Vuly application. However, the issue of entitlement was raised in the first examination report dated 22 June 2017 on the Vuly application. As correctly pointed out by the examiner, the Vuly application claims divisional status and yet differs from the (parent) PCT application in respect of both the named applicant and the named inventor. The examiner accordingly questioned whether:
- [The first requestor] is entitled to be an “applicant” for the Vuly application within the meaning of section 79B; and
- [The first requestor] is entitled under section 15 to the grant of a patent on the Vuly application.
The first requestor responded to the first examination report by filing evidence said to confirm its asserted entitlement. Examination of the Vuly application has since been deferred pending finalisation of the ownership dispute.
The second section 36 request
The response to the first examination report on the Vuly application is based on a declaration made by Mr Andon on 18 October 2017. After referring to the first decision, Mr Andon states (at [17]) that:
“due to several unforeseen circumstances … important submissions, including evidence in support of Vuly’s entitlement to the invention described in [the 206 application], which relates to similar subject matter as [the Vuly application], were unfortunately not submitted or considered.”
The ownership dispute consequently resurfaced on 22 December 2017 when Vuly Trampolines Pty Ltd (the second requestor) requested a declaration under section 36(1) that it is the sole eligible person in respect of the Yang applications (the second request). For reasons essentially corresponding to those stated in the first decision, I declined the second request (the second decision).[3]
The present section 36 request
[3] Vuly Trampolines Pty Ltd v Wei Yang [2018] APO 74
Background
In a letter dated 8 November 2018, the patent attorney for the second requestor alleged that it had become “abundantly clear” from a review of the second decision that certain “highly relevant” documents had not been made available to me when deciding the second request. As events transpired, on 21 November 2018 the second requestor sought to rectify this alleged omission by requesting another declaration under section 36(1) that it is an eligible person in respect of the Yang declarations, and that Mr Yang is not such an eligible person (the present request).
Basis of the present request
The present request is based on the following grounds:
“1. The person nominated for the grant of a patent derived from the [Yang applications] (Mr Yang) was an employee of the Section 36 applicant (or a company related to the Section 36 applicant) at the time the invention was conceived. The invention described and illustrated in the [Yang applications] was illustrated by a director of the Section 36 applicant in consultation with a consultant commissioned to assist the Section 36 applicant with aesthetic aspects of an invention conceived by the director.
Mr Yang obtained the invention from those illustrations and filed the [Yang applications] naming himself as the inventor and applicant. Furthermore, Mr Yang had an obligation to assign any inventions made by him during the course of his employment to the Section 36 applicant. Thus, even if (for argument’s sake) Mr Yang made a material contribution to the invention described in the [Yang applications], which he did not, the Section 36 applicant is entitled to a patent for the invention described in the [Yang applications] pursuant to Section 15 of the Patents Act 1990 (Cth) and Mr Yang is not an entitled person.
2. The person named as the inventor on the [Yang applications] (Mr Yang) is not the true and first inventor.”
The request to change the section 36 requestor
A request to change the section 36 requestor for present purposes from Vuly Trampolines Pty Ltd to Vuly Pty Ltd was filed on 24 October 2019 (the amendment request). The amendment request was accompanied by a declaration made by Nicholas Stuart Salmon, patent attorney of IP Solved (ANZ) Pty Ltd, who exhibits a copy of a Confidentiality Agreement executed on 8 April 2011 between D3 Product Design Pty Ltd (D3 Design) and Vuly Pty Ltd (the Agreement). After closely reviewing the contents of the Agreement, I accept that prima facie it supports the contention that the present request “should have been filed in the name of Vuly Pty Ltd rather than Vuly Trampolines Pty Ltd”.[4] Most importantly, if admitted as evidence the Agreement would not have the effect of strengthening or otherwise altering the case to be answered by Mr Yang when contesting the present request.
[4] Letter from IP Solved (ANZ) Pty Ltd dated 24 October 2019
As a consequence, I can see no justification for refusing the amendment request, and I indicated as much at the hearing. Accordingly, the present request is now proceeding in the name of Vuly Pty Ltd (the present requestor).
Hearing of the present request
The present request was heard in Canberra on 6 November 2019. The present requestor was represented by Jesmini Ambikapathy of counsel instructed by Lachlan Mullane and Nick Salmon of IP Solved (ANZ) Pty Ltd. Bree Reid of the present requestor also attended the hearing as an observer. Mr Yang appeared by written submissions dated 4 November 2019.
Standard of proof
In accordance with authority, the present requestor carries the legal burden of proof to establish on the balance of probabilities that the subject matter of the Yang applications was obtained through it by Mr Yang. However, the evidential burden may shift from time to time, particularly where knowledge of the relevant facts lies peculiarly with one party or the other.[5]
[5] Grove Hill Pty Ltd v Great Western Corporation Pty Ltd [2002] FCAFC 183 at [221]
THE EVIDENCE
The present requestor relies on the following evidence:
- A first declaration made by Mr Andon on 18 October 2017 (Andon 1);
- A second declaration made by Mr Andon on 16 April 2018 (Andon 2);[6] and
- A declaration made by Lachlan McDonald Mullane on 7 March 2019 (Mullane).
[6] Referred to as Andon #3 in the second decision at [23]
The first declaration made by Mr Andon was originally filed in response to the first examination report on the Vuly application. His first and second declarations were filed in support of the second request.
Mr Yang relies on the following evidence:
- A first declaration made by him on 15 March 2018 (Yang 1);
- A second declaration made by him on 13 April 2018 (Yang 2); and
- A third declaration freshly made by him on 28 March 2019 (Yang 3).
Mr Yang’s third declaration cross-references his first and second declarations which he made in response to the second request.
The parties have also relied on a number of supporting exhibits and appendices.
FACTUAL BACKGROUND
The following relevant background facts have emerged from the evidence.
Mr Andon is the chief executive officer (CEO) of Vuly Property Pty Ltd and a number of related entities that comprise the Vuly group of companies (Vuly). Vuly is engaged in the business of designing and manufacturing trampolines and associated products.
Mr Yang commenced employment with Vuly in March 2011 as a mechanical engineer. Although lacking prior experience in trampoline design, Mr Yang had acquired extensive mechanical design experience across several other fields. He was promoted to engineering manager of Vuly in 2012.[7] Mr Yang describes his role when employed by Vuly as follows:
“… I [was] involved in the product design, research, and development and testing of improvements to all new products conceived and developed by Vuly, as well as most improvements or modifications to the existing product range. This involvement [was] primarily in relation to the mechanical engineering aspects of those matters. I [was] involved in most of the research activities of Vuly, including concept development and prototype design, development, construction and testing. I [was] also closely involved with a number of third parties who provide assistance to Vuly with aspects of this research and development … including design consultants.”[8]
[7] Yang 2, Appendix F at [18]
[8] Yang 2, Appendix F at [22]
Mr Yang’s employment with Vuly was governed by a comprehensive series of agreements.[9] In accordance with these agreements, Mr Yang was obliged to assign any intellectual property developed by him to Vuly during the course of his employment.
[9] Andon 1 at [14]-[15] and Exhibit C; Yang 2, Appendix F at [21]
Mr Andon informed Mr Yang of his design objectives in a number of discussions held between them when Mr Yang started employment with Vuly. Under the initial direction of Mr Andon, Mr Yang focussed his activities on developing a trampoline which was later designated as the Vuly “Thunder” trampoline (the Thunder trampoline).[10] Mr Yang’s primary aim was to design a leaf spring system for connecting the bounce (or jump) mat to the base of the trampoline.[11]
[10] Yang 1 at [2] and [4]; Yang 2, Appendix F at [33]
[11] Yang 1 and Yang 3 at [6]
The Thunder trampoline differs in a number of respects from the trampolines disclosed by the Yang applications, most notably because the Thunder trampoline utilises safety poles that are vertical and not cross-joined.[12]
[12] Andon 1, Exhibit D; Yang 1, Appendix D at [7]
In April 2011, Mr Yang and Mr Andon began working in conjunction with D3 Design, a design company engaged by Vuly.[13]
[13] Yang 2, Appendix F at [51]
A prototype of a trampoline that embodied a leaf spring system was built by Mr Yang in June 2011. Although showing promising results under performance testing, Mr Andon and Mr Yang considered that further refinement of the prototype was needed.[14] Mr Yang proceeded to explore other design options with the assistance of D3 Design.
[14] Yang 2, Appendix F at [57]-[60]
During the final months of 2011, Mr Andon attempted to create a new design for a trampoline in which the safety net and poles presented a more integrated look than the trampolines on the market at the time. The early designs had safety poles which curved outward from the centre of the trampoline in an upward direction from its base. However, there was a limit to the amount of curvature that could be achieved in these designs.[15]
[15] Andon 1 at [3]-[4]
When contemplating the curvature problem, Mr Andon discovered that the safety poles could be Y-shaped with the tops of the “Y” extending around the trampoline (the Y design). Mr Andon considered that the Y design:
- would be suitable for a range of new and existing trampolines (e.g. with leaf springs or coil springs) including the Thunder trampoline; and
- could be used for the poles supporting the safety net which would also make the whole design of the trampoline and safety net appear to be more integrated, rather than the safety net looking like an afterthought.[16]
[16] Andon 1 at [5]
Mr Andon discussed the Y design with D3 Design and during these discussions it was suggested that:
- the tops of the “Y’s” could be extended and could cross over one another, being joined to one another for structural support at the ends of the branches of each “Y”; and
- another option was to remove the legs of the “Y’s” but still having the safety poles cross over once or twice and be joined at the crossovers to provide additional strength and/or stiffness (the cross-over design).[17]
[17] Andon 1 at [6]
These concepts were duly considered by D3 Design, and on 18 November 2011 David Francis of D3 Design sent an email to Mr Andon attaching some design proposals for enhancing the appearance of a prototype supplied by Mr Andon (the Francis email).[18] The attachments included preliminary sketches of the Y design and the cross-over design. After explaining the design proposals at some length, Mr Francis ended by saying that “If you like this thinking and the direction it is taking the trampoline, then we can begin chatting to [Mr Yang] about doing some CAD simulations to work out what the structure needs to do.” On 26 April 2012, Jonathan Lowe of D3 Design sent an email to Mr Andon attaching further illustrated proposals and explanatory notes regarding the Y design and the cross-over design (the Lowe email).
[18] Andon 1, Exhibit A
In or about December 2011, Mr Yang tested another prototype utilising the leaf spring system he had developed which yielded “impressive results”.[19] He then diverted his attention to designing and testing other structural elements of the Thunder trampoline.[20]
[19] Yang 2, Appendix F at [74]-[75]
[20] Yang 2, Appendix F at [77]-[80]
Mr Yang’s employment with Vuly ceased on 1 April 2014.[21]
[21] Yang 2, Appendix E
Mr Yang filed the priority application on 30 July 2014.
THE CLAIMS TO OWNERSHIP
The present requestor’s claim
The contention on which the present requestor principally relies to establish its entitlement is that Mr Yang was made aware of the cross-over design while employed by Vuly and, aided by that knowledge, filed the Yang applications shortly after he ceased employment with Vuly. It is more particularly said that the cross-over design originated with Mr Andon and/or employees of D3 Design, and was subsequently communicated to Mr Yang by Mr Andon. The present requestor in turn relies on the original entitlement of the alleged inventor(s) as the source of its entitlement to the Yang applications:
(a)“to the extent that D3 Design was involved in conceiving the cross-over design, [the present requestor] is entitled to the assignment of any intellectual property rights D3 Design may have in the cross-over design under the terms of the [Agreement]; and
(b)to the extent that Mr Andon was involved in conceiving the cross-over design, any intellectual property rights Mr Andon may have in the cross-over design are held for the benefit of [the present requestor].”[22]
[22] Requestor’s outline of submissions at [38]
Mr Yang’s claim
Mr Yang’s opposing claim is that the subject matter of the Yang applications was conceived by him unassisted by any knowledge of the cross-over design. His account of how he alleges to have independently arrived at this result can be relevantly summarised as follows:[23]
[23] Yang 1, Appendix B
As a result of certain events which occurred shortly after he had ceased employment with Vuly, Mr Yang held concerns regarding the structural integrity (and hence the safety) of the trampoline that had been installed at his family residence. The design of the trampoline was typical of trampolines then on the market.
After conducting some research and theoretical analysis, Mr Yang reasoned that existing trampolines could be made safer by strengthening the safety poles. It occurred to Mr Yang after discounting other options, such as increasing the number of safety poles or the size of each pole, that the safety poles could most suitably be strengthened by linking adjacent poles together.
His initial design, which was created around the end of May 2014, accordingly employed adjacent pairs of oppositely curved safety poles that were linked after crossing one another above and below the base of the trampoline to form what Mr Yang has described as “X” junctions (see Picture 5 below).
Mr Yang recognised that the initial design was deficient in a number of respects. He consequently modified the initial design in June 2014 by directly linking the lower ends of the adjacent pairs of safety poles so that they no longer crossed one another below the base of the trampoline. The “X” junctions above the base of the trampoline were retained and horizontal connecting poles added between the upper ends of the adjacent pairs of safety poles to form a lattice structure.
In light of his experience as an engineer, Mr Yang was confident that the modified design would provide much stronger safety poles and so moved onto developing the complete structure of the trampoline including the support legs, the base and the mechanism for joining the safety net to the safety poles (see Picture 8 below).
To enhance the appearance of the modified design, the horizontal connecting poles were removed and the upper ends of the adjacent pairs of safety poles directly linked to produce an overall arc-shaped profile.
Mr Yang felt that his design had been sufficiently developed as to warrant its protection, and so filed the priority application at the end of July 2014.
Mr Yang arranged for a first prototype to be built by a Chinese manufacturer at the beginning of August 2014. Mr Yang subjected the prototype to significant testing during the following month. After making further improvements based on the test results (see Picture 17 below), Mr Yang decided to protect his design in Australia and so filed the 206 application towards the end of November 2014.
A second prototype was built at the beginning of 2015. Some small improvements were made to the second prototype which resulted in the final product.
I note that the Yang applications, as well as the Vuly application, include drawings that are substantially similar to Pictures 8 and 17 referred to above.
On 2 September 2014, Mr Yang registered a company he co-founded which markets the trampolines described and claimed by the Yang applications under the name “Spark”[24].
[24] Yang 1 at top of page 1, [6]-[8], Appendix B at [17]; Andon 2 at [3]
Before directing further attention to the ownership dispute, it is necessary to deal with the conflicting views initially advanced by the parties regarding the nature of the evidence on which the present request is said to be based.
EVIDENTIARY BASIS OF THE PRESENT REQUEST
The requestor’s “missing evidence”
Mr Mullane is the patent attorney for the present requestor. His declaration contends, firstly, that the second request inadvertently omitted certain relevant evidence which as a consequence was not taken into consideration by the second decision and, secondly, that the present request aims to remedy this oversight by introducing the “missing evidence” into these proceedings. More particularly:
“The [second request] was filed with a view to specific pieces of evidence that were inadvertently not provided in the previous section 36 requests that resulted in the [second decision]. In particular, [Andon 1] and [Andon 2] were originally submitted in the previous section 36 applications, but some material was inadvertently not uploaded to [the means approved by the Commissioner for filing evidence electronically (Objective Connect)]. Specifically, the attachments for [the Francis and Lowe emails] were not previously uploaded to Objective Connect. For the purpose of re-submitting [Andon 1] and [Andon 2] in the present matter, I have correctly put together the documents for the Exhibits, and these will be submitted for the present matter.
Furthermore, in both Exhibit A of [Andon 2] and Exhibit B of [Andon 1], whilst the emails themselves were previously uploaded, it was noted that the copies of the emails that were included in the Exhibits previously uploaded did not list or otherwise identify the attachments to the emails. For clarity, new copies of these emails that list/identify the email attachments have been included in the Exhibits that are being submitted in the present matter.
Finally, it was noted that Exhibit B of [Andon 2] that was previously uploaded to Objective Connect included over 1,000 pages of what appears to be some type of erroneous computer code. For clarity, I have removed those pages from the Exhibits that are being submitted in the present matter.”[25]
[25] Mullane at [3]-[5]
Mr Mullane additionally claims that “no other alterations or modifications” have been made to the evidence on which the requestor presently relies.
The request for dismissal
Mr Yang’s third declaration was accompanied by a letter dated 1 April 2019 from his patent attorney, Madhu K Jogia. Dr Jogia rejects the contention that the evidence on which the present request relies materially differs from the evidence filed in support of the second request, thus clearly inferring that the present request is impermissibly attempting to revisit the merits of the second decision.[26] On this basis Dr Jogia requests (at [17]) that:
“[the present request] be dismissed on grounds that there is no “missing evidence” as such, and/or that the purported “missing evidence” has already been addressed by [Mr Yang] in previous evidence and submissions, the [second decision] should stand and to award all costs to [Mr Yang].”
[26] R v Smith; Ex parte Mole Engineering Pty Ltd [1981] HCA 25; 147 CLR 340 at 348-349
On 28 May 2019 a delegate of the Commissioner responded to Dr Jogia’s request by advising the parties as follows:
“Whilst the alleged “missing evidence” had been filed by [the second requestor] as part of their evidence in response … in Objective Connect, as noted in our letter of 23 March 2019, it appears that some portions of this evidence were not downloaded into our [electronic casefile (PAMS)] due to some technical issues and hence this alleged “missing evidence” was not considered by the delegate in [the second decision].
Hence the Commissioner is of the view that it is not appropriate to dismiss the [present request] without further consideration of the alleged “missing evidence”.
The Commissioner therefore intends to have the delegate consider this alleged “missing evidence” and any other differences in evidence between the new evidence filed by the requestor and the evidence considered by the delegate in [the second decision].
While it appears that the applicant had seen the alleged “missing evidence” and addressed it in their submissions [in response to the previous request], they have requested in their letter of 1 April 2019 that they be given an opportunity to submit a further response to address this alleged “missing evidence”. I am of the view that this request is appropriate in the circumstances and I therefore give the applicant a period of one month from the date of this letter to file any responding evidence and/or submissions in relation to the “missing evidence””.
In his reply to the delegate dated 14 June 2019, Dr Jogia in effect maintained that the second decision had already conclusively dealt with the alleged “missing evidence”.
Did the second decision take account of the “missing evidence”?
The central issue which fell for determination in the second decision was whether the evidence filed in support of the second request established on balance that Mr Andon had communicated the cross-over design to Mr Yang. It was more particularly alleged by the second requestor that the cross-over design was disclosed to Mr Yang under cover of email on two separate occasions, namely, on 26 April 2012 when Mr Andon forwarded the Lowe email and its attachments to Mr Yang, and later on 26 September 2013 when Mr Andon forwarded the Francis email and its attachments to Mr Yang.
The evidence provided by Mr Andon in support of the second request exhibits a copy of the Francis email and its attachments (Exhibit A1). Mr Andon plainly intended to also exhibit copies of his covering emails of 26 April 2012 and 26 September 2013 to Mr Yang together with the Lowe and Francis emails and their attachments which the covering emails are said to have respectively enclosed (Exhibit B1). However, the second decision leaves no doubt that the version of Exhibit B1 made available to me (via PAMS) did not include the attachments to either of the Lowe or Francis emails. The first indication in the second decision (at [57]) that the attachments were “missing” came from Mr Yang’s own evidence:
“Appendix 1 of Exhibit [B1] of the Andon Declaration shows an email purportedly forwarding the Francis Email, however I cannot see the original email at all in the email chain and cannot ascertain whether the attachments were in fact forwarded … Appendix 2 of Exhibit [B1] of the Andon Declaration is even more cryptic that Appendix 1. This is an email from Jonathan Lewis [sic: Lowe] of D3 Design to Mr Andon dated 26 April 2012 attaching a PDF of D3 Design’s proposed new look for ‘the new trampoline design’. That email was then forwarded by Mr Andon to Michael Connolly and myself, again with no message in the body. There is no explanation as to what Mr Connolly and myself were expected to do with the email, no explanation of what this email means and the PDF attachment is not included” (my emphasis).[27]
[27] Yang 1 at [15]-[16]
The reliability of Mr Yang’s evidence was confirmed by me at [58]:
“Mr Yang’s criticism of the evidence relied on is in my opinion completely justified. The emails which on the evidence were in fact forwarded by Mr Andon to Mr Yang do not include any of the attachments from either the Francis email or the Lowe email …”
The inadvertent omission of the email attachments from the evidence made available for my consideration ultimately proved fatal to the second request.[28]
[28] Second decision at [61]
Does the present request rely on “new” evidence?
Mr Andon has exhibited another copy of the Francis email and its attachments in support of the present request (Exhibit A2). In this respect the present request does not differ from the second request. However, Mr Andon additionally exhibits (Exhibit B2) the very evidence which the second decision clearly establishes was “missing” from the second request. More particularly:
- Appendix 1 of Exhibit B2 consists of copies of Mr Andon’s covering email of 26 April 2012 to Mr Yang, as well as the Lowe email and its attachments; and
- Appendix 2 of Exhibit B2 consists of copies of Mr Andon’s covering email of 26 September 2013 to Mr Yang, as well as a number of sheets that include sketches drawn on D3 Design stationary in relation to what has been designated as “design suggestions”.
It will be noted that Appendix 2 does not itself include a copy of the Francis email. I can only speculate as to whether this is a further inadvertent omission. Most importantly, however, it is immediately apparent from a comparison with Exhibit A2 that the sheets accompanying Appendix 2 constitute the attachments to the Francis email.
Conclusion
It is clear in view of the foregoing that the present request does not, as implied by Dr Jogia, impermissibly seek to revisit the merits of the second decision, but instead as contended by Mr Mullane introduces relevant evidence into these proceedings which did not form part of the evidence previously made available to me to consider. I therefore do not agree with Dr Jogia that there is any justification for dismissing the present request.
Accordingly, I now return to my consideration of the ownership dispute.
THE LAW
Statutory framework
The present request was filed after 15 April 2013 and, as a consequence, is governed by section 36(1) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act2012. The amended section reads:
“(1) If:
(a) a patent application has been made and, in the case of a complete application, the
patent has not been granted; and
(b) an application for a declaration by the Commissioner is made by one or more persons
(the section 36 applicants) in accordance with the regulations; and
(c) the Commissioner is satisfied, on the balance of probabilities, in relation to an
invention disclosed in the specification filed in relation to the application for the patent:
(i) that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
(ii) that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons,
the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention so disclosed.”
A declaration may be made under section 36(1) whether or not the patent application has lapsed or is withdrawn: section 36(2). This provision is of particular relevance to the (now lapsed) 206 application.
The present request satisfies sections 36(1)(a) and (b). The only question arising from it is whether the present requestor is an eligible person to the exclusion of Mr Yang. Schedule 1 of the Act defines an “eligible person” in relation to an invention as meaning a person to whom a patent may be granted under section 15. Section 15(1) provides:
“(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b);
or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”
In other words, the eligible person is the inventor or any person who has acquired ownership from the inventor. The inventor may be made up of a body of persons.[29]
[29] University of British Columbia v Conor Medsystems Inc [2006] FCAFC 154 at [75]
Relevant principles
The Federal Court has stated that the determination of who is an eligible person is to be approached as follows:
Identify the “inventive concept” of the invention as defined by the claims;
Determine who was responsible for the inventive concept and the time of its conception as distinct from its mere verification and reduction into practice; and
Determine how any contractual or fiduciary relationships give rise to proprietary rights in the invention.[30]
[30] University of Western Australia v Gray [2009] FCAFC 116 (UWA) at [253]; Polwood Pty Ltd v Foxworth Pty Ltd
As noted in UWA, the inventive concept marks the boundary between invention and verification. Thus, inventorship ends at the time of conception and is distinct from verification and reduction to practice.
The following additional principles may prove to be significant when determining who was responsible for the inventive concept for the purposes of these proceedings:
- Where A has invented something and then abandons it and B subsequently invents the same thing, altogether independently of A, if B applies for a patent he is at law the first inventor. However, if it is shown that A communicated his ideas to B, although with the full intention of abandoning them, B will not be the first inventor; [31] and
- A patent may only be granted to the inventor or somebody claiming through the inventor. The term “inventor” does not include a person who publishes for the first time another’s invention which has been communicated to him.[32]
CONSIDERATION
[32] Stack at [21]
The inventive concept
The inventive concept or “heart” of the invention is to be determined from the specification, including, but not limited to, the claims:
“The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee’s description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it.”[33]
[33] Polwood at [61]
I consider that the inventive concept as described and claimed by the Yang applications resides in the provision of safety poles for supporting the safety net that are joined after crossing one another at a location above the bounce mat of the trampoline. It seems clear to me that the Yang applications were drafted with particular emphasis on this feature. This is evident in the fact that the employment of cross-joined safety poles is represented by the Yang applications as underlying the invention as described both in a general sense and with reference to its illustrated embodiments, and to the invention around which the claims are drawn.[34] Mr Yang’s own account of events likewise focuses on what he has otherwise referred to as the formation of “X” junctions between the safety poles. In both instances the arrangement of the safety poles is plainly reflected in the cross-over design.
[34] See e.g. the 206 application at [0009], [00025]-[00027], [00052], [00079] and claim 1
The present requestor does not contest this finding. In contrast, Mr Yang has submitted that the inventive concept does not simply lie in the use of safety poles that cross one another. He firstly points out that this feature was found to lack novelty during examination of the 206 application. However, it is well settled in law that the determination of rights in an invention is not concerned with issues of inventiveness.[35] Mr Yang next argues that the inventive concept extends to other features of the trampoline that were developed by him alone. These additional features are particularly said to include the design of the trampoline support structure, and the connectors for joining the safety poles. I am not persuaded by this line of argument since the description and claims of the Yang applications indicate to me that the features identified by Mr Yang merely assist in giving effect to a workable embodiment of a trampoline having cross-joined safety poles. In other words, these features relate to the practical implementation of the inventive concept as opposed to its conception.
Who was responsible for the inventive concept?
Overview
Mr Yang asserts that he is the sole inventor. The evidence on which he relies to support this assertion sets out a prima facie logical line of enquiry which was driven by Mr Yang’s personal desire to enhance the structural integrity of trampolines then on the market, and grounded on the concept of crossing safety poles (i.e. safety poles forming an “X” junction) only after he had discarded other design options as being unviable from an engineering perspective. I have no reason to suspect that Mr Yang has deliberately sought to reconstruct events in a light most favourable to his case.
Turning to the present requestor’s evidence, Mr Andon has not explained how he “unexpectedly discovered” that the Y design offered a solution to the curvature problem encountered by him when attempting to create a more visually appealing trampoline design.[36] However, I accept that this discovery prompted his discussions with D3 Design which gave rise to the cross-over design as an alternative to the Y design. This much is corroborated to my satisfaction by the Francis email and the Lowe email, and the sketches of the Y design and the cross-over design respectively attached to them. It is next said by Mr Andon that he subsequently communicated the cross-over design to Mr Yang.
[36] Andon 1 at [5]
Mr Yang does not challenge Mr Andon’s evidence as to the conception of the cross-over design, but nevertheless submits that:
“During the design and development of Vuly Thunder, Mr Andon did not show to me any trampoline designs which were similar to our Spark trampolines, and he never discussed cross-over poles ... I do not recall ever seeing any of the cross-over pole designs.”[37]
[37] Yang 1 at [10]; Yang 3 at [12]
What information did Mr Andon communicate to Mr Yang?
As discussed earlier, the present requestor has placed heavy reliance on certain pieces of “missing evidence” which due to inadvertent omission were not previously made available to the Commissioner when deciding the second request or, as evidenced by Mr Andon’s first declaration, the first request. Importantly, it has now been clearly established by this evidence that:
Mr Andon emailed the Lowe email, together with its attachments, to Mr Yang on 26 April 2012; and
Mr Andon emailed the attachments to the Francis email, but not the Francis email itself, to Mr Yang on 26 September 2013.
What did Mr Yang do with this information?
It is at this point that the evidential burden shifts to Mr Yang who in essence claims to have no recollection of the cross-over design.
Mr Yang does not deny that he considered the contents of the emails sent to him by Mr Andon on 26 April 2012 and 26 September 2013. Indeed, it is highly unlikely that Mr Yang would ignore correspondence from the CEO of Vuly, even more so given that Mr Yang held a senior position in Vuly’s engineering department at the time. I note for example in this respect that on 4 May 2012 Mr Yang sent an email headed “thunder concept” to Mr Andon asking for Mr Andon’s feedback on an idea he had which appears to relate to the means for joining the safety net to the safety poles. Relevantly, the email included some formal drawings which, although said by Mr Yang to illustrate a “V connection”, were clearly based on the Y design.[38] This information could only have come from the Lowe email and its attachments which Mr Yang had received from Mr Andon a little over a week earlier.
[38] Andon 2, Exhibit B
Nevertheless, there are a number of factors that may underlie Mr Yang’s claim as to his recollection of the cross-over design:
(a)The mechanical design activities undertaken by Mr Yang for Vuly were chiefly concerned with the development of the Thunder trampoline. Mr Andon was apparently keen for this work to culminate in patent protection as early as possible.[39]
[39] Yang 2, Appendix F at [61]
(b)Mr Yang was not present when the cross-over design arose from discussions held between Mr Andon and D3 Design.
(c)The body of the emails sent by Mr Andon to Mr Yang on 26 April 2012 and 26 September 2013 did not contain any message. Thus, for example, Mr Andon did not explain the purpose of his emails or the nature of their attachments to Mr Yang, and nor did he request Mr Yang to take any further action in relation to them.
(d)Mr Andon forwarded the Lowe email and its attachments to Mr Yang on 26 April 2012, yet waited for another 17 months before forwarding the Francis email attachments to him. On 28 April 2012 Mr Andon sent an email to Mr Yang noting that “David [Francis] has sent us many new design suggestion [sic] for the new pole concept to make the trampoline look different”,[40] but even here Mr Andon did not inform Mr Yang of what these suggestions were.
(e)There is no evidence that Mr Andon “chatted” with Mr Yang about the cross-over design as broadly proposed in the Francis email which Mr Andon had received during November 2011.
(f)There is no evidence that a trampoline incorporating the cross-over design was ever produced by Vuly, even in prototype.
[40] Andon 2, Exhibit C
The above factors show that the cross-over design was communicated to Mr Yang on only two and quite separate occasions. Mr Andon did not on either occasion indicate whether the cross-over design was at all relevant to Vuly’s design objectives, let alone direct Mr Yang to take any consequential action. It is not difficult to imagine that in these circumstances Mr Yang had no reason to believe that he was expected to have further regard to the cross-over design. However, the overriding fact remains that Mr Yang had undoubtedly been made aware of the cross-over design through information communicated to him by Mr Andon.
The question that consequently arises in the context of these proceedings is whether Mr Yang was to later benefit from this information.
During the course of her oral submissions, counsel for the present requestor argued that it is inconceivable that Mr Yang could maintain a barrier within his own mind so as to compartmentalise this information while working on the trampoline design he pursued after ceasing employment with Vuly. I understand this submission to derive from the principle that “knowledge once acquired cannot be isolated within the mind behind some internal Chinese wall.”[41] In general terms, the expression “Chinese wall” is used in law to denote a virtual barrier that is meant to prevent the misuse by a party of information belonging to another party. The misuse may be subconscious. This principle has been more succinctly stated as “information which once in a person’s possession cannot be distinguished from other information in the person’s possession.”[42] The information may have been conveyed by drawings alone. [43]
[41] Bayer Bioscience NV v Deltapine Australia Pty Ltd [2006] FCA 68 at [19], citing Mobil Oil Australia Pty Ltd v[42] Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 6) [2010] FCA 1106 at [12]
[43] Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371
Mr Yang’s evidence is that he began working on a new trampoline design soon after ceasing employment with Vuly. His objective was to enhance the structural integrity (and hence safety) of trampolines then on the market which he felt could be achieved by strengthening the safety poles. By the end of May 2014 Mr Yang had reached the conclusion that the safety poles could most suitably be strengthened by forming “X” junctions between them. It is to be noted here that this sequence of events occurred at most only some 8 months after Mr Andon had sent the Francis email attachments to Mr Yang.
I do not mean to suggest that Mr Yang set out to misappropriate information belonging to Vuly for his own purposes. Nor do I doubt his expertise as a mechanical design engineer. However, the relatively short period of time that elapsed prior to Mr Yang arriving at his “X” junction design which, as said earlier, is plainly reflected in the cross-over design, leads me on balance to the view that he had unintentionally or unconsciously taken advantage of the information communicated to him by Mr Andon. It is true that Mr Yang adopted the “X” junction design only after rejecting other options that had been brought to light by his initial research and theoretical analysis. Nevertheless, and as guided by authority, I consider it more improbable than not that although the cross-over design had been disclosed to him, Mr Yang was able to isolate that knowledge within his own mind. The similarities between the cross-over design and the “X” junction design are so striking as to preclude, in my opinion, the possibility of Mr Yang having independently arrived at the same result.
Summary of findings
I have previously determined that the inventive concept in essence resides in the cross-over design. The evidence relied on by the present requestor clearly establishes that Mr Andon communicated the cross-over design to Mr Yang on 26 April 2012 and 26 September 2013. I have found on balance that the line of enquiry followed by Mr Yang after he had ceased employment with Vuly was aided by the information Mr Andon had communicated to him. That is to say, the evidence for Mr Yang is insufficient to justify a finding that he alone devised the inventive concept.
Given the foregoing, I additionally find that Mr Yang is not the person responsible for the inventive concept. I therefore reject his claim to inventorship, and there is no evidence that he otherwise derives entitlement either solely or in part to the Yang applications. On the other hand, I am satisfied by the present requestor’s evidence that the cross-over design arose from discussions held between Mr Andon and D3 Design. Accordingly, I accept that Mr Andon and/or employees of D3 Design were responsible for the inventive concept as the present requestor has submitted.
Contractual or fiduciary relationships
The evidence has shown that the inventive concept was conceived by Mr Andon and/or employees of D3 Design. It will be recalled that Mr Andon is the CEO of Vuly, and that under the terms of the Agreement Vuly is entitled to the assignment of any rights D3 Design may have in the cross-over design. It is as a result also clear from the evidence that the present requestor has derived title or is otherwise entitled to have the inventive concept assigned to it irrespective of who between Mr Andon and D3 Design conceived the inventive concept.
CONCLUSION
I am on balance satisfied that the present requestor is the sole eligible person in respect of the Yang applications.
COSTS
Costs normally follow the event. However, the power to award costs is discretionary, and so I must take account of all relevant considerations.
The present requestor has succeeded in establishing its entitlement to the Yang applications, but only on the basis of key evidence that, although in the possession of Vuly at the time of the first request, was not filed in support of the first request due to inadvertent error. The steps taken by Vuly to correct this error when filing the second request were unfortunately negated by some technical issues. Nevertheless, there is no doubt that the initial error on the part of Vuly has led to an avoidable protraction of the ownership dispute. Furthermore, and as I will soon discuss, the manner in which Vuly has conducted its case has created uncertainty as to the actual identity of the inventor(s). Taking all relevant considerations into account, I am of the opinion that the present requestor should bear its own costs.
I accordingly make no award of costs.
FURTHER INFORMATION REQUIRED
I have found that the present request succeeds. Nevertheless, there remains the fact that the actual identity of the inventor(s) is uncertain.
It is apparent from my findings that I have accepted the case advanced by the present requestor that Mr Andon and/or employees of D3 Design are the inventors of the cross-over design. However, this may be interpreted to mean that the cross-over design was conceived either by D3 Design alone and that, as a consequence, Mr Andon has no legitimate claim to inventorship, or by D3 Design in conjunction with Mr Andon. Both possibilities are inconsistent with the Vuly application which names Mr Andon as the sole inventor.
Furthermore, section 36 enables a person who has been determined to be an eligible person to make a new application under section 29 for the whole of the subject matter of the application(s) on which the determination was made. It is clear that any new application made by the present requestor pursuant to my decision would need to identify the actual names of the inventor(s).
The requestor may of course alternatively pursue the Yang applications as they currently stand. In these circumstances the Yang applications would, contrary to my findings, continue to name Mr Yang as the inventor. This inconsistency could prove detrimental to the fate of the Yang applications, the interests of the parties, and the public interest in ensuring the accuracy of records maintained by the Commissioner. Indeed, this inconsistency could ultimately result in a false entry being made in the Register.
The requestor is accordingly requested to provide written submissions within two (2) months of the date of this decision on how it wishes to proceed. It would be most beneficial in view of the reasons outlined above if these submissions were accompanied by evidence which establishes the actual identity of the inventor(s).
O L Haggar
Delegate of the Commissioner of Patents
[2008] FCAFC 9 (Polwood) at [52]-[66]
Patents (8th Ed)
Australia v John Murray Charlesworth [2008] APO 16 at [32], CSIRO v Gilbert and Hazlewood [1995] APO 16;
31 IPR 67 at 72
Guina Development Pty Ltd [1996] VicRp 54; 33 IPR 82
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