Vuly Trampolines Pty Ltd v Wei Yang
[2018] APO 74
•29 October 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Vuly Trampolines Pty Ltd v Wei Yang [2018] APO 74
Patent Applications: 2017216515, 2014268206 and PCT/CN2015/085447
Titles:A type of frame structure for trampolines and the trampolines (2017216515 and 201428206)
Frame for trampoline and trampoline (PCT/CN2015/085447)
Patent Applicant: Wei Yang
Requestor: Vuly Trampolines Pty Ltd
Delegate: O L Haggar
Decision Date: 29 October 2018
Hearing Date: Written submissions completed on 4 June 2018
Catchwords: PATENTS – requests under section 36 – whether requestor is an eligible person – whether feature of pairs of upwardly cross-joined safety poles was communicated to the applicant during the course of his employment with the requestor – applicant found to have independently devised the safety pole feature after ceasing employment with the requestor – requestor not found to be an eligible person – costs awarded against the requestor
Representation: Patent attorney for the applicant: Jogias Patent and Trade Mark Attorneys
Patent attorney for the requestor: 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 201428206)
Frame for trampoline and trampoline (PCT/CN2015/085447)
Patent Applicant: Wei Yang
Date of Decision: 29 October 2018
DECISION
It is not appropriate to make any declaration under section 36. Costs according to Schedule 8 are awarded against Vuly Trampolines Pty Ltd.
BACKGROUND
Introduction
These proceedings raise questions concerning the ownership of a number of related patent applications that involve the same parties.
The related applications
Vuly Property Pty Ltd is the 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 applicant for the PCT application.
Mr Yang is also the applicant for patent applications 2017216515 (the 515 application) and 2014268206 (the 206 application). The 515 application is a divisional application of the 206 application which has now lapsed due to the expiry of the prescribed time for acceptance. The PCT application (from which patent application 2015296115 would otherwise have derived) did not enter the national phase in Australia, but is nevertheless treated as a complete application for a standard patent under section 29A.
Mr Yang is the inventor named in the PCT application, the 515 application and the 206 application (the Yang applications). Mr Joe Andon is the inventor named in the Vuly application.
The claims to entitlement
Vuly Trampolines Pty Ltd has requested declarations under section 36(1) that it is an eligible person in respect of the Yang applications, and that Mr Yang is not (the present requests). Mr Yang refutes that Vuly Trampolines Pty Ltd is an eligible person, but has not made a request under section 36(1) in relation to the Vuly application. However, the question of entitlement was raised in the first examination report on the Vuly application. The examiner noted that although claiming divisional status, the applicant and the inventor for the Vuly application are not the same as the applicant and the inventor for the (parent) PCT application, namely, Mr Yang. The examiner accordingly questioned whether:
Vuly Property Pty Ltd is entitled to be an “applicant” for the Vuly application within the meaning of section 79B; and
Vuly Property Pty Ltd is entitled under section 15 to be granted a patent for the invention.[1]
[1] Examination report No 1 for standard patent application dated 22 June 2017
The examiner further noted that a declaration under section 36(1) had previously been requested by Vuly Property Pty Ltd in respect of the 206 application (the previous request). The previous request relied on the same grounds as the present requests. The previous request was declined by the Deputy Commissioner of Patents,[2] and an appeal to the Federal Court against this decision was dismissed without a hearing on the merits of the appeal.[3] In view of the closely analogous circumstances, the examiner stated that it was necessary for Vuly Property Pty Ltd “to provide reasoned statements as to why the decision of the Deputy Commissioner has no relevance to the [Vuly application]”.
[2] Vuly Property Pty Ltd v Wei Yang [2016] APO 69
[3] Vuly Property Pty Ltd v Yang (No 2) [2017] FCA 592
On 20 October 2017 Vuly Property Pty Ltd responded to the first examination report by filing evidence in support of its alleged entitlement. Examination of the Vuly application has since been suspended pending the fate of the present requests.
Conduct of the proceedings
On 16 January 2018 the parties were advised that the Commissioner considered it appropriate to join the present requests, and that as a consequence:
evidence filed in relation to any one of the present requests will be treated as evidence in all of the present requests;
evidence filed in relation to the previous request is evidence in all of the present requests; and
evidence filed in response to the first examination report on the Vuly application is evidence in all of the present requests.
The present requests were heard by written submissions. I will refer to the evidence and submissions where appropriate in my decision.
SUBJECT MATTER
The Yang applications
The 515 and 206 applications differ only in respect of the scope of their associated claims. The invention is said by them to relate 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 identify the problem addressed by the invention as follows:
Existing safety pole systems are generally composed of multiple vertical poles surrounding the bounce mat and the safety net connected to the vertical poles. In use, the vertical poles share the force exerted through bouncing which, if excessive, can lead to bending of the poles.
One existing method for sharing the force exerted on the vertical poles is to connect them by fastening a tube to the top of each vertical pole. However such an arrangement is difficult to install due to the height of the poles.
It is then said that one object of the invention is to provide “a type of frame structure used for trampoline”, a further object is to provide “a type of high strength pole system with excellent safety and beauty”, and another object is to provide “a frame structure easy to be removed and transported”.
The 515 and 206 applications describe various embodiments of the invention with reference to a set of drawings. The embodiment illustrated in Figure 1 is reproduced below to help understand the issues arising from the present requests.
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). The following advantages are attributed to this feature:
“[00025] The invention can stand excessive force with higher safety level as a result of the cross-joint connection design.
[00026] Further, the invention, adopting the cross-joint connection mechanism, can improve the strength of the whole frame structure, to avoid the plastic deformation due to excessive force impacting on each single safety pole unit. In addition, the adoption of arc shape as well as cross-joint shape forms a beautiful design. It is more convenient to assemble various parts of the frame structure by using a section-by-section assembly structure. What makes transportation and packing more convenient is that not a single part of the frame structure is in random design.
[00027] The trampoline provided by this invention, uses the cross-joint connection mechanism to form the safety pole system surrounding the frame loop. In this way, a high strength of the whole safety pole structure is created to fully disperse the impacting force to the safety net and also improves the strength of the trampoline while protecting users.”
The 206 application as it stood prior to examination included a single independent claim. The claim 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.
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 unit 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.
The PCT application is in the Chinese language, and there is no translation on file. However, the English language abstract refers to first and second “guardrail rods” that are connected “in a mutually crossed mode” and it is clear from the drawings, which are either identical or similar to a large number of the drawings of the 515 and 206 applications,[4] that the guardrail rods are synonymous with the safety pole units.
[4] Compare e.g. Figs 1, 6-8 and 9 of the PCT application with Figs 1, 10-12 and 13 of the 515 and 206 applications
The Vuly application
The Vuly application identifies the same problem as the Yang applications, albeit in greater detail. The invention is then described as follows:
“[0005] The present invention is a trampoline with safety poles organised in a lattice type of formation with multiple joints. It provides more coverage around the trampoline as a safety mechanism. The lattice type formation also strengthens the safety poles via strategic connections, disperses forces asserted [sic] onto the safety poles, and thus prevents them from bending towards the person bouncing on the trampoline. As a result, the inward bending of the safety poles is largely eliminated, and guarantees a stable amount of space for jumping that does not change even as the jumper exerts a great deal of force.”
The drawings of the Vuly application duplicate all but Figure 22 of the drawings of the 515 and 206 applications.
The independent claims of the Vuly application (other than claims 15 and 16) essentially 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 SECTION 36 REQUESTS
The present requests are based on the following grounds:
(a)Mr Andon and/or designers engaged by Mr Andon on behalf of Vuly are the inventor; and/or
(b)to the extent (if any) that Mr Yang contributed to the invention, the contribution:
i.was not a material or significant contribution; and/or
ii.was made at a time he was an employee of Vuly Property Pty Ltd or Vuly Trampolines Pty Ltd and under express terms of his contract of employment Mr Yang is required to assign all intellectual property, including inventions, created or developed by Mr Yang to Vuly Property Pty Ltd or Vuly Trampolines Pty Ltd; and/or
iii.arose from Mr Yang’s knowledge of confidential information of Vuly Property Pty Ltd and/or Vuly Trampolines Pty Ltd, such knowledge having been acquired during the course of his employment with Vuly Property Pty Ltd and Vuly Trampolines Pty Ltd; and
(c)the nominated person, Mr Yang, has never derived title to the invention from Mr Andon, Vuly Property Pty Ltd or Vuly Trampolines Pty Ltd and is not entitled to have the invention assigned to him.[5]
[5] Vuly written submissions at [7]
In accordance with authority, Vuly Trampolines Pty Ltd carries the legal burden of proof to establish on the balance of probabilities that it alone is entitled to the Yang applications.[6]
[6] Dunlop Holding Ltd’s Application [1979] RPC 523 at 542-544; Grove Hill Pty Ltd v Great Western CorporationPty Ltd [2002] FCAFC 183 at 221
THE EVIDENCE
Vuly Trampolines Pty Ltd relies on the following declarations:
- Joe Andon dated 18 October 2017 (Andon #1) with Exhibits A to D[7];
- Joe Andon dated 15 March 2018 (Andon #2); and
- Joe Andon dated 16 April 2018 (Andon #3) with Exhibits E and F.
[7] Filed in response to the first examination report on the Vuly application
Mr Yang relies on the following declarations:
- Wei Yang dated 15 March 2018 (Yang #1) with Appendices B and D; and
- Wei Yang dated 13 April 2018 (Yang #2) with Appendices A to G[8].
THE LAW
[8] Appendices B and D of Yang #1 and Yang #2 are identical
Statutory framework
Subsection 36(1) as amended by the Intellectual Property Laws Amendment (Raising the Bar)Act 2012 applies to the present requests since they were filed after the commencement date. The amended subsection 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 subsection 36(1) whether or not the patent application has lapsed or is withdrawn: subsection 36(2).
The present requests satisfy paragraphs 36(1)(a) and (b). 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. Subsection 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.[9]
[9] 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 approached as follows:
identify the “inventive concept” of the invention by reference to the specification and 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 whether any contractual or fiduciary relationships give rise to proprietary rights in the invention.[10]
THE FACTS
[10] University of Western Australia v Gray [2009] FCAFC 116 at [253]; Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 at [52]-[66]
The agreed facts
The parties seem to be in general agreement as to the relevant basic facts set out below.
Mr Andon is the chief executive officer of Vuly Property Pty Ltd and a number of other related entities, the Vuly group of companies (Vuly). Vuly is engaged in the business of designing and manufacturing trampolines and trampoline accessories.
Mr Yang commenced employment with Vuly in March 2011 as a mechanical engineer. Mr Yang did not have any experience with the design of trampolines before then[11], but had acquired extensive design experience in other fields. He was promoted to engineering manager of Vuly in 2012.[12] Mr Yang describes his role at Vuly as follows:
“… I have been 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 is primarily in relation to the mechanical engineering aspects of those matters. I have been involved in most of the research activities of Vuly, including concept development and prototype design, development, construction and testing. I am also closely involved with a number of third parties who provide assistance to Vuly with aspects of this research and development … including design consultants.”[13]
[11] Yang #2, Appendix F at [17]
[12] Yang #2, Appendix F at [18]
[13] Yang #2, Appendix F at [22]
Mr Yang’s employment with Vuly was governed by a series of agreements.[14] Under these agreements:
(a)all discoveries, inventions, developments and improvements developed, discovered or contributed to by Mr Yang:
i. in the course of his employment; or
ii. using the resources of Vuly (including confidential information of Vuly)
were confidential information and intellectual property of Vuly (Vuly IP); and
(b)Mr Yang was obliged to assign, to the extent necessary, his entire right, title and interest in and to any Vuly IP to Vuly or its nominee.
[14] 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 springless trampoline without coil springs which was later designated as the Vuly “Thunder” trampoline (the Thunder trampoline).[15] 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.[16]
[15] Yang #1 at [2] and [4]; Yang #2, Appendix F at [33]
[16] Yang #1 at [6]
The Thunder trampoline differs in a number of respects from the trampolines described and claimed by the Yang applications, most notably because the Thunder trampoline utilises safety poles that are vertical and not cross-joined.[17]
[17] Andon #1, Exhibit D; Yang #1, Appendix D at [7]
In April 2011, Mr Yang and Mr Andon began working in conjunction with a design company engaged by Vuly, D3 Design.[18]
[18] 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.[19] Mr Yang proceeded to explore other design options with the assistance of D3 Design.
[19] Yang #2, Appendix F at [57]-[60]
During the last few months of 2011, Mr Andon made attempts 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. Some of 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.[20]
[20] Andon #1 at [3]-[4]
When contemplating the curvature problem, Mr Andon discovered (unexpectedly) 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.[21]
[21] 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 (the cross-over design).[22]
[22] Andon #1 at [6]
These concepts were further 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).[23] The attachments included simple 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.”
[23] Andon #1, Exhibit A
Mr Yang emailed some drawings of a trampoline incorporating the Y design to Mr Andon in May 2012. The email was headed “thunder concept” in which Mr Yang asked 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.[24] It is not suggested that Mr Yang’s idea was in any way informed by the cross-over design.
[24] Andon #1, Exhibit B
In or about December 2011, Mr Yang tested another prototype utilising the leaf spring system which yielded “impressive results”.[25] He then diverted his attention to designing and testing other structural elements of the Thunder trampoline.[26]
[25] Yang #2, Appendix F at [74]-[75]
[26] Yang #2, Appendix F at [77]-[80]
Mr Yang’s employment with Vuly ended on 1 April 2014.[27]
[27] Yang #2, Appendix E
On 30 July 2014, Mr Yang filed a patent application in China (CN 201420425826) that relates to trampolines (the Chinese application). The Yang applications claim priority either directly or (in the case of the 515 application) indirectly from the Chinese application.
On 2 September 2014, Mr Yang registered a company he co-founded called Itechsport Pty Ltd (trading as Spark Trampolines) which markets the trampolines described and claimed by the Yang applications under the name “Spark”[28].
[28] Yang #1 at top of page 1, [6]-[8], Appendix B at [17]; Andon #2 at [3]
Mr Yang filed the 206 application on 26 November 2014, the PCT application on 29 July 2015, and the 515 application on 16 August 2017.
The Vuly application was filed on 22 February 2017 as a divisional application of the PCT application.
The disputed facts
The contention on which Vuly Trampolines Pty Ltd principally relies to establish its entitlement is that Mr Yang became aware of the cross-over design due to his employment as an engineer with Vuly, and aided by that knowledge filed the Chinese application, followed by the Yang applications, shortly after he ceased employment with Vuly. It is more particularly said that Mr Andon forwarded an email from Jonathan Lowe of D3 Design enclosing a cross-over design (the Lowe email) to Mr Yang on 26 April 2012, and forwarded the Francis email to Mr Yang on 26 September 2013.
Mr Yang does not challenge Mr Andon’s evidence as to the creation of the cross-over design, but denies that the cross-over design was ever communicated to him:
“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 (which are for supporting the net). I do not recall ever seeing any of the cross-over pole designs.”[29]
[29] Yang #1 at [10]
Mr Yang next provides a detailed account of how he alleges to have arrived at the inventive concept independently of Vuly.[30] In summary:
[30] Yang #1, Appendix B
Mr Yang’s line of enquiry was initially motivated by concerns he held 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 (see Picture 6 below). 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 Chinese 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.
It is also worth mentioning that the Yang applications include drawings that are substantially identical to Pictures 8 and 17 referred to above.
CONSIDERATION
The inventive concept
It is not disputed that in its simplest form the inventive concept resides in the use 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.[31]. Relevantly, the same arrangement of the safety poles lies at the core of the Vuly cross-over design. Mr Yang has argued that the inventive concept also embraces certain other design features, but these features relate to the practical application of the inventive concept and not its conception.
[31] Yang written submissions dated 17 May 2018 at page 6 [2]; Vuly written submissions at [57]-[59]
Who was responsible for the inventive concept?
As will become apparent, the central question that falls for determination here is whether the inventive concept was devised by Mr Yang unaided by knowledge of the cross-over design. It is necessary to begin by saying something more on the origin of that design.
The origin of the cross-over design
Mr Andon does not explain how he “unexpectedly discovered” that the Y design offered a solution to the curvature problem he had encountered when attempting to create a more visually appealing trampoline design. Nevertheless, I accept Mr Andon’s evidence that the Y design prompted his discussions with D3 Design which in turn led to the conception of the cross-over design in late 2011. This version of events is corroborated to my satisfaction by the Francis email and the sketches of the Y design and the cross-over design attached to it.
It is a matter for comment though that the Vuly application was not filed until more than 5 years after the cross-over design had been conceived.
Was the cross-over design communicated to Mr Yang?
Vuly Trampolines Pty Ltd has approached this question in two ways. It firstly asserts that Mr Yang became aware of the cross-over design while employed by Vuly when the Francis and the Lowe emails were forwarded to him in succession by Mr Andon. However, the evidence as to what information was actually communicated through the agency of those emails is practically meaningless. Mr Yang has elaborated as follows:
“Appendix 1 of Exhibit B 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. Even assuming that the Francis Email was forwarded in its entirety, I note that it was forwarded first to Dan Fox, the Requestor’s patent attorney at the time, on 21 November 2011 with the message ‘Please have a look at David’s drawings when you have a moment’ … this email to Mr Fox was then forwarded by Mr Andon to Mr Fox again on 26 September 2013, nearly two years later, with no message in the body. That second forwarded email was then forwarded to me, again with no message in the body … the only conceivable reason that the Francis Email was forwarded to me in this way and in September 2013 is that Mr Andon wanted myself and Mr Fox to look at the leaf spring design in order to defend the [infringement proceedings brought against Vuly].
Appendix 2 of Exhibit B of the Andon Declaration is even more cryptic that Appendix 1. This is an email from Jonathan Lewis [sic] 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.”[32]
[32] Yang #1 at [15]-[16]
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, and nor does Mr Andon make any reference to them in his covering emails. This evidence is consequently of no assistance to Vuly Trampolines Pty Ltd.
Further to this, it is surprising that Mr Andon apparently did not take steps to inform Mr Yang of the cross-over design much sooner after it had arisen from discussions with D3 Design, but this may have been because of Mr Andon’s preference for Mr Yang to remain focussed on the development of the Thunder trampoline. I note in this regard that Mr Andon was evidently keen for this work to culminate in patent protection as early as possible.[33] Mr Andon’s actions are equally consistent with the view that he had simply lost interest in the cross-over design which could explain why no prototype of a trampoline in which it was incorporated seems to have been produced by Vuly, as well as explaining the lengthy delay in filing the Vuly application even though Mr Yang had filed the PCT application and the 206 application some years earlier.
[33] Yang #2, Appendix F at [61]
Vuly Trampolines Pty Ltd next draws attention to the allegedly unethical commercial activities of Mr Yang’s company, Spark Trampolines, in relation to Vuly products which it infers shows a willingness on the part of Mr Yang to misappropriate information belonging to Vuly for his own purposes.[34] It is pointed out for example that the Spark Trampolines website displays images of Vuly’s Classic trampoline model that are identical to those produced while Mr Yang was still employed by Vuly.[35] I fail to see the relevance of this argument particularly as the Classic trampoline does not employ safety poles that cross one another. Thus Vuly Trampolines Pty Ltd has again failed in its attempt to demonstrate that information regarding the cross-over design had been misused to the advantage of Mr Yang.
[34] Andon #3 at [6]
[35] Andon #2 at [5]
Ultimately Vuly Trampolines Pty Ltd bears the onus of proving on the balance of probabilities that the cross-over design was communicated to Mr Yang, and for the reasons discussed above the evidence on which it relies falls well short of this. Nevertheless, for the sake of completeness I now briefly return to the sequence of events that Mr Yang says led him to the inventive concept independently of Vuly.
Mr Yang’s version of events
I consider Mr Yang’s evidence on this issue to be entirely plausible. It sets out a 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 only after he had discarded other possible design options as being unviable from an engineering perspective. The fact that Mr Yang was able to progress the concept of crossing safety poles to its final development within a relatively short period of time does not give me cause to doubt the veracity of his evidence as suggested by Vuly Trampolines Pty Ltd.
Contractual or fiduciary relationships
This issue is a nullity given my finding that the inventive concept was independently devised by Mr Yang after he had ceased employment with Vuly.
CONCLUSION
The evidence on which it relies does not establish that Vuly Trampolines Pty Ltd is an eligible person in relation to the Yang applications. Accordingly, it is not appropriate to make any declaration under section 36.
This clearly has implications adverse to the divisional status of the Vuly application.
COSTS
Vuly Trampolines Pty Ltd has not successfully pursued the present requests and I can see no reason why costs should not follow the event. I therefore award costs against Vuly Trampolines Pty Ltd.
O L Haggar
Delegate of the Commissioner of Patents
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