White International Pty Ltd v Davey Water Products Pty Ltd
[2013] APO 5
•10 January 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
White International Pty Ltd v Davey Water Products Pty Ltd [2013] APO 5
Patent Application: 2005263207
Title:Controller, system and method for providing supplementing water
Patent Applicant: Davey Water Products Pty Ltd
Opponent: White International Pty Ltd
Delegate: Xavier Gisz
Decision Date: 10 January 2013
Hearing Date: 24 October 2012, in Melbourne
Catchwords: PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty and inventive step – claim treated as if it were a separate claim for each form of the invention under Section 43(3) – claims are fairly based on the specification as filed – Section 114(1) is not enlivened – opposition is unsuccessful on all grounds – costs awarded against opponent
Representation: Patent applicant: Philips Ormonde Fitzpatrick
Opponent:Watermark
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005263207
Title:Controller, system and method for providing supplementing water
Patent Applicant: Davey Water Products Pty Ltd
Date of Decision: 10 January 2013
DECISION
The opposition is unsuccessful on all grounds. Subject to appeal, I direct the application to proceed to sealing.
Costs awarded according to Schedule 8 against White International Pty Ltd.
REASONS FOR DECISION
Background
The patent application 2005263207 in the name of Davey Water Products Pty Ltd (the Applicant) is the national phase entry in Australia of PCT application with international publication number WO 2006/007669. The PCT application was filed on 22 July 2005 and was based on the Australian Provisional Application number 2004904071 which has a priority date of 22 July 2004. The PCT application was published on 26 January 2006. During examination the application was amended on 14 April 2010. The patent application was advertised as accepted on 3 June 2010. An opposition to the grant of the patent was filed by White International Pty Ltd (the Opponent) on 3 September 2010 and a Statement of Grounds and Particulars was served on 3 December 2010.
Evidence in Support was completed on 18 October 2011 and comprised a declaration by Philip Baker together with Exhibits PB-1 to PB-15.
On 4 January 2012 the Opponent requested to amend the Statement of Grounds and Particulars and to serve Further Evidence. It is notable that the amendments to the Statement replaced essentially all of the original Particulars. The Further Evidence comprised a declaration by Lee Lynch and Exhibits LL-1 to LL-8.
On 4 May 2012 the Applicant served Evidence in Response to the Opponent’s Further Evidence. The Evidence in Response comprised a declaration by Hugh McDonald and Exhibits HBM-1 to HBM-10.
The hearing was held in Melbourne on 24 October 2012. The Applicant was represented by Christopher Schlicht and Magda Bramante of Philips Ormonde Fitzpatrick. The Opponent was represented by Mark Summerfield of Watermark.
At the hearing I noted that the Opponent had provided the Office with submissions on the morning before the hearing, however the Opponent had not provided the Applicant with those submissions which had put the Applicant at a disadvantage. Consequently I allowed the Applicant to make written submissions within 7 days of the hearing; the Applicant’s supplementary submissions were received on 31 October 2012.
Grounds of opposition
In the amended Statement of Grounds and Particulars, the Opponent confined the grounds of opposition to novelty and inventive step. The Opponent’s arguments that the claims lacked novelty and inventive step were predicated on the priority date of the claims being the date the claims were amended rather the date of filing.
The alleged prior art document is the Opponent’s own patent application – Australian patent application number 2008243272 which was filed on 17 November 2008, claiming an earliest priority date of 16 November 2007, and published on 4 June 2009. If the priority date of the claims is found to be the date of amendment, then Australian patent application 2008243272 will properly constitute prior art as defined in Schedule 1 of the Act.
Onus of proof
The onus of proof in opposition proceedings lies with the opponent, who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; (2001) 50 IPR 305 at 311 [29], 319 [67]; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; (2009) 79 IPR 426 at 430 [18], 432 [22]).
Priority date of the claims
Section 43(1) of the Act provides that each claim of a specification must have a priority date. Section 43(2) provides that the priority date of a claim is:
a) the date of filing of the specification; or
b) where the Regulations provide for the determination of a different date as the priority date—the date determined under the regulations.
Section 43(3) provides that:
Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.
Section 114(1) of the Act provides:
Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.
Regulation 3.14 of the Patent Regulations 1991 (Cth) (the Regulations) relevantly provides:
If subsection 114(1) of the Act applies to a claim of a specification, the priority date of the claim is:
…
(b)in any other case – the date of filing of the statement of proposed amendments that resulted in the disclosure referred to in subsection 114 (1) of the Act.
Regulation 3.12(1) of the Patent Regulations relevantly provides:
Subject to regulations 3.13 and 3.14 and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:
(a) the date of filing of the specification;
(b)if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority document in which the matter was first disclosed;
‘Real and reasonably clear disclosure’ and ‘in substance disclosed’
The accepted test for fair basis is that of a “real and reasonably clear” disclosure. In Rehm Pty Limited v Websters Security Systems (International) Pty Limited (1988) 81 ALR 79 Gummow J states at 95:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
In Pfizer Inc v Commissioner of Patents [2005] FCA 137 at paragraph 70 Bennett J noted:
“Implicit in the reasoning of Crennan J in Imperial Chemical Industries, is that disclosure of the broad class does disclose the members of that class. It may not be an enabling disclosure but still be a “real and reasonably clear disclosure”.”
Australian courts have expressed the view that the “in substance” disclosure requirement, which is present in sections 102 and 114, should be given a ‘liberal’ interpretation. In Merck & Co Inc v Sankyo Co Ltd 23 IPR 415, Lockhart J stated at 421:
“To determine whether proposed additional matter is in substance disclosed in the specification as lodged or constitutes new matter, the courts have applied basically the same test a [sic] they apply to determine whether complete specifications are fairly based on provisional specifications or convention patents. The Court of Appeal of the United Kingdom recognised the application of this test of fair basing in Ethyl Corporation's Patent [1972] RPC 169 at 194; and, as that judgment demonstrates, the tendency of the courts has been to give a liberal interpretation to sections such as s 31(1) of the Patents Act 1949 (UK) (the equivalent of s 49(4) of the 1952 Act), so as to permit any fair amendment which has already been in substance disclosed”
In Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (1999) 48 IPR 625 at 631 Tamberlin J noted:
“It is a well settled approach that the requirements of s 102 should generally be given a liberal construction. This is said to be because there is a strong public interest that inventive genius should be encouraged: see Re Ethyl Corp's Patent [1972] RPC 169 per Salmon LJ. In that case Cross LJ said that the equivalent provision of the Patents Act (1949) (UK) using the expression "matter not in substance disclosed", should be interpreted in "a broad common sense way"”
Also see RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353. At 356 Burchett J states: “In my opinion it would be wrong to adopt a restrictive approach to s 102”.
Construing the specification
In deciding whether the claims are fairly based on the description the meaning of the claims and description must be determined. The complete specification must not be read in the abstract but in the light of common knowledge in the art before the priority date (Re Peter Populin and Lewis Populin v HB Nominees Pty Ltd [1982] FCA 45). In the textbook “Patents, Trade Marks and Related Rights” by Lahore it is stated at Chapter [15,435]:
“According to the High Court in AMP v Commissioner of Patents, the language used in the specification is not as important as the “substance” or, in other words, the interpretation that would be understood by a person skilled in the art.”
Specification
The specification relates to a controller, system and method for providing a supplementary water supply to a main water supply.
Claims
The specification was amended prior to acceptance under the provisions of s 104. Independent claims 1 and 14 are considered to be the claims with the broadest scope and these are reproduced below:
1. A supplementing water supply controller, the controller including:
a housing defining a first flow passage having an inlet connectable to a main water supply; a second flow passage having an inlet connectable to a supplementing water supply at a pressure less than the pressure of the main water supply; an outlet for each flow passage connectable to a water supply conduit; the housing further defining a chamber; and
an actuator mounted for movement in the chamber by two diaphragms, wherein one diaphragm is associated with a first end of the actuator and the second diaphragm is associated with a second opposite end of the actuator, wherein in use the first end of the actuator with its associated diaphragm and the second opposite end of the actuator with its associated diaphragm are, respectively, exposed to different pressures within the housing, the second opposite end of the actuator and its associated diaphragm being exposed to pressure prevailing at the inlet to the second flow passage which pressure will be relatively lower than the pressure prevailing on the first end of the actuator with its associated diaphragm due to the supplementing water supply pressure being less than the pressure of the main water supply;
wherein the actuator at its first end with its associated diaphragm is moveable to prevent flow along the first flow passage by causing a seal to be formed against a valve seat defined by the housing; and wherein a surface area of the actuator and its associated diaphragm at the second opposite end that is exposed to the pressure of the supplementing water supply exceeds a surface area of the actuator and its associated diaphragm at the first end that is exposed to the different pressure within the housing such that on supply of supplementing water below the pressure of the main water supply but above a threshold pressure, the actuator is moveable to prevent flow along the first flow passage.
14. A method of switching between a main water supply and a supplementing water supply, such that water from the supplementing water supply is preferentially delivered to a consumer when it is available, the method including the steps of:
(i) providing a controller between the consumer and the two supplies, the controller including an actuator mounted for movement by two diaphragms and movable between a first position in which the main water supply is blocked and a second position in which the main water supply is delivered to the consumer, supplementing water being provided to the consumer when the actuator is in the first blocking position,
wherein the pressure of the main water supply and of the supplementing water supply are applied respectively to a first effective area of the actuator and a larger second effective area of the actuator,
(ii) detecting whether there is a sufficient supply of supplementing water,
(iii) detecting whether there is a flow of water as consumer demand, and
(iv) providing for the actuator to remain in the first blocking position whilst there is a sufficient supply of supplementing water plus a flow of water as consumer demand, and
(v) providing for the actuator to move to the second position to deliver water from the main supply when there is an insufficient supply of supplementing water, wherein the actuator moves under the influence of water pressure acting on the two effective actuator areas so as to move between the first and second positions.
Claim construction
Claim 1
Claim 1 defines that the actuator (and associated diaphragm) prevents the flow of water by causing a seal to be formed. The phrase ‘causing a seal’ is construed to encompass both a direct means of the actuator itself forming a seal, and an indirect means wherein the actuator acts as a switch to cause another mechanism to form a seal to prevent the flow of water. It is notable that the phrase ‘causing a seal’ was added by amendment to the claim, thus changing the scope of the claim to incorporate the indirect mechanism.
Claims 2-13
Claims 2-13 are dependent on claim 1. Of these claims, only claim 4 is considered to be limited to the direct mechanism. Claims 2, 3 and 5-13 encompass both the direct and indirect mechanisms.
Claim 14
Claim 14 is directed to a method of switching between a main water supply and a supplementing water supply. The ‘method of switching’ is construed to encompass both a direct and indirect mechanism. It is notable that the feature of an ‘actuator’ replaced the feature of a ‘piston’ in the amendments to the claim, thus making the claim more clearly encompassing an indirect mechanism.
Claim 15 and 16
Claims 15 and 16 are omnibus claims that are limited to the invention as described with reference to the drawings which illustrate the direct mechanism only.
Submissions
Opponent’s submissions
The Opponent’s submissions were centred on the argument that there was no ‘real and reasonably clear’ disclosure of an indirect mechanism. The Opponent argued during the hearing that the disclosure of mere ideas is not sufficient to be considered disclosures of inventions. The Opponent’s arguments are summarised in the following paragraphs of their submissions.
The Opponent argued at paragraph 39 of their submissions:
“There is no disclosed embodiment, any broader statement of the invention, or any claim of the original specification, in which the actuator moves to cause a seal to be formed against a valve seat other than in a direct manner.”
The Opponent argued at paragraph 43 of their submissions:
“The qualifier ‘as appropriate’ in the statement at page 7, lines 15 to 17 of the original specification, is significant in this context. Clearly features corresponding with some form of indirect operation, such as via a slide valve or a solenoid valve, are incompatible with an aspect of the invention in which the actuator acts directly to seal against a valve seat defined by the housing. In such a case, therefore, the incorporation of features selected from the different aspects of the invention, as defined, is not appropriate, and therefore cannot be supported by a generic statement regarding the potential to ‘mix and match’ features from various embodiments or aspects.”
Applicant’s submissions
The Applicant’s submissions highlighted several references to an indirect mechanism in the description. For example, at page 6 lines 23 to 25:
“The actuator, e.g. piston, may itself block the main water supply passage. It may also actuate another mechanism to block the main water supply passage, e.g. may connect to or activate a slide valve or the like provided across the passage.”
Another disclosure of an indirect mechanism is at page 18 lines 9 to 13:
“Also, the piston/actuator need not act directly to block the main flow, but could actuate some other mechanism to do this (and also to block off the supplementing supply when necessary). Other type of valve arrangements could also be used, for example a slide valve could be used to block the main flow.”
The Applicant’s evidence included a declaration by Mr McDonald. Mr McDonald was an employee of Davey Water Products Pty Ltd for more than 30 years, working in the areas of product engineering and product development. I consider Mr McDonald’s experience qualifies him as a person with skill in the art of water supply valves.
Mr McDonald states in his declaration that the document discloses an indirect mechanism. For example, paragraph [35] of the McDonald declaration states:
“Hence the patent application as filed discloses a supplementing water controller having a combination of features, one of which is an actuator or piston and various passages including those at page 6 lines 23 to 26 and page 18 lines 9 to 13 disclose to me that the actuator or piston can operate in one of two ways. It can directly seal the main flow passage or operate to indirectly seal the main flow passage. For example, I understand that movement of the actuator or piston can act as a signal to activate a mechanism such as a solenoid valve to close and seal the main water passage. Further, the passages I have quoted give an example of a different mechanism that can be actuated by the actuator or piston and this is of a slide valve across the main water passage.”
The McDonald declaration further states, at paragraph [36] that:
“…I would have no difficulty in coming up with an arrangement where the actuator or piston moves to cause another mechanism to seal the mains water passage and the two ways I mentioned above, being a solenoid valve or a slide valve are simple mechanisms that I could utilise. There are many others.”
Fair basis analysis
Claim 1 has been construed to encompass two distinct mechanisms – the direct and the indirect mechanisms. Consequently, for the purposes of determining the priority date of this claim, it must be treated as if it were a separate claim for each form of the invention as required by section 43(3). Claim 14 also encompasses two distinct mechanisms and section 43(3) is similarly applicable.
There is ample descriptive support for the direct mechanism and consequently this notionally separate claim is considered fairly based on the description as filed and consequently would have the filing date as its priority date.
The fair basis of the notionally separate claim encompassing the indirect mechanism is considered below.
The description discloses a small number of variations that could be made to the disclosed embodiments (summarised at page 18 lines 6 to 13 of the description). Reference is made to one variation in particular – that of the indirect mechanism – twice in the description. The indirect mechanism itself is relatively simple – using the actuator as a switch to activate a valve (e.g. solenoid valve) on the main water supply.
The Opponent’s argument that the description does not contain any broader statement of the invention incorporating the indirect mechanism is not persuasive – a broader statement of the invention is always helpful in determining whether the claims are fairly based, but is not essential (see Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58, and Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132).
The Opponent’s argument that the references to the indirect mechanism provide merely a potential for ‘mix and match’ with the embodiments of the invention, and thus not forming a ‘real and reasonably clear’ disclosure, is also not persuasive – the small number of variations provided in the description, the repeated reference to the indirect mechanism, and Mr McDonald’s opinion that such a variation would be easily implemented, all reinforce the proposition that the description provides a ‘real and reasonably clear’ disclosure of the indirect mechanism.
The Opponent’s argument that the indirect mechanism is incompatible with the embodiments in the specification is also not persuasive. The Opponent has provided no specific reasons for the alleged incompatibility. Furthermore, Mr McDonald found no incompatibility in the indirect mechanism being added to the described invention. The onus of proof lies with the Opponent, and the Opponent has not provided any evidence rebutting Mr McDonald’s opinion.
Overall, I am satisfied that there is a ‘real and reasonably clear’ disclosure and an ‘in substance’ disclosure of an indirect mechanism, and consequently claims 1 (and claims dependent thereon) and claim 14 are fairly based on the description as filed.
Claims 15 and 16 are omnibus claims that are limited to the invention as described with reference to the drawings (which were not amended) and consequently are considered inherently fairly based.
Priority date of the claims
I have determined that the claims are fairly based on the description as filed. Consequently s 114 is not enlivened. Thus the latest priority date of the claims is filing date of the specification. For completeness, the earliest date of the claims is also now considered.
I have reviewed the priority document, Australian Provisional Application number 2004904071, and have determined that there is ample descriptive support for the direct mechanism, but no descriptive support for an indirect mechanism.
Consequently all claims encompassing the indirect mechanism (claims 1-3 and 5-13) have the filing date of the complete specification as the earliest priority date by virtue of s 43(2)(a), i.e. 22 July 2005.
The claims that are specific to the direct mechanism only (claims 4, 14, 15 and 16) have the filing date of the priority document, Australian Provisional Application number 2004904071, as the earliest priority date by virtue of s 43(2)(b) and Reg 3.12(1)(b), i.e. 22 July 2004.
Conclusion
Claims 1-16 are considered fairly based on the description as filed and consequently, a determination of priority date of the claims under s 114 is not enlivened. The priority date of claims encompassing the indirect mechanism (claims 1-3 and 5-13) have the filing date of the complete specification as the earliest priority date, i.e. 22 July 2005. The priority date of the claims specific to the direct mechanism only (claims 4, 14, 15 and 16) have the filing date of the priority document as the earliest priority date, i.e. 22 July 2004.
The claims have a priority date that is earlier than the publication date (and priority date) of the alleged prior art. Thus, the alleged prior art does actually constitute prior art as defined in Schedule 1 of the Act. Consequently, the claims are considered novel and inventive.
The Opponent has opposed the application on the grounds of novelty and inventive step. I have not found any of the claims to be invalid on either of these grounds. Consequently the opposition fails on all grounds.
Costs
The Opponent has been unsuccessful on all grounds. Accordingly I award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the Opponent, White International Pty Ltd.
Xavier Gisz
Delegate of the Commissioner of Patents
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