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Winner v Ammar Holdings Pty Ltd

Winner v Ammar Holdings Pty Ltd

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Re: JAMES EARL WINNER and DONNA C. WINNER
And: AMMAR HOLDINGS PTY LIMITED
No. G555 of 1992
FED No.134
Number of pages - 18
Intellectual Property
(1993) AIPC 90-971
(1993) 113 ALR 63
(1993) 25 IPR 273
(1993) 41 FCR 205

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Davies(1), Morling(2) and Cooper(3) JJ.

CATCHWORDS

Intellectual Property - patent law - revocation of patent for want of inventive step - whether improvement of anti-theft device involved an invention - - distinction between obviousness and novelty - common general knowledge in the art - whether mosaic can be made of prior patents - alleged misrepresentation of state of prior art in United States.

Crane v. Price, (1842) 134 ER 239, 1 Web's Pat Cas 393;

Wellcome Foundation Ltd v. V.R. Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 272;

Horton v. Mabon (1864) 16 CB(NS) 141;

Harwood v. Great Northern Railway Co. (1862) 31 LJR (NS) QB 198;

Minnesota Mining and Manufacturing Co v. Beiersdorf (Australia) Ltd (1980) 144 CLR 253;

R.D. Werner and Co Inc v. Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565;

Nicaro Holdings Pty Ltd v. Martin Engineering Co (1990) 91 ALR 513.

Statute of Monopolies (1624)

Patents Act 1952 (Cth) s.100

Patents Act 1990 (Cth) ss.7, 18, 233

HEARING

SYDNEY, 22 and 23 October 1992

#DATE 16:3:1993

Counsel for the Appellant: Mr D.K. Catterns

Solicitors for the Appellant: Williams Niblett

Counsel for the Respondent: Mr J.J. Garnsey QC

Solicitors for the Respondent: Baskin and Lewis

ORDER

THE COURT ORDERS THAT:

1. The appeal be dismissed.

2. The appellant pay the costs of the appeal.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

DAVIES J. This is an appeal from a judgment of a single judge of the Court, Heerey J., in which, on a cross-claim in a patent suit, his Honour found that the applicant's Australian Patent No. 599863 was and always had been invalid. His Honour ordered that the patent be revoked on the ground that the claimed invention or inventions did not involve an inventive step. The respondent has given notice that it supports his Honour's judgment not only on the ground upon which his Honour relied but also on the grounds that the patent was invalid for want of novelty and that there was false suggestion or misrepresentation made to the Patents Office in the course of the application for the letters patent.

The patent application was a convention application and the priority date of the patent was 20 December 1988.
The letters patent were granted under the Patents Act 1952 (Cth) ("the "1952 Act), which has since been repealed and replaced by the Patents Act 1990 (Cth)("the 1990 Act"). The transitional provisions in s.233 of the 1990 Act provide inter alia:-

"233(1) Subject to this Chapter and the regulations, this Act applies in relation to a standard…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1993] FCA 134
Decision Date: 16 MARCH 1993

CaseChat Overview and Summary

Winner brought an action against Ammar Holdings Pty Ltd in the Federal Court of Australia, seeking the revocation of a patent held by the respondent. The patent in question related to an anti-theft device. Winner contended that the device lacked an inventive step, arguing it was an obvious improvement over existing technology. The dispute centred on whether the enhancement of the anti-theft device constituted an invention and whether the patent was valid given the prior art.

The court was tasked with determining whether the anti-theft device patented by Ammar Holdings Pty Ltd was novel and involved an inventive step, as required by the relevant patent laws. The central legal issue was whether the improvement to the device was obvious to someone skilled in the field, and if the prior art, including common general knowledge and prior patents, rendered the invention non-obvious. The court also had to consider whether the prior art was accurately represented in the respondent’s submissions and whether the mosaicing of prior patents could be used to invalidate the patent.

In reaching its decision, the court examined the prior art and the specific improvements made by Ammar Holdings Pty Ltd. It found that the enhancements to the anti-theft device, while useful, did not constitute a significant departure from what was already known in the field. The court determined that the improvements were obvious to someone skilled in the art, and that the prior art, including prior patents and common general knowledge, made the invention non-novel and lacking in an inventive step. The court dismissed the appeal and ordered the appellant to pay the costs of the appeal.

The court’s final orders were that the appeal be dismissed and that the appellant pay the costs of the appeal, in accordance with Order 36 of the Federal Court Rules. This decision underscores the importance of thorough prior art searches and accurate representation of the state of the art in patent applications.

Orders

Orders of the court

THE COURT ORDERS THAT:

1. The appeal be dismissed.

2. The appellant pay the costs of the appeal.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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