FEDERAL COURT OF AUSTRALIA

Tramanco Pty Ltd v BPW Transpec Pty Ltd [2014] FCAFC 23

THE COURT ORDERS THAT:

1.    The appeal be allowed in part.

2.    Declaration 1 and order 2 made by the Court on 9 November 2012 be set aside and in lieu thereof it be:

a)    Declared that each of claims 21, 22 and 23 of Australian Patent No 2004264997 is invalid; and

b)    Ordered that each of claims 21, 22 and 23 of Australian Patent No 2004264997 be revoked; and

c)    Ordered that the application and the cross-claim (in their relevant latest forms) otherwise be dismissed.

3.    The appeal be otherwise dismissed.

4.    The parties file and serve written submissions on the question of costs, including as to the costs below (up to 5 pages in length) within 7 days and any written submissions in reply (up to 2 pages in length) within 14 days.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

ALLSOP CJ

1        This is an appeal against orders of the Court dismissing the appellant’s (Tramanco Pty Ltd, hereafter “Tramanco”) claim for infringement of Australian Patent 2004264997 and upholding the respondent’s (BPW Transpec Pty Ltd, hereafter “BPW”) cross-claim for revocation of the patent. For the reasons that follow, I would dismiss the appeal with costs.

2        The patent is entitled “A Method for Logging the Performance of a Vehicle’s Suspension System”. The object of the invention described in the specification is to test:

the performance of suspension components on a vehicle … while the vehicle is in use and without requiring the removal of the vehicle from service.

3        The claim for infringement concerned claims 1, 12, 13, 14, 19, 20, 21, 22 and 23 of the patent. It will be necessary in due course to refer to some aspects of the specification. The careful and detailed reasons of the primary judge make reference to the specification at length unnecessary. It is, however, helpful to set out the relevant claims in the patent, which are as follows:

1.    A method for logging the performance of a vehicle suspension system including the steps of measuring the dynamic effect of an impulsive load with an electronic weighing system, wherein the electronic weighing system is mounted onboard the vehicle, and determining one or more parameters selected from the group consisting of the dampening ratio of the suspension, the oscillation frequency of the suspension and the impact loading of the vehicle.

…

12.    A method according to claim 1 wherein the performance of the vehicle suspension system is logged over a standard road section at different times to test the performance of an individual axle or group of axles to an impulsive load.

13.    A method according to claim 12 including the step of comparing the performance of the vehicle suspension system to predetermined standards.

14.    A method according to claim 12 wherein the performance of the vehicle suspension system when the suspension is new is compared to performance at various periods throughout the life of the suspension in order to ensure that the performance of the suspension remains within the predetermined standards.

…

19.    A method according to claim 12 including a test in which the variation in a mass signal is recorded as the combination test rig vehicle travels along a normal, uneven road at speed.

20.    A method according to claim 19 wherein a location device is linked to the data collected, to precisely locate the portion of road upon which the test was conducted for future comparison.

21.    A method according to claim 12 wherein the performance of the vehicle suspension system is logged over a variable road section at different times, the position of the vehicle being identifiable at all times during the logging process, allowing data to be collected about the condition of the roads which a test vehicle travels over.

22.    A method according to claim 21 wherein the logging is triggered by the application of a particular preset magnitude impulsive load.

23.    A method according to claim 22 wherein the location of the vehicle is ascertainable with precision using locating means.

4        All of the claims subsequent to claim 1 are method claims that are dependent on claim 1.

5        The primary judge adopted the taxonomy of claims identified by BPW, rather than Tramanco. Nothing turns on any difference, and it is convenient to set out the primary judge’s division of claim 1 into the following integers:

(a)    logging the performance of a vehicle suspension system (integer 1.1) including the steps of

(b)    measuring the dynamic effect of an impulsive load (integer 1.2)

(c)    with an electronic weighing system (integer 1.3), wherein the electronic weighing system is mounted on-board the vehicle (integer 1.4), and

(d)    determining one or more parameters (integer 1.5) selected from the group consisting of

(i)    the dampening ratio of the suspension (integer 1.5.1),

(ii)    the oscillation frequency of the suspension (integer 1.5.2), and

(iii)    the impact loading of the vehicle (integer 1.5.3).

6        Critical to the determination of the appeal is the resolution of the asserted errors of the primary judge in construing claim 1.

7        Before examining the arguments of Tramanco in that regard, it should be noted that, on appeal, Tramanco accepted that all that was required in order for there to be either an infringement or an anticipation of claim 1, was the determination of any one of the three claim parameters being the dampening ratio of the suspension, the oscillation frequency of the suspension, or the impact loading of the vehicle. Until the abandonment of grounds 4 and 5 in the Notice of Appeal in 2013, Tramanco contended that, for infringement, a determination of only one of the three identified parameters was required, but that, for the invalidity of the patent through lack of novelty, a prior art publication was required to disclose a method that determined all three parameters in order to anticipate.

8        In construing claim 1, the primary judge took the word “logging” to mean “recording in a systematic way”. No complaint is made about this approach. He read the expression “logging the performance of a vehicle suspension system” as meaning “recording, in a systematic way, the quality of the suspension system’s performance of its intended function”. This resolved a dispute at the trial about whether (as BPW submitted) “performance” in claim 1 should be construed as meaning “performance directed to the question of so-called road-friendliness”. The primary judge rejected this narrower view. No complaint is made about this.

9        The first asserted error was the primary judge’s conclusion that (see, for example [44]) claim 1 does not disclose any necessary connection between the measurement of what is to be measured and the determination of what is to be determined. He noted that the specification suggested that the measurement was to be utilised in the determination; but he concluded that the claim did not say so. Tramanco submitted that there were not two independent steps in claim 1 and that the determination of one or more of the parameters identified in the second step necessarily used measurements taken in the first step (measurement of the dynamic effect of an impulsive load using an electronic weighing system mounted on board the vehicle).

10        The second asserted error was said to be in the primary judge’s construction of the phrase “impact loading of the vehicle”. His Honour concluded (at [58]) that the phrase described the effect of the vehicle upon the road surface, the impact loading of the vehicle being the force transmitted to the road surface through the tyres. Tramanco had argued that the phrase referred to the effect of a force passing through the tyres to the suspension and the rest of the vehicle, in other words, that the claim concerned determining by measurement the impact load of the vehicle on the suspension.

11        Broadly speaking, Tramanco criticised the primary judge for interpreting the individual integers in isolation from the whole of the claim in an acontextual way, ignoring the body of the specification.

12        The primary judge set out at [26]-[28] the guiding principles of construction of the patent. He referred to Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8; 207 CLR 1 at [15], Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 at [44]-[45], and Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 at [32]-[35].

13        No real debate took place on appeal as to the proper principles of construction. It was accepted that they are as recently restated in Kimberly-Clark. The submissions involved the proposition that the primary judge had failed to apply a proper contextual and purposive construction. In particular, the appellant submitted that it was important that the claims and specification were not to be interpreted in a way that would be understood by a person skilled in the art to lead to unworkability: see in particular Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; 106 CLR 588 at 601-2. Closely related to that proposition was the submission that the claim is a description of an invention which is intended to be put to practical use and that it is to be construed in a practical common-sense manner with an eye to the utility of the invention and avoiding a construction that is over-meticulous or unduly technical: see the discussion of the authorities by Middleton J in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [2012] FCA 467; 290 ALR 47 at [267]-[273]. These complaints were encapsulated in ground 1 of the notice of appeal. It is convenient, however, to turn immediately to the substance of the complaints as to construction in ground 2 of the notice of appeal.

THE FIRST ASSERTED CONSTRUCTION ERROR: TWO STEPS IN THE METHOD (GROUND 2)

14        There was a degree of common ground on the appeal as to the proper construction of claim 1. It was agreed that the two steps (measurement and determination) were interdependent. In effect, it was agreed that claim 1 was to be understood as if the word “thereby” was between “and” and “determining” in the fourth line of the text of claim 1. The difference between the parties related to whether the primary judge, in fact, made the error asserted.

15        Tramanco submitted that the error of detaching, and treating as separate, the two steps of claim 1 could be seen in [9], [44], [45], [59], [61], [63], [89] and [102] of the reasons. It is convenient to set out each of these paragraphs:

9    I assume that in the bump test and road test, load cells are also used. I shall discuss the term “load cell” in the context of novelty. Broadly speaking, the specification identifies a method of logging suspension performance using an onboard electronic weighing system to measure and/or collect data. It may be inferred from the specification that such data is to be used in calculating the damping ratio, frequency of oscillation and/or impact loading of the vehicle. However it is not clear that such use is an element of the invention as claimed. I shall return to that matter.

…

44    Clearly, the method must include the two steps which are subsequently identified, one being described as “measuring” and the other as “determining”. However the claim does not disclose any necessary connection between the measurement of whatever is to be measured and the determination of whatever is to be determined. The specification suggests that the measurement is to be utilized in the determination, but the claim does not say that. The specification demonstrates methods for calculating oscillation frequency and damping ratio from weight. Clearly, the drafter understood that oscillation frequency and damping effect were established criteria for determining the effectiveness of a suspension system. However no such disclosure is made concerning the method of calculating impact loading.

45    As I understand it, the parties accept that the term “dynamic effect” describes a result caused by a force not in equilibrium. The term “impulsive load” is a force applied momentarily to an object or system. The method is for logging the performance of a vehicle suspension system. The impulsive load will often, but not always be the force applied to a vehicle’s suspension system as the result of the vehicle’s encountering an irregularity in the road surface. The dynamic effect is the effect of such application. The logging will be of the effectiveness with which the suspension system accommodates the impulsive load. By reference to the specification, Tramanco submits that the measurement is to be of forces acting at various points in the suspension, but claim 1 does not say that. Tramanco submits that the dynamic effect is to be measured by weighing, and the outcome weight used in calculating the three parameters – damping ratio of the suspension, oscillation frequency of the suspension and impact loading of the vehicle. As I have said, claim 1 does not say, in terms, that the weight is to be the basis for calculating the parameters. I proceed on the basis that the claim is not so limited.

…

59    One other matter requires consideration. It involves the meaning of the word “determining” and the inter-relationship between the process so denoted and the measuring of the dynamic impact of an impulsive load. Tramanco seems to assert that the determination must depend upon the measured dynamic impact. BPW, at least implicitly, submits that no such limitation is contained in claim 1. As much is implicit in its reliance on an item of prior art knowledge discussed subsequently and described as “Tal”.

…

61    As I have said, claim 1 does not assert any particular relationship between the measured weight and any of the three parameters. The specification certainly discloses use of weight, but claim 1 is wide enough to include measurement of weight using an electronic weighing system and determination of oscillation frequency and damping ratio in other ways disclosed in the evidence, such as by use of vertical accelerometers. The question is complicated by uncertainty as to the meaning of the term “impact loading of the vehicle”. Variations of the weight on the suspension or of that weight and that of the suspension on the axle would not yield the weight on the road surface. In the former case it would not include the weight of the suspension, axle and wheels. In the latter case, it would not include the weight of axle and wheels.

…

63    I conclude that claim 1 is not limited to determination of any of the three parameters by reference only to dynamic impact measured by weight.

…

89    I turn to the prior art information upon which BPW relies in order to demonstrate anticipation. In considering the prior art information it may be important to keep in mind two features of the Patent. First, the detailed description of the invention (at p 9 et seq of the specification) focuses on air suspension and suggests recording of changes in pressure in airbags. However the earlier parts of the specification refer to suspension systems generally, as do the claims. The evidence in the case also tended to focus on air suspension systems. Secondly, at p 4 ll 16-19 of the specification, it is said that weight data is to be used in calculating damping ratio and frequency of oscillation. However, as I have pointed out, the claims do not require that those parameters be so calculated. Claim 1 is very broadly drawn. The breadth of the claims is as critical to the question of anticipation as it is to that of infringement.

…

102    Tramanco’s submission concerning anticipation by Tal is based upon an interpretation of claim 1 which reflects more of the specification than is permitted by the decision of the High Court in Kimberley-Clark. One must neither use the specification to add unnecessary glosses to the wording of the claim, nor to detract from its natural meaning. Claim 1 identifies a method for logging the performance of a vehicle suspension system which involves two steps. One step is “measuring the dynamic effect of an impulsive load with an electronic weighing system, wherein the electronic weighing system is mounted on board the vehicle”. The other step is “determining one or more parameters selected from the group consisting of the dampening ratio of the suspension, the oscillation frequency of the suspension and the impact loading of the vehicle”. The method necessarily involves both steps, that is, measuring the dynamic effect of an impulsive load and determining one or more of the three identified parameters. Tramanco’s submission assumes that measuring the dynamic effect of an impulsive load is necessarily a step in the calculation of one or other of the three parameters. I have rejected that assumption.

(Emphasis added).

16        Tramanco in particular relies on the highlighted portions to make good its submission in this respect.

17        It should also be noted that Tramanco said that it had not submitted and did not submit that the parameters are to be measured by weight. Rather, the excursions of mass are experienced and measured through the suspension system dynamically at high frequencies using an electronic weighing system.

18        The highlighted portions of the above paragraphs illuminate a tolerably clear view held by the primary judge that the determination of the parameters (in the second stage) is not required to be by use of the measuring by an electronic weighing system (in the first stage).

19        BPW submitted that the above passages should be read by reference to the interrelationship between force, mass and acceleration (force being equal to mass times acceleration) in the common general knowledge. Weight being, in scientific terms, a force, the conclusion at [63] that “claim 1 is not limited to determination of any of the three parameters by reference only to dynamic impact measured by weight” is to be interpreted as leaving open the possibility of measurement by acceleration.

20        With respect, I cannot agree. The reasons (perhaps most clearly at [102]) reject the relationship between the measuring of the dynamic effect of an impulsive load and the determination of one or other of the three parameters.

21        Thus, I agree with Tramanco’s first criticism of the primary judge’s reasons.

22        BPW submitted that even if it be wrong about the first asserted construction error (which, in my view, it is) that is of no relevance to the outcome of the appeal. Tramanco, on the other hand, submitted that the error was critical to one piece of prior art said to anticipate claim 1 – the so-called “Tal” prior art. It was also submitted by Tramanco that the error was relevant to a number of other asserted anticipations. These other anticipations, however, were not pressed on the appeal; and so the first construction error has relevance only to the arguments on novelty arising from the Tal prior art.

23        Thus I would uphold ground 2 of the Notice of Appeal, noting that, at the hearing of the appeal, Tramanco agreed that the words “and infringement” on the second line should be excised.

THE SECOND ASSERTED CONSTRUCTION ERROR: IMPACT LOADING (GROUND 3 OF THE NOTICE OF APPEAL)

The primary judge’s reasoning

24        The primary judge’s reasoning for his conclusion at [58] that the phrase “impact loading of the vehicle” meant the effect of the vehicle upon the road surface is found at [50]-[58] and [61]-[62]. After noting at [50] that the meanings of the phrases “dampening ratio” and “oscillation frequency” appear in the specification and that both phrases were used to describe characteristics “of the suspension”, the primary judge continued:

50    … The term “impact loading of the vehicle” is not so easily defined. However it is significant that the term “impact loading” is used in relation to the vehicle, and not its suspension. BPW submits that the impact loading of the vehicle is, in effect, the force transmitted to the road surface through the tyres. Tramanco now submits that the term refers to loads within the suspension. However, in particulars provided by letter dated 28 August 2009, Tramanco’s solicitors said:

“(I)mpact loading” is the “weight or force” transmitted to the road by the impact (namely the “action of one body coming forcibly into contact with another”) of the vehicle, commonly transmitted by its tyres.

51    There is conflicting evidence from the witnesses skilled in the art. Dr Blanksby said:

In the context of the patent, I understand “impact loading” to be referring to the transient forces on the tyres as they move over an uneven road surface, and the subsequent transient forces on the body as forces on the tyres are transmitted through axle and the suspension. Impact loading would, more commonly, refer to the first part of the preceding definition (often also referred to as dynamic wheel loads). However, as I understand the patent, it puts forward a method that aims to measure the load transmitted through the suspension, and from that makes inferences about the performance of the suspension or about the axle loads generated by variations in the road surface, hence the broader definition.

52    Dr Gilmore initially suggested that the term “impact loading” is “a dynamic force applied to an object or system”. However he subsequently said that:

A “parameter” is a value derived normally through calculation that characterises the system to which it relates. Thus, an “impact loading of the vehicle parameter” is a value derived through calculation that characterises the impact loading of the vehicle. As an example, “maximum trip load” would be an impact loading parameter as it is dependent on all of the impact loadings of the vehicle over the trip. However, the specific impact loading at any given time would not be a parameter as it is not derived from calculation, and does not characterise the system.

53    I understand Dr Gilmore to be saying that the parameters identified in claim 1 are not the individual results of particular driving incidents, but rather characteristics of the vehicle, having a degree of permanence, although perhaps declining over time. I doubt whether, in claim 1, the word “parameter” is used in this sense. It is rather used to describe the process by which data is collected, which data may be used to calculate the values to which Dr Gilmore refers.

54    Dr Sweatman said:

“Determining one or more parameters selected from the group consisting of the dampening ratio of the suspension, the oscillation frequency of the suspension and the impact loading of the vehicle” is poorly expressed and confusing. I assume that a group of parameters is being invoked. Parameters are metrics for characterizing a given mechanical system. The “parameters” referred to apply to different mechanical systems: the damping ratio and frequency are suspension parameters. The “impact loading of the vehicle” is not a single or specific parameter, and of course applies to the whole vehicle. I therefore assume that the claim refers to the two suspension parameters as well as a more general measurement of the dynamic wheels loads of the vehicle, such as the dynamic peak force applied at a particular point of the road. To be clear, the frequency and damping are specific suspension parameters which relate to, but do not equate to, the dynamic wheel forces imparted to the road; the impact loading is a general reference to the dynamic wheel forces imparted to the road (and appropriate parameters would need to be formulated and specified).

I therefore assume that the claim refers to both specific suspension parameters (frequency and damping) as well as general measurement of dynamic wheel forces.

55    Mr Di Cristoforo said that:

In my opinion there is no formal engineering definition for the impact loading of a vehicle. In the context of the patent, “impact loading of a vehicle” speaks to the force with which a vehicle’s tyres press onto the road and induce wear or damage in the pavement layers below the road surface, with particular interest in the high dynamic (varying) forces applied during the period of transient motion after a wheel has been disturbed in the vertical direction by road surface unevenness when travelling at speed (e.g. after hitting a bump or pot-hole in the road). Such forces need to be measured instantaneously at rapid time intervals, using electronic sensors and computers, to capture the variation in force as the force oscillates about a mean value over time. The sampling frequency should be about an order of magnitude greater than the highest frequency of interest in order to be able to capture the peak loads with sufficient confidence. For a heavy vehicle, where axle hop frequency is typically in the range 10-15 Hz, a sampling frequency of at least 100 Hz is desirable.

In my opinion the impact loading of a “vehicle” per se cannot be measured directly. An engineer may measure the impact loading of individual wheels and then form a subjective opinion of the impact loading of the vehicle, or may undergo the process of summarising wheel load information into a single value for an axle group, or perhaps for an entire vehicle, using an appropriate formula or algorithm. This is analogous to measuring the ‘price’ of the Australian stock market; one may measure the price of a single stock, or of many different stocks separately, and may form an opinion of the overall condition of the market based on those prices, but the overall market ‘price’ can only be measured indirectly using a formula to convert individual stock prices into a summary value such as the All Ordinaries Index.

In my opinion impact loading is very difficult to measure accurately using only vehicle mounted equipment, even under controlled experimental conditions. Blanksby et al. (2009) performed a literature review to examine the methods used in previous research involving the measurement of heavy vehicle wheel loads dynamically. Most of the previous research was conducted well before July 2003. The methods examined each included a different form of vehicle-mounted transducer calibrated to vertical wheel load in the laboratory and then tested on the road. The transducers included tyre pressure, wheel hub force, optical sensing of axle-to-ground distance, and axle bending strain (but not airbag pressure). Each method was found to have its drawbacks, with some being used to produce reasonable but qualified research outcomes only under strictly controlled experimental conditions. In my opinion there is no accepted method of accurately and reliably measuring the impact loading of the tyres of a commercially operational heavy vehicle using only equipment mounted on-board the vehicle.

Impact loading is measured in units of force which, in the metric system, is Newton (N). At times engineers use the Dynamic Load Coefficient (DLC), which is the standard deviation of instantaneous wheel force divided by the mean wheel force; DLC has no units. DLC indicates how much the wheel force varies about its mean value as a proportion of the mean value and does not indicate the absolute magnitude of the wheel force. This is a good way of comparing the dynamic loading characteristics of different suspensions loaded to different steady-state axle loads, as the values of the dynamic loads are in effect normalised.

56    Dr Blanksby focuses on the effect of a force passing through the tyres to the suspension and the rest of the vehicle. Such an approach would be relevant to a consideration of the performance of the suspension upon vehicle condition and maintenance. The approach taken by Dr Sweatman and Mr Di Cristoforo addresses the effect of the vehicle upon the road, having relevance, one would expect, to road-friendliness. I found Dr Gilmore’s evidence on this aspect to be of no assistance.

57    The body of the specification is somewhat equivocal concerning this question. At one level it appears to be concerned with forces within the suspension. However there is also the question of road-friendliness which one would expect to focus upon the forces applied to the road through the tyres. See the Patent at p 3 ll 2-9 and at p 4 ll 1-9. Clearly, at least one purpose of the invention is to facilitate the testing of road-friendliness. Road-friendliness is concerned with the effect of road usage upon roads. Of the criteria identified in VSB-11 for measuring road-friendliness, three deal with vertical oscillation and damping effect. The fourth deals with the sharing of loads between axles in an axle group. This criterion clearly seeks to ensure the relatively even distribution of weight amongst axles within axle groups, so as to spread the overall weight of the vehicle and thus minimize impact on the road.

58    As a noun, the word “impact” is defined in the New Shorter Oxford English Dictionary as “The striking of one body on or against another; a collision”. As a verb, the word means “Come forcibly into contact with a (larger) body or surface”. The dictionary also suggests that an “impact” may, in a more abstract sense, describe an effect, including a non-physical effect. There is a similar verbal meaning. In the more concrete sense, the obvious impact is by the vehicle and its load upon the road. No doubt other parts of the vehicle impact upon the suspension, and the suspension impacts upon other parts of the vehicle. However claim 1 speaks of the impact loading of the vehicle, not of the inter-relationship of forces within the vehicle. I conclude that the term “impact loading of the vehicle”, must describe the effect of the vehicle upon something else, in this case, a road surface. The impact loading of the vehicle is the force transmitted to the road surface through the tyres. This was, of course, the position taken by Tramanco’s solicitors in the letter of 28 August 2009. I should add that BPW submits that Tramanco ought not be allowed to depart from the particulars provided in that letter. Whilst that is an attractive option, given the difficulty in resolving the evidence on this point, the case was conducted by both parties upon the basis that the issue was in dispute. The extent of the dispute was clearly identified. It is not appropriate now to dispose of the question on a technical pleading point.

25        After then referring, at [59]-[61], to the issue of the interrelationship between the stages of measurement and determination in claim 1 (the first construction issue), the primary judge said the following at [61]-[62]:

61    … The question is complicated by uncertainty as to the meaning of the term “impact loading of the vehicle”. Variations of the weight on the suspension or of that weight and that of the suspension on the axle would not yield the weight on the road surface. In the former case it would not include the weight of the suspension, axle and wheels. In the latter case, it would not include the weight of axle and wheels.

62    Tramanco submits that this difficulty is a reason for rejecting the construction of the term “impact loading” which I have adopted. However, as I have observed I see no other acceptable construction.

The arguments of Tramanco

26        Tramanco submitted that the correct construction of “determining … the impact loading of the vehicle” was not the determination of the force transmitted to the road, but was a determination by calculation of the load experienced in the suspension as a result of the impact experienced through the suspension situated between the axle and the chassis.

27        Tramanco pointed first to the fact that there was no reference in the body of the specification to the impact load being the force transmitted to the road. This absence (apart from being the basis for the finding of invalidity through insufficiency) was to be contrasted, it was submitted, with the description in the specification of what was said to be the proper interpretation of the phrase “impact loading of the vehicle”. In the specification, in the detailed description of the invention, there was a description of the subjection of the system and method to testing and analysis by reference to the air suspension system of a new 34-tonne four-axle trailer. At pp 11-12 of the specification, the following was said in relation to this testing and analysis:

The analysis is compared with the European Union (EU) requirements for “road-friendly suspensions” on heavy vehicles. Feasibility of determining road-friendliness of air suspensions for heavy vehicles without recourse to laboratory or workshop facilities was also explored.

28        The specification then described the truck and trailer testing. The specification on p 12 described the measurement of mass data as follows:

Mass data from the drive axles of the prime mover and the trailer group is measured indirectly, but proportional to, air pressure in the high pressure air lines to the air suspension. Air pressure is converted to a mass signal by a mass measurement system which sends the mass signals to the C-Track system as well as displaying the mass of the prime mover and the trailer on a display in the cabin. For the trailer, 40 kg increments have been assigned to the digital mass measurement by the mass measurement system. The mass on the prime-mover is determined by the mass measurement system apportioning a mass value to the steer axle and adding this to the measured value of air pressure on the drive group axle air line, proportional to the mass on that group.

29        The specification at p 13 described the tests applied: the step test, the bump test, the on-road test. The results of these tests were then described at pp 14-18 of the specification. In discussing the on-road test, the following was stated at p 14:

The variation in the mass signal from the trailer axle group was of primary interest for this evaluation. A sample of how the data appears in hexadecimal format, this example from the on-road test appears below.

There followed the results using hexadecimal format. The specification then continued after the hexadecimal results at p 15:

The data from the tests was converted and a plot of the variation in mass induced by the dynamic forces on the combination was produced as Figure 6.

30        These passages contain, it was submitted by Tramanco, a description of recording impact loading as it should be properly interpreted, namely mass measurements from the electronic weighing system, being the loads that would be experienced of the vehicle on the suspension.

31        The primary judge referred to some of the expert evidence at [51]-[56]. Dr Blanksby (called by Tramanco) is referred to at [51]. Dr Blanksby did not think that the phrase “impact loading” was a recognised engineering term; he thought the force of the vehicle on the road would be usually expressed by the phrase “dynamic wheel load”. (Dr Gilmore (called by Tramanco) referred to “dynamic road loading” for this. Mr Di Cristoforo (called by BPW) agreed with “dynamic wheel force” and “dynamic wheel load”.) As Mr Di Cristoforo said at the beginning of the passage quoted by the primary judge at [55], his view was that there was no formal engineering definition for the phrase “impact loading of a vehicle”. He did, however, say that “impact loading” was a phrase used at times to describe the effects of vehicles on the wear and tear of pavements. Tramanco submitted that none of the expert evidence suggested that it was other than impossible to determine the load or force at the tyre to road interface using an electronic weighing system as described in the specification, the air pressure transducer system only being able to measure part of this load: Dr Sweatman at AB Pt C tab 130 p 366. Importantly, it was submitted, there was in the specification an embodiment that can measure impact loading as the variation in mass induced by the dynamic forces on the axle group combination as undertaken in the on-road test.

32        Thus, it was submitted by Tramanco that a construction should be given to a phrase of ill-defined content that promoted workability, not inutility (or insufficiency).

33        Further, it was submitted that the context of the claim was a method for testing the performance of a suspension system, including its components. So the determination of the “impact loading of the vehicle” can be seen as a step in the method of logging the performance of a vehicle suspension system. Thus, the “impact loading” can be seen as relating to the vehicle suspension and not to the force at the interface of tyre and road.

34        Further, Dr Sweatman (and Mr Thomson) agreed (see AB Pt C tab 130 p 368 and AB Pt C tab 133 p 543) that loads measured between axle and chassis through an airbag after the subjection of the system to dynamic impulsive load are “impact loads”. Mr Di Cristoforo also stated in a report (AB Pt C tab 80):

[a] pressure spike in a suspension airbag may be considered to be indicative of an impact load having acted on the airbag and, assuming that this can be measured accurately, I consider it appropriate to calculate from that peak pressure an estimate of the peak load, or force (in Newton) imposed on the airbag, noting that this is not as simple as a calculation of “pressure multiplied by area” because airbags do not necessarily work that way (the relationship between force, pressure and area of an airbag depends on the distance by which the airbag has been compressed or extended, and that relationship can be non-linear.

A pressure spike in a suspension airbag may be considered to be indicative of an impact load having acted on the tyre (e.g. from a bump in the road), but I consider it inappropriate to calculate from that peak pressure the peak tyre force on the road (i.e. the “impact load” of the tyre) either in Newton, kilograms, ‘g’, ‘%’ or any other measure.

He was of the latter view because the impact load at the tyre-to-road interface was influenced by a number of additional things which he listed, which included the dampening force of the shock absorber, the reaction force on the suspension hanger bracket, and other forces.

35        In Tramanco’s submission these considerations were sufficient to overcome what the primary judge saw as the important textual consideration of the preposition “of” qualifying the phrase “the vehicle”, in particular in contradistinction to the preposition “of” qualifying the phrase “the suspension” immediately antecedently dealing with dampening ratio and oscillation frequency.

36        In relation to these textual considerations, Tramanco submitted that dampening ratio and oscillation frequency were performance parameters recognised by the prior art, whereas impact loading was not a term that was either recognised as such in the prior art or that had a defined meaning. Further, the phrase can relate to the suspension system, in that there is an impact loading of the vehicle, through the force from the road through the tyres and axles on the suspension system. That meaning was said to be both faithful to the text (“of the vehicle”) and faithful to the context (dealing with measuring the performance of a suspension system). Such an approach was not contra-indicated by the patent being directed in part to “road-friendliness” and the effect of forces applied to the road through the tyre, since the whole point of assessing the performance of the suspension system was to assess deterioration in the suspension system which could have deleterious consequences to the road (as well as in relation to safety and maintenance). The object of concern with road-friendliness did not detract from the focus and context of the claim as being the performance of the suspension system.

37        The essence of the approach of Tramanco can be summarised as follows. The phrase “impact loading of the vehicle” can be seen to have at least two alternative meanings reflecting either a force or load on the road through the tyre or a force or load from the road through the tyre and axle on the suspension system (together with any other forces).

38        It would be entirely orthodox to look at the specification to resolve that ambiguity of meaning in order to ascribe meaning to the phrase. The specification describes a method that does not and cannot measure the former load or force, but can measure (and does refer to the measurement of) the latter load or force. The latter load or force is also concerned directly with the subject of the patent – the performance of the suspension system. It is also concerned indirectly with so-called road-friendliness, since a suspension system whose performance is assessed as to an acceptable standard can be classified as road-friendly.

The arguments of BPW

39        BPW commenced its submissions by reliance on Tramanco’s response to the request for particulars in 2009: that “impact loading” is the weight or force transmitted to the road by the impact of the vehicle. It also relied on the views of Dr Sweatman that “impact loading” is “a general reference to the dynamic wheel forces imparted to the road” (AB Pt C tab 45, being Dr Sweatman’s first report, p 2), and of Mr Di Cristoforo (AB Pt C tab 78, being Mr Di Cristoforo’s first report). BPW also submitted that Dr Blanksby (called by Tramanco) also articulated this view. That, with respect, is to misstate his evidence. In AB Pt C tab 12, being part of Dr Blanksby’s further report of September 2010, Dr Blanksby recognised the two meanings that the phrase “impact loading” could have. He recognised that a “more common” meaning (he denied in cross-examination “normal meaning”: AB Pt C tab 129 p 324 l 27) was effectively that propounded by BPW (and found by the primary judge). He said that “impact loading” would more commonly refer to the transient forces on the tyres (often referred to as dynamic wheel load) but then said (AB Pt C tab 12 p 4):

… as I understand the patent, it puts forward a method that aims to measure the load transmitted through the suspension, and from that make inferences about the performance of the suspension or about the axle loads generated by variations in the road surface, hence the broader definition.

40        In his cross-examination (AB Pt C tab 129 p 327), Dr Blanksby made clear that what was being measured at the suspension was intended to “infer” (sic: imply) something about what is happening on the road.

41        BPW submitted that to log fluctuations in airbag pressure (and thus measure variations in mass) did not constitute logging the performance of the suspension system because it does not say anything about the quality of the suspension system’s performance. This was so because, it was submitted, the determination of a load experienced by a suspension does not say anything about the suspension itself. Thus, it was submitted that Tramanco’s interpretation of “impact loading of the vehicle” ignores the word “performance” in claim 1.

42        BPW submitted that the lack of reference in the specification to impact loading as the force transmitted to the road did not assist in construction.

43        BPW submitted that the “determination” of impact loading of the vehicle contended for by Tramanco was the measurement of variations in airbag pressure, which is part of the first step of claim 1.

44        BPW submitted that the way this part of claim 1 was read by Dr Sweatman and Mr Di Cristoforo (as found skilled addressees) supported the primary judge’s view.

45        BPW submitted that the reference in the body of the specification to “road friendliness” supports the interpretation of the primary judge.

46        BPW submitted that Tramanco’s construction placed impermissible glosses on claim 1 by requiring the relevant measurement to take place in the suspension and the relevant determination to be of force or forces acting in the suspension. These so-called glosses were said to be contrary to the express words of the claim. This was so for four reasons. First, it limits claim 1 to measurement in the suspension, when claim 1 (in contrast to claim 2) is not so limited. Secondly, it confuses measurement with the parameter that is determined. Thirdly, the words of the claim are “of the vehicle” not “within, related to or of the suspension system”. This is in contrast to the other two parameters (dampening ratio and oscillation frequency) which are expressed as “of the suspension”. Fourthly, they collapse the measuring step and the determining step into one: the measurement of forces in the suspension. This ignores the structure of claim 1 and “performance”.

Resolution of the second construction issue

47        The resolution of the issue, like many questions of construction of language, is not without its difficulty. I have, in the course of consideration of the matter, changed my mind. The textual considerations in favour of the construction adopted by the primary judge are powerful: the preposition “of” perhaps more naturally conveys the sense of an impact loading by the instrument of the vehicle, rather than within the vehicle; and to the extent that the phrase is said to mean “on the suspension of the vehicle” the phrase “on the suspension” may have been more apt.

48        That said, although road friendliness is mentioned in the specification, the skilled addressee would know the difficulties (if not impossibility) of measuring impact loading at the tyre and road interface by an electronic weighing system in the claim. (Though, the measurement of dynamic wheel forces on the road by a force transducer in the prior art (Sweatman 1983), discussed below in relation to novelty, should be noted.)

49        Looking at the purpose of the claimed invention and reading claim 1 as directed to assessing the performance of a suspension system, it is a powerful argument that the phrase is to be understood, in the light of the specification, and in particular the on-road test, as having the meaning contended for by the appellant, being the determination of the load experienced in the suspension (of the vehicle) as a result of the impact loading on the suspension.

50        The impact loading (being the load on the suspension) logged as variations in mass induced by the dynamic forces (the dynamic effect of an impulsive load measured with an electronic weighing system) on the combination (the axles in the vehicles) will not necessarily ignore logging performance of the vehicle suspension system. There is a measurement of the dynamic effect of an impulsive load using an electronic weighing system. This may be done by measuring changes in air pressure in an airbag suspension, sufficiently frequently to capture the dynamic effect. Then a determination by calculation of impact loading, the variations in mass, is made and logged. This may be the logging of the performance of the vehicle suspension system, if it is carried out in such a way as to give useful information in that regard.

51        The question whether a given system that records, logs and plots variations in mass induced by impact loading thereby logs or records the performance of the suspension system will be a question to be assessed at the point of infringement. Cognate questions may arise at the point of sufficiency.

52        Prior to reading the reasons for judgment of Nicholas J, I tended to the view that no error in the approach of the primary judge had been demonstrated; and that the natural meaning of the phrase “impact loading of the vehicle” is not “impact loading on the suspension of the vehicle”, but is rather the loading of the vehicle on the road. I am, however, persuaded by, and agree with, the reasons of Nicholas J that Tramanco’s submissions on the second construction issue should be accepted.

SUFFICIENCY

53        I agree with the reasons of Nicholas J on sufficiency.

NOVELTY

54        The primary judge held claim 1 bad for lack of novelty because of disclosure in three prior art publications, being a paper by Dr Sweatman in 1983, a paper by him in 1994 and United States Patent No 5,973,273 referred to as “Tal”.

55        On appeal, Tramanco abandoned its ground of appeal that novelty was to be judged only by anticipation of all three parameters in the second step of claim 1.

56        I will deal with each ground of alleged lack of novelty.

Tal

57        The primary judge dealt with the Tal patent at [90]-[104].

58        At [93], the primary judge described the Tal system:

Broadly speaking, Tal discloses a method which measures vertical acceleration of the suspension in response to shocks and impacts, using linear sensors. From that data, it calculates the oscillation frequency of the suspension. This data, in conjunction with the assessed “spring constant” of the suspension as a whole, is then used to calculate total weight on the suspension.

59        Central to the view of the primary judge was the disconnection between the two steps to claim 1. This is best reflected in what his Honour said at [102]:

Tramanco’s submission concerning anticipation by Tal is based upon an interpretation of claim 1 which reflects more of the specification than is permitted by the decision of the High Court in Kimberley-Clark. One must neither use the specification to add unnecessary glosses to the wording of the claim, nor to detract from its natural meaning. Claim 1 identifies a method for logging the performance of a vehicle suspension system which involves two steps. One step is “measuring the dynamic effect of an impulsive load with an electronic weighing system, wherein the electronic weighing system is mounted on board the vehicle”. The other step is “determining one or more parameters selected from the group consisting of the dampening ratio of the suspension, the oscillation frequency of the suspension and the impact loading of the vehicle”. The method necessarily involves both steps, that is, measuring the dynamic effect of an impulsive load and determining one or more of the three identified parameters. Tramanco’s submission assumes that measuring the dynamic effect of an impulsive load is necessarily a step in the calculation of one or other of the three parameters. I have rejected that assumption.

60        Tal, as the abstract made clear, was a method for determining the total weight supported by the suspension system of the vehicle, not a method of logging performance of a suspension system.

61        Tal does not disclose measurement of the dynamic effect of an impulsive load using an electronic weighing system. The object of the method or system is to determine the weight of the vehicle. The equipment used to do that are linear motion sensors on the roof of the truck to determine oscillation frequency. The first step of claim 1 is absent from Tal. There is no measurement of the dynamic effect of an impulsive load using an electronic weighing system, and then those measurements determining oscillation frequency. Oscillation frequency (of the vehicle, even if it be taken as the suspension) is measured by sensors. This is then used to calculate weight. There is no electronic weighing system used in the first step. There is no first step as disclosed in claim 1; and no use of the first step to determine oscillation frequency. There was no anticipation by Tal.

Sweatman 1983 (“A Study of Dynamic Wheel Forces in Axle Group Suspensions of Heavy Vehicles”)

62        The primary judge dealt with this issue at [105]-[117].

63        The paper does not disclose any measurement of the dampening ratio of the suspension or the oscillation frequency of the suspension. Rather, it discloses the use of a force transducer, which was a rotating load cell, being a device that returns a voltage signal the magnitude of which varies with the load placed on it. The transducer was fitted between the wheel and the hub. The paper was concerned with and directed to what this information showed about the force on the road.

64        The paper does not disclose measurement of impact loading of the vehicle according to the construction that I am assuming. Rather, it disclosed using a transducer to assess the dynamic wheel forces, the load at the road/tyre interface.

65        This is sufficient to gainsay anticipation by Sweatman 1983.

Sweatman 1994 (“Ranking of the Road Friendliness of Heavy Vehicle Suspensions: Low Frequency Dynamics”)

66        The primary judge dealt with this issue at [118]-[138].

67        As the primary judge records at [121] and following, the tests in the paper involved the use of an electronic weighbridge. The vehicle had instruments placed on it to measure oscillation and dampening as the vehicle travelled off a ramp and landed on a weighbridge. The test was based on a European Community step test. The test involved slowly driving multi-axle vehicles up ramps onto blocks and then dropping the vehicle on to the weighbridge. This was similar to the “European Drop Test” described in the prior art, in which the dampening ratio and oscillation frequency were measured using load cells attached to the test rig.

68        I would respectfully disagree that what is disclosed in the Sweatman 1994 article discloses claim 1. First, two parameters, dampening ratio and oscillation frequency were measured not by an electronic weighing system, but by vertical accelerometers and displacement transducers. As to the third parameter (“impact loading of the vehicle”), some vehicles were fitted with strain gauges, which measured the dynamic load or wheel force as it dropped off the ramp, being referable to the tyre/road interface. There was no determination or measurement of the impact loading of the vehicle using the construction of that phrase in accordance with the appellant’s submissions.

69        Further, the tests do not give a logging of the performance of a suspension system. The determining of load, once, from one drop is not logging performance of the suspension system. Nor is logging of the system done by repeated isolated drops.

OBVIOUSNESS

70        The primary judge dealt with obviousness at [141]-[227]. He concluded as follows at [227]:

I am not satisfied, on the balance of probabilities, that the idea of using a commercially available weighing system for the purposes identified in claim 1 lacked an inventive step. The weighing exercise involved measurement of changes in air pressure. That measurement was then to be used to calculate weight, as well as oscillation frequency and damping ratio. Calculation of all three parameters from the one measurement seems to me to have been inventive. However Tramanco’s claim is much more widely drawn.

71        In his Honour’s costs judgment, however, the primary judge said (Tramanco Pty Ltd v BPW Transpec Pty Ltd (No 2) [2013] FCA 170 at [4]):

Having formed the view that no good purpose would be served in this case by reaching a conclusion as to inventiveness, it is not appropriate that I decide the matter for the purpose of awarding costs. Although BPW did not succeed on that issue, it did not fail. As I have observed, I examined the question in some detail. Were it necessary to reach a conclusion I would almost certainly have concluded that the claims lacked inventiveness.

72        The only submission put by BPW on obviousness was based on the primary judge’s comments at [116] and [137] of his reasons that the use of a commercially available or suitable weighing system was not part of claim 1, and at [4] in his cost judgment.

73        BPW bore the onus of proof that having regard to the common general knowledge, a skilled addressee would have been led as a matter of course to an electronic weighing system to measure the dynamic effect of impulsive loads and use those measurements to determine suspension performance parameters in the expectation that it would provide a useful method of logging performance of a vehicle suspension system. In argument, BPW accepted that [147] of the reasons encapsulated the test:

I note also the general approval given in Alphapharm to the test formulated by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187-188. Adopting and adapting that formula, counsel for Tramanco postulates the present question as follows:

Would the person skilled in the art, in all the circumstances, which include a knowledge of all relevant prior art, directly be led as a matter of course as a method for logging the performance of a vehicle suspension system to try using an electronic weighing system mounted on board the vehicle to measure the dynamic effect of an impulsive load and determine one or more apparent parameters selected from the group of damping ratio, oscillation frequency or impact loading of the vehicle, in the expectation that it might produce a useful alternative to existing methods for testing vehicle suspensions (for example methods such as the European Drop Test and similar tests in Australia)?

74        The long and careful analysis of the primary judge on the evidence concerning inventive step supports a conclusion of an absence of obviousness. That appeared to be his Honour’s view at the conclusion of that review: [227] of the reasons, set out above.

75        In written submissions virtually no submissions of substance were put. In oral address, reliance was placed on Dr Hart’s evidence. But an analysis of Dr Hart’s evidence does not reveal the use of an electronic weighing system for the purpose of performing the two steps. Dr Hart uses an airbag, but there is no use of an electronic weighing system mounted on the vehicle.

76        On the limited arguments submitted on behalf of BPW, I am not persuaded of obviousness and lack of inventive step.

77        I have read the reasons of Nicholas J on obviousness and I agree with them.

INFRINGEMENT

Treatment by the primary judge

78        The primary judge dealt with infringement at [236]-[314].

79        In order to appreciate the primary judge’s reasoning in relation to infringement, it is necessary to refer to what he said about the meaning of “a method for logging the performance of a vehicle suspension system”.

80        At [38] the primary judge said that the word “logging” meant “recording in a systematic way” and a “method of logging” should be so understood. There was no appeal from this construction.

81        The meaning of the phrase “performance of a vehicle suspension system” was in dispute. The primary judge dealt with the issue at [39]-[43]. Broadly accepting the arguments of Tramanco, the primary judge found that the expression meant recording, in a systematic way, the quality of the suspension system’s performance of its intended function. There was no appeal from this construction.

82        The asserted infringement was in exploitation of the BPW electronic braking system (EBS) as described in an operating manual in evidence – the “Ecotronic EBS Trailer Analyser Operating Instructions”. The primary judge described such electronic braking systems generally at [242] of his reasons:

Mr Di Cristoforo’s evidence is most helpful on this aspect. Trailer air brake systems are installed on heavy commercial trailer units for the purpose of applying wheel brakes in response to driver commands from the hauling unit, using compressed air as a medium for delivering braking power. A supply of compressed air is typically produced by means of an air compressor driven by the engine on the hauling unit. Some of the compressed air is stored in tanks or reservoirs on that unit for use in its own braking system and its air suspension system, if fitted. Compressed air is also piped to the trailer unit where it is stored in reservoirs. This compressed air is used primarily for the operation of the trailer brakes and, if fitted, its air suspension system. A trailer air braking system operates by supplying air to the internal chambers of a brake booster at each braked wheel. Its function is to force a push rod out or in, in order to apply or release the brakes. In the absence of compressed air, a trailer air braking system will default to the “brakes on” position by means of a mechanical spring. Trailer brakes are typically controlled from the driver’s cabin by use of the air supply button, the brake pedal or a hand piece. As I have said, there are also circumstances in which the trailer brakes will be applied automatically. A braking system may be controlled electronically.

83        He then described the BPW EBS at [243]:

The defining component of the BPW EBS is the trailer brake valve (the “valve”). This valve controls most of the functions of the BPW EBS by means of an electronic control unit, onboard memory and associated equipment. It provides electronic control of the braking system but has other functions. Its load sensing feature allows it autonomously to apply less braking force to the trailer’s wheels for a given driver demand pressure when the wheels are lightly laden. The effect is to reduce the risk of unintended wheel lock. The BPW EBS senses the load on the trailer axle group by means of an air line connected to one of the axle group suspension airbags. The pressure in a suspension bag is a good indicator of the load carried by the suspension when the vehicle is stationary, on a flat and level surface, with the brakes disengaged. Accuracy reduces when those conditions are not met. For the purposes of load sensor braking it is sufficient that there be a moving average of the axle load calculated from a varying mass signal or other similar approach. The valve is calibrated to convert the sensed airbag pressure into an axle group load. There are also anti-lock and roll stability functions, and the RCM feature.

84        A feature of the BPW EBS is called a road condition monitoring function (the “RCM”). Tramanco’s case was that the BPW EBS included a software program that utilised information captured by an airbag pressure transducer connected to the vehicle’s airbag suspension on which the BPW EBS is installed; and that that information as to changes in air pressure provided an indication of the overall condition or “roughness” of the road over which the vehicle had travelled.

85        BPW accepted that the RCM feature provided a so-called “road roughness count” or “road rough count per kilometre” or “RRC”, which the primary judge described at [240] as “broadly … the number of occasions on a particular trip on which the suspension of the vehicle encounters a force within a particular range, expressed as a number of such incidents per kilometre travelled”.

86        Tramanco’s case was not that the BPW EBS determined oscillation frequency or dampening ratio or the load between the tyre and the road. Rather, it submitted that it determined impact loading on the suspension (“of the vehicle”).

87        The primary judge discussed the evidence of Mr Di Cristoforo, Mr Ignatius, Mr Thomson, Mr Colosimo and Mr Meyers. The primary judge found Mr Ignatius’ evidence the most reliable evidence of the BPW EBS, supplemented by the documentary evidence.

88        The following can be taken from the primary judge’s discussion of the evidence that relates to infringement. Before examining the evidence, it is to be noted that recording of variations of mass, by recording variations in air pressure, may be part of a braking system. The patent may make them part of a method of logging the performance of the suspension system. Whether the measurement of the dynamic effect of an impulsive load with an electronic weighing system (by recording air pressure changes), thereby determining the impact loading of the vehicle (by recording the induced variations in mass), is a method for logging the performance of a vehicle suspension system will depend on whether the recording or logging of mass variations suffices for logging the performance of the suspension system or whether it performs some other function.

89        An electronic braking system uses an electronic load sensing device (ELS) to adapt the braking force to the load. The brake is applied with a pressure corresponding to the sensed load, using the ELS function. The air suspension pressure is checked regularly while the vehicle is in motion. That pressure is continually changing in response to the road (gradient, camber and surface), braking the suspension system in the context of the load distribution. (See [254] of the reasons.)

90        The EBS is programmed to apply a level of braking that corresponds most suitably to the stationary load. For braking, the ELS only has to detect an average load; it is not necessary that rates of change in load be measured. (See [255] of the reasons.)

91        There are filtering devices to remove from the sensing information what is not required; frequencies can be removed such that the filtering function and the rate of data capture will vary, depending upon what is required. (See [256] of the reasons.)

92        Various pressure parameters and axle loads for the unladen and laden vehicle are entered into the EBS, based on manufacturer’s information as to the characteristics of the trailer and suspension. (See [258] of the reasons.)

93        The EBS offers the capacity to read out and save on a computer data that is logged from pressure sensors and wheel speed sensors. (See [260] of the reasons.)

The suspension pressure snapshot

94        Mr Ignatius’ evidence dealt with the BPW EBS “Trailer Analyser” software which uses information stored in an electronic control unit located in the valve.

95        The primary judge described the Trailer Analyser screens at [286]-[298].

96        The snapshot screen displays data from past trips including average and maximum axle loads for each trip. There is a snapshot facility that records and displays data at a particular point of time. These snapshots can be (and be so selected) of a number of things: fault event, stability, speed, reservoir pressure, battery voltage, but relevantly, also suspension. A maximum of either 20 or 32 snapshots can be stored before they are overwritten. (See [261] of the reasons.)

97        If a suspension snapshot is chosen, the snapshot is recorded if the load percentage exceeds a certain predefined setting (say 130% of fully laden weights). The snapshot only tells one that the trailer has, at some stage in travel, exceeded the fully laden weight by a certain percentage. This may have occurred for a number of reasons. Further, only one suspension snapshot is recorded for each session during which the valve is operating; so irrespective of the length of the journey (10 km or 1,000 km) there is only one suspension snapshot. (See [262] of the reasons.)

98        Information is added cumulatively over the life of the vehicle.

The RCM feature histogram and the RRC

99        The RCM (or road condition monitoring) is also a feature of the BPW EBS. The RCM is viewed using the Trailer Analyser software. The data for the RCM feature is displayed in an RCM histogram and the RRC per kilometre trip log. The primary judge explained it at [263]:

… The histogram is an accumulating record of the number of RRCs per kilometre which a vehicle experiences over its lifetime. Each kilometre of travel is classified according to the number of rough road counts in that kilometre. Depending on that number, a unit is added to the relevant part of the histogram. One such classification is for RRCs between zero and four rough road events per kilometre. Thus if a kilometre of travel involves four rough road events, the histogram in the zero to four classification column will increase by one.

100        The RCM does not have the capacity to identify where an event or events triggered a RRC. (See [264] of the reasons.) The operation manual for the Trailer Analyser (AB Pt C tab 61) explains the matter as follows:

Histograms

Diagram no. 1-1: Road Condition Monitoring / On-Road

This diagram shows the number of registered rough road kilometres. Driving over rough roads is counted in terms of “rough road counts”. In the diagram, all kilometres driven are divided into classes according to the number of “rough road counts”.

The evaluation indicates e.g. that for 92781 kilometres travelled, 0-5 rough road counts/km were registered. For 20713 kilometres, 5-10 rough road counts/km were registered. A low number of rough road counts/km indicates the vehicle was operating on-road.

Diagram no. 1-2: Road Condition Monitoring / Off-Road

This graph is another example of possible data in a Road Condition Monitoring diagram.

This evaluation shows that rough road counts were repeatedly registered for a relatively high number of kilometres travelled. This indicates increased off-road operation.

For example, for 160 km of the distance travelled the rough road count was 30 – 35.

101        No quantitative pressure reading is taken; no record of the duration of the sensed pressure is taken. A designated level is set and, if exceeded, a count is made; one does not know by how much it is exceeded. The RCM feature does not log the occurrence, location or size of instantaneous spikes in air pressure. Rather, as the primary judge said at [266]-[267]:

… Rather it determines the number of RRCs for each kilometre of travel by counting how many times pre-programmed, sensed pressure levels are reached. It then expresses that number as an RRC figure and increases the relevant column in the RCM histogram accordingly.

The BPW EBS does not store data about individual RRC events. No snapshot is taken, nor is such information recorded in snapshots initiated by other events. The RCM histogram is a non-resettable set of data that accumulates over the life of the EBS. It demonstrates how much “punishment” the vehicle has seen over its lifetime. Where the vehicle has spent most of its time on smooth highways, the RCM histogram will have most RRC results at the lower end. Where the vehicle has travelled over rougher roads more often, the histogram will have more results at the upper end.

The trip log: RRC per kilometre

102        A trip log option displays RRC information in a different way. The screen displays the number of rough road counts per trip, divided by the number of kilometres. This gives a general indication of whether a trip was, on average, rough or smooth. There is no correlation with the RCM histogram. (See [268] of the reasons.)

103        The primary judge discussed the feature at [268] and [271]-[274].

104        The RCM feature senses pressure 100 times per second. The readings are filtered in an attempt to isolate the pressure change caused by the road surface. (See [272] of the reasons.)

The trip log: axle load – average and maximum

105        The RCM feature also averages accumulated axle load over every ten millisecond period. The highest ten millisecond average for the whole trip is recorded; other readings are not recorded. The software also permits measurement of maximum axle loads experienced, measured through the suspension. (See [275] of the reasons.)

Histogram: distance vs axle load

106        The Trailer Analyser software (AB Pt C tab 61) features a histogram option as follows:

Diagram no. 11: Distance vs Axle Load

This diagram displays the loading in relation to distance. After each kilometre travelled the bellows pressure is monitored. The axle load is calculated from the bellows pressure, using the ELS (Electronic Load Sensing) brake parameters stored in the ECU by the Trailer Manager. The result is a “load profile”, as displayed in the diagram.

107        The primary judge described this at [293]:

On p 14 diagram 11 plots distance travelled and axle load, again over the life of the vehicle. After each kilometre travelled the bellows pressure is monitored, the axle load is calculated from the bellows pressure using parameters stored in the ECU by the Trailer Manager. The result is a “load profile” as displayed in the diagram. On the horizontal axis it plots axle load and, on the vertical axis, total distance travelled. In other words it shows the cumulative distance, over the life of the vehicle, during which it was loaded within various specified ranges.

Storage of trip logs

108        The Trailer Analyser facility allows for storage of 1,000 trips, after which number information is overwritten.

The primary judge’s infringement analysis

109        The primary judge concluded that the BPW EBS uses an electronic weighing system mounted on board the vehicle: [306]; and that it measured the dynamic effect of (some) impulsive loads: [307]. On appeal, there was no debate about the correctness of these findings. The issue then arose whether the BPW EBS determined the impact loading of the vehicle, being the only relevant parameter in question (the BPW EBS not determining either dampening ratio or oscillation frequency).

110        At [307] the primary judge accepted that the BPW EBS measured the dynamic effect of some impulsive loads. His Honour’s reasoning, however, doubted whether there was the logging of the performance of the vehicle’s suspension system. His Honour said at [307]:

I turn to the question of whether the electronic weighing system is used to measure the dynamic effect of an impulsive load. The RCM feature sorts such effects into three classes, according to the evidence of Mr Ignatius. The events over each time period are weighted accordingly, and the weighted outcome used in calculating the RRC per kilometre. Such a process may involve measuring the dynamic effect of an impulsive load. However it is a filtered process which is designed, as far as possible, to exclude effects attributable to loads created by causes other than the road surface. Claim 1 does not require that the method measure the dynamic effects of all impulsive loads. However I doubt whether a system which seeks to measure only the dynamic impact of impulsive loads attributable to the road surface would be sufficient to constitute logging of the performance of the vehicle’s suspension system, given that such performance will include accommodation of loads which the BPW EBS seeks to exclude. I need not take that matter any further. I accept that the BPW EBS measures the dynamic impacts of some impulsive loads.

111        The question of whether the BPW EBS measured the performance of the suspension system had been taken up more fully at [303]-[305], which are set out below.

112        On the construction of “impact loading of the vehicle” favoured by the primary judge there was no logging of the performance of the suspension system. Although (at [308]), the primary judge said the BPW EBS “may measure the force at the axle or on the suspension”, he also concluded at [303] that the BPW EBS did not log the performance of the vehicle suspension system. He found this because he rejected the submission that sensing air pressure changes and inferring and recording actual loads is logging performance of a vehicle suspension system. “Performance” (to be logged) involved the quality of the system’s performance of its intended functions: [303]. His Honour accepted that logging fluctuations in the pressure may provide information from which suspension performance can be assessed, but it is not logging of such performance.

113        The primary judge went on to say in elaboration of this at [303]:

… The “weight” measured in the suspension may be the result of an impulsive load or of the way in which the suspension has dealt with such a load. Ascertainment of weight at any particular point in the vehicle, or at any particular moment in time, is not necessarily a logging of the performance of the suspension system. The BPW EBS measures pressure in the air bags and/or weight on the axle to adjust the braking system. In so doing it accepts and uses the outcome of the performance by the suspension system of its function, but does not log performance of that function.

114        The primary judge dealt with the matter further at [304]-[305]:

Similarly, the RCM feature is not designed to log, nor to be used for the purpose of logging suspension performance. It is designed and used for the purpose of identifying and logging the number of rough road counts which occur per kilometre of travel over the life of the vehicle or per trip. The RCM feature may use as raw data the outcome of the performance of the suspension system of its function, but it does not log such performance. Further, the filtering process disclosed by Mr Ignatius suggests a much more complex exercise than that involved in measuring and recording weight. It actually excludes some fluctuations in the weight as being attributable to factors other than road roughness. This is because the focus is on road roughness and not on the performance of the suspension system.

Nothing in the screen data suggests the purpose of logging performance of the suspension system.

The arguments on appeal on infringement

115        The written submissions of Tramanco on appeal focused upon the conclusion of the primary judge that the BPW EBS did not log the performance of a vehicle suspension system.

116        Assuming the construction of “impact loading of the vehicle” put by it, Tramanco submitted as follows.

117        As to the suspension pressure snapshot, the BPW EBS monitors information from the suspension airbag to produce the suspension snapshot. As Mr Thomson said (AB Pt C tab 134 p 624 l 36) the system is “monitoring a condition that’s occurred through the suspension”; and, as Mr Di Christoforo said (AB Pt C tab 79 p 88 ll 19-21), the system logs data that relates to a vehicle suspension system. The system performs calculations using suspension pressure data and then reports them as bars. These loads are recorded when a threshold of 130% of the static laden weight is exceeded.

118        As to the trip log screens that record axle load average and axle load maximum, Mr Thomson referred to them as “suspension load average” and “suspension load maximum”. Mr Thomson accepted that what appears in these screens is a reflection of measurements in the suspension system, and accepted that the loads recorded are impact loads on the suspension (AB Pt C tab 134 pp 616-17; AB Pt C tab 133 p 543), as did Mr Sweatman (AB Pt C tab 130 p 368).

119        As to the “rough road counts”, these were based on pressure signals captured every 10 milliseconds. Tramanco relied on the evidence of Mr Thomson that there are then “some calculations done behind that over differing time periods … to generate the rough road count number, one of which can be used in the rough road count per kilometre, which will go into the trip log” (AB Pt C tab 134 p 614 ll 37-40).

120        The above is said to demonstrate infringement. The critical question is whether there is a logging of performance of the vehicle suspension system. The impact loading was said to be a measure of performance in the sense of “effectiveness”. Reliance was placed for this on the evidence of Dr Hart.

121        It is of assistance to focus on some of the cross-examination of Dr Hart by senior counsel for Tramanco. At AB Pt C tab 141 pp 1067-9, Dr Hart gave some measure of acceptance to the proposition that the BPW EBS has measurements and records of information that would or might be useful in undertaking an analysis over time of suspension performance. On a number of occasions, Dr Hart said that this would be so if the characteristics of the roads were known. He also accepted that a vehicle operator with access to the loads in kilograms could be given useful information in the following way:

Now, if a vehicle operator – even without knowing that the road was constant – if a vehicle operator using the sort of system that I have described where you are recording the loads in kilograms, if one was able to do that – if a vehicle operator was getting a steady rate of kilogram readings over the roads that he was travelling that weren’t moving either far above or far below the mean and suddenly experienced over successive trips a dramatic increased kilogram load, that might indicate the catastrophic failure of a shock absorber, might it not? –– Yes.

And in that sense, the test that I have described, without even knowing what the road surface is, or without even knowing that the road surface is constant, in that sense, in the scenario that I have just described, that would be a useful way of looking for failure of shock absorbers? –– Yes, as distinct from classifying the road friendliness of the suspension.

122        Thus, it can be accepted that at least some of the measurement of impact loading on the suspension could be used to provide information that might reveal something of the performance of a suspension system.

123        Some of the submissions of Tramanco were that if the system determined impact loading of the vehicle (on the construction being assumed) there was infringement. On this submission, success on the construction issue was determinative of infringement. But, as the primary judge said, there must be a method for logging the performance of a suspension system.

124        In oral address, Tramanco focused upon the Trailer Analyser Operating Instructions to which reference has already been made. This manual was the sole basis for the claim for infringement under s 117 of the Act. It was submitted that if the system is used in accordance with the manual, then the steps in the method (the integers) are performed.

125        The respondent’s written submissions were of little assistance on infringement on the hypothesis of the second construction having been found or assumed in Tramanco’s favour. The technique used by counsel to deal with this was simply to refer to submissions at trial. That is not appropriate, and a practice to be condemned strongly. It reveals a lack of attention to the issues on appeal.

126        This Court should not have to trawl through the trial record to ascertain what a party’s submissions on appeal are. This failure by respondent’s counsel also produced the disadvantage that the Court had no written submissions in reply from the appellant Tramanco.

127        For this reason, I will confine myself to the oral submissions of the respondent, which were clear and of assistance.

128        The respondent’s argument on infringement focused on “performance”. It emphasised the meaning of “performance” in [43] of the primary judge’s reasons. The measurement of the quality of performance was different from measuring responses and providing a field of data upon which (with or without other information) someone might form a view about performance. The determination of the parameter must say something about effectiveness, by being data, or interpreting data, about quality or effectiveness.

129        The respondent submitted that the recorded loads, the impact loads, might be attributable to a whole range of factors. It was also submitted that such data as were collected were not collected for the purpose of assessing the performance of the suspension, but of the braking system. It was submitted that any assessment of the suspension system is not logged, but carried out or undertaken otherwise, using the data. Also, it was submitted that the data collected were insufficient to do any analysis of the performance of the suspension system.

130        Further, as to s 117, it was submitted that none of the operating instructions gave directions for the use of the data as a means to log performance of the suspension system.

131        As was adverted to in discussion on appeal, the resolution of this performance issue is, to a degree, a question of construction. To that end, the word “for” (“a method for logging”) imports a purpose in the method, and “performance” imports quality and effectiveness, of the suspension system. It is necessary, however, to examine the evidence to see whether there is any data the recording of which logs performance.

132        Mr Di Cristoforo expressed the view (AB Pt C tab 80 p 139) that from looking at data from the BPW EBS, one would be told nothing directly about the quality or effectiveness of the suspension system. This was because the information logged did not tell one about the capabilities of a suspension system. Senior counsel for the respondent accepted that this view had to be qualified in that a driver of a vehicle could look at his or her logs and possibly be told something about the suspension, but submitted that in order to reach a conclusion about the quality of the suspension system, one needed to remove the effect of other variables from the data. Put another way, the recording of the information in the Trailer Analyser Operating Instructions is of material that is insufficient to eliminate the effect of other variables in order that what is logged can say something about the quality or effectiveness of the suspension system. In addition to Mr Di Cristoforo, Mr Colosimo’s evidence in this regard is at [284]-[285] of the reasons.

133        The respondent pointed out that some of the particulars to, and evidence of, Tramanco’s case at trial was that the measured parameters assisted with assessing the suspension system if one had comparative data of other known trips. The respondent submitted that such comparison was the only way measurement of impact loading could tell one about the quality or effectiveness of the suspension system. Without such comparison, there can be no performance assessment of the suspension system.

134        Dr Gilmore (called by Tramanco), on the other hand, was of the view that the claim should be interpreted more widely to include any recording of the data about impact loads. This approach was rejected by the primary judge. See, for example, [303]. Further, at the trial, senior counsel for Tramanco distanced his client’s submissions from Dr Gilmore’s view and accepted that “performance” was “effectiveness”.

135        On appeal, the assertion by Tramanco (in paras 6-9 of its reply submissions) that determining and logging the variations of mass calculated from measurements of the dynamic effect of an impulsive load using an electronic weighing system is determining the relevant suspension performance parameter and logging the performance of the suspension system, was met by the respondent by asking, rhetorically: why? The data alone tell one nothing about the performance of the suspension system. Senior counsel for the respondent had to deal with the example put to him of the commonsense of the driver on a regular route who had the data from the BPW EBS before him or her. The data would, it was suggested, tell the driver about the suspension if data changed. Mr Di Cristoforo was taxed with this very question in cross-examination (AB Pt C tab 139 pp 968-9). He rejected the proposition because any changes may be caused by any of a variety of factors. Mr Di Cristoforo would have had to accept (and senior counsel for the respondent accepted) that such data might indicate something to do with the performance of the suspension system. That, however, the respondent submitted, was not logging its performance. Such would be a system or method of raising a question about a suspension system.

136        Senior counsel for the respondent also referred to the evidence of Dr Hart. He stressed the use of the word “might” by Dr Hart in the passage in the first of the two paragraphs cited at [121] above. As to the second answer cited in that paragraph and relied upon by Tramanco, the respondent in submissions emphasised the question asked: a useful way of looking for a failure of a shock absorber. This is not the same thing as recording on a regular basis (logging) the qualitative effectiveness of the system. Dr Hart’s evidence elsewhere was clear: the variables are so numerous that the data cannot tell one about (and thus there can be no logging of) performance of the suspension system.

137        Further, even if this were possibly an infringing use, the operating manual does not direct the use of the BPW EBS to find a faulty suspension system and thus s 117 was not satisfied.

138        In this context, there was a clear admission at the trial (Respondent’s further material from Pt B, T p 1223) that the BPW EBS Trailer Analyser Operating Instructions do not contain a direction to use the respondent’s electronic braking system or data from it to perform any comparative analysis to determine whether or not the suspension system has deteriorated or degraded.

139        Thus, use of the data recorded, if useful for assessing performance of a suspension system after comparative testing, would not place the respondent in the position of infringement.

140        As to the suspension pressure snapshot, the respondent relied on the primary judge’s comments at [262] and explained the lack of any ability to know whether the peak loads were caused by anything to do with the suspension system, or when or where in the journey they occurred or under what conditions, such as speed, or how many peak loads there were in a short or long journey.

141        As to axle load average and maximum, the respondent relied on what the primary judge said at [275] (see [105] above). It was submitted that the only way these could be used to gauge effectiveness of the suspension system would be to look at comparables of successive journeys. No such direction appears in the operating instructions, as was conceded. Further, the information, absent comparison, does not tell one anything about the suspension system.

142        As to the RCM features of the system (see [99]-[104] above) the respondent submitted that all these features merely provided information about road roughness and nothing about suspension quality.

143        In answer to Tramanco’s written submissions on infringement, the respondent explained that nowhere was there a grappling with the lack of any logging of something which says anything of the effectiveness of the suspension system.

Resolution of infringement of claim 1

144        Broadly for the reasons submitted by the respondent (on the hypothesis of Tramanco being correct on the construction question discussed earlier) there has been no infringement of claim 1 demonstrated by the BPW EBS or the Trailer Analyser Operating Instructions or the system or systems described therein.

145        The answer lies partly in the realm of construction of claim 1 and partly in the realm of the factual material not satisfying what is required from the proper construction of the claim.

146        One starts, of course, with the words of the claim: “a method for logging the performance of a vehicle suspension system”. The two stages or steps that follow must be such a method. The primary judge construed “logging performance” at [43]: “recording, in a systematic way, the quality of the suspension system’s performance of its intended function.” There is no appeal from that.

147        Thus, the parameter that is determined in the second step – “the impact loading of the vehicle” – must, when it is recorded or the information about it logged, tell one something about the performance of the suspension system. The logging is of performance; it is not just keeping a record of facts that may, with other facts, be useful to analyse a suspension system.

148        As was said on page 3 of the specification in discussing the prior art:

It is therefore desirable to provide for an accurate test procedure for testing the performance of suspension components on a vehicle to determine whether the suspension is functioning properly and within legally acceptable limits while the vehicle is in use …

149        It is true, as the primary judge said in the opening words of [43], “the specification is concerned with the extent to which a suspension system performs its function in varying conditions, at particular points in time, and over time.” The phrase “logging performance” does, however, require the recording (in a systematic way) of something which tells one about how the suspension system is functioning. It may or may not be demonstrably determinative in what it says, but it must, it seems to me, tell one something of the functioning of the suspension.

150        Indeed, in the Summary of the Invention in the specification (on p 8), the notion of performance is explicated:

The system allows the logging of information relating to the dynamic effect of impulsive loads applied to suspensions and the compliance of the suspension to parameters adapted to ascertain the effectiveness of the suspension in dampening the impulsive load applied.

(Emphasis added.)

151        The information logged is as to compliance with parameters adapted to ascertain effectiveness.

152        It is not sufficient to have the recording of information that has some relevance to the assessment of the effectiveness of the functioning of the suspension system. The degree of relevance must be factually such as to be a parameter that is adapted to ascertain (that is indicate or say something about) the effectiveness of the suspension system – its performance. That is the construction question. That is how the primary judge approached it at [43], from which there is no appeal. That is how the matter was clearly put below by Tramanco: performance is the effectiveness of the suspension system in dampening the impulsive load (AB Pt C tab 140 p 1029).

153        Whether there is sufficient proximity or close relevance of the information to the assessment of effectiveness will be a question of fact. A system that systematically measured the oscillation frequency of a suspension system would give information so directly informative of effectiveness of function of the suspension as to be a logging of performance. The question here is whether the information logged by the BPW EBS is of that same character. That is a factual question, not a construction question.

154        In debate on appeal, senior counsel for the respondent accepted that if the logged information told one something about the functioning of the suspension system, it would infringe, but submitted that the BPW EBS told one nothing about the effectiveness of the performance of the suspension system. (See Appeal Transcript p 135 ll 1-20.)

155        It is to be recalled that the case for infringement fell upon the facts revealed by, and the content of, the BPW EBS and the Trailer Analyser Operating Instructions. These contained no direction as to comparative analysis of data recorded with any other data or events. The infringement asserted was the BPW EBS as operated in the instructions.

156        The suspension snapshot tells one nothing of the effectiveness of the suspension system. One suspension snapshot is taken per session. It says nothing about when, where, or why the load on that one occasion exceeded the pre-set percentage of the fully laden weight. The findings at [262] of the primary judge’s reasons reveal why nothing is recorded as to the performance (effectiveness) of the suspension system.

157        As to the road condition monitoring (RCM) histogram, for the reasons given by the primary judge at [264]-[267], nothing is recorded as to the performance (effectiveness) of the suspension system.

158        The RRC trip log was discussed by the primary judge at [268] and [271]-[274]. The trip log measures the number of events over the journey. The happening of those events will depend upon speed, road surface, cornering or whether the vehicle is going downhill. The log shows the weighted measure of the number of occasions on which pre-set thresholds have been crossed in a relevant timeframe. From such information, nothing can be stated about the performance of the suspension system. Compared over time and consistent road trips, as Dr Hart conceded, one may be told something about the effectiveness of the suspension system. At most, it may produce a body of information which may be useful, with other information, and, in particular, comparative information, in analysing the effectiveness of a suspension system. That is not logging performance or logging effectiveness.

159        As to the above features, I agree with the primary judge’s analysis at [303]-[304].

160        Perhaps a more difficult issue for the respondent is the axle load trip logs and histogram. The axle load trip log displays the mean axle load for each trip; and also displays the maximum axle load for each trip (AB Pt C tab 61 p 507). The distance versus axle load histogram displays the loading in relation to distance (AB Pt C tab 61 p 503). Nevertheless, the information does not log performance. The evidence of Dr Hart does not amount to a recognition that the axle load trip logs and histogram log performance of the suspension. There may be occasions on which one might be able to see from them an indication of the failure of a suspension system; but the recording of these loads does not tell one about the performance of the suspension system. I agree with the primary judge’s analysis.

161        My view that claim 1 is not infringed on the above hypotheses makes it unnecessary to deal with the asserted infringement of dependent claims.

162        I agree with the orders proposed by Nicholas J.

Associate:

Dated:    13 March 2014

ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA

REASONS FOR JUDGMENT

GREENWOOD J

163        I have had the benefit of considering the final draft reasons for judgment of the Chief Justice and the final draft reasons for judgment of Nicholas J.

164        I agree with the orders proposed by Nicholas J. I agree with the reasons of the Chief Justice and Nicholas J on the question of construction of Claim 1 and with the reasons of Nicholas J on the issue of sufficiency. I otherwise agree with the reasons of the Chief Justice on the questions of novelty, obviousness and infringement.

165        I only wish to add these brief remarks on the question of construction of Claim 1.

166        The primary judge in construing the language of Claim 1, defining the boundary of the monopoly of that claim, sought to attribute a textual, contextual and purposive meaning to, in particular, the third parameter at integer 4 as the primary judge framed the integers of the claim, namely, the phrase “the impact loading of the vehicle”. In a thorough and detailed analysis of the text of Claim 1 (construed, in part, in light of the specification) and the evidence of the witnesses skilled in the art, the primary judge regarded the construction question as significantly informed by the consideration that the term “impact loading” is used, expressly, in relation to the “vehicle” and not “its suspension”.

167        Of course, the phrase “impact loading of the vehicle” is not a “term of art” recognised by those skilled in the art the subject of the claim. Tramanco described it as a phrase of ill-defined content.

168        The difficulty the primary judge had in attributing a construction to the phrase, “the impact loading of the vehicle” which would recognise a relationship between an “impact loading” and a “force” imparted to the vehicle suspension system itself, as compared with a force transmitted by the vehicle to the road surface through the tyres, seems to be a difficulty Tramanco once had itself. By its particulars, Tramanco contended that “impact loading [of the vehicle]” is properly understood as the weight or force transmitted to the road by the impact of the vehicle “commonly transmitted by its tyres”. Plainly enough, Tramanco’s view at that time is not (and was not regarded by the primary judge as) decisive. It simply reflects, however, the difficulty the primary judge had in giving the text a particular construction.

169        I respectfully depart from the primary judge’s ultimate construction of the phrase which relied principally upon an express textual relationship between the notion of an “impact loading” and the vehicle rather than a relationship between an impact loading and that part of the vehicle the subject of the patent method, the “vehicle suspension system”. When the phrase is construed in the context of the specification, the textual immediacy of the phrase “of the vehicle” in parameter 3 suggesting the transmission of a force to the road surface through the tyres of the vehicle, is displaced in favour of a contextual and purposive construction of an impact load acting upon the suspension (or the suspension system) of the vehicle.

170        For the reasons earlier identified, I agree with the orders proposed by Nicholas J.

Associate:

Dated:    13 March 2014

REASONS FOR JUDGMENT

NICHOLAS J

171        I have had the advantage of reading the reasons for judgment of the Chief Justice. His Honour has explained the background to the appeal and the issues that arise.

CONSTRUCTION

Background

172        As the Chief Justice explains, the notice of appeal raises two issues of construction. So far as the first of them is concerned, I agree with what the Chief Justice has written.

173        As to the second construction issue, I agree with the Chief Justice that it is not without difficulty. At one stage I was inclined to think that claim 1 and its dependent claims might be invalid for lack of clarity. After all, if a patent claim is to be valid, it must define the monopoly claimed in such a way that it is not reasonably capable of being misunderstood: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610. However, the case was conducted below, and on appeal, on the basis that while claim 1 was ambiguous, the relevant ambiguity was capable of being resolved by the application of well-known principles of construction.

The relevant principles

174        There was no dispute between the parties as to the content of the relevant principles. They have been summarised in many previous decisions of this Court: see, for example, Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 (Hely J) at [70]-[81] and Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155 (Hill, Finn and Gyles JJ) at [67]. I would also add a reference to Lord Hoffman’s speech in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 169; (2004) 64 IPR 444 at [32]-[35] in which his Lordship made some important observations in relation to “purposive construction”. The relevant passages from Lord Hoffman’s speech are reproduced in the primary judge’s reasons for judgment. As his Lordship remarked in the course of his consideration of “purposive construction” of patent specifications, “[t]he question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean.” For this purpose, the “person skilled in the art” is the notional skilled addressee who is in possession of the common general knowledge as at the priority date relevant to the field of the invention.

175        The following principles are of particular relevance to the proper construction of the patent in suit:

    A patent specification is to be given a purposive construction, and must be read as a whole and in light of the common general knowledge as at the priority date. A specification should be read in a practical and common sense way.

    If words are used in a particular way in the specification, such that a particular meaning has been attributed to those words, then that meaning will usually be given to those words where they appear in the claims.

    An appropriately qualified expert may give evidence on the meaning which persons skilled in the art would give to technical or scientific terms, and to any unusual or special meaning which such persons might give to words apart from their ordinary meaning. However, the construction of the specification and, in particular, the claims, is ultimately a matter for the Court to determine.

    There is a danger that in seeking to give a claim a purposive construction, or in seeking to read it in context, an impermissible gloss might be imposed upon the language used based upon material found in the body of the specification.

176        In the present case the appellant accepts that if the primary judge’s construction of the phrase “impact loading of the vehicle” as used in claim 1 is correct then claim 1 and its dependent claims are invalid for lack of compliance with s 40(2)(a) of the Patents Act 1990 (Cth) (the Act) (as it relevantly stood prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)). This follows, according to the appellant, because the specification does not enable the use of a method for determining the impact loading of the vehicle at the tyre/road interface. If, on the other hand, the words “impact loading of the vehicle” are properly understood to refer to “the impact loading of the vehicle on the suspension” then the respondent contends that claim 1 and its dependent claims still do not comply with s 40(2)(a) of the Act.

177        Before attempting to resolve the construction issue, it is useful to make some general observations concerning the patent in suit. The claimed invention relates to vehicle suspension systems and, in particular, methods for logging the performance of a vehicle suspension system in response to impulsive loads to which such a system is subjected. An “impulsive load” in this context refers to the sudden load or force to which the suspension is subjected when a vehicle encounters a bump. These loads occur frequently when a vehicle is traveling at speed. The size of the loads imposed, and the frequency with which they occur, will vary with the prevailing conditions including the weight and speed of the vehicle, the extent to which the vehicle’s brakes are engaged and, of course, the condition of the road upon which the vehicle is travelling.

178        Impulsive loads are transmitted upwards, through the tyres and axles of the vehicle, and into the suspension between axle and chassis. They are also transmitted downwards, back through the axle to the tyres, but with less force due to the damping effect of the suspension. The purpose of the suspension is to dampen the force transmitted upwards into the chassis where the driver, passengers or cargo are located and to dampen the downwards force transmitted back down through the axle and into the tyres. It does this by allowing relative movement between the axles and the chassis. A vehicle that has a “road friendly suspension” is one that is relatively gentle, or is at least less severe, on road surfaces than a vehicle that does not have a “road friendly suspension”.

179        There are two measures of suspension performance that are directly reflected in industry standards. The first such measure is the damping ratio; the second is the oscillation frequency. Oscillation frequency is a reference to the rate at which a mechanical system moves back and forth, or up and down, relative to its preferred resting place. Oscillation frequency is measured in terms of cycles per second or Hertz (Hz). In the context of heavy vehicle suspension, oscillation frequency usually refers to the motion of the vehicle body relative to the axle. The damping ratio is a measure of the rate at which the magnitude of oscillation of a system diminishes over time. A damping ratio of zero implies that there is no damping in the system and that the magnitude of oscillation does not diminish over time.

180        The primary judge referred to various criteria specified in the National Road Transport Commission (NRTC) standard published in April 1999 (VBS-11). In simple terms, VBS-11 provides that suspension should have a free transient vertical oscillation frequency no higher than 2.0 Hz, and a mean damping ratio of not more than 20% of critical damping for the suspension in its normal operation. Another standard that is referred to in VBS-11 as providing acceptable tests of suspension road-friendliness is the European Union Council Directive 96/53/EC of July 1996 (the EU Standard). The EU Standard specifies three different tests whereby a suspension system is subjected to an impulsive load for the purpose of measuring “body bounce”. The first involves dropping the vehicle off a small step, the second involves pulling the chassis down and then releasing it, and the third involves pulling the chassis up and releasing it.

The Specification

181        The patent specification in suit (the Specification) refers to various disadvantages associated with methods for testing suspension in the prior art. Some of the prior art methods involve removing components (ie. shock absorbers) from the vehicle. The Specification suggests that the testing of such components after removal from the vehicle is unsatisfactory because, among other things, it leads to increased vehicle downtime.

182        The Specification makes reference to the standards relating to the performance of suspension and suspension components with which haulage or freight trucks may be called upon to comply. The requirements of VBS-11 are referred to specifically. The Specification states that, in order to be considered road friendly, suspension must have a damping ratio of greater than 20% and a frequency oscillation of less than 2 Hz. This is followed at page 2, line 33 – page 3, line 9, by a discussion of compliance testing in the context of the “road friendliness” of the suspension:

This compliance testing may test one or more parameters of the suspension which determine the “road friendliness” of the suspension. A “road friendly suspension” may be one which functions within predetermined limits for one or more of the parameters, and attaining or complying with “road friendliness” may provide advantages for the owner/operator of the vehicle such as the ability to carry heavier loads or access to roads which noncompliant vehicles may be restricted from using. As well, the road friendly performance of the suspension/s will affect the working life of the road itself with attendant reduction in maintenance costs and increased safety to all road users, with the economic benefits of such savings flowing on to the general community.

According to the Specification at page 3, lines 12-17:

It is therefore desirable to provide for an accurate test procedure for testing the performance of suspension components on a vehicle to determine whether the suspension is functioning properly and within legally acceptable limits while the vehicle is in use and without requiring the removal of the vehicle from service. In addition, it is desirable to provide for a test procedure for testing vehicle suspension components that does not require subjective interpretation by a technician.

183        The Specification states that the invention is directed to a method for logging the performance of a vehicle suspension system which may overcome the disadvantages of the testing methods that form part of the prior art. This statement is followed by a consistory clause which mirrors the language of claim 1.

184        According to the Specification, the method described in the consistory clause is one which is preferably used to test the road friendliness of a suspension system. At page 4, lines 1-9, the Specification states:

The method given above is preferably used to test the “road friendliness” of a suspension of vehicles. “Road friendliness” is assessed by the National Road Transport Commission (NRTC), and once a road friendly standard has been attained, the vehicle is generally allowed increased mass limits. The road friendliness of a suspension or suspension group, that is two or more axles connected together for load sharing as defined in the guidelines of the Higher Mass Limits (HML), is generally assessed under the current Higher Mass Limits (HML), currently in force, according to two criteria, namely the damping ratio of the suspension and the frequency of oscillation of suspension in response to an impulsive load.

185        The Specification then describes how an electronic weighing system mounted on board the vehicle may be used to measure or collect data that may be used to calculate the damping ratio and frequency of oscillation. The Specification explains that a global positioning system (GPS) device, or other locating means, might also be utilised to collect information as to the location of the vehicle.

186        The Specification also explains how the electronic weighing system mounted on the vehicle may be used to log the performance of the vehicle suspension system. The Specification indicates that this can be done in a number of different ways using a number of different tests. There are four such tests described in the Specification which are referred to as the “axle test”, “bump test”, “road test” and “trip test”.

187        It is common ground that none of the four tests discussed in the Specification permit the measurement of the load or force experienced by the vehicle at the tyre/road interface.

188        The “road test” is significant because it is said by the appellant to support its contention that the third parameter referred to in claim 1 is not concerned with the load or force at the tyre/road interface, but with the load or force in the suspension. The road test is described in the Specification at page 7, lines 3-9 as follows:

A third test which may be performed may be a road test. According to this test, the variation in the mass signal may be recorded as the combination test rig vehicle travels along a normal, uneven road at speed. The speed may be up to 60km/h or may be higher or lower if required. The GPS location device may be linked to the data collected, to precisely locate the portion of road upon which the test was conducted for future comparison of the test conditions as well as the road condition to determine the degradation in either or both.

189        The road test involves the establishment of a performance benchmark against which variations in the performance of the vehicle may be measured based upon variations in the mass signal. The “mass signal” in this context refers to variations in mass induced by dynamic loads or forces in the suspension measured at high frequency using the electronic weighing system. The appellant says that this mass signal constitutes, or records, the “impact loading of the vehicle” as that phrase is used in claim 1.

190        The “trip test” is said to allow for the collection of information as to road conditions. At page 7, lines 17-26, the Specification states:

The trip test may preferably allow data to be collected about the condition of the roads which a test vehicle travels over whilst gathering data in the form of the axle test for analysis, at the same time. Each trip test may be expanded into a series of axle tests for such purposes. For example, an impulsive load may be imposed on the suspension if the test vehicle drives over a pothole in the road. If a test vehicle uses the same route, it would generally traverse the same pothole on different trips. By assessing the performance of the suspension in response to the impulsive load applied to the suspension on different trips, a user may determine whether the pothole is getting larger or deeper or whether it has been repaired or not.

191        Claim 21 (which, together with other relevant claims, is reproduced in the Chief Justice’s reasons) is for a method that “allow[s] data to be collected about the condition of the roads which a test vehicle travels over.” The significance of the description of the “trip test” upon which claim 21 is based is that the invention is said to enable the user to monitor changes in road conditions, not by measuring such changes at the tyre/road interface, but by assessing the performance of the suspension in response to impulsive loads applied to the suspension.

192        The general description of the invention appearing in the Specification concludes with the following observations at page 8, lines 1-7:

Suitably, the method of the present invention may be utilised to collect and analyse data in order to log the performance of the suspension of a vehicle. Individual components of the suspension may be tested or groups of components may be tested. The system allows the logging of information relating to the dynamic effect of impulsive loads applied to suspensions and the compliance of the suspension to parameters adapted to ascertain the effectiveness of the suspension in dampening the impulsive load applied.

193        It is convenient at this point to note that the appellant’s counsel submitted that the primary judge failed to grasp the true nature of the advance made by the inventor over the prior art. Counsel for the appellant submitted that the inventive step in this case consisted of the idea of using an on-board electronic weighing machine to capture the “mass signal” or “excursions in mass” by taking measurements at high frequency of the dynamic loads on the suspension of the vehicle from which conclusions could be drawn as to the performance of the suspension.

194        The characterisation of the invention was said by counsel for the appellant to be particularly important to the construction question because a skilled addressee who read the Specification would understand that the inventor was not claiming to have invented a method for measuring a load or force at the tyre/road interface. Rather, the skilled addressee would understand the invention to involve a new method of measuring the performance of suspension by logging at high frequency variations in the load or force in suspension using an on-board electronic weighing system.

195        The general description of the invention is followed by a more detailed description of a preferred embodiment of the invention by reference to drawings (Figs 1-9). Importantly, the detailed description commences at page 9, lines 3-5 as follows:

According to an aspect of the invention, a method for logging the performance of a vehicle suspension system in reaction to impulsive loads applied thereto is provided.

This statement is clearly referring to the performance of the suspension in reaction to the impulsive loads applied to the suspension.

196        The detailed description of the invention is provided in the context of, and with reference to, the use of the invention on a truck and trailer combination equipped with air suspension. A road test of the rig is described in which the variation in mass signal was recorded as the rig travelled along normal, uneven roads at speeds of up to 60 kph. A sample of data from the road test is presented in the Specification in hexadecimal form and with the whole data set plotted in Fig 6. Figure 6 consists of a plot of the mass signal.

197        According to the Specification at page 16, line 19 – page 17, line 7:

By subjecting the data from the on road test to Fourier analysis, the system is able to determine the trailer's body-to-axle-group frequencies induced by the dynamic forces on the combination. For this analysis, it was assumed that the signal derived from driving the vehicle on normal roads approximated to a random signal. Fourier analysis of an output, or derived, signal after it has been generated from a random input signal of uniform amplitude to any system allows determination of the transfer function of the system as expressed by the frequencies present in the output signal.

The plot illustrated in Figure 6 is a Fast Fourier Transform (FFT) that is, by definition, lumpy and does not yield pure and clean plots on the magnitude axis. Even allowing for the overall noise created by the FFT process, it can be seen that the greatest frequency magnitude 46 present in the FFT of the on-road signal is that of 1.5 Hz – 2 Hz. Given that the EU standard for body bounce is > 2.0 Hz [sic: < 2.0 Hz], it is statistically probable that this parameter is met by the suspension tested and reflected on this plot.

(footnote omitted)

A fast Fourier transfer (FFT) is a mathematical process used in data analysis which may assist in identifying cyclic patterns, or oscillations, in a data series where it may be difficult to do so using a simple time series plot. The Specification thus indicates that a FFT may be used to determine whether or not it is statistically probable that the EU Standard for “body bounce” is met by the suspension tested.

Consideration

198        The phrase “impact loading of the vehicle” is not defined in the body of the Specification. It appears in the consistory clause and claim 1 but is not used in any other part of the Specification. The phrase does not have any accepted technical meaning. Neither party suggested that the language was clear or unambiguous and both parties accepted that the phrase is capable of conveying either of the two different meanings to which I have referred. However, the appellant submitted that when claim 1 is read in the context of the Specification as a whole, the construction which it propounds is clearly preferable to that adopted by the primary judge.

199        The Specification does not provide any clear indication of what is intended by the use of the phrase “impact loading of the vehicle” as it appears in claim 1. It is true, as the respondent submitted, that if the phrase was intended to refer to “impact loading of the vehicle on the suspension” then the patentee could easily have said so in terms. But it is equally true that the claim might have been drafted so as to refer to “the impact loading of the vehicle at the tyre/road interface” or, perhaps, the “dynamic load co-efficient” (a technical expression referring to the load or force at the tyre/road interface). In the present case, however, semantic arguments of this kind, while recognising that the claim could have been drafted so as to avoid the relevant ambiguity, are of little assistance when it comes to ascertaining the meaning of the claim.

200        It is necessary to construe the language of claim 1 in light of the Specification as a whole and in light of the common general knowledge that the skilled addressee would consider relevant when seeking to understand the document. The skilled addressee would be aware that there was no simple way of measuring the impact loading of a vehicle at the tyre/road interface. The skilled addressee would also understand that the Specification does not purport to describe any means by which the impact loading of the vehicle could be measured at the tyre/road interface.

201        In my view, the skilled addressee would understand the description of the invention to relate to the measurement of loads or forces at the suspension, and would apply that understanding to his or her reading of claim 1. In cross-examination Dr Blanksby gave evidence which indicates that he approached the claim in precisely this way, that is to say, having read the Specification as a whole, he formed the view that it was “not the intention of the patent” to measure loads or forces at the tyre/road interface. I think Dr Blanksby’s reading of the claim is fully borne out by the description of the invention in the Specification.

202        The support that the respondent seeks to draw from the Specification for its construction of claim 1 is said to be found in the references to “road-friendliness”. It is true that the concept of road-friendliness is very much focused upon the impact that heavy vehicles have on roads and the affect that this may have on road maintenance costs and road safety. However, the standards referred to in the Specification are concerned with the road-friendliness of suspensions in heavy vehicles. Each of the compliance tests specified in these standards assess road-friendliness by reference to the performance of the suspension. None of them involve the measurement of loads or forces at the tyre/road interface. I do not see references to “road-friendliness” in the Specification as providing any support for the respondent’s construction of claim 1.

203        The principal arguments in favour of the respondent’s construction of claim 1 are referred to in the Chief Justice’s reasons for judgment. They are essentially based upon a close textual analysis of claim 1. If claim 1 is read in isolation then these are powerful arguments. However, they lose much of their force when claim 1 is read in light of the Specification as a whole and, in particular, the complete absence from the description of any suggestion that the invention involves the ascertainment of loads or forces at the tyre/road interface.

SUFFICIENCY

204        The respondent contended that even if the appellant’s construction of claim 1 was correct, then claim 1 and each of the dependent claims that are alleged to be infringed are invalid because, contrary to s 40(2)(a) of the Act, the Specification does not describe the invention fully.

205        The test for sufficiency under s 40(2)(a) (as s 40 stood prior to recent amendments) was formulated by the High Court in Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1 (Kimberly-Clark) at [25] as follows:

The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?

The disclosure, or rather, the “enabling” disclosure, is the consideration that the patentee gives for the grant of a monopoly for the term of the patent: see the observations of Romer LJ in No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 at 243, cited with approval in Kimberly-Clark at [25].

206        In Lockwood Security Products Pty Limited v Doric Products Pty Limited (2004) 217 CLR 274 (Doric) the High Court said at [60]:

For the purposes of s 40(2)(a), it is not necessary for the inventor to disclose all the alternative means; it is enough that there is disclosure in the sense of enabling the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting additional difficulty.

207        In Kimberly-Clark and Doric the High Court was concerned with various product claims each of which consisted of a number of features all of which were essential (in the sense of non-optional) integers of the claim. However, there are some types of claim that may need to be approached slightly differently including, in particular, claims to methods for producing one or more specified results. For example, a claim for a method of producing one or more of outcomes A, B or C might be infringed if the alleged infringer uses the method to produce outcome A, but not outcome B or C. Whether there is infringement in such a case will depend upon (inter alia) the proper construction of the claim and, in particular, whether it requires the use of the method to produce only one or more of outcomes A, B or C, as opposed to all three of them. Assuming the former construction (in the present case it appears to have been assumed by both parties at the trial and on appeal that claim 1 is to be construed in this way), it would seem to me to be wrong in principle to hold that the description of the invention is sufficient if the specification enables the use of the method to achieve outcome A, but not outcomes B or C. It would be inconsistent with the purposes of the Act to confer a monopoly on a patentee for a method of producing any of outcomes A, B or C, if the patentee’s disclosure only enabled the use of the method to produce some of those outcomes.

208        On this view of s 40(2)(a), the concession made by the appellant that claim 1 was invalid for insufficiency of description if the respondent’s construction of claim 1 was accepted was properly made. However, this concession still leaves open the question whether claim 1 is invalid for insufficiency on the appellant’s construction of claim 1. This is a question of fact that was not the subject of a finding by the primary judge.

209        The respondent’s submissions on this question were brief. In its written submissions the respondent stated that “the patent remains in breach of section 40 even under Tramanco’s interpretation, as the specification does not say how the variations in mass that Tramanco identifies are derived”. A footnote to this submission stated that the Specification (at page 12, lines 25-32) asserts “the proportionality of air pressure and mass but do[es] not disclose how the conversion is made.” The same footnote includes a reference to the evidence of Mr Di Cristoforo discussed below.

210        At para [29] of the appellant’s written submissions in reply the appellant responded as follows:

BPW correctly notes that Tramanco does not dispute the finding of insufficiency of claim 1 if impact loading has the meaning set out in the reasons. However, it now contends that the patent remains in breach of section 40 even on Tramanco’s interpretation “as the specification does not say how the variations in mass that Tramanco identifies are derived”. We find this submission difficult to understand. What is required in the body is a real and reasonably clear disclosure of what is claimed. The determinations of mass are made by using an EWS. As described in the patent specification this comprises, for example, APTs, smart amplifiers and a computer. There is no doubt that it was part of the common general knowledge that on-board electronic weighing systems use various sensors and then perform calculations to arrive at a mass or weight measurement, for example in kilograms. The invention was to use this dynamically.

(footnotes omitted)

211        This passage of the appellant’s submissions elides the distinction between grounds of invalidity arising under s 40(2)(1)(a) (sufficiency) and s 40(3) (fair basis). Leaving that aside, the substance of the respondent’s submission that the Specification does not enable the skilled addressee to derive a mass signal from air pressure was left unanswered by the appellant in both its written and oral submissions.

212        In his report dated 18 March 2011 at para 3.5, page 5, Mr Di Cristoforo said:

… [T]he patent describes the operation of a standard on-board mass measurement system based on air pressure readings as I described in Section 2.5 of my report dated 8 June 2010. The patent is unclear as to whether the method is intended to operate from a single airbag pressure reading or from multiple readings in several airbags. In my experience, while the precise setup, accuracy and format of the display on on-board mass measurement systems available in August 2003 varied depending on the manufacturer, such systems require only one air pressure transducer per axle group. Therefore I believe that for the purpose of vehicle weighing an on-board electronic weighing system requires only one air pressure transducer per axle group. For some of the features of the patented method it may be necessary to obtain more measurements. The on-board electronic weighing system described in the patent is stated to be designed to report mass in “40 kg increments,” which I interpret to mean to a resolution of 40 kg, or to the nearest multiple of 40 kg. The last part of the passage describes how the system determines the mass on the steer axle (the front axle of the prime mover) when it only measures the air pressure in the airbags of the drive axles (rear axles of the prime mover) and the trailer axles. For a given prime mover and semi-trailer combination, the loads on the steer axle and on the drive axles increase and decrease according to the load imposed on the prime mover by the trailer, and the steer axle load is related to the drive axle load by a simple formula that may be calculated theoretically, or determined by experiment when the system is calibrated.

Such systems determine the mass of the vehicle when stationary. If a vehicle is moving then the air pressure reading will vary substantially and will not correlate to the mass of the vehicle. One of the claims of the patent (Claim 19) claims that the “variation in a mass signal” is recorded. The term “mass signal” is not defined clearly in the patent … [T]he phrase “Air pressure is converted to a mass signal by a mass measurement system ...” suggests to me that at some point in the system one of its components converts the pressure in the airbags to a signal indicating mass. It is not clear whether this is a reference to the signal transmitted by the pressure transducers, the signal transmitted by the smart amplifiers, or something else. This raises the question of the difference between a mass signal and a pressure signal. Although the “mass signal” is claimed as being recorded the patent suggests that the pressure signal is what is captured by the APT [air pressure transducer]. How such a pressure signal is converted to a mass signal is not disclosed in the patent.

213        Counsel for the respondent submitted that this evidence shows that Mr Di Cristoforo was of the opinion that the Specification does not disclose how a pressure signal is converted to a mass signal. I accept this submission. However, I do not think this takes the matter far enough. To succeed on sufficiency it is necessary for the respondent to establish that the disclosure did not enable the skilled addressee to perform the method referred to in claim 1 “without new inventions or additions or prolonged study of matters presenting initial difficulty”: Kimberly-Clark at [25]. It is possible that Mr Di Cristoforo would have said, if asked, that the skilled addressee would not know how to convert a pressure signal into a mass signal or, at least, that he or she would not be able to perform that task without considerable difficulty. However, none of the evidence to which we were referred suggests that he was asked that question and, in my opinion, the evidence to which we were taken does not answer it.

214        Counsel for the respondent also referred to evidence of Dr Gilmore given during cross-examination in which he agreed that there was nothing in the Specification to identify how the impact loading of the vehicle is to be determined. Counsel for the respondent submitted that subsequent cross-examination clearly showed that Dr Gilmore’s concession related to “the impact loading of the vehicle” as the phrase was interpreted by the appellant. However, the subsequent evidence referred to by counsel for the respondent is to the opposite effect. It shows quite clearly that Dr Gilmore was referring to the absence of any disclosure enabling the determination of impact loading at the tyre/road interface.

215        In my opinion, the evidence relied upon by the respondent does not establish that claim 1 (or any of its dependent claims) is invalid for insufficiency due to the lack of an enabling disclosure with respect to the determination of the impact loading of the vehicle at the suspension.

216        The primary judge found at [235] of his reasons that claim 21 was invalid for insufficiency (s 40(2)(a)) and lack of fair basis (s 40(3)). So far as s 40(2)(a) is concerned, his Honour found, in substance, that claim 21 was not supported by an enabling disclosure. In my opinion, this finding was open on the evidence.

217        In its written submissions the appellant submitted that the Specification indicates that a GPS, or other locating means, such as a trip meter, may be used according to the invention, and that the discussion of “road test” and “trip test” in the Specification includes a clear description of the use of such locating means, including a GPS, to locate the position of the vehicle when a test is undertaken. The road test, as described in the Specification, is said to permit the collection of data which may be used for the purpose of drawing comparisons from which conclusions may be drawn as to road conditions. The trip test, as described in the Specification, is said to enable a user to determine whether a pothole is getting larger or deeper, or whether it has been repaired.

218        However, the Specification does not explain how variations in mass signal “allow data to be collected about the condition of the roads which a test vehicle travels over” as required by claim 21. It is clear that variations in the mass signal may be attributable to a variety of causes including a deterioration in the effectiveness of a vehicle’s suspension. Variations in mass signal tell the user nothing about the condition of the road upon which the vehicle has travelled unless he or she can exclude the possibility that one or more other potential causes, including a deterioration in the effectiveness of the vehicle’s suspension, produced such variations. I therefore agree that claims 21-23 (claims 22-23 are dependent on claim 21) are invalid because, in this particular respect, they are not supported by an enabling disclosure.

NOVELTY

219        I agree with the Chief Justice’s reasons for concluding that none of the US patent by Tal et al and the papers written by Dr Sweatman anticipate claim 1.

OBVIOUSNESS

220        It is common ground that the primary judge did not make a finding that any of the claims was invalid for lack of inventive step even though his Honour said in his later judgment on costs that he would almost certainly have made such a finding had it been necessary for him to do so. Hence, inventive step was an issue that arose on the respondent’s notice of contention (ground 8) rather than on the appellant’s notice of appeal.

221        The respondent bore the onus of establishing that the method referred to in claim 1 (and its dependent claims) would have been obvious to the hypothetical, non-inventive worker in the field equipped with the common general knowledge and any other information which satisfied the requirements of s 7(3) of the Act.

222        The primary judge dealt with the topic of common general knowledge at [150]-[166] of his reasons. His Honour made detailed findings as to the common general knowledge and the other information made relevant pursuant to s 7(3) of the Act. At [156] and [157] the primary judge enumerated specific matters which he later found were common general knowledge including VSB-11 and Dr Sweatman’s 1983 and 1994 papers. His Honour also found that Dr Sweatman’s papers, even if not common general knowledge, could be considered separately pursuant to s 7(3) of the Act. These findings were not challenged. However, it does not follow from these findings that the method the subject of claim 1 was obvious.

223        In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 Aickin J (with whom Gibbs, Stephen, Mason and Wilson JJ agreed) referred to the need for a valid patent to “involve an inventive step” (language which appears in s 7(2) and s 18(1) of the Act). His Honour said at 286:

The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.

This test of obviousness was cited with approval by the majority of the High Court in Aktiebolaget Hassle v Alphapharm Pty Limited (2002) 212 CLR 411 at [50]. As to what “a matter of routine” means in this context, the majority said at [53] that the reformulation of the “Cripps question” by Graham J in Olin Mathieson Chemical Corp v Biorex Laboratories Ltd [1970] RPC 157 is an approach that should be accepted.

224        Both parties accepted that the “reformulated Cripps question” should be applied in this case for the purpose of determining whether the method defined in claim 1 involved an inventive step. For the purposes of this case the question can be posed in these terms: Would the hypothetical, non-inventive worker in the field, armed with the relevant prior art (in this case the common general knowledge) directly be led as a matter of course to try a method within the scope of claim 1 in the expectation that it might well produce a useful alternative to known methods for testing the effectiveness of a vehicle’s suspension system?

225        On appeal, the respondent did not undertake any analysis of the common general knowledge with a view to establishing that any of the methods described in the Specification within the scope of claim 1, or any other method within the scope of that claim, was obvious, or that the “reformulated Cripps question” should be answered in the affirmative.

226        The evidence of Dr Hart did not establish that a non-inventive worker in the field would have taken, as a matter of routine, whatever steps might have led from the relevant prior art to the invention. As the Chief Justice has observed, none of the methods described by Dr Hart in his reports involved the use of an on-board electronic weighing system.

227        Having considered the common general knowledge as found by the primary judge along with the evidence of Dr Hart, I am not persuaded that claim 1 is invalid for lack of inventive step.

INFRINGEMENT

228        I agree with what the Chief Justice has written on the issue of infringement and have nothing to add.

DISPOSITION

229        For the above reasons I would allow the appellant’s appeal, in part, against the primary judge’s declaration of invalidity and his Honour’s order for revocation, and set aside both the declaration and the order for revocation. There should instead be a declaration that each of claims 21, 22 and 23 of the patent is invalid and an order revoking each of those claims. The application and cross-claim should otherwise be dismissed. The appeal also should be otherwise dismissed. The parties should be given an opportunity to file written submissions in relation to the question of costs with respect to the proceeding below and the appeal. To that end, each party should be required to file and serve written submissions on the issue of costs (up to 5 pages in length) within 7 days and any written submissions in reply (up to 2 pages in length) within 14 days.

Associate:

Dated:    13 March 2014