FEDERAL COURT OF AUSTRALIA

Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81

PATENTS – innovation patents for roadside post – novelty – whether invention as claimed novel in light of prior art – reverse infringement test applied – no error shown in primary judge’s novelty finding

PATENTS – manner of manufacture – whether the invention as claimed disclosed a manner of manufacture within the meaning of section 6 of the Statute of Monopolies – no error shown in primary judge’s ruling that manner of manufacture disclosed

PATENTS – innovative step – proper approach to the construction of ss 18(1A) and 7(4) of the Patents Act 1990 (Cth) – whether “invention”, as used in s 7(4), refers to “advance in the art” as identified by reference to common general knowledge – innovative step requires the “invention”, mentioned in s 7(4), to be compared on a claim by claim basis with the information that s 7(5) describes – comparison to be made from perspective of person skilled in the art – identification of variations between the invention as claimed in each claim and each prior disclosure – determination of whether variations make a substantial contribution to the invention as claimed – no error shown in primary judge’s findings as to innovative step

Patents Act 1990 (Cth) ss 7, 13, 18(1A), 40, 52, 62, 67, 68, 79B, 120(1A), 138

Patents Amendment (Innovation Patents) Act 2000 (Cth)

Patents Regulations 1991 (Cth) reg 6A.1

Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 referred to

Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 referred to

Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 referred to

Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 cited

Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 referred to

Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 referred to

Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890; (2000) 49 IPR 331 cited

Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 cited

Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 referred to

N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 referred to

Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 ALR 202 referred to

Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31 referred to

Morgan & Co v Windover & Co (1890) 7 RPC 131 cited

Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 referred to

Polwood Pty Ltd v Foxworth Pty Ltd (2008) 75 IPR 1 cited

Griffin v Isaacs (1938) 1B IPR 619; 12 ALJ 169 discussed

Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 cited

DURA-POST (AUST) PTY LTD ACN 101 287 512 v DELNORTH PTY LTD ACN 051 954 977

NSD 1392 of 2008

KENNY, STONE & PERRAM JJ

30 JUNE 2009

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	NSD 1392 of 2008

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

DURA-POST (AUST) PTY LTD

ACN 101 287 512

Appellant

AND:	DELNORTH PTY LTD ACN 051 954 977 Respondent

JUDGES:	KENNY, STONE & PERRAM JJ
DATE OF ORDER:	30 JUNE 2009
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The appeal be dismissed.

2. On or before 10 July 2009, the parties file and serve submissions on costs, both as before the primary judge and on appeal.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	NSD 1392 of 2008

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

DURA-POST (AUST) PTY LTD

ACN 101 287 512

Appellant

AND:	DELNORTH PTY LTD ACN 051 954 977 Respondent

JUDGES:	KENNY, STONE & PERRAM JJ
DATE:	30 JUNE 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

KENNY & STONE JJ:

INTRODUCTION

1 This proceeding concerns three innovation patents for an invention for a “Roadside Post”. The patents are Patent No 2005100978 (Patent 1), Patent No 2006100297 (Patent 2) and Patent No 2006100696 (Patent 3). A judge of the Court upheld infringement claims made by Delnorth Pty Ltd, as the patentee, against Dura-Post (Aust) Pty Ltd. His Honour rejected Dura-Post’s challenge to the validity of the three patents, save in relation to claims 1 and 2 of each of Patents 2 and 3, which his Honour held lacked an innovative step. On this appeal, Delnorth does not challenge his Honour’s orders revoking those claims.

2 Dura-Post appeals against his Honour’s judgment in relation to certain of the remaining claims of the three Patents, and against his Honour’s costs order.

3 Leaving aside the matter of the costs order, the issues arising on the appeal concern:

(a) manner of manufacture;

(b) novelty, in light of what have been termed the Pellowski and Kennedy Patents (see below); and

On the appeal, no prior art beyond Pellowski and Kennedy falls for consideration. At first instance, the primary judge considered issues of clarity, fair basis and utility, but these issues do not fall for consideration on this appeal.

4 For the reasons stated hereafter, we would dismiss the appeal.

THE INNOVATION PATENT SYSTEM

5 In order to appreciate the issues falling for determination, it is necessary to have some regard to the innovation patent system. The innovation patent system derives from the recommendations made by the Advisory Council on Industrial Property following the Council’s report “Review of the Petty Patent System”. This report was published in 1995 and is referred to below as the 1995 ACIP report. A Revised Explanatory Memorandum for the Patents Amendment (Innovation Patents) Bill 2000 (Cth)stated (at p 2) that the innovation patent system was designed “to stimulate innovation in Australian [Small to Medium Enterprises]”, “by providing Australian businesses with industrial property rights for their lower level inventions”.

6 The Patents Amendment (Innovation Patents) Act 2000 (Cth) introduced the concept of innovation patents into the Patents Act 1990 (Cth), with effect from 24 May 2001, by providing that the definition of the word “patent” in Schedule 1 to the Patents Act “means a standard patent or an innovation patent”(emphasis added). As for a standard patent, an innovation patentee has, pursuant to s 13, “the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention”.

7 The grant of an innovation patent is governed by a number of specific provisions in the Patents Act: see, e.g., ss 18(1A), 40(2)(c), 52, 62, 68, 101A-101P, 120(1A) and 138(1A). If a complete application for an innovation patent is made, and the Commissioner of Patents is satisfied that the application passes a “formalities check”, the Commissioner must accept the patent request and complete specification: see s 52. The term of an innovation patent is 8 years as compared with 20 years for a standard patent: compare ss 68 and 67. In the case of an innovation patent, a complete specification must not only describe the invention fully, but also “end with at least one and no more than 5 claims defining the invention”: see s 40(2)(c). Section 18(1A) deals with what is a patentable invention for the purposes of an innovation patent. Section 7 deals with novelty and innovative step. Both provisions are critical to this appeal and are discussed below.

8 Certification is a prerequisite for an opposition proceeding, a proceeding for innovation patent infringement, and an application for an order for revocation of an innovation patent: see ss 101M, 120(1A) and 138(1A). Grounds for revocation under s 138 include that the invention is not a patentable invention: see s 138(3)(b).

9 Certification occurs under s 101E, which provides as follows:

If:

(a) after examining a patent under section 101B, the Commissioner decides in writing that he or she is satisfied that the invention, so far as claimed, complies with paragraph 18(1A)(b); and

(aa) after so examining the patent, the Commissioner also decides in writing that he or she considers that:

(i) a ground for the revocation of the patent (other than a ground in respect of paragraph 18(1A)(b)) has not been made out; or

(ii) any such ground has been removed; and

(b) the patent has not ceased under section 143A;

the Commissioner must:

(c) notify the patentee and the person who requested the examination (if that person is not the patentee) that the patent has been examined and that a certificate of examination is to be issued; and

(d) publish a notice of the examination having occurred in the Official Journal; and

(e) issue a certificate of examination to the patentee in the form approved by the Commissioner; and

(f) register the issue of the certificate.

10 Before certification, the Commissioner makes an examination of the innovation patent: see ss 101A and 101B. On examination, the Commissioner must “examine the complete specification relating to the patent to determine if the patent is invalid and should be revoked” because one of the specified grounds is made out: see s 101B(1)(a). Grounds for revocation include that the specification does not comply with s 40; the invention, so far as claimed, does not comply with s 18(1A)(a) or (b); the invention is not a patentable invention under s 18(2) or (3); and the use of the invention would be contrary to law: see s 101B(2).

11 Delnorth relied on the provisions of Chapter 6A – “Divisional applications” – in creating the three innovation patents in suit out of a standard patent the subject of opposition proceedings. In so doing, Delnorth relied on s 79B of the Patents Act and regulation 6A.1 of the Patents Regulations 1991 (Cth), pursuant to which a patent may be divided out at any time before the grant of a standard patent. By Patent 2 and Patent 3, Delnorth apparently sought to overcome perceived weaknesses in its initial infringement claim against Dura-Post, which depended on Patent 1.

THE PATENTS IN SUIT

12 In a case such as this it is first necessary to ascertain the invention described in the specification for which the monopoly is claimed: see Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 609 per Dixon CJ, Kitto and Windeyer JJ. In so doing, it is also necessary to keep in mind the rules of construction referred to by Sheppard J in Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400, including that the specification must be read as a whole and in the light of the common knowledge in the art before the priority date.

13 As already noted, all three patents are for a “Roadside Post”. We consider the body of the specification of Patent 1 only, because, save for each consistory clause and preferment, the specifications in Patents 2 and 3 are materially the same. The specification begins with a short statement of the subject to which the invention relates. This statement reads:

The invention relates to roadside posts for supporting signage or delineating paths, roadways or boundaries.

14 Under the heading “Background of the Invention”, the specification continues:

Common examples of roadside posts include sign posts and guide posts, which are usually located on the edge or shoulder of roadways to delineate lanes and direct traffic.

The specification describes the disadvantages of existing roadside posts in the following terms:

Roadside posts are often impacted and damaged by wayward vehicles and must be replaced or repaired. Timber posts will commonly fracture when impacted and must be replaced. Existing plastic or plastic/rubber composite posts are flexible and resilient enabling them to recover after impact. However, plastic or rubber posts tend to deteriorate due to UV exposure and repeated impacts over time. Steel posts have also been employed and are generally not resilient, plastically deforming upon impact and must be manually restraightened. Some known devices also employ a hinging mechanism between two or more rigid members. The hinging mechanism is typically a flexibly resilient rubber or plastic material. The rubber or plastic components of these posts also deteriorate due to UV exposure and repeated impacts. Other hinging mechanisms are either not resilient or complicated and expensive to manufacture.

Often the nature of the vehicle impact is a direct wheel-over in which the vehicle wheel rolls directly over the post pressing it flat against the surface of the ground. Known posts are installed in the ground to bend only above the surface of the ground and are therefore, not adapted to bend flat against the ground surface without enduring a tight right angle bend at the surface. During a direct wheel-over, flexible posts are forced to bend substantially at a tight right angle at the ground surface. Subsequently, during a direct wheel-over, crease points can occur in the post at the surface of the ground as the post is forced into a tight right angle bend. Tight right angle bends accelerate fatigue of the post and also increase plastic deformation in metal posts.

The stated object of the invention is: “to substantially overcome or at least ameliorate one or more of the disadvantages of the prior art”. The following consistory clause repeats the claims and includes a description of the drawings and preferred embodiments.

15 The background and the stated object indicate that the patentee is describing to a person skilled in the art a development in the choice of a roadside post that, amongst other things, utilises sheet spring steel to overcome the problems of resilience and durability found in existing flexible roadside posts.

16 We set out the text of the claims (with agreed integer numbers) in Annexure A to these reasons for judgment. (As stated above, the primary judge made orders revoking claims 1 and 2 of Patent 2 and claims 1 and 2 of Patent 3, which are unchallenged on this appeal.)

17 We note that the primary judge ruled on the meaning of integer (8) in the claims – being the words “elastically bendable through 90 degrees from an unbent state about said transverse axis” and that this ruling was unchallenged on the appeal. In particular, his Honour held that these words:

… describe the article by reference to its physical features and characteristics as such, not by reference to any particular situation or location [as Dura-Post argued]. In other words, the material must have the capacity to be elastically bendable in the manner described. The phrase is not a means of limiting the claim by result, rather it deals with the choice of material – spring steel with the described characteristics of elastic bendability.

His Honour also held that “[t]he necessary degree of flexibility was established”: see Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 at [14]-[15].

18 Dura-Post has consistently argued that the only feature common to all claims in the Patents in suit was the sheet spring steel and that the use of this material was the only feature that distinguished the claimed posts from the prior art and met the object of the claimed invention. Dura-Post relied on Delnorth’s written admissions as to matters that were common general knowledge to persons skilled in the art before 23 June 2003, including the use of a marker on posts to indicate the depth that a post should be driven into the ground, the use of a tapered end, and the use of a barb. On appeal, Dura-Post contended that, contrary to his Honour’s finding, the Pellowski Patent taught a roadside post of arcuate spring steel construction. Further, according to Dura-Post, the Kennedy Patent included a roadside post bearing, for instance, a reflector.

19 Delnorth sought to uphold the judgment of the primary judge, essentially for the reasons stated by his Honour.

Whether there was a patentable invention for an innovation patent

20 Section 18(1A) of the Patents Act provides:

Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim:

(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and

(b) when compared with the prior art base as it existed before the priority date of that claim:

(i) is novel, and

(ii) involves an innovative step; and

(d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.

21 Relevantly for this appeal, the Patents Act makes clear, in s 18(1A)(a) and (b)(i) and (ii), that an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim, when compared with the prior art base as it existed prior to the priority date of the claim: (1) is a manner of manufacture (within the meaning of s 6 of the Statute of Monopolies); (2) is novel; and (3) involves an innovative step.

22 The word “invention” is defined in Schedule 1 to mean, unless the contrary intention appears, “any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention”. As the High Court said in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at 13-14, the word “invention” is used in different senses in the Act, including in s 18(1); and, so it follows, in s 18(1A). In s 18(1A), a patentable invention for the purposes of an innovation patent is the invention that, so far as claimed in any claim, has the particular characteristics nominated by s 18(1A), such as novelty, innovation, utility and “is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies”: compare Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 at 191-193.

23 We consider below what was the invention “so far as claimed in [the] claims” of the Patents in suit.

24 We consider, first, the issues of manner of manufacture and novelty, before turning to the issue of innovative step. If Dura-Post fails in its challenge on these issues, then, so far as this appeal is concerned, it may be concluded that there was a patentable invention for the purposes of the Patents in suit.

MANNER OF MANUFACTURE

25 Dura-Post contended that none of the claims of the Patents in suit defined a manner of manufacture as required by s 18(1A)(a) of the Patents Act. In this connection, Dura-Post relied on Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232, N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655, Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 ALR 202 and Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31.

26 Microcell 102 CLR 232 concerned the alleged invention of a self-propelled rocket projector comprising a tube of synthetic resinous plastic material reinforced with mineral fibres. In Microcell 102 CLR at 249, the High Court apparently approved the principle that:

[i]t is not an inventive idea for which a monopoly can be claimed to take a substance which is known and used for the making of various articles, and make out of it an article for which its known properties make it suitable, although it has not in fact been used to make that article before.

27 The Court applied this principle, in Microcell 102 CLR at 250, when it stated:

Here the specification does not on its face disclose more than a new use of a particular known product. To use Lord Buckmaster’s words, no new product is obtained, and there is no new method of manufacture suggested or an old one improved. Tubular self-propelled-rocket projectors were at the relevant time well-known articles of manufacture. Synthetic resinous plastics reinforced with mineral fibres, and in particular polyester plastics reinforced with glass or asbestos fibres, were well-known materials. These things are to be gathered from the specification itself, which contains no suggestion of novelty in relation to the article to be manufactured or the material to be used.

28 Dura-Post argued that the present case was analogous to Microcell. Dura-Post contended that the specification in the Patents in suit disclosed that the invention was the selection of sheet spring steel for the construction of conventional roadside posts. Dura-Post argued that the Patents recognised that spring steel is a known material and, accordingly, so Dura-Post submitted, it could not be said that an inventive idea was disclosed merely because no-one had previously thought to make a flexible roadside post out of sheet spring steel.

29 The primary judge rejected Dura-Post’s argument on lack of manner of manufacture. His Honour said, in Delnorth [2008] FCA 1225 at [25]:

There would be much to be said for the argument if the invention were a claim for making a roadside post out of sheet spring steel. However, the matter must be judged claim by claim in accordance with the wording of s 18(1A). No claim is as broad as that considered in Microcell 102 CLR 232. Each involves a form of article with features additional to the material of spring sheet steel. It cannot be concluded that there is no ‘new’ manner of manufacture from the face of the specification. This ground of invalidity fails.

30 We find no error in his Honour’s approach. As his Honour noted, the claims in the Patents in suit are not limited to the use of spring steel in the manufacture of a roadside post. A reading of the claims confirms that numerous other features form part of the claimed combinations.

31 We accept, moreover, that Microcell stands for “a narrow proposition that a Commissioner of Patents, or his or her delegate, may refuse an application for patent protection where a specification ‘on its face’ shows the invention claimed is not a manner of new manufacture”: see Lockwood 235 ALR at 229 [106] per Gummow, Hayne, Callinan, Heydon and Crennan JJ; Mirabella 183 CLR at 663-664 per Brennan, Deane and Toohey JJ; and Merck 154 FCR at 51-53 per Heerey, Kiefel and Dowsett JJ. As their Honours there said in Mirabella, “if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further”.

32 Dura-Post’s argument is not made out on the face of the specification. We accept that, as Delnorth said, “[t]he specification does not admit that the invention is nothing but a new use of spring steel for a purpose for which its properties made it suitable; nor does it support the drawing of any inference to that effect”. In the specification, there is no reference to features of the claims, such as barbs, marker holes, tapered ends, as forming part of the group of known roadside posts. There is, furthermore, the unchallenged finding of the primary judge, in Delnorth [2008] FCA 1225 at [62], that “use of sheet spring steel was not known for use in connection with roadside posts or analogous uses” (emphasis added), a finding that makes reliance on a Microcell objection very difficult to sustain: compare Merck 154 FCR at 52-53 discussing Morgan & Co v Windover & Co (1890) 7 RPC 131.

33 Accordingly, we consider that the primary judge correctly rejected Dura-Post’s contention that none of the claims of the Patents in suit defined a manner of manufacture as required by s 18(1A)(a) of the Patents Act.

NOVELTY

34 The issue of novelty was a narrow one and, on analysis, of little practical importance. In written submissions, Dura-Post stated that, on the appeal, it relied on two items of prior art, namely, the disclosures in the Pellowski Patent (US 3312156) and in the Kennedy Patent (US 6375385). The issue of novelty appeared primarily directed at claims 1 and 2 of each of Patents 2 and 3, both of which have been revoked. Claims 1 to 3 of Patent 1 and claim 4 of Patents 2 and 3 are unaffected by Dura-Post’s argument on the novelty issue.

35 On occasion, it seemed that the real point of the parties’ arguments on novelty was to provide a suitable backdrop for their arguments on innovative step. Be that as it may, we would reject Dura-Post’s submissions on the Pellowski and Kennedy Patents for the following reasons.

36 The primary judge held that the device disclosed in the Pellowski Patent was attached to, on, or in the surface of the roadway, whereas the invention as claimed in all relevant claims related to a post in the ground adjacent to the roadway: see Delnorth [2008] FCA 1225 at [39].

37 We agree with his Honour that a fair reading of the Pellowski Patent disclosed a device in the nature of a lane marker, not a roadside post, whilst a fair reading of the Patents in suit disclosed a roadside post.

38 The Pellowski Patent was entitled “Highway Marking Device”. The patentee stated that the invention “relate[d] generally to roadway or traffic marking devices, and more particularly, it relate[d] to a novel resilient highway marking device for visibly and audibly signalling the location of traffic lanes, highway centerlines, and the like” (our emphasis). The patentee stated that “[a]n important object” of the invention was “the provision of a highway marking device … designed and constructed for resiliency at all points throughout its length whereby to provide ready flexibility upon impact from vehicles travelling along the roadway, and which will instantly return to its upright position after being released … from engagement by the vehicle” (our emphasis). The patentee stated that other objects were “the provision of a highway marking device which includes a normally upright strip element adapted for positioning along the centreline and shoulders of a roadway to clearly … delineate traffic lanes along the highway” and “the provision of a highway marking device comprising an elongated resilient and transversely curved metal strip which will be temporarily deformed transversely and produce a loud noise when struck by a vehicle” (our emphasis).

39 In concluding that the device disclosed by Pellowski was a device attached to, on, or in the surface of the roadway, his Honour said:

At first sight the reference to ‘shoulders of the roadway’ may indicate to the contrary, particularly as the same description is used in the patents in suit for the location of the roadside post. So far as the former is concerned, figure 4 and the commentary upon it show the marking devices said to be on the shoulders as within the bounds of the roadway and claim 1 is quite explicit in claiming a means for securing and supporting ‘one end of the strip in the roadway’. [Emphasis added by the primary judge]

By contrast, the patents in suit use ‘shoulder’ in the sense of one of the meanings in The Macquarie Dictionary (3^rd edn, The Macquarie Library Pty Ltd, 1998), namely, ‘either of two strips of land bordering a road, especially that part on which the vehicles can be parked in an emergency’. The description ‘roadside’ posts taken with the examples given is itself sufficient to indicate the posts are not designed for use on the roadway.

See Delnorth [2008] FCA 1225 at [40]-[41]. Having ourselves examined the Pellowski Patent and the Patents in suit, we agree with his Honour’s observations and conclusions as stated above.

40 There is no error shown in his Honour’s conclusion that the Pellowski specification did not deprive the invention as claimed in the Patents in suit of novelty. There is no error shown in his Honour’s conclusion that the reverse infringement test for lack of novelty was satisfied: see Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235 per Aickin J.

41 The primary judge held that the Kennedy Patent disclosed “a flexible support with a plurality of thin sheets of material laminated together and, further, that the multiple laminations played a role in utility going beyond mere dimensions”: see Delnorth [2008] FCA 1225 at [30]. In contrast with the Kennedy Patent, the Patents in suit disclosed “a homogenous body rather than one with multiple layers or laminations”: see Delnorth [2008] FCA 1225 at [32].

42 We agree with his Honour’s construction of the Kennedy Patent. Under the heading “Background of the Invention”, the patentee stated that the invention “relates generally to cantilever support structures for signs and other articles”, adding that:

The support is formed generally of a plurality of relatively thin sheets of material laminated together, with the flexibility of each of the sheets providing sufficient flexibility to ‘give’ when struck by a car or the like. Each of the thin components is curved about its elongate axis, in order to provide sufficient stiffness for the support of a sign or the like under normal conditions.

43 In the Kennedy Patent, the patentee summarised the invention as “compris[ing] a flexible support which may be used as a traffic delineator, or for supporting a larger sign or other object as desired”. The patentee continued:

The present support is formed by mechanically securing a plurality of elongate curved metal slats or leaves together to form a laminated structure, with the curvature being about the longitudinal axis of the structure. The assembly is installed preferably with the concave side of the curvature facing the normal direction of traffic.

44 We agree with the primary judge that the patentee’s statement in describing the preferred embodiment that “[t]he number of laminations may be adjusted as desired …” does not result in a contrary conclusion, since the statement must be read in context, including with regard to the preceding statement that the flexible support “is basically formed by a plurality of identical individual thin, wide, elongate, flexible spring steel elements, congruently laminated together”.

45 Both at first instance and on appeal, Dura-Post argued that the words “formed of sheet spring steel” (integer 2) in claim 1 in Patents 1 and 2 required merely that the device be “made up of the material known to those skilled in the art as ‘sheet spring steel’”. Dura-Post contended that a roadside post would be so made “by one or more layers, however joined together, so long as the other requirements of the claim are satisfied”. Accordingly, so Dura-Post argued, the prior art constituted a reverse infringement of the claim. Dura-Post submitted that the primary judge had erred in reading down the scope of the claim by reference to the examples given in the Patents in suit, which was to put an impermissible gloss on the meaning of the plain words of the claim.

46 The principles of construction applicable in the present context are clear enough. When the nature and extent of the monopoly claimed is in question, then the specification must be read as a whole. The specification is, however, made up of different parts, with different functions. The claims delineate the limits of the monopoly granted. Although construed in the context of the specification as a whole, “it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification”: see Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 at [44] per Sundberg, Emmett and Greenwood JJ, citing Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890; (2000) 49 IPR 331 at [73]-[75] per Hely J. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document, although reference may be made to the balance of the specification to clarify the meaning of terms or to resolve ambiguities in the construction of claims: see Welch Perrin 106 CLR at 610; Kimberly-Clark 207 CLR at 12; and Kinabalu [2008] FCAFC 178 at [44].

47 We would not attribute to his Honour an error of the kind for which Dura-Post contends. His Honour merely construed the words “formed of sheet spring steel” in the claim and did not impermissibly add a limitation to the claim, as Dura-Post alleges. In its ordinary, natural meaning, the phrase “formed of sheet spring steel” does not properly describe multiple layers of steel mechanically layered together. The invention as claimed has a body “formed” of sheet spring steel, as opposed to being mechanically laminated or constructed from layers of sheet spring steel. This is confirmed by the balance of the specification: compare Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 at 236-237 [44] per Wilcox, Branson and Bennett JJ. As his Honour noted (in Delnorth [2008] FCA 1225 at [32]):

[T]he summary of the invention says: ‘The sheet spring steel has a thickness of 0.9 mm to 1.5 mm’… The description of the preferred embodiments includes (in dealing with figure 2(a)), ‘The sheet spring steel from which the body … is formed has a thickness of 1.2 mm … Other variations of the body will generally have … sheet thickness of 0.9 to 1.5mm’. In dealing with figure 2(b) it is said ‘The transverse width and sheet thickness are the same as the embodiment of Fig 2a’. Figures 8-10, showing the plurality of longitudinally extending ribs is inconsistent with their being any layers or laminations of the body itself. None of the drawings indicate any plurality of sheets or laminations. There is no reference to any such feature, expressly or impliedly, in any of the descriptions or drawings.

48 There is, therefore, no error shown in his Honour’s conclusion that no version of the Kennedy Patent, if manufactured, would contravene any claim of the Patents in suit; and there was no anticipation to require the lack of novelty conclusion for which Dura-Post argued.

INNOVATIVE STEP

49 In order for there to be a valid innovation patent, the invention disclosed in the patent must, amongst other things, involve an “innovative step”. This follows from s 18(1A) of the Patents Act. Before the primary judge, Dura-Post argued unsuccessfully that the inventions the subject of the Patents in suits involve no such innovative step. The critical issue is whether or not his Honour erred in construing the relevant provisions of the Act, especially s 7(4), with the result that he erred in rejecting Dura-Post’s argument on this point.

50 The Patents Act does not define the words “innovation”, “innovative” or “innovative step”. For the purposes of the Act, however, s 7(4) sets out when an invention is taken to involve such a step. Subsection 7(4) is in the following terms:

For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.

The opening words of s 7(4) indicate that the party challenging validity bears the onus of establishing the absence of an innovative step. It is to be borne in mind that the requirement for “innovative step” for innovation patents is designed to be a lesser threshold for patentability than that of “inventive step” for standard patents: compare s 7(2) with s 7(4); and see the Revised Explanatory Memorandum, referred to at [5].

51 Subsections 7(5) and (6) must also be borne in mind. They read as follows:

(5) For the purposes of subsection (4), the information is of the following kinds:

(a) prior art information made publicly available in a single document or through doing a single act;

(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information.

(6) For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.

[Notes:(1) For the meaning of document see section 25 of the Acts Interpretation Act 1901.

(2) See also the definitions of prior art base and prior art information in Schedule 1: see also paragraph 18(1)(b) and subsection 98(1).]

52 Schedule 1 defined the expression “prior art information” to mean:

(a) …

(b) …

(c) for the purposes of subsection 7(5) – information that is part of the prior art base in relation to deciding whether an invention does or does not involve an innovative step.

53 Schedule 1 relevantly defined the expression “prior art base” as follows:

(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:

(i) information in a document that is publicly available, whether in or out of the patent area; and

(ii) information made publicly available through doing an act, whether in or out of the patent area.

Schedule 1 also defined the expression “patent area”. For present purposes, this expression can be understood to signify Australia. The deeming effect of s 7(4) makes it unnecessary to explore the concept of “prior art base”.

54 In determining the issue of innovative step, the legislative provisions just mentioned oblige a Court applying them to consider and, where necessary, identify:

(a) the invention “so far as claimed in any claim”;

(b) the “person skilled in the relevant art”;

(d) to ask in accordance with s 7(4), whether the invention (in (a) above) only varied from the kinds of information in s 7(5) in ways that make no substantial contribution to the working of the invention (in (a) above).

The areas of contention on this appeal are in relation to (a) and (d) above.

55 The question, “who is the person skilled in the relevant art”, did not attract argument. It was not in contention on appeal, nor apparently before the primary judge. Both parties presented witnesses with relevant expertise to the Court, such as Mr Dowling and Mr Rootes, whom the Court was invited to regard as persons skilled in the relevant art.

56 Further, on the appeal, there was little argument about the content of the relevant common general knowledge, being that “background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and must be treated as being used by an individual as a general body of knowledge”: see Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 292 per Aickin J. As Dura-Post observed, the notion of common general knowledge is well-known in this branch of the law.

What was the invention "so far as claimed in any claim" for the purposes of s 18(1A) of the Patents Act?

57 By virtue of s 18(1A)(b)(ii) of the Patents Act, an invention can only be a patentable invention “for the purposes of an innovation patent if the invention, so far as claimed in any claim … when compared with the prior art base as it existed before the priority date of that claim … involves an innovative step” (our emphasis). The first step in applying s 7(4) is to identify the invention “so far as claimed in any claim” for the purposes of s 18(1A), since it is that invention that, pursuant to s 7(4), “is to be taken to involve an innovative step when compared with the prior art base”.

58 In written submissions, Dura-Post submitted that the claims in each of the Patents in suit contained a “slightly re-ordered arrangement of features for a roadside post made of sheet spring steel”. Referring to Polwood Pty Ltd v Foxworth Pty Ltd (2008) 75 IPR 1, Dura-Post argued that the Court was required first to identify the advance in the art made by the invention, as judged by reference to the specification in the Patents in suit read as a whole, in light of the common general knowledge. Adopting this approach, Dura-Post submitted that the evidence showed that a person skilled in the art would understand the “invention” as “the use of spring steel in the manufacture of roadside posts” and the other components the subject of the claims as features that were part of the common general knowledge available to a person skilled in the art for use on any roadside posts in various combinations. After identifying claim 1 of Patent 2 as the broadest claim, Dura-Post submitted in written submissions that “[t]he balance of the product claims variously add integers that were accepted to be features of prior art roadside posts, including flexible plastic or PVC posts, namely an arcuate cross section, a marker hole to indicate depth driven into the ground, tapered end for driving into the ground, a barb, longitudinally extending ribs, a transverse width of 75 – 120 mm”. Dura-Post described these features as “desiderata features”, signifying components of roadside posts that may be desirable in various applications.

59 In support of this submission, Dura-Post referred to the evidence of Mr L B Dowling, a civil engineer, called by Delnorth. We accept that his evidence supported the proposition that these so-called desiderata features were known to persons skilled in the art as at the relevant priority dates and that to his mind the “key idea” underlining the Patents in suit was the capacity to be elastically bendable through 90 degrees, which was achieved through the use of sheet spring steel. Dura-Post also referred to evidence of Mr M G Rootes, also a civil engineer, which was consistent with this. As will be seen below, it does not follow that we accept the construction of s 7(4) that Dura-Post urges and its ultimate contention about the application of this provision.

60 Dura-Post argued that, in applying s 7(4), the second step was to review the prior art information in order to determine if there were differences between the invention and the prior art information. The third step was to assess whether the invention differed from the prior art information in a way that made no substantial contribution to the working of the invention. The working of the invention was to be understood by the same person skilled in the art in the light of common general knowledge. On the hearing of the appeal, counsel for Dura-Post submitted:

[T]he working of the invention is to be understood as not simply the way the object claimed operates in the field, which is the approach [the primary judge] took, but rather, the working of the invention as an invention, viewed in the light of the common general knowledge … So whilst one has regard to each of the desiderata features, the question is, are they capable of making a substantial contribution and there may be a scale of importance given to features that are added. Some features which have a direct bearing on the spring steel nature of the post and its capacity to be elastically bendable, might have a higher ranking more capable of lending a substantial contribution than something which is utterly irrelevant to it.

61 In Dura-Post’s submission, none of what Dura-Post called the desiderata features affected the way the spring steel post operates to be elastically bendable in the manner of the advance in the art. Thus, according to Dura-Post’s counsel, the difference between Pellowski and the invention as claimed in claim 1 of Patent 1 was the addition of the marker hole. The critical question was not, so Dura-Post said, whether the marker hole affected the use, or functionality, of a roadside post, but whether the integer contributed substantially to the development, or use, of an elastically bendable spring steel post. Since the evidence was that the marker hole did not have any effect on this development, then, according to Dura-Post, it had no effect on the advance in the art that was the invention as claimed. Dura-Post asserted that none of the desiderata features was unique to sheet spring steel roadside posts and none contributed to the capacity of a sheet spring steel post to operate in a manner that is elastically bendable.

62 Dura-Post attempted to justify this approach by reference to part of the reasoning in Lockwood 235 ALR at 219-220, which, unlike the present case, concerned the question of obviousness under s 7(2) of the Patents Act. It will be recalled that s 7(2) specifically requires the question of obviousness to be determined by reference to “a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the … claim”. The notion of obviousness itself requires the identification of the inventive idea said to be embodied in the patent: compare Lockwood 235 ALR 216-221.

63 Dura-Post also referred to the 1995 ACIP report, noting the report’s recommendation that:

The inventive level for innovation patents should be lower than that for standard patents.

The test for this inventive level should be a modified form of the expanded novelty test set out in Griffin v Isaacs (1938) 12 ALJ 169. The test would be worded along the lines of:

· An innovation patent should not be granted if the innovation is not novel;

· If an innovation varies from a previously publicly available article, product or process only in ways which make no substantial contribution to the effect of the product or working of the article or process, then it cannot be considered to be novel.

64 Ultimately, as the Revised Explanatory Memorandum to the Patents Amendment (Innovation Patents) Bill 2000 stated, the Parliament adopted a system that went further than the recommendations of the 1995 ACIP report, by granting an innovation patent without substantive examination: see Revised Explanatory Memorandum, p 3. Dura-Post relied on [6] and [7] on page 10 of the Revised Explanatory Memorandum, which stated:

Item 5 – At the end of section 7

6. This item adds new provisions which set out the test for innovative step. This is not a mere novelty test. It requires a level of inventiveness that is greater than the invention simply being “new”. The test requires that the invention is not only new but that it also differs from what was already known in a way that is not merely superficial or peripheral to the invention. The variation must be of practical significance to the way the invention works. However, in contrast to a standard patent there is no requirement that an invention claimed in an innovation patent must be non-obvious. Therefore the test for innovative step will require an inventive contribution lower than that required to meet the inventive step threshold set for standard patents.

7. Innovative step is determined taking into account the prior art base. The prior art base is the same as that used to determine inventive step in relation to standard patents. The person assessing the innovative step is a person skilled in the art who assesses the invention in the light of common general knowledge in the field of the invention as it existed before the priority date.

65 Dura-Post argued that the last sentence in [7] above was:

… a powerful indication as to what was intended by [the] legislation by the reference to assess the invention in the light of the common general knowledge and the working of the invention. It is an evaluation or an assessment that’s required, not a functional test, but rather a reasoned test in the light of the common general knowledge and so forth.

66 Reference was also made to the publicly available document entitled Government Response to the Recommendations of the Advisory Council on Industrial Property (ACIP) Report “Review of the Petty Patent System”, which was cited by the primary judge in his reasons for judgment. Relevantly, the Response stated that the test for innovation patents should be a modified form of the test in Griffin v Isaacs (1938) 1B IPR 619; 12 ALJ 169. It added:

The Government therefore sees merit in enshrining the wording of the inventive height test in the legislation. This will make clear from the outset that an innovation patent provides protection for ‘lower level’ inventions. Including appropriate and specific wording to define the test will clarify the intention and minimise potential problems arising with subsequent legal interpretations. To further allay any possible confusion, the Government will ensure that the Explanatory Memorandum to the innovation patent legislation will specify that the proposed change to the level of inventive height applies only to the innovation patent and does not impact on the law relating to inventive step with respect to standard patents.

67 As Dura-Post noted and, for present purposes, we accept, not all the Response ultimately found its way into the Patents Amendment (Innovation Patents) Bill 2000 and thus some care needs to be taken with respect to it. Dura-Post argued (and we accept) that [6]-[7] of the Revised Explanatory Memorandum were more reliable aids to construing s 7(4) than the Response. Dura-Post also argued that the primary judge relied too heavily on the Response and its reference to Griffin v Isaacs (1938) 1B IPR 619; 12 ALJ 169 and that this led him into error.

68 The primary judge rejected Dura-Post’s argument as to the construction and application of s 7(4), saying (in Delnorth [2008] FCA 1225 at [52]-[54]) that:

There is no need to search for some particular advance in the art to be described as an innovative step which governs the consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date of the relevant claim and ask whether the invention as claimed only varies from the kinds of information set out in s 7(5) in ways that make no substantial contribution to the working of the invention. It may be that there is a feature of each claim which differs from the prior art base and that could be described as the main difference in each case but that need not be so. Section 7(4), in effect, deems a difference between the invention as claimed and the prior art base as an innovative step unless the conclusion which is set out can be reached. If there is no difference between the claimed invention and the prior art base then, of course, the claimed invention is not novel.

The phrase ‘no substantial contribution to the working of the invention’ involves quite a different kind of judgment from that involved in determining whether there is an inventive step. Obviousness does not come into the issue. The idea behind it seems to be that a claim which avoids a finding of no novelty because of an integer which makes no substantial contribution to the working of the claimed invention should not receive protection but that, where the point of differentiation does contribute to the working of the invention, then it is entitled to protection, whether or not (even if), it is obvious. Indeed, the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness.

There is a question as to the proper construction of ‘substantial’ in this context. In some situations it may mean ‘great’ or ‘weighty’; elsewhere it may mean ‘more than insubstantial’ or ‘of substance’ (for example, there is debate in the fields of both trade practices and copyright).

69 At this point in his reasons, the primary judge referred to the passages from the 1995 ACIP report set out at [63] above, as well as to the Government’s Response: see [66] above. His Honour noted, however, that, in this Response, the “government … agreed ‘in principle’ that the test be a modified form of the novelty test” set out in Griffin v Isaacs (1938) 1B IPR 619; 12 ALJ 16, “although there were ultimately significant differences between the wording of s 7(4) and that proposed by ACIP”: see Delnorth [2008] FCA 1225 at [56].

70 The primary judge continued with a discussion of Griffin v Isaacs (1938) 1B IPR 619; 12 ALJ 16, observing, amongst other things, that “[t]he reference [presumably in the 1995 ACIP report and the Government Response] to what was said in Griffin … is somewhat confusing”: see Delnorth [2008] FCA 1225 at [57]. After referring to other judicial discussion of Griffin v Isaacs, his Honour said, in Delnorth at [59]-[61]:

These discussions indicate that a wider view of lack of novelty was taken in the High Court prior to the Patents Act 1952 (Cth) than could properly be taken thereafter, at least in relation to appeals from the Commissioner. Be that as it may, the feature of what Dixon J said was the disjunctive nature of the concepts – one was ‘make no substantial contribution to the working of the thing’; the other was ‘involve no ingenuity or inventive step’. The first alternative has been taken by Parliament virtually verbatim from the judgment. The focus is upon working of the invention (as claimed) not to the degree or kind of variation from the kinds of information set out in s 7(5). In other words, the variation from the kinds of information might be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step.

…

In my view the provenance of the phrase ‘make no substantial contribution to the working of the invention’ indicates that ‘substantial’ in this context means ‘real’ or ‘of substance’ as contrasted with distinctions without a real difference.

71 Dura-Post submitted that this approach was incorrect at a number of levels. According to Dura-Post:

(1) His Honour failed to assess the invention as viewed by a person skilled in the art, in the light of the common general knowledge before the relevant date.

(2) His Honour “gave no meaningful foundation for the evaluation of what constituted the ‘working of the invention’ and reduced the test to one of a mere consideration of the manner in which the subject of the claim performed (as a roadside post)”.

(3) His Honour failed to take account of [6] and [7] of the Revised Explanatory Memorandum, set out at [64] above.

(4) His Honour therefore failed to appreciate that, from the perspective of persons skilled in the art, in the light of common general knowledge, the distinguishing feature of the invention over prior art flexible posts as disclosed in the specification and subsequently claimed in the Patents was the use of a body formed of sheet spring steel for a flexible roadside post and that the claims demonstrate that features beyond the choice of that material are, to use the words of the Revised Explanatory Memorandum, “peripheral to the invention”.

(5) His Honour therefore erred in finding that the differences between Pellowski and the claims of the Patents in suit (namely, the use of a marker hole, the use of a barb, the use of a taper, longitudinally extended in ribs and the particular dimensions of claim 3 in each of Patents 1, 2 and 3) made a substantial contribution to the working of the roadside posts. Dura-Post commented that his Honour’s conclusion that surface coating did not make a significant enough contribution to the working of the invention was “wholly subjective” and “unexplained”. Dura-Post’s contention was that these features added nothing to the concept underlying the invention disclosed in the invention since it added nothing to the way in which flexible sheet steel is elastically bendable through 90 degrees. These features were, moreover, known and used in prior art flexible roadside posts (although not in Pellowski). None of the claims in the Patents in suit disclosed any innovative step.

(6) His Honour erred in finding that, properly construed, claim 1 of Patent 1 was confined to a single layer of spring steel, with the result that there was no point of distinction between claims 1 to 3 of Patent 2 and the Kennedy Patent. Further, the observations in (5) applied to Kennedy too, with the result that all of the challenged claims of Patents 1 and 2 lacked an innovative step. Dura-Post argued that, since there was no difference in material between the Kennedy Patent and Patent 3, the choice of material made no substantial contribution to the working of the invention. That is, according to Dura-Post, his Honour ought to have found that the claims of Patent 3 contained no substantial contribution to the working of the invention over the disclosure in Kennedy.

72 In responding to Dura-Post, Delnorth submitted that the primary judge’s construction of s 7(4) of the Patents Act was correct. Delnorth argued, and we accept, that, bearing in mind s 18(1A)(b)(ii), the invention, for present purposes, is defined by the claims, and falls to be assessed on a claim by claim basis. If s 7(4) is to operate consistently with s 18(1A), then the word “invention” in s 7(4) must have the same meaning as in s 18(1A). Indeed, the text of s 7(4), in so far as it refers to “the priority date of the relevant claim”, confirms that this is the intended construction of s 7(4). We consider that his Honour correctly rejected Dura-Post’s contention that the word “invention”, as used in s 7(4), was intended to refer to the “advance in the art” as identified by reference to common general knowledge.

73 Section 7(4) requires a comparison to be made between the invention as claimed in each claim with the information s 7(5) describes. That is, s 7(5) identifies the kinds of information to which the invention as claimed in each claim is to be compared. This information is particular kinds of prior disclosures. Section 7(6) requires that each such prior disclosure be considered separately. That is, the invention as claimed in each claim must be compared separately with each relevant prior disclosure.

74 In making this comparison, s 7(4) requires that each comparison be made from the perspective of a person skilled in the art, whose task is to identify and assess the variations between the invention as claimed in each claim and the prior disclosure and determine whether or not these variations make a substantial contribution to the working of the invention as claimed in each claim. Dura-Post accepted, as do we, that the primary judge was correct in holding that “substantial” contribution in the context of s 7(4) meant “real” or “of substance”. The place of common general knowledge in this provision is straightforward enough. Section 7(4) contemplates that, in performing this task, a person skilled in the art has certain background knowledge that that person uses in identifying and assessing these variations.

75 Subsections 7(1) and (4) are alike in so far as both require a comparison to be made between the invention as claimed and particular prior disclosures. Subsection 7(2) operates differently: the question in s 7(2) is whether the invention (as claimed) would have been obvious to a person skilled in the relevant art in the light of the common general knowledge before the priority date of the relevant claim. That is, the question is directly referable to this body of knowledge. Furthermore, the nature of this body of knowledge is subject to the requirements of s 7(3), which do not find their counter-parts with regard to the prior disclosures that fall for consideration under ss 7(1) or 7(4). It follows from this that, although both ss 7(2) and 7(4) refer to “a person skilled in the relevant art in the light of the common general knowledge”, the role of the common general knowledge is different in each provision. Further, the thresholds in ss 7(1), (2) and (4) differ. As already noted, the requirement of innovative step was designed to present a lesser threshold than that of inventive step, which is the subject of s 7(2).

76 Delnorth argued that the effect of Dura-Post’s construction was to allow a prior disclosure to be supplemented with features forming part of the common general knowledge, or for features of the claimed invention to be disregarded on the basis that they form part of the common general knowledge. We agree, although, as Delnorth noted, Dura-Post did not expressly put its argument in these terms. The effect of this construction is greatly to diminish the importance of each separate claim and to focus attention instead on the ‘advance in the art’ represented by the alleged invention. This does not conform to the requirement to proceed on a claim-by-claim basis.

77 We reject Dura-Post’s submission as to the meaning of the phrase “working of the invention”. Dura-Post in substance argued that the phrase meant “the way that the advance in the art is implemented”. Dura-Post’s re-introduction at this point of the ‘advance in the art’ criterion re-introduces again a criterion not evident in the statutory text. Furthermore, the criterion is an imprecise one, the introduction (or re-introduction) of which would appear unwarranted.

78 The 1995 ACIP report (at [63] above) recommended that the test for innovation patents should be a modified form of the novelty test in Griffin v Isaacs (1938) 1B IPR 619; 12 ALJ 169. This was apparently accepted in the Government Response, although with some changes in language. It suffices to refer to the primary judge’s helpful discussion of Griffin v Isaacs: see Delnorth [2008] FCA 1225 at [57]-[59] and to draw attention to Dixon J’s observation (at 624) that:

Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing … and the merit if any of the two things, considered as inventions, is the same, it is, I think, impossible to treat the differences as giving novelty.

Plainly enough, the legislature drew on the language of Dixon J in framing the test of “no substantial contribution to the working of the invention” in s 7(4). The Revised Explanatory Memorandum does not lead to a different conclusion. In referring to the working of the “thing”, Dixon J had in mind the waistband on a pair of trousers that was the subject of the applicant’s patent application. The drafter of s 7(4) has picked up Dixon J’s language and substituted for the word “thing”, the word “invention” – the latter covering not only a claimed device but also a claimed process.

79 The adoption of a modified novelty test deriving from Griffin v Isaacs (1938) 1B IPR 619; 12 ALJ 169 emphasises that s 7(4) requires a narrow comparison between the invention as claimed and the relevant prior disclosure, having regard to the fact that the threshold for an innovation patent is intended to be lower than for a standard patent. This latter matter finds confirmation in the Revised Explanatory Memorandum: see [64] above. In substance, s 7(4) deems an invention as claimed to involve an innovative step unless the invention does not differ from the relevant prior disclosure in a way that makes a substantial contribution to the working of the invention as claimed – in the sense of the device or process the subject of each claim. This is a factual inquiry. The assessment is, of course, from the perspective of a person skilled in the art, having regard to the relevant common general knowledge.

Did the invention only vary from the kinds of information in s 7(5) in ways that make no substantial contribution to the working of the invention?

80 We discuss the Patents in suit at [14]-[18] above. We have set out the claims in Annexure A to these reasons. In substance, if any variation contributes substantially to the way in which the roadside post functions as such, then that variation necessarily made a substantial contribution to the “working of the invention”.

81 The s 7(5) information that Dura-Post pressed on the appeal was that in the Pellowski Patent and Kennedy Patent, discussed earlier.

82 Having dealt with issues of interpretations (which are not the subject of appeal), the primary judge was required to compare, from the perspective of a person skilled in the art, in the light of common general knowledge, the invention as claimed in each claim of the Patents in suit with the disclosure in the Pellowski Patent. As noted above, the primary judge found, and we accept, that Pellowski disclosed an elastically bendable sheet spring steel post that was arcuate in shape and bendable to either side of its longitudinal axis.

83 As we have seen, Dura-Post argued that the primary difference between the disclosure in Pellowski and the invention claimed in the Patents in suit resided in what Dura-Post called the desiderata features. Dura-Post submitted that, contrary to his Honour’s finding, the addition of these features to the disclosure of an elastically bendable post made of sheet spring steel did not amount to any innovative step. Dura-Post argued that these features made no contribution to the advance in the art – the bendability of the spring steel post — and were unable to make any substantial contribution to the working of the invention. We have rejected Dura-Post’s construction of s 7(4). Dura-Post’s inquiry was too narrow and imprecise and, most importantly, not the one mandated by s 7(4). We consider that the comparison requires a functional inquiry between the invention as claimed – the claimed device or process – and the relevant prior disclosure, here Pellowski (and Kennedy, which we discuss below).

84 As it happened, the only evidence in relation to this comparative exercise was that of Mr Dowling, who had been presented to the Court by Delnorth. The primary judge accepted Mr Dowling’s evidence that the use of a marker hole, a barb, a tapered end, longitudinally extending ribs and particular dimensions as claimed in the remaining claims of the Patents in suit did make a substantial contribution to the working of the invention. Mr Dowling explained the following matters.

(a) A marker hole assists in ensuring installation of the roadside post to the correct depth with adequate security into the ground, and can be used to aid extraction of the post using an extraction tool. The performance of the post is maximised by installation to its correct depth. By contrast, Pellowski involves a labour-intensive anchoring process involving the use of hardenable material.

(b) A barb serves to anchor the roadside post into the ground, in a manner different from the process disclosed in Pellowski, which involves the use of a hardenable material. The barb provides an anchor against removal from the ground upon impact or by unauthorised persons, including vandals, is less labour-intensive, and is more likely to be effective than Pellowski.

(c) A tapered end enables the roadside post to be driven readily into the ground and improves the likelihood of installation to the correct depth. This provides a much simpler method of installation, which is more likely to be implemented correctly and consistently in practice, than that disclosed in Pellowski.

(d) Longitudinally extending ribs have the functional purpose of improving resistance to buckling when driving the roadside post into the ground and of reducing wind shimmying in the roadside post.

(e) The difference between the dimensions of the marking device of Pellowski and the roadside post where specifically claimed in claim 3 of each of the Patents is significant, because the latter allow for the provision of a post of sufficient height to support a delineator (or sign) while retaining stiffness.

85 As we have said, the presence or absence of a substantial contribution involves a finding of fact. On the basis of Mr Dowling’s evidence, no relevant error is discernible in the primary judge’s finding that each of these features made a substantial contribution to the working of the invention: compare Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424, at 435-438.

86 As already noted, the primary judge held that the invention as claimed in claims 1 and 2 of each of Patents 2 and 3 lacked an innovative step over Pellowski, a finding that Delnorth did not challenge. His Honour evidently considered that, viewed from the perspective of a person skilled in the art, the difference between a “roadside post” (as claimed) and a “highway marking device” (as disclosed in Pellowski) did not make a substantial contribution to the working of the invention.

87 In his reasons, in Delnorth [2008] FCA 1225 at [30], the primary judge held that the Kennedy Patent disclosed “a flexible support with a plurality of thin sheets of material laminated together and, further, that the multiple laminations played a role in utility going beyond mere dimensions”. On the appeal, Dura-Post accepted that Kennedy disclosed a flexible support consisting of the mechanical laminations of a number of flexible members. For the reasons already stated, we accept that the primary judge was correct to construe the claims of Patents 1 and 2 as being limited to a homogenous body of sheet spring steel as opposed to multiple layers of spring steel mechanically laminated together. Further, there was evidence (given by Mr Dowling) that the use of a single sheet:

· affected the bending characteristics of the roadside post;

· avoided corrosion between multiple layers that could impact on bending characteristics;

· avoided the need for clamping components that could impact on bending characteristics;

· allowed a surface coating to be applied without risking damage by friction between layers; and

· allowed for pre-determined flexibility characteristics to be adopted without them being affected on installation or maintenance.

Most of these aspects of Mr Dowling’s evidence was confirmed by Mr Rootes. In this circumstance, there is no relevant error shown in his Honour’s conclusion with regard to the Kennedy Patent.

88 In any event, like Pellowski, Kennedy did not disclose the use of a marker hole, a barb, a tapered end, longitudinally extending ribs and particular dimensions as claimed in the remaining claims of the Patents in suit. Mr Dowling gave evidence in relation to the Kennedy Patent that was to similar effect as that set out above in relation to the Pellowski Patent. It would follow that, as compared with Kennedy, the addition of the features in the invention as claimed in the Patents in suit made a substantial contribution to the working of the invention as claimed.

89 For the reasons stated, we would dismiss the appeal.

90 Dura-Post made a separate challenge to the costs order made by the primary judge. Dura-Post argued that his Honour ought to have made a costs order to the effect that the costs of litigating Patents 2 and 3 ought to be borne by Delnorth in any event, on the basis that the inclusion of Patents 1 and 2 needlessly increased the costs of the litigation. Delnorth denied that the introduction of Patents 2 and 3 had any such effect or that their introduction into the litigation served no purpose. On the hearing of the appeal, we indicated that, at this stage, the parties should have an opportunity to make further submissions, in writing, should they so wish. Accordingly, we would order that:

1. The appeal be dismissed; and

2. The parties file and serve submissions on costs, both before the primary judge and on appeal, within 10 days of the delivery of these reasons for judgment.

I certify that the preceding ninety (90) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Kenny & Stone.

Associate:

Dated: 30 June 2009

Annexure A

Patent 1 (2005100978)

Claim 1: (1) A roadside post comprising an elongate body (2) formed of sheet spring steel and (3) having a longitudinal axis, (4) a transverse axis transverse to said longitudinal axis, (5) a front face and (6) a rear face, (7) said front and rear faces transversely extending generally parallel to said transverse axis, (8) wherein: said body is elastically bendable through 90 degrees from an unbent state about said transverse axis; (9) said body has a substantially arcuate transverse cross-section; and (10) said body is provided with a marker hole at a position indicative of the location of the surface of the ground when said post is driven into the ground to a design depth

Claim 2: The roadside post of claim 1 wherein: (11) a first end of said body is tapered to enable said body to be driven into the ground; and (12) said body further comprises a barb located between said marker hole and said first end of said body and projecting toward an opposing second end of said body.

Claim 3: The roadside post of claim 2 wherein: (13) said body has a transverse width of 75mm to 120mm; (14) said sheet spring steel has a thickness of 0.9mm to 1.5mm; (15) said arcuate transverse cross-section has a radius of 100mm to 250mm; and (16) said body is elastically bendable through 90 degrees from said unbent state about said transverse axis to either side of said longitudinal axis.

Claim 4: The roadside post of claim 2 (17) wherein said body is formed with a plurality of longitudinally extending ribs, (18) each said rib having an apex separated from the apex of an adjacent said rib by a trough, (19) said apexes of each adjacent pair of said ribs being laterally separated by 5 to 25mm, (20) each said apex protruding 0.2mm to 0.8mm from an adjacent said trough.

Claim 5: (21) A roadside post installation comprising the roadside post of any one of claims 1 to 4 in which (22) said post is driven into the ground, (23) wherein a recess is formed in the ground immediately adjacent said body to allow uninhibited bending of said body, (24) said recess extending across either of said front face and said rear face.

Patent 2 (2006100297)

Claim 2: The roadside post of claim 1 wherein: (16) said body is elastically bendable through 90 degrees from said unbent state about said transverse axis to either side of said longitudinal axis.

Claim 3: The roadside post of claim 2 wherein: (9) said body has a substantially arcuate transverse cross-section (15) having a radius of 100mm to 250mm; (13) said body has a transverse width of 75mm to 120mm; and (14) said sheet spring steel has a thickness of 0.9mm to 1.5mm.

Claim 4: The roadside post of claim 2 wherein (11) a first end of said body is tapered to enable said body to be driven into the ground; and (12) said body further comprises a barb located toward said first end of said body and projecting toward an opposing second end of said body.

Claim 5: The roadside post of claim 2 wherein (17) said body is formed with a plurality of longitudinally extending ribs, (18) each said rib having an apex separated from the apex of an adjacent said rib by a trough, (19) said apexes of each adjacent pair of said ribs being laterally separated by 5mm to 25mm.

Patent 3 (2006100696)

Claim 1: (1) A roadside post comprising: an elongate body (2A) formed of a single sheet of spring steel, (3) said body having a longitudinal axis, (4) a transverse axis transverse to said longitudinal axis, (5) a body front face and (6) a body rear face, (7) said body front and rear faces transversely extending generally parallel to said transverse axis, (8) said body being elastically bendable through 90 degrees from an unbent state about said transverse axis; and (25) a surface coating, applied to said body front and rear faces, providing an exposed front face and an exposed rear face of said roadside post, respectively.

Claim 2: The roadside post of claim 1 wherein (16) said body is elastically bendable through 90 degrees from said unbent state about said transverse axis to either side of said longitudinal axis.

Claim 3: The roadside post of claim 2 wherein (9) said body has a substantially arcuate transverse cross-section (15) having a radius of 100mm to 250mm; (13) said body has a transverse width of 75mm to 120mm; and (14) said sheet of spring steel has a thickness of 0.9mm to 1.5mm.

Claim 4: The roadside post of either one of claims 2 and 3 wherein: (11) a first end of said body is tapered to enable said body to be driven into the ground; and (12) said body further comprises a barb located toward said first end of said body and projecting toward an opposing second end of said body.

Claim 5: The roadside post of any one of claims 2 and 4 wherein (17) said body is formed with a plurality of longitudinally extending ribs.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1392 of 2008

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

DURA-POST (AUST.) PTY LTD

Appellant

AND:	DELNORTH PTY. LTD. Respondent

JUDGES:	KENNY, STONE & PERRAM JJ
DATE:	30 JUNE 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

PERRAM J:

91 I have had the advantage of reading in draft the reasons of Kenny and Stone JJ. I agree that the appeal should be dismissed for the reasons given by them. I would however add a few remarks on the question of what constitutes an innovative step for the purposes of s 7(4) of the Patents Act 1990 (Cth). Section 7(4) provides:

92 This cumbersome provision requires a comparison of the invention with the prior art base to identify differences and an analysis of whether those differences contribute substantially to “the working of the invention”. If they do, the invention is then taken to involve an innovative step.

93 The expression “the working of the invention” is, I think, ambiguous. The ambiguity springs from the circumstance that the word “invention” is capable of referring both to a device including an invention within it and also to the innovative subject matter itself. Thus, in ordinary parlance, both the internal combustion engine and the car containing it are inventions. That ambiguity gives raise to difficulties in s 7(4) because it is not immediately clear whether the expression “the working of the invention” refers to the way in which the device under consideration works as a whole (cf. the car) or, instead, to the more limited question of how the innovative subject matter works (cf. the engine).

94 The appellant’s submission was that the working of the invention was not simply the way the invention worked in the field but rather the way the invention worked as an invention. Thus, in this case, one could see that there were “desiderata” features such as the marker hole, the tapered end and the barb which were non-essential to the invention. These desiderata features were to be compared with what was said to be the “key idea” of the post, namely, the capacity to be elastically bendable through 90 degrees in consequence of a construction from sheet spring steel.

95 In my opinion, this argument should be rejected for two reasons. First, it rests upon an unwholesome assumption that the invention with which s 7(4) is concerned is something other than the invention as claimed. But it is, I think, clear that the invention referred to in s 7(4) is the same invention referred to in s 18(1A). That provision says that “an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim” has various qualities of novelty and so forth. The critical point is that the invention is to be seen only through the lens of its constitutive claims.

96 Secondly, any reading which permitted the invention to differ from the claims made would require some criteria by which the essential features of the invention were to be distinguished from the desiderata features. In this case, the appellant eschewed the analytical framework which might support such a construction and instead merely identified what it said were the desiderata features.

97 There is nothing in the text of s 18(1A) or s 7(4) which provides the means by which the essential features of an invention might be distinguished from its non-essential features. The construction advocated by the appellant carries with it, therefore, the risk of introducing a concept having neither stable nor predictable content and lacking a foundation in the words of s 7(4). It should not be so construed.

98 I agree with the orders proposed by Kenny and Stone JJ.

I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.

Associate:

Dated: 30 June 2009

Counsel for the Appellant:	Mr S C G Burley SC with Ms P Arcus

Solicitor for the Appellant:	Norman Waterhouse

Counsel for the Respondent:	Mr R Cobden SC with Mr C Dimitriadis

Solicitor for the Respondent:	Spruson & Ferguson Lawyers

Date of Hearing:	9,10 February 2009

Date of Judgment:	30 June 2009

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