FEDERAL COURT OF AUSTRALIA

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

CORRIGENDUM

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 54 977

NSD 1392 of 2008

KENNY, STONE & PERRAM JJ

30 JUNE 2009 (CORRIGENDUM 10 JULY 2009)

SYDNEY

CORRIGENDUM

1                     On page 33 paragraph 93 should read: “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 rise 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).”

Associate:

Dated:         10 July 2009