FEDERAL COURT OF AUSTRALIA

Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31

THE COURT ORDERS THAT:

1.    The appeal be allowed.

2.    Paragraphs 1, 3 and 8 of the orders made by the primary judge on 4 April 2014 in proceeding VID 1051 of 2010 be set aside and replaced with the following orders:

(1)    During the term of Australian Patent No. 760547 (the Patent), the respondent, by itself, its directors, officers, servants, agents or howsoever otherwise, be restrained from infringing claims 1 to 17, 19 to 27, 29 and 30 of the Patent including without limitation by, without the licence, authority or consent of the applicants, within the patent area:

(a)    importing, making, using, selling, supplying or otherwise disposing of, or promoting or advertising or offering to make use, sell, supply or otherwise dispose of, or keeping for the purposes of doing any of these things roller blind spring assist mechanisms with model numbers SA38R, SA38L, SA45R, SA45L, SA5518R, SA5518L, SA5520R and SA5520L (JAI spring assists) for use in a mechanism for controlling extension and retraction of blinds as claimed in any of claims 1 to 17, 19 to 27, 29 and 30 of the Patent;

(b)    doing any act referred to in subparagraph (a) above together with the giving of, or the publication of, instructions for the use of JAI spring assists for use in a mechanism for controlling extension and retraction of blinds as claimed in any of claims 1 to 17, 19 to 27, 29 and 30 of the Patent;

(c)    authorising any other person to do any act referred to in subparagraphs (a) or (b) above;

(d)    procuring or inducing or joining in a common design with any other person to do any act referred to in sub-paragraphs (a) or (b) above.

(2)    The Court certify, pursuant, to s 19 of the Patents Act 1990, that the validity of claims 1 to 30 of the Patent was questioned unsuccessfully in proceeding VID 1051 of 2010.

3.    The respondent pay the appellants’ costs of or incidental to this appeal (including, without limitation, the application for leave to appeal).

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

REASONS FOR JUDGMENT

BENNETT J

1    The main contest in this appeal, as before the primary Judge, is the validity of the first appellant’s patent, Australian Patent No. 760547 entitled “A blind control mechanism” (Patent). The second appellant is the exclusive licensee of the Patent. The appellants are together referred to as Damorgold. The Patent claims are to what can broadly be described as a spring assisted blind mechanism. The issue in the appeal is the novelty of the claimed invention, specifically, whether the use of a specific product relevantly made the claimed invention not novel by reason of prior art information made publicly available through doing a single act (s 7(1)(a) of the Patents Act 1990 (Cth) (Act)).

2    That, in turn, gives rise to the subject of two grounds of appeal. Damorgold contends that the primary Judge erred in his consideration as to:

    Whether a product, the RolaShades product, was proved to have been imported into Australia before the priority date of the Patent and so constituted relevant prior art information;

    If so, whether the display of the RolaShades product made novelty-destroying information publicly available in Australia.

3    The respondent (JAI) has filed a submitting appearance in the appeal except as to costs. The Commissioner of Patents was informed of the appeal and of this submitting appearance and notified Damorgold in writing that she did not propose to appear. It follows that the Court has not had the benefit of a contradictor, or of any written submissions answering Damorgold’s contentions.

4    The primary Judge set out the nature of the invention at [26]-[32]:

26. According to the Specification, the Patent is concerned with blinds and similar arrangements that are selectively operable between open and closed conditions, especially roller blinds.

27. The Specification broadly summarises roller blinds:

Roller blinds generally include a length of flexible material wound onto a cylinder with the roller blind operating between its open and closed conditions by rotation of the cylinder causing extension and retraction of the flexible material. Roller blinds generally include a mechanism for facilitating such operation.

28. According to the Specification, one type of such mechanisms is a “spring roller”. This type of mechanism uses a biasing spring to counterbalance the weight of the extended flexible material and a latch to stop unauthorised retraction of the material. The material can be retracted by rotating the cylinder, in an extending direction, to a position that disengages the latch, and rotating the cylinder, in a retracting direction, at a speed that will not permit the latch to reengage. This speed may be dictated by the release of the energy stored in the spring alone or as altered by manual intervention.

29. A problem with this mechanism is that it can be difficult to operate, as the specification observes:

This type of mechanism can be difficult to operate as the latch is controlled by rotation of the blind cylinder and what is a suitable speed to avoid re-engagement of the latch is variable. Furthermore the spring may retract the material at such a speed that the blind over rotates past its retracted position, which will affect the tension of the spring.

30. Another type of roller mechanism identified in the specification is the “clutch roller”:

The clutch roller includes a drive member which is operable to cause rotation of a driven member. The driven member cannot rotate unless it is rotated by the drive member. This is achieved by the driven member engaging a helical spring which grips a fixed shaft when a rotating force is applied directly to the driven member. The drive member is operable to release the grip of the helical spring and thereby cause rotation of the driven member, which is connected to the blind cylinder.

31. The Specification identifies issues with the clutch roller system:

Operation of the blind therefore requires the user to overcome the frictional resistance of the helical spring. Furthermore, the clutch roller does not include any means to counter balance the weight of the extended material. However, operation of the blind using the clutch roller mechanism is relatively accurate.

32. Accordingly, the Specification identifies objects of the invention as:

It is an object of this invention to provide a mechanism that is relatively easy to operate. It is a further object of this invention to provide such a mechanism that accommodates, at least to some extent, the weight of the extended material.

5    Essentially, the invention is in the nature of a roller blind spring assist mechanism for controlling the extension and retraction of a blind, used in combination with slide controls and blind cylinders to make roller blind mechanisms. It can be seen from Fig 1 of the Patent as described in the specification that the mechanism is composed of a number of inter-related parts including, for example, one or more helical springs mounted on a fixed shaft where each spring has a laterally projecting finger at each end, which are spaced apart in the circumferential direction of the spring. Each spring clamps firmly on the shaft when the fingers are moved so as to increase the circumferential distance between them. A decrease in that distance increases the diameter of the spring and thereby reduces, or removes entirely, the gripping force between the spring and the shaft.

6    It is convenient to set out claim 1 of the Patent. Claim 1 is to a combination of 27 integers, as follows:

Mechanism for controlling extension and retraction of a blind or the like said mechanism having a longitudinal axis and including,

a fixed shaft located at one extreme end of said axis and being connectable to a support for said mechanism so as to be thereby fixed against relative movement,

the longitudinal axis of said fixed shaft being substantially coincident with the longitudinal axis of said mechanism,

a cylinder for carrying a blind and being connected to said fixed shaft for rotation relative thereto about an axis substantially coincident with the longitudinal axis of said mechanism,

biasing means connected to said cylinder and being responsive to rotation of said cylinder in a blind extending direction to store energy and being responsive to rotation of said cylinder in a blind retracting direction to release said stored energy and thereby apply a turning force to said cylinder tending to rotate the cylinder in blind retracting direction,

manually operable drive means including a drive member and a driven member, each of said members being carried by said fixed shaft,

said drive member being capable of rotation relative to said fixed shaft and thereby cause rotation of said cylinder in either said blind extending direction or said blind retracting direction,

said driven member being connected to said drive member for limited rotation relative thereto and being connected to said cylinder for rotation therewith,

clutch means acting between said fixed shaft and said cylinder and being operative in an engaged condition to at least resist rotation of said cylinder under the influence of said stored energy alone, and permitting such rotation when said clutch means is in a disengaged condition and wherein said clutch means extends around a fixed cylindrical surface so as to be capable of engaging that surface, and said cylindrical surface is substantially coaxial with said longitudinal axis,

whereby when in use, rotation of said drive member in either said direction causes said clutch means to adopt said disengaged condition, and continued rotation of the drive member in the same direction results in corresponding rotation of both the driven member and the cylinder, whereas cessation of said rotation of the drive member results in said clutch means adopting said engaged condition.

7    As the primary Judge noted at [102], relevantly for the purposes of novelty, the prior art against which the novelty of the claimed invention is to be assessed includes any information made publicly available by the doing of an act in Australia (s 7(1) of the Act; definition of ‘prior art base’ in Schedule 1 of the Act). As was explained in Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155; 65 IPR 86 at [135] (Jupiters), in considering the authorities it is necessary to take care in applying principles applied prior to, and without reference to, the Act.

8    Relevantly, s 7 of the Act provides:

(1)    For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

(a)    prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;

…

(emphasis added)

9    That is, in order to establish lack of novelty through doing a single act, it is necessary to establish that the prior art information was made publicly available through the doing of that act. This is reinforced in the definition of prior art information which is relevantly defined as:

“prior art information” means:

(a)    for the purposes of subsection 7(1)--information that is part of the prior art base in relation to deciding whether an invention is or is not novel; and

…

10    Prior art base is relevantly defined as:

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

11    This is a matter of evidence. The question is whether an act can be identified that did in fact make the information being the integers of the invention publicly available. This is not the same requirement for anticipation by prior publication, which is satisfied if the information is in a document that is publicly available. Further, the information that is made publicly available does not destroy novelty unless it extends to the invention so far as claimed in a claim. That is, it must extend to each of the essential integers of the claim; a general idea of the mechanism of an invention is not sufficient.

12    In order for a prior act to defeat the novelty of the claimed invention, relevantly:

    The act must have made the claimed invention publicly available. This means that it is accessible to at least one member of the public in circumstances where that person would be free in law and equity to make use of it as that person saw fit (Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20 at [124] (Insta Image)).

    The act must have resulted in disclosure of ‘each and every one’ of the essential integers of the claim (Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 527-528 and 531-532; Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848 at [93] (Zetco)) such that a person of ordinary skill in the art would at once perceive, understand and be able practically to apply the invention without making further experiments or gaining further information before the invention can be made useful (Hill v Evans (1862) 4 De GF & J 288 at 300-302; 45 ER 1195 at 1199-1200; reproduced in 1A IPR 1 at 6-7).

    The issue is whether what the skilled addressee observes on inspection is sufficient to enable him or her to comprehend the complete invention (Insta Image at [151]).

    If there is a missing integer on examination, there may be anticipation if the evidence establishes that the skilled worker would understand that integer to be present as a matter of course and without the application of inventive ingenuity. However, it may not be sufficient simply to show that the missing integer was part of common general knowledge (AstraZeneca AB v Apotex Pty Ltd (2014) 312 ALR 1 at [311] and [345]-[352]; Zetco at [93]).

    The onus lies on the party seeking to establish an enabling disclosure (Jupiters at [147]).

    It is not possible to combine the single act with a document (Zetco at [93]).

13    Damorgold does not contend that the primary Judge misstated these principles. His Honour recognised at [115] that evidence was determinative as to whether a member of the public could readily perceive and understand the invention from what was displayed.

14    JAI relied on the evidence of Mr Horner, who has been a director of JAI since July 2007 and deposed to events that he said took place in 1994 and 1996 in relation to the RolaShades product. That evidence was, as the primary Judge elaborated, criticised by Damorgold on a number of bases. His Honour recognised and acknowledged the force of that criticism and gave detailed reasons why, notwithstanding the difficulties with Mr Horner’s evidence, his Honour said that he was ‘convinced of its essential accuracy as to the decisive factual matters in contention’ (at [134]) (original emphasis) and that he accepted Mr Horner’s evidence on ‘the two important matters of the identifying of the spring assist mechanism and the date of its display and offering for sale in Australia’ (at [140]).

15    The primary Judge then turned to the supporting evidence of Ms Payne, who was formerly the office manager at JAI Pty Ltd (JAI’s predecessor) and who deposed to events that she says took place in 1994 and 1996 in relation to the RolaShades product. Again, his Honour acknowledged the criticisms of her evidence but accepted her evidence about the same two matters.

16    His Honour concluded (at [147]):

I find that JAI Pty Ltd did have possession of a few RolaShades products brought into Australia before the priority date as detailed in the evidence of Mr Horner, which included the sample described by Mr Horner and Ms Payne, which is exhibit R6. I am satisfied, whilst no 1996 Catalogue is in evidence, that RolaShades product was shown in the 1996 Catalogue as it was depicted in the 1998 Catalogue (which is in evidence).

17    Noting that there was no evidence that the RolaShades product was actually sold or provided by way of sample, the primary Judge turned to consider whether the showing of that product to some potential customers with a view to making it available to sell amounted to making the RolaShades product publicly available in Australia.

18    His Honour made the following findings and observations:

    The RolaShades product was mounted in blinds on display at the showroom and at customers’ places of business.

    Mr Horner showed customers how the product worked.

    Whilst it is not possible to ascertain all the internal componentry of the JAI spring assist without pulling it apart to understand its internal workings, this could be readily done without any damage to any part of the mechanisms.

    Re-assembly was easy.

    Undoubtedly Mr Horner did not want any potential customer to reverse engineer the mechanism or to take any sample.

    A customer would have a general idea of the mechanism employed in the RolaShades product from observing that product.

    ‘Further and significantly’, in view of Mr Horner’s commercial interest in selling blinds, if asked by a potential customer, he would have readily pulled apart the RolaShades product to demonstrate exactly how it worked.

    If sold, the product would not have been subject to restriction and it was capable of reverse engineering on sale.

    Potential customers would have been free to disassemble the product and would have been interested in looking at its mechanical workings.

    The acts of Mr Horner in displaying the RolaShades product to various customers, with a view to sale, was making the RolaShades product publicly available.

    Customers had an incentive to inspect and Mr Horner had an incentive to allow them to do so.

    An examination of the component features would have been easy and would have revealed all of the essential integers of the claimed invention and such examination would have readily enable a person skilled in the art to put the claimed invention into practice.

    The expert evidence established that the workings of the RolaShades product, including its use in a blind control mechanism, can be discerned from an inspection, once disassembled. The person skilled in the art so inspecting the RolaShades product would observe sufficient to enable that person to comprehend and put into practice the complete invention without further experimentation. An examination of the component features would have been easy and would have revealed all of the relevant integers of the claimed invention.

    The person skilled in the art would readily comprehend that the RolaShades product would be combined with the other well-known roller blind components, including a chain winder mechanism and a blind cylinder.

(emphasis added)

19    As set out above, the primary Judge dealt with the need to disclose all of the essential integers of the claimed invention and with the fact that an examination would have readily enabled a person skilled in the art to put the claimed invention into practice without further information or experimentation. His Honour said at [157] that ‘it does not matter that the RolaShades product was not actually disassembled’ as each potential customer had the opportunity of ‘a complete examination of the internal componentry of the RolaShades product’ and there was no restriction placed on a potential customer as to the use of the information obtained from such an examination.

20    It was not in dispute that the RolaShades product did possess all of the integers of the relevant claims. It was common ground that the internal workings of the RolaShades product could not be ascertained without disassembly or that mere display did not communicate to the public the essential integers of the claim. A photograph of the product, which was annexed to the reasons of the primary Judge, shows that the spring assist mechanism was contained inside a housing.

21    Damorgold’s grounds of appeal are, in essence:

    The RolaShades product was not part of the prior art base as it was not proved to have been imported and displayed before the priority date.

    The acts done with the RolaShades product did not make the invention publicly available, as they did not communicate the essential integers to the public.

22    In support of these grounds and in summary, Damorgold contends that his Honour erred in finding that:

(1)    the RolaShades product was imported into Australia before the priority date and so constituted relevant prior art information. Rather, as a matter of law, the evidence in support of that conclusion was not to the high standard required for such a conclusion; and

(2)    (on the assumption that it was prior art information and in fact occurred) the display of the RolaShades product made novelty-destroying information publicly available in Australia. Rather, since it was common ground that the internal workings of the product could not be ascertained without disassembly and no one did that or had the opportunity to do so, such display as a matter of law did not communicate to the public the essential integers of the claims.

Ground 1

23    Damorgold submits that the evidence of the availability of the RolaShades product in Australia prior to the priority date is simply far too unreliable to meet the strict standards of proof required to invalidate a patent and should have been rejected as prior art. It repeats the criticisms of the evidence as recited by the primary Judge and makes further criticisms based on the alleged implausibility, indeed impossibility, of the chronology taken from Mr Horner’s evidence.

24    The primary Judge dealt carefully and comprehensively with the evidence of availability of the product in Australia and evaluated it. The primary Judge noted (at [123]) that there was no contemporaneous documentation to support JAI’s claims, and that JAI had not produced:

    any sales invoice or receipt for the alleged purchase from RolaShades;

    any customs or other shipping documentation; or

    any copy of the alleged 1996 JAI catalogue in which it is claimed that the spring assist was included.

25    His Honour also noted (at [124]) that JAI had not brought forward any independent witness who could verify any of these events, including any witness:

    from RolaShades;

    from any of the 10 customers to whom Mr Horner said he displayed the assembled blind and the spring assist; or

    from any of the 200 or so customers to whom the 1996 catalogue was said to have been shown.

26    His Honour acknowledged (at [147]) that he was satisfied that the RolaShades product was depicted in the 1996 catalogue notwithstanding no 1996 catalogue was in evidence.

27    Mr Horner did produce a spring assist mechanism. However, it had no brand on it or any other markings which enabled its source to be identified or for it to be dated with any accuracy (at [126]). Notwithstanding this, the primary Judge found Mr Horner to be a reliable witness, and accepted his evidence as to the identity of the spring assist mechanism he produced, and that it was purchased and displayed prior to 1999 (at [135]). His Honour noted (at [148]) that the original product was actually available at the time of hearing.

28    The primary Judge also considered that Mr Horner’s evidence was completed by Ms Payne’s recollection of the spring assist mechanism and the relevant date of importation (at [141]) noting that, like Mr Horner, Ms Payne was ‘adamant’ about the identity of the spring assist mechanism and the date being well before the year 1999 (at [144]).

29    His Honour observed that there was no evidence that any RolaShades product was actually sold by JAI Pty Ltd, nor that any samples were actually provided to anyone to retain. Mr Horner had samples which he showed to particular customers with a view to an eventual sale of the RolaShades product. However, at the time the RolaShades product was demonstrated to customers, it was available for sale, albeit for a short period of time (at [149]).

30    His Honour considered the available evidence of Mr Horner and the evidence that did and did not support that evidence. He took into account the way in which Mr Horner and Ms Payne gave their evidence.

31    Damorgold has not demonstrated that his Honour’s conclusion was in error. Evidence of the prior availability of a product will not always be supported by documentary evidence. Frequently it will be given by people as to matters in the past of which they do not have perfect recollection. His Honour accepted that the evidence was not perfect but it has not been established that his Honour was in error in weighing the evidence and coming to the conclusion that he did.

Ground 2

32    Damorgold submits that the primary Judge erred in his evaluation of what constitutes the prior art information that must be publicly available by prior use to render the claim not novel.

33    Prior use does not itself invalidate a patent (eg Jupiters). The prior use must make publicly available all of the essential integers. The conduct itself must make sufficient disclosure.

34    This requires consideration of two questions:

(1)    What information was made publicly available by the relevant act?

(2)    Did that information disclose each and every essential integer of each claim said to be invalid?

35    The evidence is that Mr Horner showed some customers the RolaShades product assembled into a blind and the RolaShades product itself. Relevantly, the evidence was that:

    The internal workings of the RolaShade product could not be ascertained on inspection without disassembling the product.

    JAI did not sell any RolaShades product.

    JAI did not give the RolaShades product to any potential customer.

    There was no evidence that any potential customer was free to handle and disassemble the RolaShades product or otherwise ascertain the essential elements of the claimed invention.

    There was no evidence that anyone did disassemble the RolaShades product.

36    Based on the findings of the primary Judge as set out at [14] above, I accept Damorgold’s submission that, so far as the present case is concerned, findings about what could have happened had a customer had the incentive to disassemble, and had chosen to disassemble, the RolaShades product is not sufficient to establish lack of novelty. Mr Horner made it clear that he kept the samples closely under his personal control; he did not leave a sample with a customer (cf Lux Traffic Controls Limited v Pike Signals Limited [1993] RPC 107); he did not sell the product to any customer; he did not want a customer to be in a position to reverse engineer the product.

37    Damorgold says, in effect, that the primary Judge speculated as to the incentive for, and likelihood of, a potential customer disassembling the RolaShades product, rather than simply observing its efficacy, and then based his conclusion of disclosure on the assumption that a customer was free to, and in fact would have, disassembled the product.

38    Damorgold has directed attention to the evidence on which it relies. It should again be emphasised that, while the Court has taken into consideration the reasons of the primary Judge and the findings there set out, it has not had the benefit of a contradictor to draw attention to any countervailing evidence.

39    His Honour found that Mr Horner demonstrated the RolaShades product to show customers how it worked, but that he did not sell it or part with possession of it. While the customer would have ‘a general idea of the mechanism’ from observation (at [151]), it was not possible for a customer to see and understand the essential integers of the invention without disassembly, as the internal componentry could not be ascertained without pulling the product apart. Although Mr Horner said that he would have pulled it apart if asked, there is no evidence that any customer bothered to ask. Indeed, to the extent that it might be relevant, there is, in our view, no evidence to support an inference that customers had an incentive to inspect the internal workings of the RolaShades product, as his Honour had found.

Making Available by Prior Use

40    The definition of “prior art base” in Schedule 1 to the Act relevantly distinguishes the types of information for the purposes of assessing whether or not an invention is or is not novel.

41    As explained in Terrell on the Law of Patents (15th edition at 7.08; 16th edition at 7.06), a claim is invalidated if the invention claimed in it was previously ‘made available to the public’. If by a document, the nature of the document which made it available is immaterial and it is not necessary, in the case of a book or other document containing a description of the invention, that it should have been sold in order to constitute disclosure. For example, exhibition in a bookseller’s window for sale, sending it to a bookseller to be sold, or prior publication in a foreign journal in a foreign language will suffice. The authors state ‘whether or not the document is ordinarily accessible to the public still appears to be the crucial test’.

42    At 7-16 of the 16th edition, the authors set out some of the English authorities addressing the question of ‘made available to the public’ in the context of assessing whether the person to whom the information was disclosed was ‘free in law and equity’ to make use of the information disclosed. In those cases, obligations of confidentiality on the part of the person to whom the disclosure was made resulted in a finding of no anticipation.

43    In Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20, the Full Court confirmed the similarity between the term ‘publicly available’ in the Act and the expression “made available to the public” in the Patents Act 1949 (UK).

44    The question of what constitutes ‘publicly available’ has also been discussed in Patent Law in Australia 2nd edition by Colin Bodkin. Dr Bodkin turns to “disclosure by doing an act” at 3250 and observes that acts which might have invalidated a patent under the Patents Act 1952 (Cth) will not necessarily do so under the Act, there having been a change of statutory language. He expresses the view that information made publicly available by the doing of an act must be considered in isolation and that it is not permissible to rely on extraneous information to supplement it when novelty is at issue, otherwise than where two or more related acts may be considered as a whole (citing Merrell Dow Pharmaceuticals Inc v HN Norton and Co Ltd [1996] RPC 76; (1996) 33 IPR 1 (Merrell Dow)).

45    As discussed by Dr Bodkin at 3790, what may have constituted a novelty defeating prior use under the Patents Act 1952 (Cth) does not provide anticipation under the Act. The author argues for the proposition that because the Australian legislation now requires an invention to be novel when compared to ‘information made publicly available through doing an act in a patent area’, it is strongly arguable that the reasoning applied by the House of Lords in Merrell Dow also holds in Australia. That is, there must be sufficient information made publicly available to enable a person skilled in the art to work the invention. Dr Bodkin also points out (at 3810) that, at least in the Patent Office where such matters have been considered, the onus is on the person seeking revocation to adduce evidence to establish the prior use and that such proof must be clear and on the balance of probabilities.

46    In Merrell Dow, Lord Hoffman considered the making available by prior use under the Patents Act 1977 (UK). His Lordship stated that, to be part of the state of the art:

the invention must have been made available to the public. An invention is a piece of information. Making matter available to the public within the meaning of section 2(2) therefore requires the communication of information. The use of a product makes the invention part of the state of the art only so far as that use makes available the necessary information.

(original emphasis)

47    Lord Hoffman was of the view that a secret or uninformative prior use was not sufficient. At 85, in his consideration of anticipation by use, Lord Hoffman noted that, in that case, there was no suggestion that volunteers who took the medication concerned were also at liberty to analyse that compound to discover its composition. His Lordship said:

If it was open to them to have done so, they would have been in the same position as if they had read the terfenadine specification and the arguments of anticipation by use would have been the same as for anticipation by disclosure. If anticipation by use is to be treated as a separate argument, it must be assumed that the volunteers were given terfenadine capsules by employees of Merrell Dow for the sole purpose of swallowing them. They took them without knowing their composition and produced within themselves a substance which was not then readily capable of being identified but is now known to have been the acid metabolite.

48    As stated in Terrell 15th edition at 7.09, it is necessary to prove not only that the prior product or process was publicly available but also to adduce evidence as to what information was conveyed by the prior use to the notional skilled addressee. As was stated by Sachs LJ in General Tire and Rubber Company v Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 483, the question whether a patentee’s claim is new falls to be decided as a question of fact. That is, it is a question of evidence.

49    Essentially, it is necessary to determine what information is conveyed. As was said by Aldous J in Lux Traffic Controls Ltd v Pike Signals Ltd (1993) RPC 107 (at 134), circumstances may differ where the public have an article in their possession to handle, measure and test and where they can only look at it. His Honour contrasted that with a written description which is made available to the public. In the latter circumstance, it is irrelevant whether the written description is read. Similarly, a machine may be made available to the public and therefore be available to be examined.

50    Although Lord Westbury LC in Hill v Evans ((1860) 31 LJ Ch 457 at 463; (1862) 1A IPR 1) was not specifically dealing with anticipation by prior use, the principle there set out is apposite, namely, that in order to invalidate a subsequent patent, the antecedent statement must be such that a person of ordinary knowledge would at once perceive, understand and be able to apply the discovery without the necessity of making further experiments. The information given by a prior publication or public use must, for the purposes of practical utility, be equal to that given by the subsequent patent.

51    That is, there must be an enabling disclosure in order to constitute anticipation.

52    The Patents Act 1977 (UK), under consideration in Merrell Dow, defined what is meant by new, by reference to whether or not the invention formed ‘part of the state of the art’. The state of the art, in turn, was relevantly characterised by a product, process or information which was made available to the public by written or oral description, by use, or in any other way. Lord Hoffman confirmed previous authority that a patent may be granted for an invention covering a product that had been put on the market, provided the product was not providing an enabling disclosure of the invention claimed. His Lordship pointed out, at 89, that ‘it is the invention which must be new and which must therefore not be part of the state of the art’ (original emphasis). It is part of the state of the art if the information which is being disclosed enables the public to know the product under a description sufficient to work the invention.

53    In H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151, Bennett J, with whom Middleton J agreed, noted that the question for anticipation is whether the prior publication is sufficient to make the claimed invention apparent to the skilled addressee (at [173]). A prior publication does not invalidate a patent unless there is sufficient information to enable a person of ordinary skill to produce the product subsequently claimed (at [173]). If further experiments are required to discover something not disclosed, there is no anticipation; that is, it is not an enabling disclosure. Dr Bodkin notes (at 3640) that this proposition seems to follow directly from Lord Westbury’s exposition of the law in Hill v Evans.

54    As noted by Dr Bodkin (at 3790), the test for anticipation by use is no less stringent than the test for anticipation in a published document and also requires enabling disclosure of the claimed invention. Further, information made publicly available by the doing of an act must be such as to enable a person skilled in the relevant art to put the claimed invention into practice if it is to amount to an anticipation of a patent claim. It is not necessary in this case to discuss what may constitute sufficient disclosure to be enabling, as the facts are clear: no person was permitted to examine the roller blind to ascertain the integers of the invention or how it worked.

55    The act of giving the encased mechanism to another person did not constitute an enabling disclosure. It constituted what was described as ‘uninformative use’ (Merrell Dow) and is not sufficient to constitute an anticipation.

56    I am of the view that, for the purposes of anticipation, there is no sufficient evidence that an act was done through which the invention was made publicly available.

57    In order to destroy novelty, the information must enable the notional person skilled in the art at once to perceive, to understand and to be able practically to apply the discovery without the need to carry out further experiments (Insta Image at [124] citing Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 581-582). Mere observation in the absence of direct evidence of what could be gleaned from such observation does not discharge the onus to establish an enabling disclosure (Insta Image at [125]). In Insta Image, the evidence established that people looked in detail at the way the product, a canopy, was structured and put together and that simple visual inspection was an adequate means of giving the person skilled in the art an understanding of the invention (Insta Image at [146]), whereas in Jupiters, mere observation would not disclose the necessary features, and in the absence of direct evidence from a person skilled in the art of what could be gleaned from such observation, the Full Court was not prepared to conclude that it was sufficient to constitute an anticipation (Jupiters at [147]).

58    Accepting that the customer was a person of skill in the art, which is not in dispute, it is necessary, to establish lack of novelty, that the evidence established that the disclosure of the RolaShades product enabled the person to understand the invention by disclosing the essential integers of it. Mere observation of the way that it worked did not provide such an enabling disclosure. There was no evidence that any customer was in fact interested in the internal componentry of the RolaShades product, or that any customer was in fact free to examine the product as he or she pleased, or that any customer actually had the opportunity to ascertain the internal workings of the RolaShades product.

59    It follows that the appeal should be allowed with costs. The order made by the primary judge revoking claims 1 to 17, 19 to 22, 24 to 26, 29 and 30 of the Patent should be set aside. The orders made by the primary judge pursuant to his finding of infringement of claims 23 and 27 of the Patent should be extended to include claims 1 to 17, 19 to 27, 29 and 30 of the Patent. The order for certification made by the primary judge pursuant to s 19 of the Act with respect to claims 23 and 27 should be extended to claims 1 to 30 of the Patent.

Associate:

Dated:    13 March 2015

REASONS FOR JUDGMENT

Jessup J

60    I have had the advantage of reading the separate reasons of Bennett and Yates JJ in draft. With respect to Ground 1 in this appeal, I agree with Bennett J. With respect to Ground 2, however, I consider that the determination of the appeal comes down to a very narrow point, in relation to which it has not been shown that the primary Judge was in error. Specifically, I do not, with respect, accept that “there was no evidence that any potential customer was free to handle and disassemble the RolaShades product”.

61    That point is whether, by the display of the RolaShades product to a small number of potential trade customers, the information that would have been disclosed by a disassembly of the product was “publicly available” within the meaning of para (a)(ii) of the definition of “prior art base” in Sched 1 to the Patents Act 1990 (Cth) (“the Act”). If so, there would be no error in his Honour’s conclusion that the invention in suit had been anticipated by that product.

62    The test for what constitutes public availability, as articulated in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20, 44 [124], is that the information in question “must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it”. In the present case, issues of freedom, in law and equity, to make use of such information as was available do not arise. The question at issue is the anterior one of availability in what might be called the purely physical sense. That question was not controversial in Insta Image itself, since the relevant information would have been transparently clear to anyone skilled in the art who observed the product which was, on any view, available.

63    By contrast in the present case, an observer of the assembled RolaShades product would not have been equipped with sufficient information to enable the skilled observer to discern what were the essential integers of its working mechanism. However, had the product been disassembled, he or she would have been. In this area of the relevant inquiry, it does not matter that no potential trade customer in fact disassembled, or showed an interest in disassembling, the product. On the other hand, neither is it to the point that a typical, conscientious, trade customer would have had an incentive to disassemble the product. The only question is whether the display of the assembled product made the information as to its workings “available” to such customers, considered as members of the public.

64    The context in which the question of availability arose in the proceeding before the primary Judge was that of a wholesale seller and its potential purchasers. A sample of the product offered for sale was shown to them, both as such and as installed in a blind. The operation of the product was demonstrated. The question which arose in this context was: was the information which would have been revealed by a disassembly of the product available to those potential purchasers? Answering this question, in my view, calls for a close examination of the findings of the primary Judge.

65    His Honour said:

The RolaShades product was mounted in blinds on display at the showroom in Atarmon, but was also shown at customers’ places of business. As Mr Horner said, the part he showed customers to explain how the product worked was similar to (if not) exhibit R6. Whilst it is not possible to ascertain all the internal componentry of the JAI spring assist without pulling it apart to understand its internal workings, this could be readily done without any damage to any part of the mechanisms. Re-assembly was easy. Whilst undoubtedly Mr Horner did not want any potential customer to “reverse engineer” the mechanism, he was offering or making available for sale the RolaShades product. I accept that he did not want any of the samples to be taken by the customers. In fact, all the samples were retained by Mr Horner and none was left with the customers. This was not to be unexpected, as Mr Horner needed the samples to show other potential customers. Nevertheless, a customer would have a general idea of the mechanism employed in the RolaShades product from observing the RolaShades product itself, specifically exhibit R6.

Of this passage, I would say three things. First, that a customer would have had “a general idea of the mechanism” would not be sufficient to destroy novelty under the Act, but I do not understand his Honour to have been suggesting otherwise in the concluding section of this passage. Secondly, when his Honour said that Mr Horner was “offering or making available for sale the RolaShades product” he was not using the word “available” in the statutory sense, but was merely indicating that the product was available for sale. Thirdly, the important finding in this passage, in my view, is that “pulling it apart to understand its internal workings” could have been “readily done without any damage to any part of the mechanisms”.

66    That finding was the subject of elaboration in the paragraph of his Honour’s reasons which immediately followed:

Further, and significantly, in view of Mr Horner’s commercial interest in selling the blinds, if asked by a potential customer, I find that he would have readily pulled apart the RolaShades product to demonstrate exactly how it worked. This could have been readily achieved, and re-assembly was simple. Mr Hunter dismantled Exhibit R6 with no difficulty.

The finding contained in the first sentence of this paragraph was, and remains, crucial in any assessment of whether the information which would have been disclosed upon disassembly of the RolaShades product was, in circumstances in which Mr Horner was attempting to sell it to his trade customers, “available” within the meaning of the Act. The finding was, in my view, strongly consonant with common sense: Mr Horner was potentially a seller of the product in wholesale numbers, which made every demonstration a significant one to him; Mr Horner’s customers were in the trade, and would be likely to have had more of an interest in the workings of the product than the average consumer; and, as his Honour pointed out, disassembly and re-assembly was a simple matter.

67    In its challenge to this finding, the appellant relied upon a passage in the cross-examination of Mr Horner. To give context, I shall set out some questions and answers which preceded this passage, the passage itself being the last question and answer:

The only stock you ever held were the samples you brought back with you. I take it also that you hoped to – you had high hopes for this product. It looked like a winner to you? —Yes.

And you thought that by importing the samples, displaying them and generating a bit of interest with customers you would get a profitable distributorship for this product in Australia. Is that fair? —Yes.

And would it be fair to say that you would have been upset if someone had sneaked off with one of the samples that you brought back and copied it and sold it behind your back? —No one could have sneaked off with the samples. They were – all the samples were with me.

Indeed. And you didn’t give any away. You only displayed them, is that right? — I displayed them.

Yes? —I would take them to my customer’s places and show them – – –

Sure? — but nothing would have been left.

No. Indeed. And you didn’t sell any either? — No.

….

And you were mightily impressed with this product. You thought it was going to be a winner because it freed up the size of blinds that you could use, true? —Yes.

Yes. And because you jealously kept possession of all the samples you were supremely confident that customers or bad people would not be able to go away and reverse engineer this thing and copy it because they would need R6 to pull apart and look at, wouldn’t they? —Possibly, yes.

This tentative answer by Mr Horner was not, in my view, sufficient to undermine the primary Judge’s finding that Mr Horner would have readily pulled apart the RolaShades product to demonstrate exactly how it worked, had a potential customer asked him to do so. That would have been an exercise of an entirely different, and of a much more limited, character than the hypothetical one put by counsel to Mr Horner in the course of cross-examination.

68    The primary Judge’s ultimate finding of fact on this aspect of the case was that “the potential customers of Mr Horner would have been free to dis-assemble exhibit R6, and would have been interested in looking at its mechanical workings”. In the light of the matters to which I have referred above, it has not been demonstrated that this finding was in error. It is true that the finding was not of a primary fact, in the sense of relating only to something that either happened or did not happen. But his Honour’s use of the term “been free” involved, in context, more than a statement of what would have been legally permissible: it involved a conclusion about the practicalities of situations in which the RolaShades product was shown by Mr Horner to his potential customers. It was entirely a matter of choice for the potential customer himself or herself whether to have the product disassembled.

69    The conclusion reached by his Honour may not have attracted itself to all Judges. It was, however, a low-level one about an intensely practical situation. His Honour had the benefit of seeing Mr Hunter disassemble and re-assemble Exhibit R6. We did not. For all we know, this process might have been no more complicated than opening and closing a door, or the lid of a box. We cannot assume that it was not. We have only his Honour’s findings on this matter, namely, that disassembly could have been readily achieved, and that re-assembly was simple. This is not, of course, the ultimate issue under Ground 2 in the present appeal, but it provides an important element of the factual context against which that issue must be addressed.

70    For the above reasons, I am not persuaded that the primary Judge was in error in concluding that the information which would have been disclosed upon a disassembly of the RolaShades product was “available”, in the statutory sense, when Mr Horner canvassed his trade customers for sales of that product. So far as it relates to Ground 2, I would dismiss the appeal.

Associate:

Dated:    13 March 2015

ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA

REASONS FOR JUDGMENT

YATES J

71    I agree with Bennett J that the appeal should be allowed. I agree with the orders proposed by her Honour.

72    There are two grounds of appeal. The first ground of appeal, in essence, is that the primary judge erred in finding that the RolaShades product (exhibit R6) had been imported into Australia before the priority date (25 August 1999) and was prior art information for the purposes of s 7(1) of the Patents Act 1990 (Cth) (the Act). The second ground of appeal, in essence, is that the primary judge erred in finding that the display of the RolaShades product made novelty-destroying information publicly available in Australia.

73    As to the first ground of appeal, I agree with Bennett J, for the reasons given by her Honour at [23]-[31], that the appellants have not demonstrated that the primary judge was in error in finding that the RolaShades product had been imported into Australia before the priority date and was prior art information.

74    As to the second ground of appeal, I agree with Bennett J (at [56]) that, for the purposes of anticipation, the evidence is not sufficient to show that the invention, as claimed, was made publicly available before the priority date of the relevant claims. In my respectful view, the primary judge erred in finding to the contrary. In what follows, I state my reasons for that conclusion.

75    In Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155, the Full Court discussed the circumstances in which prior use of an invention by a third party will be novelty-destroying. In that case, it was alleged that a computer system relating to electronic gaming machines, called ActivData II+, had been developed and used by Jupiters in casinos in 1996 and 1997, prior to the patent application for the claimed invention. The Full Court found (at [124]) that ActivData II+ contained all the essential features of the invention as claimed. The question was whether the alleged use of ActivData II+ made information about it publicly available, such that the invention, as claimed, was not novel.

76    In considering that question, the Full Court referred to s 2 of the Patents Act 1977 (UK) (the 1977 Act), which provides, in s 2(1), that an invention is to be taken to be new if it does not form part of the “state of the art”. The “state of the art” is explained in s 2(2). Relevantly, it comprises “all matter … which has at any time before the priority date … been made available to the public …”. The Full Court noted, by reference to a number of English cases (Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1995) 33 IPR 1 at 8-9; PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 225; Re Asahi Kasei Kogyo KK’s Application [1991] RPC 485 at 539; Quantel Ltd v Spaceward Microsystems Ltd [1990] RPC 83 at 108; Pall Corporation v Commercial Hydraulics (Bedford) Ltd [1990] FSR 329) that an “enabling disclosure” was required to “satisfy the provision” (i.e. s 2(2) of the 1977 Act) so far as prior conduct is concerned.

77    In context, it is clear that the Full Court was referring to when the doing of an act, as opposed to the publication of a document, will be sufficient to make a matter “available to the public” for the purposes of s 2(2) of the 1977 Act, although it is clear from the cases to which the Full Court referred that a similar requirement of “enabling disclosure” exists with respect to information made publicly available by the publication of a document. Those cases make clear that, in both cases, an “enabling disclosure” is one that conveys information.

78    The concept of “enabling disclosure” was explained by Lord Hoffmann in Merrell Dow, which concerned the question of whether the invention, a particular acid metabolite, had been anticipated by the prior administration of the substance terfenadine to human patients, which resulted in the patients producing the acid metabolite in their livers. The fact that terfenadine was metabolised in the liver to produce the claimed acid metabolite was only known after further research had been carried out by the patentee to understand how terfenadine works. As Lord Hoffmann explained (at 7), the patients took terfenadine capsules “without knowing their composition and produced within themselves a substance which was not then readily capable of being identified but is now known to have been the acid metabolite”.

79    Lord Hoffmann distinguished the position with respect to anticipation as it would have been under the Patents Act 1949 (UK) (the 1949 Act) with the position under the 1977 Act. His Lordship said (at 8) that, under the 1949 Act, uninformative use of the kind described would have invalidated the patent for the acid metabolite because the invention would not have been new under s 32(1)(e) thereof: Bristol-Myers Co v Beecham Group Ltd [1974] AC 646; [1975] RPC 127. However, the position under the 1977 Act was different. With respect to art 54 of the European Patent Convention (on which s 2 of the 1977 Act is based), his Lordship said (at 8-9):

This provision makes it clear that to be part of the state of the art, the invention must have been made available to the public. An invention is a piece of information. Making matter available to the public within the meaning of s 2(2) therefore requires the communication of information. The use of a product makes the invention part of the state of the art only so far as that use makes available the necessary information.

The 1977 Act therefore introduced a substantial qualification into the old principle that a patent cannot be used to stop someone doing what he has done before. If the previous use was secret or uninformative, then … it can. Likewise, a gap has opened between the tests for infringement and anticipation. Acts done secretly or without knowledge of the relevant facts, which would amount to infringements after the grant of the patent, will not count as anticipations before.

(Emphasis in original.)

80    In Jupiters, the Full Court said (at [139]):

The structure of the Act and the language of both s 18 and the definition of “prior art base” are sufficiently similar to the relevant parts of [the 1977 Act] to make guidance from authorities upon those provisions helpful, notwithstanding the effect of European jurisprudence and the need for caution as a result. Australian authorities not dealing with the 1990 Act also need to be considered with caution. It should be accepted that s 18(1)(b)(i) and (1A)(b)(i) are concerned with disclosure by conduct, not anticipation by conduct as such. It is useful to examine how different factual situations involving alleged third party disclosure have been dealt with in some the recent English cases.

81    Section 18(1)(b)(i) of the Act provides that an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, is novel when compared with the prior art base as it existed before the priority date of the claim. The corresponding provision for an innovation patent is s 18(1A)(b)(i).

82    The definition of “prior art base” is, relevantly:

prior art base means:

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

(i)    …

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

(b)    in relation to deciding whether an invention is or is not novel:

    (i)    information of a kind mentioned in paragraph (a) …

83    After considering this background, the Full Court (at [144]) posed the following question: What information was given by the use of the [ActivData II+] system at the casinos as to the nature of the invention? It can be seen that, by posing the question in that form, the Full Court was seeking to determine, as a matter of fact, what information had been given by the act or acts relied upon as amounting to an anticipation of the invention. This was an application of the notion of “enabling disclosure”, as explained in Merrell Dow.

84    In answering that question, the Full Court noted that mere observation of the ActivData II+ system in operation by the person skilled in the art would not disclose its features so as to anticipate the invention as claimed. Further, the Full Court was not satisfied that the evidence established that Jupiters had otherwise disclosed the essential features of its ActivData II+ system to personnel of its own customers for the system or, it would seem, to any other person.

85    The same question arose in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20. There the question was whether the invention (an expandable framework structure) was anticipated by the use of a collapsible canopy (referred to as “the original” canopy) at various sporting (motocross) events by a Mr McKinnon. The Full Court (at [125]) posed a similar question to the question posed in Jupiters: What information was given by the display of the original at the motocross events as to the nature of the invention?

86    In answering that question, the Full Court examined Mr McKinnon’s evidence which, at various stages of the hearing, had varied. At [143] the Full Court said:

There remained intact Mr McKinnon’s evidence that:

•    he erected the original in the pits at one or two race meetings in 1987;

•    other competitors, race organisers and officials and members of the public had access to the pits;

•    people would come over and look at his canopy;

•    people would look in detail at the way in which it was structured and put together;

•    people were “intrigued” by it;

•    people asked to borrow it;

•    people urged him to manufacture and sell it; and

•    he “showed” it to people.

87    The Full Court said (at [144]):

In our respectful opinion, the only correct conclusion on this evidence is that information disclosing the nature of the invention was publicly available before the priority date so as to deprive the invention of novelty.

88    In that connection, the Full Court noted (at [146]) that it had not been suggested that simple visual inspection of the original canopy (meaning the original canopy as used at the motocross events by Mr McKinnon) was not an adequate means of giving the person skilled in the art an understanding of the invention. Rather, a different submission was advanced, namely that the disclosure was insufficient in duration and circumstance to constitute “availability” for the purposes of s 18(1) of the Act.

89    The Full Court rejected that submission, saying (at [148]):

[148]    The evidence that we have already referred to at [143] above amply answers the respondents’ “de minimis” submission. The primary judge’s findings with respect to Mr McKinnon’s evidence and his “retreat” as to public use at the races did not expressly or implicitly reject that evidence and, in particular, the evidence that people saw the original, sought to borrow it and urged him to manufacture it. Her Honour found that Mr McKinnon was conscious of people taking his ideas, in the context of a general public exposure … but that does not alter his evidence. As the appellants point out, it has not been suggested that the people in question were bound by any obligation of confidentiality, or were other than members of the public. There is no basis for a finding that the public use was non-enabling or as to why it should be held to be relevantly de minimis.

90    In my view, a similar question to the questions posed in Jupiters and Insta Image arises in the present case: What information as to the nature of the invention was given by showing the RolaShades product to potential customers?

91    The RolaShades product is part of a mechanism for controlling the extension and retraction of a blind. The primary judge (Damorgold Pty Ltd v JAI Products Pty Ltd (2014) 105 IPR 60; [2014] FCA 150) found that its components displayed the essential features of the invention claimed in claims 1-17, 19-22, 24-26, 29 and 30 of the patent (the relevant claims). However, a number of these components cannot be discerned in the assembled form of the product. These include: the drive means; the separate drive member and driven member; the way the drive and driven members engage each other by a rib inside a slot; the helical springs and their “fingers”; how those springs engage via the “fingers” with the projecting cylindrical barrel at the longitudinal edges; the type of connecting means between the fixed support shaft and support rod; and the overall arrangement of those (and other) features to work together. It is not in doubt that these components and their working relationships can only be seen if the product is disassembled.

92    The primary judge found (at [149]) that there was no evidence that the RolaShades product had been sold by the respondent or that samples of it had been provided to any person to retain. However, Mr Horner (a director of the respondent) had demonstrated the RolaShades product to customers for the purpose of selling it to them. The primary judge said (at [150]):

[150]    The real issue in this proceeding is whether based upon the circumstances in which it occurred, the showing of the RolaShades product in Australia to some potential customers with a view to making such available to sale, amounted to making publicly available the RolaShades product.

93    His Honour then made the following important findings at [151]-[158]:

[151]    The RolaShades product was mounted in blinds on display at the showroom in [Artarmon], but was also shown at customers’ places of business. As Mr Horner said, the part he showed customers to explain how the product worked was similar to (if not) exhibit R6. Whilst it is not possible to ascertain all the internal componentry of the JAI spring assist without pulling it apart to understand its internal workings, this could be readily done without any damage to any part of the mechanisms. Re-assembly was easy. Whilst undoubtedly Mr Horner did not want any potential customer to “reverse engineer” the mechanism, he was offering or making available for sale the RolaShades product. I accept that he did not want any of the samples to be taken by the customers. In fact, all the samples were retained by Mr Horner and none was left with the customers. This was not to be unexpected, as Mr Horner needed the samples to show other potential customers. Nevertheless, a customer would have a general idea of the mechanism employed in the RolaShades product from observing the RolaShades product itself, specifically exhibit R6.

[152]    Further, and significantly, in view of Mr Horner’s commercial interest in selling the blinds, if asked by a potential customer, I find that he would have readily pulled apart the RolaShades product to demonstrate exactly how it worked. This could have been readily achieved, and re-assembly was simple. Mr Hunter dismantled Exhibit R6 with no difficulty.

[153]    It is important to appreciate that the potential customers of Mr Horner were entities who made blinds, and who had an interest in the working of the new product, described by Mr Horner as “a very unique product back in the day”. The RolaShades product was offered for sale in the 1996 catalogue, and if sold, would not have been subject to any restrictions on its use. Mr Horner, when showing his potential customers the samples, would appreciate that upon sale the product was capable of reverse engineering.

[154]    In my view, the potential customers of Mr Horner would have been free to dis-assemble exhibit R6, and would have been interested in looking at its mechanical workings. The acts of Mr Horner in displaying the RolaShades product to various customers, with a view to sale, was making the RolaShades product publicly available. There was a means for any customer to inspect the RolaShades product. The customers had an incentive to inspect and Mr Horner had an incentive to allow the customers to do so. Each customer had the opportunity to handle, view, and test the RolaShades product. An examination of the component features would have been easy, and would have revealed all the relevant integers of the claimed invention. Such an examination would have readily enabled a person skilled in the art to put the claimed invention into practice.

[155]    It is clear from the expert evidence of both Mr Hunter and Dr Field that the workings of the RolaShades product (including its use in a blind control mechanism) can be discerned from an inspection once dis-assembled. The person skilled in the art so inspecting the RolaShades product would observe sufficient to enable them to comprehend the complete invention. No further experimentation was required.

[156]    Further, the person skilled in the art would readily comprehend that the RolaShades product would be combined with the other well known roller blind components, including a chain winder mechanism and a blind cylinder.

[157]    It does not matter that only a few, or perhaps only one, potential customer was approached and had the opportunity to examine the RolaShades product. It does not matter that the RolaShades product was not actually dis-assembled. Each potential customer, in my view, had the opportunity of a complete examination of the internal componentry of the RolaShades product. There was no restriction placed upon any potential customer as to what he or she would do in making use of the information so obtained from an examination of the internal componentry.

[158]    It is of no importance that no actual sale took place. The circumstances described above constitute sufficient conduct of making the RolaShades product publicly available in Australia. That conduct of displaying and offering for sale the RolaShades product (in the circumstances described) made available the necessary information to find anticipation.

94    On the basis that the RolaShades product possesses the essential features of the invention claimed in the relevant claims, but that all such features can only be discerned by disassembling the product, it is my respectful view that the above findings of fact can lead to only one legal conclusion, namely that, by showing the RolaShades product to customers in its assembled form, the features that could be discerned only upon disassembly of the product were not made publicly available. It follows that merely showing the assembled product in the way found, even for the purposes of soliciting sales, could not anticipate the invention claimed in the relevant claims.

95    The primary judge placed determinative significance on the fact that potential customers had the opportunity of a complete examination of the internal componentry of the RolaShades product and could have disassembled the product had they wanted to do so in order to carry out such an examination. Those are, undoubtedly, important findings. But the evidence went further and enabled the primary judge to conclude that, in fact, no potential customer disassembled the product and no such complete examination took place. In other words, there can be no doubt that the features of the RolaShades product that could only be discerned upon disassembly of the product were not disclosed to customers. Thus, in my view, the evidence positively established that all the essential features of the invention as claimed were not disclosed (i.e. were not made publicly available) by the acts relied upon.

96    It is important to recognise that the relevant question is not whether the RolaShades product was made publicly available. As the cases make clear, neither the mere public availability of a product, nor its use in public, necessarily means that the features of the product have been made publicly available. The facts and findings in Jupiters and Insta Image provide contrasting examples of what does (Insta Image) and what does not (Jupiters) amount to an enabling disclosure.

97    In my respectful view, the primary judge erred by not observing this distinction. This is illustrated by the question posed by his Honour at [150] of the reasons, which is directed to public availability of the RolaShades product; his Honour’s statement at [154] of the reasons that, by displaying the RolaShades product, Mr Horner was making it publicly available; and his Honour’s observations at [158], which appear to equate public availability of the RolaShades product with making publicly available the essential features of the invention claimed in the relevant claims: see [92]-[93] above. It follows, in my view, that the primary judge applied an incorrect legal test or standard to the facts as he found them to be.

98    My conclusion is based on the special – indeed, unusual – facts of this case. I wish to stress that nothing I have said should be taken as dealing with the position where, unlike here, a sale of the product has been made or a sample of the product has been given to and retained by a customer. Such cases raise different considerations, which do not fall for determination in the present case.

Associate:

Dated:    13 March 2015