Federal Court of Australia

Glass Hardware Australia Pty Ltd v TCT Group Pty Ltd [2024] FCAFC 95

ORDERS

THE COURT ORDERS THAT:

1.    The Notice of Appeal filed 1 May 2023 be dismissed.

2.    The appellant pay the first and second respondents’ costs of and incidental to this appeal.

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

REASONS FOR JUDGMENT

THE COURT:

1.    Introduction

1    This is an appeal from the decision of the primary judge in TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493; (2022) 170 IPR 313 (J).

2    The appeal concerns an innovation patent for an invention comprising a hinge of a kind which could be used for soft closing glass panelled doors such as those found on pool fences or shower screens. Although there were two related innovation patents in dispute at trial, this appeal is only concerned with Australian Innovation Patent No. 2020102918 entitled “Hinge” (the 918 Patent). The other innovation patent was Australian Innovation Patent No. 2020100485, also entitled “Hinge” (the 485 Patent). The third respondent (Polaris IP) is the patentee, and the appellant (Glass Hardware) is the exclusive licensee.

3    Polaris IP has filed a submitting notice and does not want to be heard on the question of costs.

4    The divisional application for the 918 Patent was filed after the first and second respondents’ (TCT Group) hinges marketed under the “Orion” brand (Orion hinges) had begun to be sold in Australia.

5    Although the primary judge found the 918 Patent to be infringed, his Honour held that it was invalid on the grounds that it lacked external and internal sufficiency. The Parent specification from which the 918 Patent claimed priority (Australian Standard Patent Application No. 2017201858 filed on 16 February 2017) and the specification of the 918 Patent itself did not disclose the invention claimed in the 918 Patent in a manner that was clear enough and complete enough for the invention to be performed by a person skilled in the relevant art as required by ss 40(2)(a) and 43(2A)(b) of the Patents Act 1990 (Cth). A finding as to lack of novelty (based on the Orion hinges) and lack of support under s 40(3) of the Act followed from that result.

6    Whilst Glass Hardware has raised four grounds of appeal, only three of these grounds are substantive in nature. The first is the proper construction of the invention disclosed in the Parent and the 918 Patent. The second is whether the claims of the 918 Patent disclose a “relevant range” such that embodiments of the invention need to be enabled across the scope of the range. The third is, if a relevant range is disclosed, whether a person skilled in the art can make other embodiments within the claim without undue burden.

7    The appellant accepted that it needed to succeed on all three of the substantive grounds in its Notice of Appeal for the appeal to be successful. It also accepted that if it was unsuccessful on ground one, then that determination would resolve grounds two and three. This is because, as drafted, the latter two grounds depend on the success of ground one. Ground four, that the primary judge ought to have found that the 918 Patent was at all material times valid and infringed, added nothing to grounds one to three.

8    For the reasons set out below in section 7, we have found that Glass Hardware is unsuccessful on appeal ground one. It is not necessary for us to resolve grounds two and three.

2.    The patents

9    The 918 Patent was filed as a divisional application of the Parent on 21 October 2020, amended on 23 December 2020 and certified on 28 January 2021. It claims priority through the Parent from the provisional application which has a priority date of 17 February 2016.

10    As the disclosure of the Parent and the preceding provisional application are essentially the same, the primary judge proceeded by reference to the disclosure in the Parent: J [135].

11    With the exception of the “Summary” of the invention and the claims, the content of the Parent is relevantly the same as the 918 Patent. The primary judge observed at J [38] that the body of the specification of the 918 Patent and the 485 Patent were substantially the same, save for their claims and the consistory clauses contained in the summaries of the invention. The primary judge described their disclosure by reference to the specification of the 485 Patent from J [39]–[72]. For convenience and for the purposes of this appeal, we will take those paragraphs as referring to the disclosure of the 918 Patent, the subject of this appeal.

12    The “Background” section of the Parent and the 918 Patent specification refers to a prior art hinge which is described as including a mechanical biasing element, for example a spring, and a plurality of magnetic elements which bias and retain hinge members in a retained (for example, closed) position. The magnetic elements of that prior art hinge were configured to have an overlapping arrangement in the closed position. The prior art hinge was primarily designed for gates and showers which have a relatively significant weight, so the first and second magnetic elements were required to provide sufficient magnetic strength to bias the hinge toward the closed position, particularly when the spring may have suffered from mechanical wear.

13    The specification explains that dampeners were introduced into the prior art hinge to control its closing action. The dampeners were orientated orthogonally (or perpendicular) relative to the plane of the hinge members such that the overlapping portion of the hinge would contact a protruding portion of the dampener when the hinge had nearly progressed to the closed position.

14    The Parent and the 918 Patent identified three problems with prior art hinges. The first being the vibration problem caused by vibration in a direction orthogonal to the plane of the glass panel; the second being the thickness problem caused by the orthogonal orientation of the dampeners relative to the plane of glass and also the thickness of the sufficiently strong magnets; and the third being the high cost of manufacturing due to the amount of steel used in constructing the hinge.

15    The first aspect of the invention is set out at [011] of the Parent. The first aspect is the consistory clause for claim 1 of the Parent being a glass-to-glass (GTG) hinge, the second aspect being a glass-to-wall (GTW) hinge. That first GTG aspect includes: two leaf assemblies, “hingedly coupled”, with each accommodating a cut-out section of a panel and the first including a “first insert component” that is within the cut-out section of a panel; one or more biasing components “to bias the hinge toward a closed position”; and, in relation to the dampener it provides:

… a dampener to slow movement of the first and second leaf assemblies to the closed position, wherein at least a first portion of the dampener is located within the first insert component and a second portion is configured to at least partially retract within the first insert component when coming into contact with the second leaf assembly during hinged movement toward the closed position under bias from one or more biasing components, wherein the second portion of the dampener extends and retracts along an axis which is coplanar with the first panel.

(Emphasis added.)

16    In the 918 Patent, the description of the first aspect of the invention has been changed, including the wording of the last part of [011] which aligns with claim 1 of the 918 Patent (the relevant integers of which are set out in section 4 below), as follows:

… a dampener, having a longitudinal dampener axis along which a portion of the dampener retracts during dampening, said dampener at least partially housed by the first insert component, and wherein said longitudinal dampener axis is disposed between and substantially parallel with planes defined by respective opposing faces of the first panel; wherein the second leaf assembly includes a striking surface to cooperate with the dampener [integer 1.13] to dampen spring induced movement of the hinge from the open position to the closed position.

(Emphasis added.)

17    After the “Brief Description of the Figures” section, the specification has a “Detailed Description of the Embodiments” section commencing at [085] in the Parent and [063] in the 918 Patent.

18    The specification describes a dampener in more detail at [090] in the Parent and [068] in the 918 Patent:

A first portion 102 of each dampener 100 is secured or fixed within the first insert component 40 and a second portion 104 is configured to at least partially retract within the first insert component 40 when coming into contact with the second leaf assembly 30 during hinged movement toward the closed position under bias from the one or more biasing components 190. The second portion 104 of the dampener 100 extends and retracts along a longitudinal axis which is coplanar with the first panel 500.

19    Figure 3 is an exploded isometric view of the GTG hinge (depicted in figure 1A). In figure 3, the dampener (100) can be seen as having a narrow pin-like portion (102), and a larger cylindrical portion (104).

20    There is no dispute that the orientation of the dampener throughout the “Detailed Description of the Embodiments” section of the specification of the Parent and the 918 Patent is depicted and described as being orthogonal or substantially orthogonal to the hinge axis.

3.    Person skilled in the art

21    There was no dispute that the person skilled in the art was a person engaged in, or who has experience in, the design of mechanical devices and, in particular, in respect of hinges used in domestic and commercial applications. Nor was there any dispute that the experts, Mr Hunter (who was called by TCT Group) and Mr Richardson (who was called by Glass Hardware), fell within that description.

4.    Construction of claim 1 of the 918 Patent

22    After discussing the disclosure of the 485 and 918 Patents, the primary judge then turned to construe claim 1 of the 918 Patent. His Honour noted at J [88] that the principles of claim construction were not in dispute. Further, there was no suggestion in the evidence that the language of claim 1 had any technical meaning that could not be understood by reference to ordinary English usage: J [99].

23    One of the three integers of that claim in dispute at trial was the “striking surface to cooperate with the dampener” integer highlighted above, which is relevant to appeal ground one.

24    Glass Hardware contended that the words “to cooperate with the dampener” in integer 1.13 include indirect action such as via an intermediate component and secondly, that the “striking surface” is something that must be “struck” by operation of something else in the hinge. The requirement that the striking surface “cooperate” with the dampener includes arrangements other than those with direct contact, including contact by an intermediate component.

25    The primary judge held at J [122], consistently with Glass Hardware’s contention, that the words “to cooperate with the dampener” indicate that the striking surface does not need to be in direct contact with the dampener, but may interact indirectly with it, in order to achieve the effect of dampening the spring induced movement of the hinge. Nothing in the specification purported to limit the word “cooperate” from its ordinary meaning of a “joint operation or action”: Macquarie Dictionary (6th ed, 2013). Integer 1.13 was not to be understood to be confined to a direct interaction.

26    The dampeners of the Orion hinges are actuated by a combination of interactions between several sliding surfaces external to the dampeners themselves. These sliding surfaces are provided by two external components, a “sliding cam” contacting one end of the dampener (either the body or the pin) and a protrusion of a “dampener housing” holding the dampener at the other end. The dampeners in the Orion hinges are orientated parallel to the hinge axis and there is no direct contact between each dampener and any surface of the opposite leaf assembly. The Orion hinges’ dampener mechanism is depicted below.

27    The primary judge found that the Orion hinges fell within the scope of the claims of the 918 Patent. Subject to the question of claim validity, his Honour was satisfied that the infringement case was established: J [132]. In this appeal, there is no challenge to the correctness of the primary judge’s construction of claim 1.

5.    Priority

28    TCT Group contended that, on the primary judge’s construction, the invention claimed in claim 1 of the 918 Patent was broader than the invention disclosed in the Parent. The Parent did not disclose a dampener which functioned other than by direct contact between the dampener and the second leaf assembly during hinged movement towards the closed position. The consequence was that the 918 Patent was not entitled to a priority date earlier than its filing date and was, therefore, anticipated by the sale of the Orion hinges.

5.1    Relevant priority provisions

29    The primary judge set out the sections of the Act and regulations of the Patents Regulations 1991 (Cth)applicable to determining priority date at J [142]–[148], observing at J [150] that the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (the RTB Act) identified one objective of the changes made to s 43 of the Act as being to maintain consistency between the requirement of s 40(2) and the requirement for priority.

30    Section 43(1) of the Act provides that each claim of a specification must have a priority date. Section 43(2)(a) provides that if s 43(2A) applies to a claim, the priority date is the date determined under the Regulations. Otherwise, the priority date of a claim is the date of the filing of the specification: s 43(2)(b).

31    Section 43(2A) of the Act applies to a claim if:

(a)     prescribed circumstances apply in relation to the invention defined in the claim; and

(b)     a prescribed document discloses, or a prescribed set of prescribed documents considered together disclose, the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

32    Regulation 3.13D(4)(a) provides that a “prescribed circumstance” within s 43(2A) of the Act includes where, as is the case here, the “specification containing the claim that defines the invention was filed for (i) a divisional application under s 79B”.

33    Chapter 3, Pt 1, Div 2 of the Regulations determines the priority date of a claim under s 43(2)(a) of the Act. Regulation 3.12(4) provides:

In this Division, a document, or a set of documents considered together, clearly discloses an invention if the document, or set of documents, discloses the invention in a manner that is clear enough, and complete enough, for the invention to be performed by a person skilled in the relevant art.

(Emphasis in original.)

34    Regulation 3.13D is headed “[p]riority date for divisional application filed prior to grant of patent”. Regulation 3.13D(1) provides that this regulation applies to a claim if:

(a)    the specification containing the claim that defines the invention was filed for:

(i)    a divisional application under section 79B of the Act; or

(ii)    a complete application that has been amended to become a divisional application under section 79B of the Act; and

(b)    the specification mentioned in subsection 79B(1) of the Act (the earlier specification) clearly discloses the invention in the claim.

35    According to reg 3.13D(3), and subject to reg 3.12, the priority date of the divisional application’s claim is the priority date that the claim would have had if the claim was in the earlier specification.

36    The requirement that the priority document clearly discloses is satisfied if the invention in the claim is disclosed in a manner that is clear enough, and complete enough, for the invention to be performed by a person skilled in the relevant art, overlaps the disclosure requirement of s 40(2)(a) of the Act.

5.2    Primary judge’s findings

37    As to the scope of claim 1, the primary judge found, at J [180], that the dampener must have a longitudinal axis disposed between, and substantially parallel with, planes defined by opposing faces of the first panel and be at least partially housed within the first insert component of the first leaf assembly. As the primary judge expressed it, this means that the dampener “must be coplanar or parallel with the panel in which it sits”, i.e., in the insert component of the first leaf assembly. His Honour observed that the claim is then “agnostic” as to the arrangement of the dampener relative to the second leaf assembly. In other words, there is no limitation as to the orientation of the dampener or the means by which it effects dampening upon the closing of the hinge: J [215]. The interaction between the dampener and the second leaf assembly may be indirect: J [122].

38    The primary judge found at J [215] that, by contrast, the specification of the Parent describes the invention by reference not only to the “co-planarity feature” but also by the limitation that the dampener comes into contact with the second leaf assembly, with the dampener arranged so that it is orthogonal or substantially orthogonal to the hinge axis (which his Honour described at J [137] as the orthogonal dampener requirement). The primary judge considered at J [186] that the reference to the dampener “coming into contact” with the second leaf assembly is unambiguous. It requires that the dampener make contact or touch the second leaf assembly. This contact is direct contact. The primary judge found that the language does not admit of a construction that would permit an intermediate part to make contact or indirect contact with the second leaf assembly.

39    The primary judge also rejected Glass Hardware’s submission that the word “dampener” in [011] of the Parent should be understood as referring to a “dampener mechanism”, where such mechanism may include a sliding cam which cooperates with the dampener, rather than a particular part. His Honour set out three points in support of his conclusion not to extend “dampener” to mean “dampener mechanism” at J [188]−[192]:

188    First, a “dampener” is a component recognised in the field. In his evidence, Mr Hunter describes a dampener as a part where a piston moves inside a cylinder and the motion of the piston is restricted in some way, such as by friction or by pressure resistance by the working fluid. Mr Richardson similarly observes that a dampener with a longitudinal dampener axis operates to dampen in a linear direction. By contrast, there are other commercially available dampeners that operate to dampen rotationally which are not the subject of the claims because they do not have a longitudinal axis.

189     Secondly, the balance of the body of the specification supports the view that the skilled reader would understand the reference to a dampener to be to a particular component. The only description of a dampener in the parent is of the embodiment referred to in the figures. In those, dampener 100 is described and depicted as an individual part, having dampener body 104 and dampener pin 102 (see fig 3 of the parent and also the 485 patent). If the broader definition proposed by Polaris were adopted, the “dampener” would include other parts of the hinge that are not a dampener, but which cooperate with it to achieve that function such as the separately described striking surface 64. There is no suggestion that this was intended, and I reject the contention that the skilled addressee would read the reference in [011] or the specification of the parent as a whole in that way.

190     Furthermore, the Background refers to prior art dampeners that were orientated orthogonally relative to the plane of the hinge members, with the overlapping portion of the hinge contacting “a protruding portion of the dampener when the hinge had nearly progressed to the closed position”. This suggests that the dampener referred to is not a broad “mechanism” but rather a part, which has a particular orientation and protrusion. Leaving aside the context of the language of the [011] of the parent as a whole, perhaps the clearest reason for this view is that the patentee has chosen to use the word “dampener” and not “dampener mechanism” in that paragraph and elsewhere in the parent.

191    Thirdly, the expert evidence further supports this distinction. In cross-examination during the course of the concurrent evidence session Mr Hunter was asked to agree that the second dampener in the Orion hinge included the parts identified in the drawing (depicted in section 5.2 above), being jointly the second damper body, second dampener pin and also the second sliding cam. Mr Hunter resisted that proposition. It was then suggested that the second sliding cam could be regarded as part of the “dampener mechanism” to which he responded:

MR DIMITRIADIS: And I suggest to you that that is fairly – you’re fairly able to regard that [being the sliding cam] as part of the dampener mechanism in this product for that reason?

MR HUNTER: I think it’s a fair – it’s fair to say that it’s a component of the overall dampening mechanism, because a mechanism can obviously be comprised of many different components that work together to achieve a functional outcome, but you were saying something different before, which was that the sliding cam was part of the dampener, which is not something I would agree with.

    192    I accept Mr Hunter’s description.

40    As to the orthogonal dampener requirement, the primary judge found at J [193] that [011] of the Parent specification (which summarises the invention) in substance confines the invention to one where the dampener is aligned to be orthogonal to the axis of the hinge. His Honour observed, with respect to the balance of the specification, that this was the only arrangement described, with the description of the preferred embodiments emphasising (amongst other things) that the advantage of this arrangement is that the dampener pin is less likely to deflect and bend during hinge movement.

41    The primary judge said that the expert evidence indicated that the person skilled in the art would understand that the orthogonal dampener requirement addresses a problem that would arise in dealing with lateral forces that would be applied to the dampener at other angles: J [195].

42    Mr Hunter explained the mechanical consequences of moving away from the orthogonal dampener requirement. He said that adopting orientations for the dampener that significantly vary from orthogonal to the hinge axis would produce negative asymmetrical forces that would likely lead to the dampener jamming or failing. For this reason, an engineer would seek to avoid putting the dampener at a different angle.

43    Further, Mr Hunter said that it was a matter of simple geometry that, if the dampener were to be used at an angle rather than in an orthogonal orientation, its stroke would need to be longer in order to provide the same dampening effect. This, in turn, would require a deeper hollow within which the dampener is to be retained, meaning that the design would be less compact.

44    Mr Hunter also said that making a hinge that addresses the problems identified in the specification of the Parent, without the dampeners coming into direct contact with the second leaf assembly and meeting the orthogonal dampener requirement, would require new concepts to be developed for a completely new hinge design. He gave evidence of the challenges facing the person skilled in the art in seeking to come up with such a design. He observed that the Parent made no disclosure of how to implement such a device.

45    The primary judge accepted Mr Hunter’s evidence that changing the dampener angle would involve a fundamental redesign of parts, and that the specification of the Parent did not disclose “how to address the problem of moving away from the orthogonal arrangement”: J [211].

46    The primary judge said that Mr Richardson’s evidence demonstrated that he was also concerned about the effects of lateral loading if the angle of the dampener were to be changed. Mr Richardson agreed that if the angle of the dampener were changed from orthogonal to the hinge, it would make the lateral load problem worse than in the embodiment described in the Parent. But Mr Richardson said that the problem could be addressed by the introduction of an intermediate component.

47    Mr Richardson described such a component by reference to a sketch which the primary judge reproduced at J [205]. Mr Richardson explained the design process involved in developing this component. The primary judge said that it was apparent from Mr Richardson’s evidence that he would not know whether the problem of lateral loading had been solved until a prototype of this hinge was built and tested. The primary judge also noted Mr Richardson’s acceptance that the process of arriving at such a design involved use of his own “imaginative faculty”. His Honour remarked that this observation by Mr Richardson pointed to the fact that the Parent “left gaps in its teaching that must be filled by imaginative design work”: J [210]. The primary judge said that an example of such a gap was that the Parent does not disclose the use of an intermediary component.

48    The primary judge said at J [212]:

Separately from the example given by reference to his sketch (exhibit D), Mr Richardson agreed that if one were to change the orientation of the dampener from orthogonal to the hinge axis, the person skilled in the art would need to make a number of decisions, none of which is guided by the patent beyond a requirement that the angle of orientation be in the same plane as the panel. Those decisions would include which angle of orientation to choose; what arrangement to design for any intermediate sliding component or components; what arrangement to choose for any cooperating elements; the rearranged design of an insert component; and how those components are to fit together. He agreed that whilst with the benefit of the parent he would be able to keep the outside features of the hinge (being the broad arrangement of the first leaf assembly, the hinge knuckle and the second leaf assembly), the interaction between the dampener and the second leaf assembly and the internal components of the insert would need to be altered.

49    The primary judge concluded that claim 1 of the 918 Patent was for an invention that is broader in scope than the invention disclosed in the specification of the Parent. His Honour said that the Parent does not disclose a hinge mechanism whereby the axis of the dampener is simply coplanar with the first panel. The Parent emphasises that the dampener comes into direct contact with the second leaf assembly. The primary judge said that that requirement limits the scope of the invention, as disclosed and described, to a particular hinge mechanism in which the longitudinal dampener axis is “more or less” orthogonal to the hinge axis. The primary judge explained that his use of the expression “more or less” was to indicate that there will be scope for some variance from the perpendicular. His Honour noted, “[h]owever, [that] the range will be modest, having regard to the lateral forces”: J [217].

50    In reaching this conclusion, the primary judge rejected Glass Hardware’s contention that claim 1 simply identifies a product using descriptive or functional language that necessarily covers a variety of arrangements which are sufficiently supported by the detailed description in the specification of the Parent of a single preferred embodiment: J [219]. The primary judge said:

… Enablement across the scope of the claim will not be established merely by showing that all products within the claim range will, if and when they are made, deliver the general benefit concerning the vibration, manufacturing and thickness problems. It will be necessary for the whole range of the products within the range to be made.

51    The primary judge explained at J [220]:

… I am persuaded that, in order to adjust the axis of the dampener to an angle that is materially beyond one that is orthogonal to the hinge axis, significant research and development would be needed. I consider that the evidence of the steps required as set out by both of the experts demonstrates that the exercise would involve the development of an intermediate component, additional to the dampener, and the design of the interacting surfaces to meet it. Even with a plan in mind to place the dampener axis at a different angle (contrary to the evidence of Mr Richardson, I do not accept that the parent suggests or teaches one), the person skilled in the art would be required to ascertain what that angle should be, itself no easy task, and then use computer-aided design techniques to develop a prototype and develop a test rig. The evidence reveals that even were that to be done, the skilled addressee would not be sure that the result would be a design with a dampener that could withstand the lateral forces involved. The exercise might have to be repeated with alternative designs and angles. The insert components would require redesign to accommodate the configuration.

52    The primary judge found, therefore, that the requirements of s 43(2A) of the Act were not met in that the invention claimed in claim 1 (and other claims) of the 918 Patent was not disclosed in the Parent in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art. As a consequence, the priority date of the claims was deferred to the date on which the application for the 918 Patent was filed. It was not disputed that, at that date, the Orion hinges anticipated the invention as claimed. As a result, the claims were invalid: J [227]–[229].

53    At J [236], the primary judge made a corresponding finding in relation to internal sufficiency. The specification of the 918 Patent did not disclose the invention, as claimed, in a manner that was clear enough and complete enough to enable it to be performed by the person skilled in the art. The requirements of s 40(2)(a) were not met.

54    At J [246]–[249], the primary judge found that the invention as claimed in the 918 Patent was not supported by matter disclosed in the specification of that patent.

6.    Grounds of appeal

55    The first ground of appeal relates to the primary judge’s construction of the invention disclosed in the Parent and his finding on external sufficiency that the requirements of s 43(2A)(b) of the Act were not met in relation to the claims of the 918 Patent. This ground is discussed in section 7 below.

56    The second ground of appeal relates to the requirement of internal sufficiency as it concerns the claims of the 918 Patent and the primary judge’s finding that the requirements of s 40(2)(a) of the Act were not met. The Notice of Appeal acknowledges that the fate of this ground is linked to the fate of the first ground of appeal.

57    The third ground of appeal is directed to the primary judge’s finding that the invention claimed in the 918 Patent is not supported by matter disclosed in the specification of that patent, as required by s 40(3) of the Act. As we have noted, the parties accept that this ground of appeal will also be resolved by the determination of the first ground of appeal.

58    For completeness, we note the existence of a fourth ground of appeal. This ground, however, is simply an overarching contention that the primary judge should have found that the 918 Patent was both valid and infringed. It appears to be no more than a contention that is dependent on the first three grounds.

7.    Construction of the invention and external sufficiency (ground one)

7.1    Introduction

59    The claims of the 918 Patent are only entitled to their earliest priority date of 17 February 2016, if the Parent discloses the invention in a manner that is clear enough, and complete enough, for the invention to be performed by a person skilled in the relevant art: s 43(2A), reg 3.13D(4); see J [142]–[148]. If not, the priority date is deferred to the filing date of the 918 Patent, 31 October 2020, and the claims are anticipated by the Orion hinges which were on the market by then.

60    Claim 1 of the 918 Patent is set out in full at J [81]. The two integers of relevance to this ground of appeal, with the particular words of interest highlighted in bold, are set out below:

[1.11]    a dampener, having a longitudinal axis along which a portion of the dampener retracts during dampening, said dampener at least partially housed by the first insert component, [1.12] and wherein said longitudinal dampener axis is disposed between and orientated substantially parallel with planes defined by respective opposing faces of the first panel;

[1.13]    wherein second leaf assembly includes a striking surface to cooperate with the dampener to dampen spring induced movement of the hinge from the open position to the closed position.

7.2    Appeal submissions

61    Glass Hardware contends that the disclosure of the invention in the Parent specification should be construed purposively and with a generous measure of common sense so as to encompass a dampener mechanism that includes a number of components that work together to achieve a dampening function, in other words by both direct contact and indirect contact via an intermediate component.

62    Glass Hardware submits that the primary judge erred by employing an “over-meticulous verbal analysis” in construing the Parent, rather than adopting a purposive construction with a generous measure of common sense. That “overly narrow” and literal approach is to be contrasted with the purposive approach adopted by the primary judge in his construction of the “striking surface to cooperate with the dampener” integer in claim 1 of the 918 Patent, which his Honour accepted encompassed both direct and indirect contact.

63    Glass Hardware emphasises that the detailed description of the invention in the Parent is merely exemplary of a preferred embodiment, and that the claims of the Parent are part of the disclosure for the purposes of considering priority.

64    According to Glass Hardware, the difference in the language used in the summary of the invention in [011] in the Parent “coming into contact with” and the 918 Patent “a striking surface to cooperate with the dampener” does not result in any material difference in the nature of the invention disclosed. Rather, the phrases are describing equivalent concepts (achieving a dampening effect through contact) using somewhat different language.

65    Adopting a purposive construction, Glass Hardware contends that there is no reason why the reference to “coming into contact” in [011] of the Parent should include direct contact but exclude indirect contact. Glass Hardware further submits the primary judge was wrong to limit the meaning of the ordinary English word “dampener” in [011] of the Parent to a particular component, and to exclude a mechanism of parts that combines to achieve a dampening action. Paragraph [011] of the Parent does not provide any specific definition of the features of the dampener other than that it has the two portions. It leaves open what those portions comprise.

66    Glass Hardware accepts that a hinge (such as the Orion hinge), which has sliding cams as an intermediate component of the dampener, operates in a manner different to that of the preferred embodiment described in the Parent, but submits that that difference is not relevant to the essence of the invention described in the Parent, or to addressing the identified problems with the prior art hinge. Purposively construed, the disclosure in the Parent should be understood to permit contact through an intermediate component of a dampener mechanism to achieve a dampening function.

67    Glass Hardware challenges the primary judge’s finding at J [219] that the invention disclosed in the Parent and the 918 Patent involves a “relevant range” in the sense described in Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] RPC 22 (per Reed P, Hodge, Black, Briggs and Sales LJJ). As construed, the angle of the dampener relative to the second leaf assembly is unlimited: J [180], [215]. The 918 Patent claims a range of dampener axis orientations (provided the dampener is coplanar with the panel) from 0° to 360° relative to the hinge axis.

68    Glass Hardware contends that the dampener angles are not material or a “relevant range”. It sought to distinguish the alleged range in the present case from that in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd (2023) 176 IPR 336 (per Perram, Nicholas and McElwaine JJ) on the basis that the purported range was not part of the essence or core of the invention disclosed. In Jusand, the range of materials from which the Safety System may be made was part of the essence or core of the invention. In the present case, Glass Hardware contends that the innovative step resides in the idea that it is beneficial to transmit the dampening forces in the same plane of the panel (or leaf assembly). The technical contribution to the art is the hinge product with the coplanar feature.

69    Glass Hardware seeks to distinguish the facts of this case to those in Regeneron where the relevant claim was to a range of types of transgenic mouse. A skilled person at the time could only make some of the types of mice within that range. The claim went beyond the contribution made to the art precisely because mice at the more valuable end of the claimed range could not be made using the disclosure: Regeneron at [57] (per Briggs LJ, Reed, Hodge and Sales LJJ agreeing). Glass Hardware maintains the present case is quite different as these claims employ descriptive or functional language which “may well cover a variety of things”: J [157], citing Illumina Cambridge Ltd v Latvia MGI Tech SIA [2021] RPC 12 (per Birss J). As such, Glass Hardware submits these circumstances do not invoke the notion of a “relevant range” in the Regeneron sense.

70    Glass Hardware contends that the primary judge’s finding that “the contribution to the art in the patent application is the ability of the skilled person to make the product itself” at J [219] involved the primary judge erroneously limiting the invention to one particular form of hinge, and not attending to those parts of the specification which made it clear that the significance of the invention lay in the coplanar feature and that the preferred embodiment was illustrative only: e.g., Parent [039], [085], [091], [094], [096], [099] and [125]. Glass Hardware submits that it is difficult to reconcile his Honour’s acknowledgment at J [219] that the description of the invention by reference to the coplanar feature contemplates a variety of hinges which would also achieve the benefits described in overcoming the vibration, thickness and manufacturing problems identified in the specification.

71    TCT Group says what is “material” or a “relevant range” is determined objectively by construing the specification, not delimited by what the patentee chooses to say is the problem: Jusand at [194], [215]−[217] (per Perram J, Nicholas and McElwaine JJ agreeing); Illumina at [259], [279(iv)] (per Birss J).

72    As noted at [66] above, the angle of the dampener relative to the second leaf assembly is unlimited: J [180], [215]. The 918 Patent claims a range of dampener axis orientations (provided the dampener is also “coplanar” with the panel). TCT Group contends that the evidence and findings show that altering the angle affects its working and that significant work would be required to do this: J [200]−[201], [204] and [216]. It is thus a relevant range that must be enabled across its scope. Even if it were not, the law still requires the skilled person to be able to make it without undue burden. As also found, coplanarity is not a principle of general application and there is an “absence of any disclosure … of how a hinge with a non-orthogonal dampener axis may be made” by the skilled person: J [247].

73    Glass Hardware contends that there is no reason why a single example of a preferred embodiment of the invention cannot meet the disclosure requirement. Glass Hardware draws attention to the following paragraph as contained in the Explanatory Memorandum (at p 47):

A specification that provides a single example of the invention may satisfy the requirements, but only where the skilled person can extend the teaching of the specification to produce the invention across the full width of the claims, without undue burden, or the need for further invention.

74    Glass Hardware notes that the primary judge at J [226] accepted this, however, did not find it to apply in this matter holding that “[o]n its face, the disclosure of the parent is not sufficiently clear and complete for the invention disclosed in the claims of the 485 [P]atent to be performed”.

75    TCT Group submits that the full context of the relevant section of the Explanatory Memorandum must be considered and accordingly draws attention to the next passage (at pp 47−48):

However, it is expected to be more likely that, where the claims are broad, the specification will need to give a number of examples or describe alternative embodiments or variations extending over the full scope of the claims. This ensures that the monopoly extends only to that which could reasonably be said to be disclosed and no further.

76    Finally, Glass Hardware challenges the primary judge’s finding at J [230] that if, contrary to its submissions, the angle of the dampeners in the plane amounted to a relevant range, the evidence established that the person skilled in the art in possession of the specification of the Parent would not be in a position to design a hinge within claim 1 of the 918 Patent without undue burden.

77    TCT Group submits the question of whether a burden is undue is highly sensitive to the nature of the invention, the attributes of the skilled person and the effort which they can reasonably be expected to apply: Eli Lilly & Co v Human Genome Sciences Inc [2008] RPC 29 at [241] (per Kitchin J), referring to Mentor Corp. v Hollister Inc [1993] RPC 7. Work which — although falling short of requiring the exercise of inventive ingenuity — nevertheless requires the skilled addressee to follow a path of “prolonged study”, may still amount to an undue burden: Mentor at 14 (per Lloyd LJ), citing with approval Valensi v British Radio Corporation [1973] RPC 337 at 377 (per Buckley LJ); see also ToolGen Incorporated v Fisher (No 2) [2023] FCA 794 at [348] (per Nicholas J). Ultimately, TCT Group contends that there is nothing in J [226] or [230] (or elsewhere) to suggest any error of principle made by the primary judge.

7.3    Consideration

78    By reason of the combined effect of s 43(2) and (2A) and regs 3.12(4) and 3.13D(1), (3) and (4)(a), the claims of the 918 Patent will be entitled to the priority date of the Parent if the Parent “clearly discloses” the invention claimed in the claims of the 918 Patent. The “clearly discloses” requirement will be satisfied if the invention in the claim of the 918 Patent is disclosed in the Parent in a manner that is clear enough, and complete enough, for the invention to be performed by a person skilled in the relevant art.

79    The external sufficiency requirement here largely overlaps with the wording of the post-RTB Act internal sufficiency requirement as contained in s 40(2)(a). Although s 40(2)(a) does not expressly refer to the invention as the invention defined by the claim, or the invention in the claim (c.f. s 43(2A)(b) of the Act), Nicholas J considered in ToolGen at [175] that there was no reason to doubt that the sufficiency of the disclosure for the purposes of s 40(2)(a) was to be assessed against the invention as claimed. That result was consistent with the intention expressed in the Explanatory Memorandum. The primary judge was correct to conclude that the disclosure requirements for external and internal sufficiency are the same.

80    The first step is to consider the scope of the claims of the 918 Patent, and in particular claim 1. What the invention is depends on the proper construction of the claim. There was no challenge to the primary judge’s construction of the “cooperate” integer of claim 1 of the 918 Patent, as not being confined to a direct interaction between the dampener and the striking surface of the second leaf assembly.

81    Once the claim is construed, it is then necessary to construe the disclosure in the Parent to determine whether the invention claimed in claim 1 of the 918 Patent is disclosed in the Parent. The final step is to consider whether performance of the invention by the person skilled in the relevant art is sufficiently enabled by the Parent (it being understood that the disclosures in the Patent are identical to the disclosures in the provisional).

82    The primary judge recorded at J [181] that the parties were at issue as to whether the Parent disclosed a dampener arrangement as claimed in claim 1 of the 918 Patent, and whether a person skilled in the art was adequately enabled to make a hinge within the breadth of the claim. The second issue also forms the basis of appeal grounds two and three.

83    The word “cooperate” is not found in the body of the 918 Patent specification other than in the “Summary” of the invention describing the “first aspect” of the invention: see [011]. The description of a dampener as contained in [011] is provided at [15] above.

84    The word “cooperate” is not found anywhere in the Parent specification.

85    In the Parent specification, the “Summary” of the invention at [011] describing the “first aspect” of the invention is:

… a dampener to slow movement of the first and second leaf assemblies to the closed position, wherein at least a first portion of the dampener is located within the first insert component and a second portion is configured to at least partially retract within the first insert component when coming into contact with the second leaf assembly during hinged movement toward the closed position…

(Emphasis added.)

86    It is trite that a patent specification is a unilateral statement by the patentee, in words of its own choosing, addressed to those likely to have a practical interest in the subject matter of this invention. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean, not what the patentee intended to mean.

87    It is well established that a patent specification should be given a “purposive” construction, not a “purely literal”, “meticulous verbal analysis” or a “too technical or narrow” construction: Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 at [67] (per Hill, Finn and Gyles JJ) ; Product Management Group Pty Ltd v Blue Gentian LLC (2015) 116 IPR 54 at [39] (per Kenny and Beach JJ), Tramanco Pty Ltd v BPW Transpec Pty Ltd (2014) 105 IPR 18 at [174] (per Nicholas J). A specification should be read in a practical and common-sense way.

88    To apply a “purposive” construction does not justify extending the patentee’s monopoly to the “ideas” disclosed in the specification: at [40] of Blue Gentian (per Kenny and Beach JJ). Instead, its application should be guided by considerations including those addressed by Hoffmann LJ when his Honour explained “purposive construction” in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 at [33]–[34], a passage which has since been endorsed by the Full Court including in Blue Gentian at [41] (per Kenny and Beach JJ) and Tramanco at [174] (per Nicholas J). In particular at [34], Hoffmann LJ observed:

“Purposive construction” does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.

89    The primary judge described the language of the Parent “Summary” as “unambiguous”, noting that the language in the Parent requires that the dampener make contact or touch the second leaf assembly. His Honour accepted TCT Group’s submission that the only manner in which this occurs is when the dampener is arranged to be orthogonal to the hinge axis: J [182] and [184]. His Honour found that there is no room for an intermediate part or indirect contact: J [186]. We are not persuaded that the primary judge erred in these findings.

90    Further, we are not persuaded that the primary judge erred in finding that the term “dampener” does not mean “dampener mechanism”: J [187]. This is not a case where the patentee is trying to describe something which has not existed before and of which there is no generally accepted definition.

91    The expert evidence established that a “dampener” is a component recognised in the field. The experts agreed in the joint expert report that a “dampener” is a component which slows down (dampens) the relative rotational speed of movement between the two halves of the hinge when the hinge is operating from the open to the closed position. This is consistent with the language of the Parent which treats the dampener as a particular component. The whole of the description shows the “dampener” as a component, not a collection of other parts, and not “dampener mechanism”: J [189]−[190]; see also J [199]. This distinction between a dampener as one component and a dampener mechanism, which includes intermediate components such as sliding cams to achieve a dampening effect, was supported by the expert evidence: J [191]−[192]; see also J [128], [213]. Glass Hardware’s expert agreed that no intermediate component is shown or described in the 918 Patent.

92    Elsewhere, at J [217], the primary judge employed a purposive construction where the application of a strictly literal construction would not achieve a common-sense result. His Honour construed the scope of the invention as disclosed and described as limited to a particular hinge mechanism in which the longitudinal dampener axis is “more or less” orthogonal to the hinge axis, rather than adopting the purely literal construction of solely orthogonal, because “plainly there will be scope for some variance from the perpendicular”. Much like the situation in Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183, the skilled reader would understand “orthogonal”, like “vertical”, could not have been intended by the patentee to exclude minor variants (a few degrees either side) which, to the knowledge of the skilled reader could have no material effect upon the way in which the invention worked. There was no challenge to the primary judge’s deployment of purposive construction in this context, rather Glass Hardware suggested that the primary judge’s approach to construction was inconsistent, as his Honour failed to purposively construe the “coming into contact” integer to encompass indirect contact.

93    Unlike the “orthogonal” integer, construing the “coming into contact” integer to encompass indirect contact would have a material effect upon the way in which the invention worked. It would change the means by which the dampening effect was achieved from a dampener, a single component, to a dampening mechanism, however achieved. There is no disclosure of a dampener mechanism in the Parent. It is “the dampener” which must make contact or touch the second leaf assembly.

94    The primary judge gave effect to the plain language and ordinary English words of the Parent. This was not the result of the primary judge engaging in an overly meticulous verbal analysis or purely literal construction. Purposive construction does not displace or override the clear ordinary English meaning of the words chosen by the patentee.

95    The primary judge was correct to find at J [186] that the reference to the dampener “coming into contact” with the second leaf assembly requires direct, not indirect, contact, and is narrower than the “cooperate” integer in claim 1 which requires cooperation of the dampener with the striking surface on the second leaf assembly, which encompasses a mechanism of parts that combine together to achieve a dampening function.

96    Calling in aid a combination of purposive construction, together with the application of common sense, does not enable words deliberately chosen by the patentee to be broadened beyond their ordinary English meaning to expand the scope of the monopoly claimed (to what the patentee may have intended) in order to catch a creative alleged infringer, whilst maintaining priority from the earlier specification.

97    Once it is accepted that the hinge disclosed in the Parent specification has the limitations found by the primary judge, and once it is also accepted that the invention claimed in the 918 Patent includes hinges of a design in which the dampener is not aligned to be substantially orthogonal to the axis of the hinge, and extends to hinges in which the dampener operates by indirect contact with the second leaf assembly by means of additional components, then the inevitable conclusion is that the invention claimed in the 918 Patent covers a range of embodiments. In light of the evidence before the primary judge, we do not discern error in his Honour’s finding that the Parent specification does not disclose the invention, across that range, in a manner that is clear enough and complete enough for the invention to be performed by the person skilled in the art.

8.    Conclusion

98    Ground one of Glass Hardware’s appeal fails. Given Glass Hardware’s concession that it needed to succeed on all three of its substantive grounds of appeal in order to be successful in the appeal, it is unnecessary for us to consider appeal grounds two and three.

99    Accordingly, the Notice of Appeal filed 1 May 2023 should be dismissed with costs.

Associate:

Dated:    17 July 2024