CATCHWORDS
Patents - allegation of infringement - locking device for steering wheels of motor vehicles - identification of essential integers - infringement not made out - cross-claim for revocation - novelty - obviousness - manner of manufacture
Patents Act 1952 (Cth)
Patents Act 1990 (Cth)
N V Philips Gloeilampenfabrieken and Another v Mirabella International Pty Ltd (1993) 44 FCR 239
Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183
Decor Corporation Pty Ltd and Another v Dart Industries Inc (1988) 13 IPR 385
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513
Populin v HB Nominees Pty Ltd (1982) 59 FLR 37
Radiation Ltd v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36
CCOM Pty Ltd v Jiejing Pty Ltd [1994] 51 FCR 260
Winner v Ammar Holdings Pty Ltd (1992) 24 IPR 137
Winner v Ammar Holdings Pty Ltd (1993) 41 FCR 205
Sunbeam Corporation v Morphy-Richards (Australia) Pty Ltd (1961-62) 35 ALJR 212
Olin Corporation v Super Cartridge Co Pty Ltd (1976-77) 14 ALR 149
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253
R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513
W R Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha 25 IPR 481
Acme Bedstead Co Ltd v Newlands Brothers Ltd [1937] 58 CLR 689
Matter No. NG619 of 1991
JAMES EARL WINNER and DONNA C WINNER v MOREY HAIGH & ASSOCIATES (A'ASIA) PTY LTD
O'LOUGHLIN J
ADELAIDE (Heard in Sydney)
6 FEBRUARY 1996
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY )
)
GENERAL DIVISION ) No. NG619 of 1991
BETWEEN:
JAMES EARL WINNER and
DONNA C WINNER
Applicants
AND:
MOREY HAIGH & ASSOCIATES
(A'ASIA) PTY LTD
Respondent
MINUTES OF ORDER
JUDGE MAKING ORDER : O'LOUGHLIN J.
WHERE MADE : ADELAIDE (Heard in Sydney)
DATE OF ORDER : 6 FEBRUARY 1996
THE COURT ORDERS THAT:
1. The application be dismissed.
2. The cross-claim be dismissed.
3. Each party pay his and its own costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY )
)
GENERAL DIVISION ) No. NG619 of 1991
BETWEEN:
JAMES EARL WINNER and
DONNA C WINNER
Applicants
AND:
MOREY HAIGH & ASSOCIATES
(A'ASIA) PTY LTD
Respondent
REASONS FOR JUDGMENT
Coram: O'Loughlin J.
Place: Adelaide (Heard in Sydney)
Date : 6 February 1996
These proceedings were instituted by the applicants, James Earl Winner and Donna C Winner on 4 October 1991. They sought, inter alia, declarations that the respondent, Morey Haigh & Associates (A'Asia) Pty Ltd had infringed Australian Letters Patent No. 561885 ("the CLUB Patent") and Australian Letters Patent No. 599863 ("the SUPERCLUB Patent"). The invention that was the subject of each of those patents was an antitheft device for attachment to the steering wheel of an automobile; it was claimed that the SUPERCLUB was an improvement on the CLUB. The alleged infringement was said to have occurred as a consequence of the respondent having distributed and sold a similar antitheft device under the name EZI-LOCK (Exs R1 and LPCM3). In addition to seeking the declarations to which reference has already been made, the applicants also sought injunctive relief, orders for the delivery up or destruction of the allegedly infringing articles and either damages or an account of profits.
In separate proceedings in this Court (Winner v Ammar Holdings Pty Ltd (1992) 24 IPR 137) the applicants had brought infringement proceedings as a consequence of the sale and distribution of another antitheft device called PATRIOT. The patent in suit in that case was, however, only No. 599863 (the "SUPERCLUB"). The applicants were unsuccessful; the patent for the SUPERCLUB was held invalid and that decision was upheld on appeal: Winner v Ammar Holdings Pty Ltd (1993) 41 FCR 205. As a result, an order was made by the Court that these proceedings, in so far as they concerned any alleged infringement of Patent No. 599863 (the "SUPERCLUB") be dismissed. Accordingly, this matter has proceeded with respect to Patent No. 561885 (the "CLUB" or "the patent in suit"). Mr Winner alone was, at all material times, the sole registered proprietor of this patent; it is a Convention patent, the priority date of which is 26 November 1985.
The respondent, in answer to the claim of infringement, has alleged that the patent in suit is invalid but has added the alternative plea that, in any event, there has been no infringement. In its cross-claim the respondent has sought a declaration that Letters Patent No. 561885 (the "CLUB") and each and every claim thereof is invalid and an order of revocation; in the alternative, it seeks a declaration that it has not infringed any valid claim of the patent in suit.
The Letters Patent No. 561885 ("the CLUB Patent") was granted under the provisions of the now repealed Patents Act 1952 (Cth) ("the 1952 Act"). However, by virtue of s 233 of the Patents Act 1990 (Cth) ("the 1990 Act"), the provisions of the 1990 Act now apply to it as if the patent had been granted under that Act, save that objection cannot be taken to the patent on any ground that would not have been available against it under the 1952 Act. As to this, Lockhart J explained the position in these terms in NV Philips Gloeilampenfabrieken and Another v Mirabella International Pty Ltd (1993) 44 FCR 239 at 253-254:
"In my opinion the evident intent of s 233(4) is to ensure that the grounds of revocation under the 1990 Act (which, though in some cases are expressed in different terms, are essentially the same as the grounds previously available under s 100 of the 1952 Act) apply as the grounds for revocation of a 1952 Act patent; but with this important qualification, namely, that the elements of each ground of revocation under the 1990 Act apply only to the extent that they replicate in substance the elements that previously constituted a ground of revocation under the 1952 Act. Hence, if a ground of revocation under the 1990 Act omits an element which was a necessary part of a ground under the 1952 Act, the patentee has the benefit of it. On the other hand, if a ground under the 1990 Act contains an element not previously present under the 1952 Act, it cannot apply in aid of revocation of the 1952 Act patent. In short, a 1952 Act patentee is not to be worse off than he would have been if the 1952 Act had continued to operate, but he may be better off if the 1990 Act treats a former element of a ground of revocation as being no longer necessary."
Evidence at this stage of the
trial was limited, by agreement between the parties and with the leave of the
Court, to the claims of infringement and the cross-claims of invalidity and
revocation; consequential matters, including questions of damages or an account
of profits, have been
deferred.
The applicants called two witnesses, Laurence Peter Cappy Mills, an expert locksmith, and David Wallace Lumby, a design engineer and consultant. The respondent's principal witness was Peter Kingsley Bayly, an industrial designer. However, additional evidence, restricted to the issue of prior art, was also given by Rock Adair Davis and Giovanni Clignon. Mr Davis was, in 1985, the manager of Blackwall Products, a business house that presented its products on a stand at the Sydney Motor Show in October of that year; one such product was said to be an antitheft device for attachment to the steering wheel of a motor vehicle; the device was described by a variety of names in evidence but it was most commonly referred to as the LADY LOCK (Exs R2 and GC2). Mr Clignon was the managing director of the Italian business house that allegedly distributed the LADY LOCK and arranged for its importation into Australia. In addition to its reliance on the claimed existence of the LADY LOCK, the respondent also referred to the existence of the following patents which became open to public inspection in the Australian Patent Office on the dates set out hereunder:
(a) German Patent Specification 2,718,291 ("the Bojak Patent") - 26 March 1979, Ex R3
(b) United Kingdom Patent Specification 2,039,840 ("the Lewis Patent") - 28 August 1980, Ex R4
(c) United States Patent Specification 4,304,110 ("the Fain Patent") - 18 January 1982, Ex R7
(d) United States Patent Specification 4,103,524 ("the Mitchell Patent") - 21 November 1978, Ex R8
(e) United States Patent Specification 3,462,982 ("the Moore Patent") - 30 April 1970, Ex R9.
The patent in suit is in respect of an invention entitled "Automobile steering lock". It is described in the abstract of the disclosure in terms that are substantially the same as those contained in claim one which is set out hereunder. The specification for the CLUB lock refers to it in these terms:
"The present invention pertains to the art of automobile antitheft devices, and more particularly to a device for attachment to an automobile steering wheel to prevent complete rotation thereof."
It proceeds to acknowledge that such antitheft devices "have been known" before, mentioning the Fain, Mitchell and Moore patents but claiming that they "include several undesirable features". Those undesirable features are said to be (inter alia) that the earlier devices are limited by their construction to steering wheels of specific sizes, that they are susceptible to being overcome by physical force or manipulation. Additionally it is claimed that they are inconvenient, difficult to use and because they have a fixed - and not a telescoping rod - they are difficult to store in the driver's or passenger's section of the interior of the vehicle. In the consistory clause there is a statement that "(i)t is the object of the present invention to overcome or substantially ameliorate the above disadvantages". The first of the claims defining the invention is in the following terms:
"1. An antitheft device for attachment to a steering wheel of an automobile comprising: an elongated tubular body member having a passage extending along an axis therethrough, first hook means secured to said body member for engagement with a portion of said steering wheel wherein said first hook means engages said wheel from the inside thereof with said body member having an extended portion thereof to extend outward beyond the periphery of said steering wheel, an elongated rod member adapted to move in telescopic fashion in said passage of said body member along said axis, second hook means secured to said rod member for engaging from the inside a portion of said steering wheel diametrically opposed to said first hook means, means associated with said body member engaging said rod within said passage for locking said rod member stationary with respect to said body member at any of a plurality of positions, said extended portion of said body member having a length such that rotation of said steering wheel with both said hook means engaged thereon is limited by contact of said extended portion with said automobile, and wherein both hook means provide a recess to receive said steering wheel, which recesses are spaced laterally of said axis."
The specification includes the drawings fig.1 of which is set out as appendix 'A' to these reasons; only those features in fig.1 that are material for present purposes are identified; they are as follows:
10 an elongated tubular body member
30 an elongated tube
38 a passage extending along an axis
16 first hook means
36 an extended portion of body member 10
12 an elongated rod member
18 second hook means
20 locating means
22 locking means
14 housing
The drawings depict a device made up of two primary parts; the first is that shown in the upper section of fig.1 - it comprises the housing14 within which are the locating means20 and locking means22 and the elongated tubular body member10 which has the appearance of being of fixed length. The body member36 extends beyond the periphery of the wheel which is positioned in the recess16a of the first hook means. The device is fixed on the steering wheel in the most convenient position: probably with the extended portion at 1 o'clock or 7 o'clock so as to prevent (by contact with the car window or the car seat) or, at least, substantially minimise any rotation of the steering wheel. According to the preferred embodiment, tube30 is surrounded by an outer sleeve to provide a double walled section36; in the preferred embodiment, tube30 and the outer sleeve are comprised of lengths of standard structural steel pipe welded together. The second part of the device is the elongated rod member12. It is inserted through the locking mechanism22 and the elongated tubular body member10 in a collapsed position. It is then withdrawn telescopically outward until the recess18a of second hook means18 engages the steering wheel directly opposite the point of engagement of first hook means16. That is the limit of the telescopic function of the elongated rod member12.
The specification contains nine claims and the applicant, Mr Winner, maintains the validity of all. He has asserted that claims 1, 2, 3, 4 and 6 have been infringed by the respondent. He claims that the EZI-LOCK possesses each of the integers of those claims and, in the alternative, if it does not, it takes the substance of the invention claimed in each of those claims. For its part, the respondent has admitted that most of the integers are present in the EZI-LOCK but nevertheless asserts that there is no infringement as there are three differences of material importance. I will mention each of those alleged differences briefly and thereafter consider them in detail.
The first refers to that part of claim one which states that the device comprises "an elongated tubular body member" having "an extended portion thereof to extend outward beyond the periphery of said steering wheel". As to this, it is said of the EZI-LOCK that it has an elongated tubular body member but that there are two passages within it adapted to receive two different rods. One rod, with a hook attached to it, extends telescopically to engage the steering wheel opposite the point of engagement of the first hook means whilst the second rod (without any hook attached to it) is an extendable rod that can be telescoped in the same direction as the first to make contact with some part of the interior of the motor vehicle and so prevent or substantially minimise rotation.
The second alleged difference relates to that part of claim one which refers to:
"...means associated with said body member engaging said rod within said passage for locking said rod member stationary with respect to said body member at any of a plurality of positions".
As to this the respondent claims that the operator of the CLUB must use a key to unlock it and affix it to the steering wheel. The use of a key is not necessary when affixing the EZI-LOCK even though the mechanism may be in the locked position.
Finally, there is the third area of contention. In claim one in respect of the CLUB it is asserted that the elongated rod member12 is adapted to move "in telescopic fashion in said passage of said body member along said axis". The earlier reference to "axis" is to be found in the opening words of the claim:
"An elongated tubular body member having a passage extending along an axis therethrough ..."
As to this the respondent submits that there are two passages in the EZI-LOCK, each of which is offset from its central longitudinal axis.
The rules relating to the interpretation of patent specifications are not special. In Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183 at 243 Lord Diplock said:
"A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked". (Emphasis in original text).
In Decor Corporation Pty Ltd and Another v Dart Industries Inc (1988) 13 IPR 385 at 399-400 Sheppard J quoted this passage from the speech of his Lordship and thereafter proceeded to summarise the relevant rules of construction in these terms:
"(1) The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.
(2) It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.
(3) Nevertheless, in approaching the task of construction, one must read the specification as a whole.
(4) In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.
(5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.
(6) A patent specification should be given a purposive construction rather than a purely literal one.
(7) In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.
(8) The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.
(9) Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.
(10) If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date."
In the same case, Lockhart J said at p 391:
"It is well established that there are no special rules for the interpretation of patent specifications, which are to be interpreted in the same way as any other written document upon ordinary principles of interpretation. The words used in a specification are to be given the meaning which the normal person skilled in the art would attach to those words, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification."
The patent in suit is a combination patent and in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513, Gummow J stressed the importance for a patentee to claim only the essential integers in a combination. This, as his Honour explained, is because to establish infringement in a combination patent, the applicant must show that the respondent has taken each and every one of the essential integers of the applicant's claim; if, on its true construction, the claim is for a particular combination of integers and the alleged infringer omits one of them, the infringer escapes liability. After referring to Populin v HB Nominees Pty Ltd (1982) 59 FLR 37, Gummow J then went on to explain, however, that:
"...where what is in question is an inessential integer, a device which contains the essential integers will fall within the claim, whether or not an inessential integer is replaced by an obviously equivalent device or omitted altogether; ..." (pp 527-528).
A Full Court, comprising Bowen CJ, Deane and Ellicott JJ, in Populin v HB Nominees (supra) explained combination patents in these terms:
"Many patents are combination patents. That is to say, they consist of the
combination of a number of known integers which work in relation to one another
so as to produce a new or improved result.
This is the case with the invention claimed in the appellants'
patent. None of the elements claimed is
new in itself. What is new is
the working relationship of the various elements to produce a new and improved
machine for planting cane. Because of
the requirements of provisions such as s 40, it has become the practice to set
out in the claim, sometimes at great length, the elements or integers of the
invention. As in this case it is also
common for the first claim to be added to or varied in the subsequent
claims. This progressively adds elements
to the combination, which tend to make an attack upon the grounds of want of
subject matter or want of novelty more difficult. The effect is progressively to narrow the
area of monopoly claimed." (p 41)
However, later, at the same page, the Court pointed out that the courts have avoided too technical or narrow a construction of claims, quoting from the judgment of Dixon J (as he then was) in Radiation Ltd v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36 at 51:
"But, on a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe. It is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing."
It is now necessary to consider in further detail the disputed features in the two locks.
Extended Portion
The respondent claims that the EZI-LOCK does not infringe claim one of the patent in suit because it does not possess the following integer:
"an elongated tubular body member10... with said body member10 having an extended portion36 thereof to extend outward beyond the periphery of said steering wheel ... said extended portion36 of the said body member10 having a length such that rotation of said steering wheel ... is limited by contact of said extended portion with said automobile."
(I
have inserted the numbers 10 and 36 as a matter of
convenience to align the challenged integer with the relevant drawing).
According to the submissions of the respondent, the phrase "an extended portion" of the elongated body member requires that the element that has the dimension and the purpose that is referred to in the integer must be "a part" of the elongated body member and such an element cannot be regarded as part of the elongated body member unless the totality of the elements of which it forms part constitutes an "elongated tubular body member". The applicant contends that the EZI-LOCK has this integer. He relies, in part, on the definition of the word "portion" in The Macquarie Concise Dictionary: "a part of any whole, whether actually separated from it or not". Separate parts was not a concept that attracted the respondent's expert witness, Mr Bayly; he accepted that "an extended portion" was apt to describe something comprised of two pieces but he considered that it remained necessary for those pieces to be permanently fixedly secured. As to this, counsel for the applicant replied that when extended and used for attachment to a steering wheel, the EZI-LOCK's second rod (that is, the one without a hook attached) is fixedly secured and it remains permanently so until the user unlocks the device; it was his claim, on behalf of the applicant, that the existence of the second rod does not remove it or the EZI-LOCK from the phrase "an extended portion thereof to extend outwardly beyond the periphery of the said steering wheel ... said extended portion of said body member having a length such that rotation ... is limited by contact ...". He submitted that the function of the CLUB is plainly achieved by the EZI-LOCK and by the same means - an extended portion of the body member. In such circumstances, the presence of the second rod as an additional feature would not save the EZI-LOCK from infringement: CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 275.
I cannot accept this proposition; it contradicts the clear language of the claim. Counsel for the respondent submitted, and I accept, that the language of the claims of the patent in suit was perfectly clear and that there was no warrant to go outside the claims to construe them, subject, of course to the proposition that one must read the specification as a whole.
The word that is used, "extended", connotes, in my opinion, a fixed length; it is to be contrasted with "extensible". According to the Oxford English Dictionary, 2nd Edition, the former means "stretched out to the full" whilst the latter has the telescopic meaning of "capable of being extended...". The conclusion that I have reached is that it is an essential element of the CLUB that its extended portion (although retractable) be of a fixed and predetermined length whilst its variable length is achieved by the telescoping ability of the rod member. That essential element is not present in the EZI-LOCK. This conclusion also finds some support by the manner in which reference has been made in the specification to the Fain, Mitchell and Moore patents (Exs R7, R8 and R9). The drawing for each of them indicates that there is a rod member which is of sufficient fixed length to achieve the function of preventing or materially limiting rotation of the steering wheel. Although the specification lists several undesirable features about the prior art, the fixed length of the extended portion is not so listed; the invention that has been described and claimed is not designed to overcome that feature and the specification discloses no means of doing so.
Locking Means
The following passage (with identification numbers inserted by me) appears in lines 11 to 14 of claim one:
"means associated with said body member10 engaging said rod12 within said passage38 for locking said rod member12 stationary with respect to said body member10 at any of a plurality of positions."
The case for the respondent was that the limitation that the rod member and tubular body member be locked stationary with respect to each other at any of a plurality of positions was a deliberately chosen and essential element of the claim: it meant that there could be no relative axial movement between the two members. Expressed another way, it meant that the rod member12 could not be extended outwards so that its attached hook means could engage the steering wheel when the device was in a locked position. It would be necessary for an operator, by use of a key, to convert to the unlocked position so that the device could be appropriately affixed to the steering wheel. The EZI-LOCK may be extended and affixed to a steering wheel when in the locked position but it cannot be retracted without the use of a key. In Winner v Ammar Holdings (supra) the SUPERCLUB, which was the subject of that litigation, had a like "one-way" lock. Both the trial judge and the Full Court came to the conclusion that the alleged invention, although novel, was merely an obvious improvement to address an obvious problem.
Counsel for the applicant maintained that both the CLUB and the EZI-LOCK were intended for attachment to the steering wheel of a motor vehicle, each having a rod member that was intended to be locked with respect to its body member at one of a "plurality of positions" and when each is locked in place it can be said of each device that its rod member is locked "stationary with respect to said body member". Thus it could be said, and in my opinion, correctly so, that the lock means of the EZI-LOCK locks the rod member stationary with respect to the body member in the only way that matters functionally. To apply the language of Dixon J (as he then was) in Radiation Ltd v Galliers and Klaerr (supra) at 51 "the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing." See also Sunbeam Corporation v Morphy-Richards (Australia) Pty Ltd (1961-62) 35 ALJR 212 at 217 per Windeyer J and Olin Corporation v Super Cartridge Co. Pty Ltd (1976-77) 14 ALR 149 at 157 per Gibbs J.
Perhaps, despite its obviousness, the EZI-LOCK's "one-way" lock constitutes an advantage; even so, I accept that it is extraneous to the invention; I accept that, with respect to this issue, the EZI-LOCK works in the way in which the invention claims that it works. The EZI-LOCK has the additional "one-way" feature but:
"If what the defendant has done does fall within the claim, it will infringe no matter what additional inventive features it contains: infringement cannot be avoided by 'the super-adding of ingenuity to robbery'." (Blanco White, Patents for Inventions 5th Ed p 45: par 3-004).
The Axis
The respondent further says that the EZI-LOCK does not infringe claim one because it does not possess the following integer:
"... an elongated rod member12 adapted to move in telescopic fashion in said passage38 of said body member10 along said axis."
The case for the respondent is that the use of the word "axis" can only refer to the central longitudinal axis of the CLUB device; the word "axis" first appears in line 3 of claim one. In lines 2 and 3 of claim one it is stated that there is an elongated tubular body member10 having a passage38 extending along an axis therethrough. Claim one concludes with these words where the word "axis" appears once more:
"... and wherein both hook means16 and 18 provide a recess16a and 18a to receive said steering wheel, which recesses are spaced laterally of said axis."
In answer to these assertions the applicant argues that as the EZI-LOCK has a passage (in fact it has two passages) it thereby has a passage extending along a longitudinal axis in terms consistent with the contents of lines 2 and 3 of claim one; he also argues that the description characterises the rod member and the location of the passage - not an axis. In my opinion, this cannot be correct. Such an interpretation pays no attention to the fundamental distinction between the two devices which were explained when considering the issue of "extended portion". The two extensible rods in the EZI-LOCK have an ordained and justifiable use and their presence means, of necessity, that there must be two passages. Thus there is not and cannot be one relevant axis because each passage is offset from the central longitudinal axis. I have concluded that the EZI-LOCK does not possess that integer.
Fairly Based
In its Particulars of Objection the respondent also alleged failure on the part of the applicants to comply with the requirements of s 40 of the 1952 Act or sub-ss 40(2) and (3) of the 1990 Act. The requirements under the old and the new Acts are, for practical purposes, the same and it will be sufficient to state the relevant provisions of the new Act:
"40 (1) ...
(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and
(c) ...
(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
(4) ..."
Failure to comply with the provisions of sub-ss (2) or (3) is a ground for the revocation of a patent: par 138(3)(f) of the 1990 Act; see also s 100 of the 1952 Act.
Mr Catterns QC, counsel for the applicant, submitted that the specification describes a device in the form of a steering wheel lock with a body "having an extended portion thereof to extend outward..."; he claimed that it did not describe and did not need to describe the myriad ways in which that object could be achieved. It was his case that a claim to a steering wheel lock is fairly based on the matter described in the specification and that it can be infringed by a device which possesses that integer, however constructed. For the reasons that I have already stated, I cannot accept that proposition - the structure of the EZI-LOCK because of the dual extensible rods (as well as the offset axes) constitutes a material difference. As the respondent's reliance on s 40 was posited upon the contrary premise that the applicant would or might have been otherwise successful in establishing infringement, it is not actually necessary to consider this issue. However, in the event that the matter should go further I express, in summary form, my general agreement with the following propositions that were advanced on behalf of the respondent; there is not to be found anywhere any description or disclosure of a device in which the limitation of rotation of the steering wheel is achieved by a second elongated rod member adapted to move telescopically within a passage in the tubular body member and there is no disclosure of the advantages of such a device.
Infringement
Infringement requires each of the essential elements of the combination to be taken; in my assessment of the issues in this case the EZI-LOCK device lacks two of the integers found in claim one: it does not have an extended portion of the relevant body member and its elongated tubular body member does not have a passage extending along an axis there through. In my opinion infringement has not been made out and the application should be dismissed.
The essence of the invention described and claimed in the patent in suit is an antitheft device wherein a combination of features, purportedly by improving upon the stated prior art, co-operate in a particular way to achieve the known purpose of limiting the rotation of a steering wheel of a motor vehicle. I accept the submission of counsel for the respondent that the EZI-LOCK device does not take the essence of that invention. I agree that rotation of the steering wheel is limited or prevented in the EZI-LOCK by elements which cooperate by a different mechanical operation from that of the claimed invention. Those elements have significant operational advantages in the means for preventing rotation. The differences constitute a new combination that cannot be dismissed as immaterial.
The cross-claim
Under the 1952 Act a standard patent could be revoked on one or more of the grounds listed in sub-s 100(1). Those grounds included proof that the invention was not an invention within the meaning of the Act, obviousness and lack of novelty in Australia: see pars (d), (e) and (g). In the 1952 Act "invention" was defined in s 6 as meaning:
"any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention."
Sub-section 18(1) of the 1990 Act relevantly provides as follows:
"18(1) ... a patentable invention is an invention that, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii)involves an inventive step; and
(c) ...
(d) ..."
The respondent has challenged the alleged invention on the grounds that it is not a manner of manufacture, that it lacks novelty and that it does not involve an inventive step (i.e. obviousness). In his final submissions, counsel for the respondent dealt first with novelty, then with s 6 and finally with obviousness. I will deal with his submissions in the same order.
Novelty
The respondent claims that the invention, so far as claimed in each and every claim of the complete specification of the Letters Patent:
(a) was not novel in Australia on the priority date of each such claim (26 November 1985); or, alternatively
(b) is not a patentable invention as the alleged invention was not novel when compared to the prior art base as it existed before the priority date of each such claim.
In support of this proposition, the respondent relies upon the fact that the invention was allegedly known and published in Australia before the priority date:
(a) by reason of the importation, advertising, promotion and offering for sale of the LADY LOCK
(b) by reason of the publication in the Patent Office Library, Canberra of the Bojak patent and the Lewis patent.
The LADY LOCK
The evidence with respect to the importation of this device into Australia and its subsequent distribution and availability is insufficient to justify any meaningful finding of fact. Two broad bases of evidence were adduced; the first in point of time were two shipping invoices (Ex GC4) dated 24 July 1984 and 12 September 1984. Both were issued by M & G Marketing SAS (Mr Clignon's Italian company) in favour of Beal Pritchett Pty Ltd of Crows Nest, New South Wales. Each invoice covers various items of "Car Alarms" and "Antitheft bars" and each invoice included one (1) LADY BLOCK which Mr Clignon acknowledged were shipped as samples only. I am prepared to accept Mr Clignon's evidence that LADY BLOCK was the LADY LOCK (another name that was given to the same device was LOCK 4). But that, without more, is of little assistance. Nothing else is known of Beal Pritchett Pty Ltd and nothing is known about the fate of the two samples. No inference favourable to the respondent's case can be drawn from such sketchy information.
I turn next to the evidence relating to the LADY LOCK and the Sydney Motor Show in October 1985. In his affidavit sworn on 30 March 1992, Mr Clignon identified the LADY LOCK (Ex GC2) as "a sample of LOCK 4 which is identical to the LOCK 4 I brought to Australia in October 1985": (emphasis added). Both Mr Davis, the manager at the time of Blackwall Products, and Mr Clignon, were questioned closely about their recollections of the presence or presentation of the LADY LOCK at the Motor Show. As the following extracts from their evidence show, neither was able to assert positive facts upon which findings of display and disclosure of the LADY LOCK and its functions, could be made. At pp 104-105 Mr Davis acknowledged that the principal focus of his firm's stand in the 1985 Show was the MONGOOSE car alarm. At p 106 he was then asked by counsel for the applicant whether he had a clear memory that the LADY LOCK was, indeed, displayed on his stand:
"MR CATTERNS: Are you completely certain Mr Davis, I realise this is as far back as 1985, that a Lock 4 or a Lady Lock was in fact on display as well as the various car alarms?---We had a brochure which is attached to that affidavit of mine and on that was distributed as to the best of my knowledge all of the product.
And so you think that because the brochure has the Lock 4 on it that a Lock 4 would have been at your stand?---Yes.
Do you not have a direct recollection of the Lock 4 being - - -?---Not directly, no.
So you remember the brochure and you work back from the brochure?---I certainly remember the brochure very distinctly and I don't recall Mr Clignon advising me and I was the organiser of that display stand that what was being displayed on that brochure was not being exhibited at the show."
These questions were not asked of Mr Clignon, either in evidence in chief or in cross-examination, although he had stated in par 10 of his affidavit of 30 March 1992 that the LOCK 4 was "displayed" on Blackwall's stand. If the LADY LOCK was displayed on the Blackwall stand at the Sydney Motor Show in October 1985 I do not know how or where it was displayed. It is even possible that its physical presence on the stand may have been somehow obscured from public scrutiny. I accept that brochures were distributed to passing members of the public and that those brochures included references to the LADY LOCK but there was no evidence of inquiry from the public nor was there evidence of the means or manner of display. In fact the impression that I gain from listening to the evidence of the two men was that Mr Davis was more interested in his MONGOOSE alarms and Mr Clignon was more interested in his MACH products. Asked to agree that the Blackwall stand was primarily displaying MONGOOSE car alarms, Mr Clignon's response relevantly referred to MACH rather than LADY LOCK when he said:
"I don't remember that. I must be very frank, but if I can say this; the product was MACH branded product which was exhibited and which I sold to him." (p 83)
This paucity of evidence could not justify any finding of prior disclosure or publication of the LADY LOCK. The evidence is insufficient to make a finding that the LADY LOCK was made available to the public before the priority date.
However, if I am wrong, my further conclusion that the LADY LOCK lacks an essential integer of claim one of the patent in suit. The LADY LOCK, like the CLUB, is essentially made up of the same two features: that is, a body member (with an elongated portion) and a rod member. Like the CLUB, it has a hook means attached to the body member which provides a recess to receive the steering wheel; that recess is also spaced laterally of the longitudinal axis. However, there is no like hook means on the rod member. Instead there is a U-shape hook at the extremity of that rod and the central section of the U-shape hook is the recess which accepts the steering wheel in the diametrically opposed position.
The existence of the U-shape hook is a material departure from the last part of claim one of the patent in suit which requires both recesses to be "spaced laterally of said axis". I reject the respondent's proposition that the U-shape hook means on the rod member provides a recess that is spaced laterally on both sides of the central longitudinal axis. That is factually wrong; it suggests the presence of two spaces when there is only one. Finally, the respondent argued that the U-shape hook means is not different in substance from a hook means (such as the CLUB) that provides a recess wholly on one side only of the axis of the rod as both operate in the same way mechanically. That is not so as the lateral spacing in the CLUB has the effect of "raising" the antitheft device above the central hub of the steering wheel assembly: see specification p 9 lines 6-13 and the evidence of Mr Lumby. This "raising" offers greater flexibility of use irrespective of the permutations of various steering wheels.
The Bojak Patent - Germany (Ex R3)
The drawings 8A, 8B and 9A on p 13 of the Bojak specification depict the joinder of a tubular memberD1 and a rod memberD2 together with the provision of a locking mechanismSE. Provision is made in the drawings for the insertion of rod memberD2 into, through and beyond a passageway in tubular memberD1 and, in that sense, memberD2 is an elongated rod member. Mr Lumby agreed in cross-examination that, by reference to the drawings and the body of the specification, it could be readily understood that the locking mechanismSE was a mortise lock which operates by projecting through memberD1 and then into memberD2 in a plurality of positions. Mr Bayly, at pp 150-151 in re-examination also drew attention to pages 5 and 6 of the Bojak specification and to references to the ability to adjust to the various dimensions of steering wheels. For example, the following passage appears on p 5 of the English translation:
"The device can be adjusted in length to various steering wheels and to the interior dimensions of the vehicle, e.g. to the distance from the windscreen. In addition, it is easy to install and can be secured by means of a lock - or optionally two locks - while the robust construction of all components - preferably from steel - prevents removal through force."
Each of them the tubular memberD1 and the rod memberD2 has a hook meansU1 and U2 respectively attached. Unlike the extended portion of the elongated tubular member in the patent in suit, the extremities of both hook means appear to be coterminous with the matching members. I do not, however, regard that as an essential difference. The case for the respondent was to this effect: upon positioning hook meansU1 and U2 to the rim of the steering wheel in diametrically opposite positions the device was ready for locking and was possessed of all essential features of claim one of the CLUB patent. As to the locking mechanism, it was submitted that it could be said of the Bojak device that its housing was "associated with said body member...". But this latter submission was made in the face of an assertion from Mr Lumby that the housingSE is removable and is not permanently attached to the tubular memberD1. Much therefore depends upon the meaning to be given to the word "associated" in the context in which it is used in claim one of the patent in suit:
"...means associated with said body member engaging said rod within said passage for locking said rod member stationary with respect to said body member at any of a plurality of positions..."
The word "associate" and its derivatives is given a variety of meanings in the dictionaries. One that is suggestive of integration, appearing in The Macquarie Concise Dictionary, is "to unite; combine" and "coal associated with shale" follows as an example. Other meanings include thought processes and personal and other relationships. In my opinion this is a case there the true meaning of a word is to be derived from the context in which it is used, entitling one to make reference to what is said in the body of the specification; Decor Corporation v Dart Industries (supra) at 400 per Sheppard J.
The relevant passage was identified by counsel for the applicant in his final submissions as that appearing on pp 7-8 of the specification:
"With respect to locking means22, housing14 includes a boss70 laterally offset with respect to axisA of body member10. Locking means22 is comprised of a conventionally known key lock72 and a locking member74. Locking member74 is generally cylindrical in shape and includes an arcuate outer surface76 of a diameter generally matching the semi-circular grooves50 in rod46, and a flat or recessed portion78. A washer member (not shown) is provided between lock72 and locking member74 to effect rotational movement of locking member74 about its axis when lock72 is locked and unlocked. To accommodate lock72 and locking member74, bore84 of varying diameter is provided through boss70 into housing14. Bore84 intersects tube30 and produces a slot or aperture86 which intersects passage38, as shown in FIGURE 1. Bore84 is aligned relative to passage38 such that arcuate surface76 of locking member74 is partially disposed within passage38 when locking member74 is in a first position and recess78 is oriented toward passage38 when member74 is rotated 180o to a second position. Further in this respect, bore84 is disposed relative to bore64 such that when spherical member60 is aligned with a groove50 on rod46, locking member74 is likewise aligned with a groove50 on rod46. According to the present invention, spherical bearings60 and locking member74 are disposed opposite each other in housing14 such that they align with the same groove50 on rod46."
I take this passage in its entirety, aided by the references to bore84 intersecting tube30 and being aligned relative to passage38 as pointing to the housing14 plus the locking means22 and locating means22 as being part of an integrated whole: see also p 8 of the specification where it is stated that housing14 is die-cast around portion34 of tube30 "to form an integral structure therewith". I accept the submission of counsel for the applicant that the use of the word "associated" in this context denotes a single device comprising a combination of component parts.
In considering the issue of the claimed lack of novelty, the generally accepted test for anticipation is the "reverse infringement" test: General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485-6; Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228; Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253; R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 517. As Lockhart J said in Nicaro Holdings Pty Ltd v Martin Engineering Co (supra) at 517:
"It is well established that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments."
See also the remarks of Gummow J at 528.
I have come to the conclusion that it cannot be said with the required degree of satisfaction that the lock housing in the Bojak patent is integrated with the body member. I consider that to be an essential integer. The claim of lack of novelty on this ground fails.
The Lewis Patent - United Kingdom (Ex R4)
The device shown in the drawings in the specification for the Lewis patent can, except for its locking means, be said to coincide with the CLUB. It has the equivalent of a tubular body member and an elongated rod member, both having attached hook means. Unlike the CLUB however, the body member and the rod have transverse holes; when the elongated rod member is extended the holes in the two members are brought into registration and a padlock loop or hasp is passed through the registering holes to lock the device. In addition, as Mr Lumby acknowledge in cross-examination (p 177) the locking relationship could be achieved in a plurality of positions.
Counsel for the respondent submitted that the padlock means for the LEWIS device constituted "means associated with said body member". But, for the reasons that I expressed when considering the BOJAK lock, I must reject that argument. The padlock is a separate and moveable component. It is not part of the integrated whole.
I reject the respondent's claim that the patent in suit should be revoked on the ground that it lacks novelty.
Section 6
The respondent, in its cross-claim has sought revocation of the patent in suit on the ground that it is not an invention within the meaning of the legislation.
A Full Court of this Court has said that the relevant principles governing s 6 of the Statute of Monopolies are now well established:
"Section 6 requires that there be some inventive idea sufficient to warrant the grant of a monopoly. To be patentable a manner of manufacture must not only be new, it must also not be something which would suggest itself in the ordinary course to anyone using an invention already known. A manner of manufacture must be something discovered which is not included in the already existing stock of public knowledge and must be the result of independent invention."
(W R Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha 25 IPR 481 at 497).
Thus, the patentee in Acme Bedstead Co Ltd v Newlands Brothers Ltd [1937] 58 CLR 689 was unsuccessful even though his bed was "plainly a good and effective article" (at 700 per Latham CJ). The Chief Justice then explained why the plaintiff's bed lacked inventive merit at 700:
"But it is necessary for the plaintiff to show that an inventive step was involved in designing the bed. He has combined together well-known mechanical integers and has used each of them for its natural and well-known purpose. I agree with the Full Court that there is no inventive ingenuity in using a rectangular or other non-rotatable leg instead of a round leg or in using a ratchet and pawl for a purpose for which a ratchet and pawl has always been used. The plaintiff has simply applied well-known things to an article to which they had not formerly been applied."
Counsel for the respondent also relied upon a lengthy passage from the judgment of Dixon J (as he then was) at pp 708-709:
"To my mind the truth of the present case is that once mechanical means of raising and lowering a hospital bed were asked for, the task of supplying them became one of selecting the most convenient and satisfactory out of a host of mechanical expedients all lying ready to hand. The actual inventor has narrated how matrons of hospitals asked him for such a bed and how he set to work to devise it. He has stated and illustrated expedients which he adopted or with which he experimented. The whole process through which he went affords, to my mind, confirmation of the view that he was not employed in invention but in supplying out of an embarrassing number of choices open to him that which in its practical application would prove most useful and commercially successful. The case falls, I think, within the language used by Maugham J., as he then was, in Adelmann and Ham Boiler Corporation v. Llanrwst Foundry Co. (1928) 45 RPC, at p 420: '[T]he alleged invention, though possessing the advantages of being an excellent design, is simply the application of a well known and well understood piece of mechanism to achieve an obvious advantage, and is not the proper subject of Letters Patent'."
The argument that was advanced by counsel for the respondent was to this effect: if the LADY LOCK did not contain the feature of claim one of the patent in suit that both hook means provide a recess to receive the steering wheel which recesses are spaced laterally of the axis (and I have found that it did not contain that feature) then, according to the submission there is no inventive merit or exercise of inventive faculty in providing that feature.
I cannot agree. Save for the EZI-LOCK only the CLUB and the SUPERCLUB have this significant and additional feature. The LADY LOCK, the BOJAK patent and the LEWIS patent are all deficient in this regard. The simplicity of the additional feature should not be cause for denying it inventive merit.
Obviousness
In my opinion the respondent's claim for revocation under this heading cannot succeed. As counsel for the respondent acknowledged such a ground may only be advanced on the basis of common general knowledge: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (supra). Having regard to some concessions that were extracted from Mr Mills and Mr Lumby (pp 58 and 162) about the apparent ease with which one could remedy a fault in the locking device that caused fouling of the steering wheel hub, it is, perhaps, desirable to quote from the judgment of Aickin J in the Minnesota Mining and Manufacturing case at p 294:
"It is pointless to say, as some witnesses did in the present case that given the description in the claims in the patent they could with the aid of some prior specifications have produced the end product. This is an extreme example of the ex post facto dissection of an invention which has been vigorously criticized in many courts.
It is worth quoting yet again the words of Fletcher-Moulton L.J. in British Westinghouse Electric and Manufacturing Co. Ltd. v. Braulik (1910) 27 RPC 209, at p 230 where he said:
'I confess that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to the inventors, and in my opinion it is not countenanced by English Patent Law.'
Similar statements may be found in many cases; see, e.g., per Latham CJ in Palmer v. Dunlop Perdriau Rubber Co. Ltd. (1937) 59 CLR 30, at pp 60-61."
In any event there was no evidence in this case that could justify a finding that the LADY LOCK or the BOJAK patent or the LEWIS patent were common knowledge among persons skilled in the relevant art.
Conclusion
For the reasons that I have set out the applicant's allegations of infringement have failed and his application must be dismissed. Likewise, the respondent has been unsuccessful; its cross-claim must also be dismissed. In my opinion it is appropriate that there be an order that each party pay his and its own costs.
I certify that this and the
preceding pages are a true
copy of the Reasons for
Judgment of Justice O'Loughlin
Associate:
Dated:
Counsel for the applicant : Mr D Catterns QC with Ms Goddard
Solicitors for the applicant: Sprusons Solicitors (Incorporating Williams Niblett)
Counsel for the respondent : Mr R Macaw QC with Mr Hess
Solicitors for the respondent : Alfred Tatlock
Date of hearing : 1 May 1994
