FEDERAL COURT OF AUSTRALIA

Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCA 314

PATENTS – application claiming infringement of patent – whether respondent infringed the applicant’s patent – where respondents manufactured and sold road safety barriers – whether the guard member on the road barrier is “mounted on” the barrier elements – where guard member is not connected flush to the barrier elements – where guard members are connected to barrier elements by use of brackets – where guard members  are mounted on the barrier elements notwithstanding that they are proud of the surfaces of the barrier elements – where guard member need not be in direct contact with the side walls of the barrier elements – where applicant’s patent is infringed if the patent is valid

PATENTS – application claiming infringement of patent – whether respondent infringed the applicant’s patent – where respondents manufactured and sold road safety barriers – whether the guard member connected to the barrier elements “overlies the side walls of at least two adjacent barrier elements” – where guard member is not connected flush to the barrier elements – where guard member extends longitudinally over at least two barrier element side walls – where guard member need not be in direct contact with the side walls of the barrier elements – where applicant’s patent is infringed if the patent is valid

PATENTS – cross-claim claiming applicant’s patent is invalid – whether applicant’s patent is invalid by virtue of lack of novelty due to prior publication – where a US patent is identified as substantially similar – whether US patent is similar enough to constitute lack of novelty – whether there is a physical connection between reinforcing metal pipes and barrier elements – where the frame structure is securely mounted to the barrier – where the US patent anticipates the applicant’s patent – where the applicant’s patent is invalid for want of novelty

PATENTS – cross-claim claiming applicant’s patent is invalid – whether applicant’s patent is invalid by virtue of lack of inventive step – whether the applicant’s patent is invalid on the grounds that it is not a patentable invention – where the incorporation of an additional guard member to inhibit or prevent damage to interlocking barrier elements results in an invention – where the applicant’s patent is a patentable invention

PATENTS – cross-claim claiming applicant’s patent is invalid – whether applicant’s patent is invalid by virtue of lack of clarity in the patent claims – where the patent claim is sufficiently clear

TRADE PRACTICES – claim under section 52 of the Trade Practices Act – whether actions of the respondents breached section 52 – where claim deferred until determination of patent claims

Patents Act 1990 (Cth) ss 18, 40(3), 138

Trade Practices Act 1974 (Cth) ss 52, 82

Federal Court Rules Order 29 rule 2

Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411 cited

Austral Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420 followed

Flexible Steel Lacing Co v Beltreco Ltd (2001) 49 IPR 331 cited

Flour Oxidising Co Ltd v Carr & Co Ltd (9108) 25 RPC 428 discussed

General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd (1971) 1A IPR 121 cited

Imperial Chemicals Industries Pty Ltd v Cmr of Patents (2004) 213 ALR 399 cited

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

Minnesota Mining and Manufacturing Co and 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 followed

NSI Dental Pty Ltd v University of Melbourne [2006] FCA 1216 cited

N.V. Philips Gloeilampenfabrieken v Mirabella International Pty limited (1995) 183 CLR 655 followed

Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 68 IPR 1 discussed

Ryan v Lum (1989) 14 IPR 513 followed

Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 65 IPR 605 cited

Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 followed

KINABULU INVESTMENTS PTY LTD (ACN 001 469 718) v BARRON & RAWSON PTY LTD (ACN 000 065 636), ANTHONY J CAREY AND WAY TO GO AUSSINDO PTY LTD (ACN 080 761 511)

QUD 217 OF 2005

SPENDER J

11 MARCH 2008

BRISBANE

THE COURT DECLARES THAT:

1.                  Australian Patent 774224 A barrieris, and has been at all material times, invalid,

THE COURT ORDERS THAT:

1.         Australian Patent 774224 A barrier, and each and all of the claims of the complete specification thereof, be revoked.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     This is a proceeding commenced in the Court by Application and a Statement of Claim filed on 25 July 2005, wherein the applicant claims that the respondents have infringed Patent 774224 A barrier (the Patent), which was registered by the applicant as patentee under the Patents Act 1990 (Cth) (the Act) on 10 August 2000, and having priority from 10 August 1999. The Patent is for a term of 20 years.

2                     The applicant’s Patent “relates to a barrier”, primarily for application as a traffic barrier. The function of a traffic barrier, the evidence shows, is to redirect or arrest an errant vehicle safely and prevent the errant vehicle from passing through it.  The purpose for doing so may be to protect the occupants of the vehicle from colliding with a roadside or other hazard or may separately or also be to prevent the errant vehicle from colliding with people working or otherwise positioned in the area behind the traffic barrier. 

3                     The applicant also seeks relief under s 82 of the Trade Practices Act 1974 (Cth) (the TP Act) for an alleged breach by the first and second respondents of s 52 of the TP Act.

4                     In its Amended Application, filed 3 April 2006, the applicant seeks the following relief:

1                    A declaration that the Respondents have infringed Australian Patent 774224 A barrier (the Patent).

2                    An order that the Respondents, whether by themselves, their servants or agents, be restrained from during the term of the Patent, and any extension of it, without the licence of the Applicant, importing, manufacturing, selling, hiring or offering to sell or hire the Guardliner road safety barrier system described in the Statement of Claim (the “infringing system”).

3                    Damages for infringement of the Patent or, at the Applicant’s election, an account of profits.

4                    All necessary enquiries into such damages or an account of profits.

5                    Delivery up to the Applicant’s Solicitors or, alternatively, destruction on oath of:-

(a)        all of the components of the infringing system in the possession, custody or power of the Respondents or either of them.

(b)               all brochures, flyers, catalogues, price lists and other materials promoting or marketing for sale or hire the infringing system.

6                    A declaration that the conduct of the First Respondent in publishing the Guardliner advertisements in the June/July 2005 edition of ROADS magazine contravened Section 52 of the Trade Practices Act.

7                    An order that the First Respondent, whether by itself, its servants or agents, be restrained from representing that the Guardliner road safety barrier system is the subject of any pending patent application.

8                    An order that the First Respondent issue a public announcement to the effect that the Guardliner road safety barrier is not the subject of any pending patent application and publish corrective advertising to the same effect, such announcement and advertising to be in the form and manner directed by the Court.

9                    Damages pursuant to Section 82 of the Trade Practices Act.

10                Interest under Section 51A of the Federal Court Act 1976.

11                Costs.

12                Such further or other orders as the court thinks fit.

5                     The first and second respondent, in the Further Amended Defence and Cross-Claim, filed 24 August 2006, cross-claim against the applicant (cross-respondent) for:

1                    A declaration that the Patent is and has been at all material times invalid.

2                    An order that the Patent and each and all of the claims of the complete specification thereof be wholly revoked.

3                    Costs.

4                    Such further or other orders as the Court sees fit.

6                     The applicant is a corporation incorporated in Australia and the Patent in question identifies an invention, described in claim 1 of the Patent as:

1.         … a barrier system including:

a plurality of hollow, ballast-fillable, demountable barrier elements that are arranged end to end so as to form a barrier, each of said barrier elements having opposing side walls and opposing end portions, said end portions being adapted to combine with an opposing end portion of an adjacent barrier element to form a joint connecting adjacent barrier elements together, and

at least one thin walled, longitudinally extending, guard member that is mounted on and overlies the side walls of at least two adjacent barrier elements.

            (Emphasis added)

7                     The specification of the applicant’s patent acknowledges that:

 Demountable traffic barriers typically include a plurality of hollow, water fillable, barrier elements which are arranged end to end and are linked by a plurality of pin joints or by interlocking end portions.

8                     The specification continues:

Often the connection means connecting adjacent barrier elements and/or the side walls of individual barrier elements are damaged by collisions with motor vehicles.  The resulting damage often severely weakens the structural integrity of the barrier.

9                     The specification speaks of disadvantages of damaged barrier elements, and then says:

The present invention aims to alleviate at least one of the above disadvantages and to provide a barrier which will be reliable and efficient in use.  Other advantages of this invention will hereinafter become apparent.

10                  The specification says that: “With the foregoing and other objects in view, this invention resides broadly in a barrier system including” barrier elements as described and  “at least one thin walled, longitudinally extending, guard member that is mounted on and overlies the side walls of at least two adjacent barrier elements.

11                  The specification later says:

The profile of at least one side wall of the barrier element, in some embodiments, may be arranged to complement or receive the guard which may, when assembled, bear against same.

(Emphasis added).

12                  This sentence in the specification has a relevance in relation to the meaning to be given to phrase “mounted on” in Claim 1 of the Patent. 

13                  Later, the specification says:

The longitudinally extending guard overlies two or more of the barrier elements.  Advantageously, providing a guard which overlies a plurality of adjacent barrier elements serves to increase the stability of the barrier system and render it less deformable when subjected to minor impact.

14                  Figure 1 referred to in the specification is "a pictorial view of a barrier constructed in accordance with the present invention”, and “illustrate(s) a preferred embodiment of the invention”. 

15                  In the description of  Figure 1, the specification says:

The barrier 10 also includes a number of guards 17 manufactured from a thin walled, rolled section, of galvanised steel.  The guards 17 are arranged end to end and are secured to the barrier elements by threaded fasteners 18.  Individual guards are positioned such that they overlie the connection between adjacent barrier elements 11.

In use, the guards 17 protect the barrier elements 11 from direct contact with a motor vehicle and help strengthen the connection between adjacent barrier elements.

16                  The specification thus asserts that the invention inhibits or avoids damage to the barrier elements, and enhances the function of a barrier by producing a stronger longitudinal barrier.

17                  The first respondent is a corporation incorporated in Australia, which has manufactured and offered for sale the Guardliner traffic barrier system.   The second respondent admits that he was responsible for the placing of advertisements, in the magazine “ROADS” at pages 37 and 38 of the December 2004/January 2005 edition, entitled “Guardliner Series – relocatable guardrail road barrier system – by Barron & Rawson Pty Ltd”, and at page 29 of the June/July 2005 edition.  Each advertisement also refers to a  Roadliner 2000Ô S series plastic crash traffic barrier system.  These proceedings are concerned only with the Guardliner road barrier system.

18                  The applicant pleads that the offering for sale of the Guardliner traffic barrier system infringes its rights under the Patent, as the applicant has not licensed the first respondent to do so. At para 5A of its Further Amended Statement of Claim, the applicant states:

5A.      The road barrier system depicted in the advertisement in the ROADS magazine referred to in paragraph 2B(a):-

(a)                was offered for sale by the First Respondent under or by reference to the trade mark “Guardliner”:

(b)               comprised, inter alia:

(i)         a plurality of hollow, ballast-fillable, demountable barrier elements that are arranged end to end so as to form a barrier.

(ii)        each of said barrier elements having opposing walls and opposing end portions,

(iii)       said end portions being adapted to combine with an opposing end portion of an adjacent barrier element to form a joint connecting adjacent barrier element together,

(iv)       at least one thin walled longitudinally extending guard member that is mounted on and overlies the side walls of at least two adjacent barrier elements.

19                  The applicant originally claimed that the actions of the respondents infringed Claims 1-4, 6 and 7 of the Patent.  However in the course of these proceedings the allegations of infringement have been confined to Claims 1, 2 and 4 of the Patent. Claim 1 is set out above, in [6].  Claims 2 and 4 of the Patent are:

2.                         A barrier system as claimed in claim 1, wherein said one or more guard members extend across said side walls in a generally horizontal direction.

3.                  …

4.                         A barrier system as claimed in claim 1 or claim 2, wherein said one or more guard members each have a curved cross-section having one or more convex segments that extend outwardly from said side walls.

20                  At para 6 of the Further Amended Statement of Claim, the applicant implicates the second and third respondents in the alleged infringement of the patent:

6          The manufacture, assembly, sale, hiring or offer for sale or hiring of the Infringing System by the First Respondent was procured or authorised by or took place at the instigation of the Second and Third Respondents.

AMENDED PARTICULARS

The Applicant relies on the following:-

(a)               the ROADS magazine advertisements;

(b)               a letter from VicRoads dated 8 April 2005 addressed to the Second Respondent at the First Respondent;

(c)                a letter dated 8 August 2005 from one J Cameron (CEO) of the First Respondent addressed to the Second Respondent at the Third Respondent.

(d)               a letter dated 24 June 2005 from the Second Respondent to the patent attorney IP First:

(e)                statutory declarations made by the Second Respondent as secretary and authorised person on behalf of the Third Respondent sent to the Commissioner of Patents in Australia and the exhibits thereto and respectively declared at Brisbane on:-

(i)                 29 June 2005;

(ii)               16 September 2005;

21                  In para 2B of the Further Amended Statement Claim, the applicant further claims that the second respondent is or was:

(a) … a road barrier consultant to the First Respondent;

            (i)         in the First Respondent’s Roadliner Division since 1999;

(ii)        responsible for the design and development of the Guardliner System;

(iii)             responsible for the First Respondent’s road barrier system advertisements including those under or by reference to the Guardliner system;

(iv)             responsible for the placement of advertisements in the magazine “ROADS” at pages 37 and 38 of the December 2004/January 2005 edition entitled “Guardliner Series – Relocatable Guardrail Road Barrier System – by Barron and Rawson Pty Ltd” and at page 29 of the June/July 2005 edition, and

(v)               responsible for obtaining approval from regulatory authorities for the use of the Guardliner System within Australia

22                  The second respondent has since 15 January 2005 been a secretary of the third respondent corporation. The second respondent did not give evidence in these proceedings, although statutory declarations sworn by him were exhibited, inter alia, to the affidavit of Ian Tannahill, a Patent and Trademark Attorney employed in the Patent Attorneys for the applicant. 

23                  A statutory declaration declared on 16 September 2005 by Anthony James Carey says: 

3.         Barron & Rawson Pty Ltd has a barrier product, Roadliner 2000Ô This barrier met the relevant safety standards, but in order to increase market penetration it was desired to improve its crash performance.  At the time I had a business relationship with Barron & Rawson Pty Ltd in relation to the marketing and sales of crash barriers.  I developed the Guardliner system and I kept Barron & Rawson Pty Ltd informed of the developments in the Guardliner system, including of the progress of the patent application.

24                  He says that he caused the advertisement in the December 2004/January 2005 edition to be placed in the ROADS magazine.  He says, “I was responsible for the advertisement and its content.”  An invoice for the advertisement was directed to him.  Similarly, he says that he caused the advertisement to be placed in ROADS magazine in June 2005/July 2005 edition,  was similarly responsible for the advertisement and its content, and received an invoice for that advertisement.

25                  The third respondent is the named applicant in respect of Australian Patent Application 2003281553, wherein the second respondent is named as the inventor of a ‘Relocatable Transportable Safety Crash Barrier System’, of which the applicant says in paras 7I and 7J of its Further Amended Statement of Claim:

7I.        A road barrier system:-

(a)               as described and illustrated by the drawings of the said patent application;

(b)               according to the alleged invention described and claimed by the said patent application;

(c)               incorporating the subject matter of the said patent application – would comprise:-

(i)                 a plurality of hollow, ballast-fillable, demountable barrier elements that are arranged end to end so as to form a barrier,

(ii)               each of the said barrier elements having opposing side walls and opposing end portions,

(iii)             said end portions being adapted to combine with an opposing end portion of an adjacent barrier element to form a joint connecting adjacent barrier element together,

(iv)             at least one thin walled longitudinally extending guard member that is mounted on and overlies the side walls of at least 2 adjacent barrier elements.

7J.       Claims 1 to 7 of The Patent are or would be infringed by a road barrier system:-

(a)               as described and illustrated by the drawings of the said patent application;

(b)               according to the alleged invention described and claimed by the said patent application;

(c)                incorporating the subject matter of the said patent application;

(d)               a road barrier system as depicted in the magazine ROADS by the advertisements referred to paragraph 5.

26                  It is accepted between the parties that the third respondent, by oral agreement with the first respondent, has licensed the first respondent to exploit the ‘Relocatable Transportable Safety Crash Barrier System’ identified in Australian Patent Application 2003281553.

27                  A reference to ‘Patent Pending’ in the advertisement of the first respondent published in the June 2005/July 2005 edition of ROADS Magazine forms the basis of the applicant’s claim under the TP Act.  The applicant claims that Australian Patent Application 2003281553 lapsed on 24 February 2005 and there was therefore no patent pending in mid-2005 when the advertisement was published. 

28                  The applicant’s claim under the TP Act has been deferred until after the determination of the challenge to the validity of the applicant’s Patent and the applicant’s infringement claims. 

29                  With the consent of the parties, the Court ordered, pursuant to O 29 r 2 of the Federal Court Rules, that the issues of the validity of Australian Patent 774224 and the infringement by the respondent of the said patent be determined separately, and prior to, any other issues in this litigation.

30                  Those issues fall to be determined in the context of the provisions of the Act, prior to the amendments to that Act introduced by the Patents Amendment Act 2001 (Cth).

THE ALLEGATIONS OF INFRINGEMENT

31                  It is accepted between the parties that the respondents’ Guardliner system has the features detailed in Claims 2 and 4 of the Patent.  This appears from the Joint Expert Report of Dr Rod Troutbeck and Dr Malcolm Jenkins of 10 October 2006.

32                  The consequence is that the only issue for determination, in respect of infringement, is whether the Guardliner system has the features detailed in Claim 1 of the Patent, which is set out in [6] above.

33                  It is the last part of Claim 1 of the Patent, “ … at least one thin walled, longitudinally extending guard member that is mounted on and overlies the side walls of at least two adjacent barrier elements”, on which the dispute between the parties is focused. 

34                  Dr Malcolm Jenkins, who gave evidence in the applicant’s case, is a mechanical engineer and is the General Manager of the firm WBM Pty Ltd, a firm of Consulting Engineers.  He holds a B.E. (1^st class hons) (Mech), with a University Medal, University of Sydney (1972), and a Ph.D. (Mechanical Engineering), University of  Sydney (1978).  In an extensive and impressive curriculum vitae, Dr Jenkins says that his fields of special competence are:

Mechanical Testing, Analysis and Troubleshooting.

Expert Witness Services – Mechanical engineering, equipment failure, design flaws,

Accident and Work Practice Investigations.

Belt Conveyor Dynamic Analysis, Design Review and Troubleshooting.

35                  Dr Rod Troutbeck, who gave evidence in the respondents’ case, holds a B.E. (Civil, Hons) from the University of Melbourne (1971), M Eng Sc, Civil Engineering, University of Melbourne (1974) and a Ph D in Civil Engineering from the University of Queensland (1989).  From 1972 to 1974, he was a Construction Engineer and Traffic Engineer with the the Country Roads Board Victoria.  From 1974 to 1989, he was a Senior Research Scientist, and later, Principal Research Scientist with the Australian Road Research Board.  Then from 1989 to 2004, he was an academic at the Queensland University of Technology, being Head of School of Civil Engineering at QUT from 1994 to 2004, and from 1994 to 2004, a full-time Professor of Civil Engineering at QUT.  He continues to be a part-time Professor of Civil Engineering as well as conducting a separate consultancy business, Troutbeck and Associates Pty Ltd. 

36                  Since 2004, Dr Troutbeck, through his consultancy, has done work in relation to safety barriers as follows:

·        evaluating the safety barrier requirements (including relocatable barriers) for Queensland Motorways Limited;

·        evaluating safety barriers (including relocatable barriers) at the Gold Coast Indy Circuit;

·        advising on the development of safety barrier selection (including relocatable barriers) and approval processes for the Roads and Traffic Authority of New South Wales.

·        advising on the use and installation of safety barrier terminals for steel W beam guard fences for Queensland Main Roads; and

·        evaluating documents for the installation of safety barriers for the Roads and Traffic Authority of New South Wales.

37                  Dr Troutbeck says:

12        I was a founding member of the Australian Standards Committee CE33 for Road Safety Barriers which was established in 1993, and I am still a member of the Committee CE33.  Since June 2006 I have been Chairman of CE33.

13        CE33 developed Australian Standard number AS/NZS 3845:1999, which drew upon National Cooperative Highway Research Program’s ‘Report 350’, which operates as a quasi-standard in the United States.  Australian Standard number AS/NZS 3845:1999 was first published in January 1999.  It was the first Australian Standard in the area of road barriers and, although a review process is currently occurring, it has not been amended since its introduction.

14        In about 1999 to 2001 I was responsible for a research project to establish a testing procedure for safety barriers in Sydney for and with the Roads and Traffic Authority of New South Wales.  The facility was attached to Crashlab which then tested the safety performance of new vehicles.  The project was funded by the Motor Accident Insurance Commission in Queensland, and the project involved developing hardware and procedures for testing the performance of road safety barriers.

15        In the United States the Transportation Research Board is the peak research body in the area of transportation including road safety, is part of the National Academies of Science, and is funded, in part, by the American Association of State Highway  and Transportation Officials (AASHTO).  The Transportation Research Board operates a number of committees looking into various aspects of road safety.  In 1988 I joined a sub-committee of Committee number A2A04 (now AFB20), called the Sub-Committee on International Research on Roadside Safety Features.

16        In 1995 I joined, following an invitation to join, Committee number A2A04 (now AFB20) for Roadside Safety Features.  Following a further invitation in 1997, I joined a research panel for the US National Co-operative Highway Research Program (NCHRP) projects 22-14(1) and 22-14(2).  This panel was part of the US National Research Council and reported to Committee number AFB20 on the further development and upgrade of the report entitled ‘Recommended Procedures for the Safety Performance Evaluation of Highway Features’ (also known as the NCHRP 350 Report).  The Australian Standard (number AS/NZS 3845:1999 and developed by Committee CE33) refers to and incorporates much of the NCHRP 350 Report.  The NCHRP research panel continues to guide the research project NCHRP 22-14(2) to identify shortcomings in US testing standards for safety barriers, and the development of an updated version of those standards.

38                  Both Dr Jenkins and Dr Troutbeck are impressive, highly qualified, and indeed, formidable experts, and the evidence of both conformed to the Guideline for Expert Witnesses in Proceedings in the Federal Court of Australia.

39                  Section 18 of the Act relevantly provides:

18  Patentable inventions

Patentable inventions for the purposes of a standard patent

            (1)        Subject to subsection (2), an invention is a patentable invention for the                  purposes of a standard patent if the invention, so far as claimed in any claim:

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

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

                              (i)  is novel; and

                             (ii)  involves an inventive step; and

                     (c)  is useful; and

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

40                  Whether a patent has been infringed rests on the proper interpretation of each claim, as it is these that define the width and precise scope of the alleged invention: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479, 485 per Gummow J.

41                  However, the specification, including the claims, is not to be read in the abstract, but instead construed with common sense, in light of the common general knowledge in the art as at the priority date: Bennett J in Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420 at [71].  Her Honour, in Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 65 IPR 605 referred to the cases dealing with the principles for construing claims at [41], and at [42] set out in some detail the principles apposite to the construction of the claims in a patent.  The Court is to place itself “in the position of some person acquainted with the surrounding circumstances as to the state of art and manufacture at the relevant time,” and educate itself about the meaning of the technical terms: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1, [24].

42                  These principles were summarised by Hely J in Flexible Steel Lacing Co v Beltreco Ltd (2001) 49 IPR 331, where his Honour said at 350:

• As a general rule, the terms of a specification should be accorded their ordinary English meaning: Electric & Musical Industries at 41; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 512–13 ; 22 IPR 551; Interlego at 478; Minnesota Mining at CLR 270.
• Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning: Sartas No 1 v Koukourouat 485–6; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 at 531–2; Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 137–8 ; 35 IPR 23; Patent Gesellschaft AG v Saudi Livestock Transport & Trading Co (1996) 33 IPR 426 at 455.
• However, the construction of the specification is for the court, not for the expert witness. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way: Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 697. See also Glaverbel SA v British Coal Corp [1994] RPC 443 at 486; Sartas No 1 v Koukourouat 485–6; Patent Gesellschaftat 455.

43                  A person skilled in the art for the purposes of determining the scope of a patent’s claims is a hypothetical, non-inventive worker in the relevant field of technology in Australia, who is equipped with the common general knowledge in the art (Minnesota Mining and Manufacturing Co and 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd (1980) 144 CLR 253). 

44                  This does not mean that the relevant person is to be a technician or person with only practical and non-academic qualifications.  In fields such as chemistry, such a person can be a person or group with high level qualifications and a capacity for original research (Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411, [30] and NSI Dental Pty Ltd v University of Melbourne [2006] FCA 1216, [151]).

45                  In this matter, Dr Malcolm Jenkins for the applicant and Dr Rod Troutbeck for the respondents were said to be such people skilled in the art.  It is their evidence which has been submitted to the Court to permit a decision on the meaning and extent of Claim 1 in the patent and accordingly whether the Guardliner system infringes the patent.

Mounted On

46                  In respect of Claim 1 of the Patent that states a guard member is “mounted on…”, page 3 of the Patent states that “The guard may be secured to a barrier element by “any convenient  means.”

47                  Dr Jenkins’ evidence for the applicant on this point is most apparent from his report, which is exhibited to his affidavit filed 30 June 2006.

4.1              Comparison with Claim 1 of the Patent

Comparing the Guardliner system, as disclosed in the advertisements and the illustrations, with the details of claim 1 of the patent reveals the following:

a)         A plurality of hollow, ballast-fillable, demountable barrier elements arranged end to end so as to form a barrier: The Guardliner system consists of a number of plastic, hollow barrier units which are water fillable, having identified water filler access plugs and water drain apertures (see Figure 9).  As seen in Figure 8, the barrier units have interlocking ends so that they can be joined end to end so as to form a barrier.  The illustrations in the advertisements (Figures 6 & 7) make it clear that the intention is to arrange the units end to end to form a barrier.

b)         Each barrier element having opposing side walls and opposing end portions: Considering the illustrations, particularly Figure 8, it is seen that the Guardliner barrier units have opposing side walls and opposing end portions.  That is, any horizontal section through the Guardliner units would show, at each location, a pair of generally parallel side wall sections on opposite sides, and a pair of parallel end wall sections on opposite ends.  Although the side walls have indentations, with portions of wall running across the width of the unit, the side walls are continuous and at each location have areas which are opposed in pairs.  Similarly the end portions are opposed, as well as being handed so as to interlock with one another.

c)         The end portions adapted to combine with an opposing end portion of an adjacent barrier element to form a joint connecting adjacent barrier elements together: Considering Figure 8 it is seen that the end portions of the Guardliner barrier units are handed so as to interlock with one another.  The interlocking is seen in Figures 6, 7 & 9, where the interlocking units are arranged to form a continuous barrier.

d)         At least one thin walled, longitudinally extending, guard member that is mounted on and overlies the side walls of at least two adjacent barrier elements: All of the illustrations in Figures 6 – 9 show a thin walled W section guardrail extending longitudinally and overlying the side walls of the barrier units.  The lengths of individual portions of the guardrail are twice the lengths of the barrier units.  Therefore each guardrail unit overlies at least two barrier element side walls.  The guardrail is mounted on the barrier units by way of brackets, which are seen most clearly in Figure 8.

With respect to each of the aspects of claim 1 the Guardliner possesses the features described in the claim.

48                   Dr Jenkins elaborated on this point at para 10.16 (e) of his further affidavit, filed 2 October 2006:

(e)        … Mere placement of the guard member could be done by using a slot or receptacle in the face of the barrier elements or by tying the guard member to the face.  This is why the requirement in the broad statement of the invention and claim 1 is that the guard member be mounted on and overlies.   In my opinion mounted on is equivalent to being secured to the barrier elements by a physical connection and this is stated in the seventh sentence in this passage.  However, in my opinion, the patent is not confined to any particular method by which the guard member is to be secured to the side wall, although it does give some examples in the eighth and ninth sentences.  This can be done by any convenient means.  A person interest in building a system as described in the patent has a wide variety of choices available.  This is the case now and was also the case in 1999.  The eighth sentence gives a number of examples but, to me, clearly these are not given by way of limitation.  As long as the guard member is connected (mounted on) to the barrier elements it will work in the way intended.  The method of securing the guard member would have to be some form of physical connection so that it is mounted on the side wall.  This is necessary to achieve the structural benefit (the composite beam effect) and is also consistent with the examples given in this passage.  The requirement for physical connection is also necessary because, as the guard member is required to be mounted on the side walls, it could not be held in place by gravity.

Mounted On – Respondent’s evidence – Dr Troutbeck

49                  In response to this, Dr Troutbeck in his affidavit, filed 17 August 2006, said:

98        … In my opinion, based upon my reading of the Patent, the patentee requires the ‘guard member’ to be connected directly across the surface of the barrier elements.  This is because:

…

(g)       the words mounted on in the Kinabalu Patent to me mean that the ‘guard member’ is directly attached so that it lies across the surface of the side walls of the barrier elements.  This is both because of my understanding of the context of what the patentee is describing and the matters which I describe in paragraphs 98(a) to (f) above, and also because if this was not intended by the patentee, I would have expected the patentee to say that it was mounted ‘directly or indirectly’ on the barrier elements or to have used other language, or for there to have been some discussion of this possibility by the patentee in the Patent.

…

132      I discussed the term ‘mounted on’ above at paragraph 98(g), where I explained that in my view this means that the ‘guard member’ is directly attached to, and lies across the surface of the side walls of the barrier elements.

133      The word ‘overlies’ also reinforces my view on the meaning of ‘mounted on’, as to me ‘overlies’ means to cover (partially or entirely), or to lie over something in close proximity to it.

50                  Dr Troutbeck continues these points in his second affidavit, filed 4 September 2006:

12        The Guardliner has steel W-beam which is thin-walled and extends longitudinally.  I consider that the W-beam would act so as to shield the barrier elements and would therefore be a ‘guard member’ as I understand that term is used in the Kinabalu Patent.

13        The W-beam is not ‘mounted on’ the barrier elements, as I understand that term is used in claim 1 of the Kinabalu Patent, and which I discussed at paragraphs 98 and 132 of my First Affidavit.  Instead the W-beam is ‘mounted on’ metal brackets, which are themselves ‘mounted’ within deep recessed apertures in the end portions of the barrier elements.

14        As I read it, the Kinabalu Patent makes a distinction between the end portions of the barrier elements, and the side walls of the barrier elements.  I consider that the metal brackets which are attached to the W-beam are mounted within recesses in the end portions of the Guardliner barrier elements, and not on its side walls (I have explained in paragraphs 9 and 10 what I consider the ‘end portions’ to be).  By way of contrast, Figure 1 of the Kinabalu Patent illustrates the feature of claim 1 of the guard member mounted on the side walls of the barrier elements using threaded fasteners (numbered ‘18’) which extend through the side walls, and not through the end portions, of those barrier elements.

15        I discussed the word ‘overlies’ in my First Affidavit in paragraph 133.  As I understand the way that word is used in the Kinabalu Patent, I do not consider that the steel W-beam in the Guardliner ‘overlies’ the barrier elements as the W-beam does not lie directly over the surface of those barrier elements.  Instead, the W-beam is located several centimetres out from the surface of the barrier elements, as shown most clearly in photograph number 7 of RT-11.

16        The steel W-beam used in the Guardliner barrier does, however, extend across the complete length of two adjacent barrier elements.

Mounted on – Applicants evidence in reply – Dr Jenkins

51                  Dr Jenkins responds to the respondents’ evidence on this point most particularly in his affidavit filed 2 October 2006, where he says:

63.       I disagree with Dr Troutbeck’s opinion, as expressed in para 13 of his second Affidavit, that the steel W-beam is not mounted on (in the sense used by the Kinabalu Patent) the Guardliner barrier elements.  The Guardliner system uses metal brackets to connect the steel W-beam to the barrier elements.  In my opinion, metal brackets are just one method of doing this.  The use of metal brackets as a connection or mounting means was well known in 1999.  For instance, the bumper bars in motor vehicles from the 1960s and earlier have often been connected to the vehicle by the use of brackets.  Similarly, hand rails and equivalent have often been connected to the structure by brackets.

Overlies – Applicants evidence – Dr Jenkins

52                  From Dr Jenkins’ affidavit filed 2 October 2006:

10.16   I believe that the paragraph commencing at the top of page 3 is a very important passage in the patent and have divided it up into sections:

(a)       The first sentence requires that the guard member overlie two or more barrier elements within the assembly.  In my opinion, this is a mandatory, not optional, requirement of the patent.  I believe that this is an essential feature of the invention and follows on from the passage mentioned in para 10.7 above … guard member that is mounted on and overlies the sidewalls of at least two adjacent barrier elements.  The second sentence makes it clear to me that the guard member is concerned with increasing the structural integrity of the assembly as a whole.  The assembly will do this by operating as a composite beam in the same way as a laminated timber beam used in building construction operates.  If two or more sections are secured together, so that the sections cannot slide or move relative to the other sections, then this makes up a composite beam.  The strength of the composite beam can be greater than the sum of the strengths of the individual components.  This is precisely what will happen when the guard member is secured to the side walls of the barrier elements.  I believe that the second sentence recognises this feature.  In my opinion overlie is being used here to refer to the location of the guard member in the sense that it must extend longitudinally so as to be positioned or located over the side walls of more than one barrier element.  Furthermore, in my opinion overlies does not mean that the guard member has to be located immediately on the face of the side walls.  This would not be essential to the working of the system as a composite beam.  The thrust of the patent is that the guard member must extend horizontally but the patent is not concerned that it always be fitted to the face of the side walls.  This is apparent from the passage discussed in para 10.12 above which only refers to this as an optional feature.  It is also consistent with the references to the guard member being longitudinally extending and to the guard member overlying two or more of the barrier elements.

Overlies – respondents’ evidence – Dr Troutbeck

53                  Evidence from affidavit of Dr Troubtbeck, filed 17 August 2006:

98        … In my opinion, based upon my reading of the Patent, the patentee requires the ‘guard member’ to be connected directly across the surface of the barrier elements.  This is because:

…

(e)        the word ‘overlies’ to me means that the ‘guard member’ is meant to cover the barrier elements, and in its context in the patent I understand this to mean directly cover;

(f)        as I explain below in paragraph 139 in relation to claim 3, the patentee’s reason for specifying that the ‘guard member’ may be flat in my opinion is because the patentee intends that it lie directly across the surface of the barrier elements;

54                  This is developed further in Dr Troutbeck’s second affidavit of 4 September 2006:

15        I discussed the word ‘overlies’ in my First Affidavit in paragraph 133.  As I understand the way that word is used in the Kinabalu Patent, I do not consider that the steel W-beam in the Guardliner ‘overlies’ the barrier elements as the W-beam does not lie directly over the surface of those barrier elements.  Instead, the W-beam is located several centimetres out from the surface of the barrier elements, as shown most clearly in photograph number 7 of RT-11.

Side-Wall vis a vis End Portion

55                  On whether the Guardliner system infringes this element of the patent, Dr Troutbeck in his second affidavit says:

46        I disagree with Dr Jenkins’ description of sidewalls and end portions in sub-paragraph b) of this section of the report.  In my opinion the side wall is the outer surface of the barrier element parallel to traffic while the end portions are those surfaces that allow one barrier element to interact with the adjacent barrier element.  In the diagrams of the Kinabalu Patent, the side walls are indicated with the number 12 and what is indicated is the side of the barrier element which is parallel and adjacent to traffic.  Whereas the end portion, which is not indicated in the diagrams of the Kinabalu Patent, in my opinion includes the sections which interact with the adjacent barrier. I have indicated the end portions on the following diagrams which I have adapted from the diagrams of the Kinabalu Patent:

56                  Photographs tendered as evidence in these proceedings depicting the Guardliner barriers (Dr Jenkins’ Report Ex 1, Section 3, p 68, Fig 1, 2; and Dr Troutbeck’s evidence, Ex 1, Section 4, page 175 and 177) show that the bracket assembly is mounted onto the barrier elements by bolts passing though the bracket and relevant end portions at the top and bottom of the barrier elements.

57                  On examining the photographs, it appears that the mounting in both cases (top and bottom) is on the front face (side wall) of the barrier elements.  The locating hole for the bolt is perpendicular to the side wall.  Furthermore, it is plain from those photographs that the relevant end portions have a side wall as a continuation of the barrier element side wall and integral with it.

58                  I am satisfied that the thin walled W section guardrail on the Guardliner system extends longitudinally over at least two barrier element side walls.  The W section guardrail is mounted on a metal bracket which in turn is bolted to the side walls of the barrier element.  In my view, the guardrail is “mounted on the side walls” of at least two adjacent barrier elements, and notwithstanding that it is proud of the surface of the side walls of those elements, the guardrail “overlies the side walls of at least two adjacent barrier elements”.

59                   I do not accept that, on its proper reading, the patent requires the guard member to be attached to and directly in contact with the surface of the side walls of the barrier elements.  In particular, and contrary to the view of Dr Troutbeck expressed in para 98(g) of his affidavit set out in [49] above, I do not accept that “mounted on” means “directly mounted on”.  Whether the guardrail is directly or indirectly mounted on the barrier elements, it is mounted on the barrier elements.

60                  I am therefore satisfied that the Guardliner system possesses the features described in Claim 1 of the applicant’s Patent.

61                  It is accepted between the parties that the Guardliner system does have the same features as described in both Claims 2 and 4 of the Patent. 

62                  In my judgment therefore, if the applicant’s Patent is valid, the Guardliner System infringes Claims 1, 2, and 4 of the Patent.

63                  I am further satisfied that if the first respondent has infringed the applicant’s Patent, then the second and third respondents are also liable. 

64                  It is admitted that there is a licence between the third respondent and the first respondent to make the Guardliner barrier system, which is the subject of the proceeding, and which was the subject of the advertisements.  The first respondent is the manufacturer of the Guardliner barrier system.  The third respondent is a company of which the second respondent is secretary, and the moving party of the third respondent.  The second respondent in the capacity of consultant to the first respondent caused to be placed the advertisements by the first respondent of the Guardliner barrier system, and the second respondent, in its capacity with both the third respondent, and as consultant to the first respondent, had tests done relevant to the Guardliner barrier system and liaised with regulatory authorities in Australia to obtain regulatory approval for the Guardliner barrier system.

INVALIDITY

65                  The respondent cross-claims that the applicant’s patent is invalid, on the basis of:

·                    lack of novelty by reason of prior publications (s 18(1)(b)(i) and s 138(3)(b) of the Act)

·                    lack of inventive step (s 18(1)(b)(ii); s 138(3)(b) of the Act)

·                    not a patentable invention (s 18(1) and s 138(3)(b) of the Act)

·                    not a manner of manufacture (s 18(1)(a) and s 138(3)(b) of the Act)

·                    lack of clarity (s 40(3) and s 138(3)(b) of the Act).

66                  The grounds of lack of novelty and lack of inventive step are said to be “highly pressed”.

67                  In seeking revocation of the patent, the respondent bears the onus of proof in establishing successfully a ground of invalidity (Ryan v Lum (1989) 14 IPR 513, 518-520). 

68                  Section 138 of the Act relevantly provides:

(1)       Subject to subsection (1A), the Minister or any other person may apply to a prescribed court for an order revoking a patent.

(1A)     A person cannot apply for an order in respect of an innovation patent unless the patent has been certified.

(2)       At the hearing of the application, the respondent is entitled to begin and give evidence in support of the patent and, if the applicant gives evidence disputing the validity of the patent, the respondent is entitled to reply.

(3)       After hearing the application, the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following grounds, but on no other ground:

(a)        that the patentee is not entitled to the patent;

(b)        that the invention is not a patentable invention;

(c)        that the patentee has contravened a condition in the patent;

(d)        that the patent was obtained by fraud, false suggestion or misrepresentation;

(e)        that an amendment of the patent request or the complete specification was made or obtained by fraud, false suggestion or misrepresentation;

(f)        that the specification does not comply with subsection 40(2) or (3).

69                  Subsection 40(3) provides:

(3)       The claim or claims must be clear and succinct and fairly based on the matter described in the specification.

Lack of novelty by reason of prior publication

70                  The respondent’s allegation of lack of novelty is based on a US patent identified as the “Wasserstrom” patent (US Patent No. 5,531,540), which includes by incorporation the “Yodock” Patent (US Patent No. 5,123,773).

71                  From the evidence, particularly the joint expert report of Dr Jenkins and Dr Troutbeck, it is apparent that these experts agree that all of the integers of Claims 1, 2 and 4 of the applicant’s Patent are present in the Wasserstrom Patent, except for (a) mounted on the side walls; and (b) overlies at least two adjacent barrier elements.

72                  The task of establishing lack of novelty by material that had been published earlier, was the subject of observations by Parker J in Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428, who said at [457]:

[W]here the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result.  It must also be shown that the [prior] specification contains clear and unmistakable directions so to use it.

73                  French and Lindgren JJ discussed in Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 68 IPR 1 what was required to establish lack of novelty, at [313]:

313      The law relating to novelty under the 1990 Act was considered by the Full Court in Bristol-Myers Squibb.  In the joint judgment of Black CJ and Lehane J, their Honours referred to what had been said by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235; 13 ALR 605 at 611; 1A IPR 181 at 186:

The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.

In the case of a paper anticipation such as a specification or publication, there can be no direct application of the reverse infringement test.  An hypothetical infringement may be posited on the assumption that somebody does or makes what the alleged anticipation suggests.  Their Honours cited Lord Westbury in Hill v Evans (at [63]):

[63]     … the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful.  If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent.

Their Honours also referred to Flour Oxidizing Co Ltd v Carr & Co Ltd (1908) 25 RPC 428; Canadian General Electric Co at 104 and General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd (1971) 1A IPR 121; [1972] RPC 457.  After reviewing those authorities, they said (at [67]):

[67]     What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention.  A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.

74                  Their Honours at [317] referred to the observations of Crennan J in Imperial Chemicals Industries Pty Ltd v Cmr of Patents (2004) 213 ALR 399; 63 IPR 476; [2004] FCA 1658, where her Honour there quoted Sachs LJ in General Tire & Rubber Co at [61]:

[61] … a signpost, however clear, upon the road to the patentee’s invention will not suffice.  The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.

75                  Crennan J agreed with French and Lindgren JJ that Claim 10 of the Patent in Suit was invalid because it was invalid because it was obvious or disclosed no inventive step, and with the other findings of their Honour. Save the finding with respect to fair basis, Crennan J was of the view that Claim 10 was fairly based on the matter described in the specification. 

76                  I turn then to consider the evidence concerning lack of novelty, in the light of the above exposition of principle.  It is necessary to set out that evidence at some length.

77                  The Wasserstrom Patent is dated July 2, 1996.  It is to be found in exhibit 2 at pages 39 to 49. 

78                  The abstract for the Wasserstrom Patent says:

ABSTRACT

A reinforcement system for highway barriers comprising a frame structure mounted on the surface of an associated highway barrier and force distributing members that are adapted to distribute forces along a horizontal direction upon impact of a vehicle into the associated highway barrier so as to lessen the degree of force applied to the highway barrier and to thus provide additional strength to the associated highway barrier.

79                  The field of the invention is said to be:

The present invention relates to reinforcement systems for highway barriers.  More particularly, the present invention relates to a reinforcement system for highway barriers which can be used to effectively distribute and transfer forces away from and along a highway barrier, which may occur upon impact of a vehicle upon which the reinforcement system is mounted.

80                  By way of background to the invention, the patent says:

Although the design of the highway barriers disclosed in the aforementioned patents has been shown to be superior over conventional highway barriers, a need continues to exist for a reinforcement system for use in connection with highway barriers which will transfer forces away from the highway barriers upon impact of a vehicle and which will distribute the forces in such a manner so that the support strength of an associated highway barrier system is enhanced.  Such an improved system will prevent heavy vehicles, or vehicles driven at great rates of speed, from crashing through a continuous line of highway barriers.

81                  Under the heading, Summary and Objects of the Invention, the patent says:

The present invention addresses the aforementioned needs by providing a reinforcement system for highway barriers.  In accordance with a preferred embodiment, the reinforcement system comprises a frame structure which adapted to be mounted on the surface of an associated highway barrier.  The reinforcement system also comprises force distributing means for distributing forces along a horizontal direction upon impact of a vehicle into the associated highway barrier.  The distribution of the forces will lessen the degree of force that would otherwise be applied to the highway barrier as a result of the impacting vehicle.  The forced distributing means is secured to the frame structure and extends substantially horizontally and parallel to the associated highway barrier and the road surface on which the highway barrier is arranged.

82                  The patent says that in a preferred embodiment:

The frame structure of the reinforcement system of the present invention is preferably contoured to substantially follow at least a portion of the surface of the associated highway barrier.  In addition to its function of supporting the force distributing means, the frame structure may also serve the function of distributing a portion of the forces away from the point of impact along vertical distribution paths.

In a preferred embodiment, the frame structure comprises a pair of top sections, which may also be considered saddles, which are seated on the top surface of an associated highway barrier.  The frame structure may also comprises a pair of side assembles that are connected to the pair of top sections at respective opposite sides of the associated highway barrier.  Each of the side assemblies may extend downwardly along the pair of side surfaces toward the bottom surface of the associated highway barrier.  It is preferable for the pair of side assemblies to be substantially identical.  However, in other embodiments, the frame structure of the present invention may only include one side assembly or may include a pair of side assembles wherein the side assembles are not identical to each other.  Further, alternate embodiments of the reinforcement system of the present invention may include a single top section as opposed to a pair of top sections.

The frame structure of the present reinforcement system may comprise securing means for securely mounting the frame structure to the associated highway barrier.  In a referred embodiment, the securing means may comprise at least one cable which has a first end connected to one of the side assemblies and a second end connected to the other side assembly.  In this preferred embodiment, the cable preferably extends between the first and second side assemblies along the bottom surface of the associated barrier when the reinforcement system is in its assembled position.

83                  The features of the force distributing means, and the frame structure, and the mounting of the frame structure on the associated highway barrier in a preferred embodiment appears from Figures 9 and 10 in the Wasserstrom Patent.

Evidence of Dr Troutbeck on novelty

84                  Dr Troutbeck, in his affidavit filed 17 August 2006, gave his opinion concerning the Wasserstrom Patent, at paras 50-73:

The Wasserstrom Patent

50        I was provided by Freehills with a copy of United States patent number 5,531,540, which I will refer to as the Wasserstrom Patent.

51        The mechanical principles involved in the design and manufacture of a product such as a safety barrier form part of the core technical training for both mechanical and civil engineers.  In my experience, however, more civil engineers are involved in the design of safety barriers around the world, which I think is because of the relationship between safety barriers and the design of roads, bridges and structures, which are areas in which civil engineers specialise.

52        In my opinion, the patentee’s idea in the Wasserstrom Patent is to use a horizontal interconnected frame structure upon a relocatable plastic safety barrier system to provide what the patentee describes as “a continuous system”.  In my opinion it is intended by the patentee that by use of the system described in the Patent, the forces from the impact of a vehicle will be resisted by many barrier cells through the horizontal interconnected frame structure.

53        The first description of this idea is in the Abstract to the Patent, which says that the barrier system includes:

‘force distributing members that are adapted to distribute forces along a horizontal direction upon impact of a vehicle into the associated highway barrier so as to lessen the degree of force applied to the highway barrier and to thus provide additional strength to the associated highway barrier.’

54        This purpose is repeated at the start of the ‘Summary’ of the invention (at column 1 lines 60 to 63).

55        The patent explains, at the top of Column 3 (lines 1 to 3) that:

‘In a preferred embodiment, the force distributing means may comprise at least one hollow pipe attached to at least one of the side assemblies.  In another preferred embodiment, the at least one hollow pipe may comprise a plurality of hollow pipes which extend substantially parallel to each other.’

56        The Patent then explains that a “particularly preferred embodiment’ comprises a pair of pipes attached on each side of the barrier (column 3 lines 24 to 33).  This is the embodiment that is illustrated in the drawings in the Patent.

57        The Patent also describes how the hollow pipes, as used in the preferred embodiment, are joined together (column 3 lines 6 to 23):

‘Each of the hollow pipes may include a first end which defines a female receptacle and a second having a male member extending therefrom.  The male member and the female receptacle may have means for forming a releasable connection to a corresponding female receptacle and male member on adjacent pipe sections.  In a preferred embodiment, the male member is arranged partially within the second end of the corresponding pipe and extends partially beyond the second end.  In this embodiment the male member is adapted to be connected to a respective one of the female pipe sections.

In another preferred embodiment, the male member includes a slot which defines a passageway through the portion which extends beyond the second end.  Each of the female receptacles may include a pair of apertures whereby the apertures are aligned with the slot for placement of a bolt therethrough when the male member is connected to the female member.’

58        The use of male-female joints with bolts through them is the embodiment that is illustrated in the drawings to the Patent, and is shown in some detail (in Figure 10).  Further detail and explanation is set out in column 4 (lines 14 to 30):

‘In a preferred embodiment wherein the side assemblies of the frame structure include horizontally arranged pipes secured to vertically arranged support members, it is preferable to connect the horizontally arranged pipes to adjacent horizontal pipes of reinforcement systems arranged on adjacent highway barriers to form a continuous system.  In this embodiment, a preferred method of assembling the reinforcement system may comprise the steps of placing substantially flat elongated members which extend from the second end of a first set of pipes within corresponding aligned female receptacles arranged at a second end of a second set of pipes so that the slotted passage way of the flat elongated member is in alignment with transversely arranged aligned apertures.  Threaded bolts may then be placed through the aligned apertures on the slots and corresponding threaded nuts may be placed on the threaded bolt to complete assembly of the system.’ (emphases added)

59        Further details are provided in the Patent in passages from column 7 line 36 to column 8 line 9.

60        The Patent explains that the reinforcement system should preferably be made of a ‘sturdy rigid material’ (column 5 line 58), and preferably steel (column 5 line 62), but could be made of various metals, metal alloys, or materials such as polyethylene or rubber (column 5 lines 63 to 66).

61        At column 9 lines 23 to 39 the Patent further explains that the final assembled barrier system will distribute and transfer vehicle impact forces horizontally along the pipes, and it says (in lines 35 to 39):

‘Further, the particular structure and arrangement of the reinforcement system [24] permits forces to be spread out among adjacent highway barriers, instead of being concentrated on the particular highway barrier that a vehicle may strike.’

In this passage the patentee is using the word ‘barrier’ to refer to what I have described elsewhere in this affidavit as a ‘barrier cell’.

62        At column 11 the Patent explains that testing by Texas A&M University of an embodiment has shown that the described system performed well when tested under established testing conditions.

63        In the preferred embodiment in the Wasserstrom Patent which is illustrated in the diagrams in the Patent (for example Figures 9 and 10), the patentee sets out to achieve a lateral distribution of forces by attaching four parallel steel pipes (two on each side) to the plastic barrier cells via metal stirrups, with the metal pipes of adjacent barrier cells connected to each other using bolted male-female joints.  It is the fact that the metal pipes are connected that makes this barrier continuous in structure (which I discussed above at paragraph 35) and allows a  number of barrier cells to attenuate the impact energy.

64        A structural joint, such as the one between two pipes of the Wasserstrom Patent, will generally need to be able to resist tensile and bending forces.  That is, the joints between the pipes must be able to resist being pulled apart, and rotated (about a vertical axis).  The Wasserstrom Patent shows that the inventor has designed the joint to resist being pulled apart (by bolting the joints together) and being rotated (by inserting the steel plate at the end of one pipe, into a receptacle at the end of the connecting pipe and by having a pipe on each side of the barrier, for example as described in column 4 at lines 15 to 30).

65        The bolted male-female joint in the Wasserstrom Patent is not the only way to achieve a satisfactory connection between the separate pipes.  A simple overlap joint would also be capable of doing this, provided that the two overlapping portions were tightly bolted together.  The bolts would both resist the pipes from being pulled apart, and would resist rotation of that joint.

66        I found nothing surprising in the description set out in the Wasserstrom Patent, and it seems to me that the patentee has taken routine steps to improve the performance of a plastic barrier system.  I also think that the steps taken would also have been routine in 1996, when I am told by Freehills that the Patent was published.

67        What appears to me to be the same system is described in section 4.7.3 of the June 1997 version of the Federal Highway Administration’s ‘Design Construction and Maintenance of Highway Safety Features and Appurtenances – Users Handbook’, where it is described as the ‘Guardian Barrier System’.  The Wasserstrom Patent also refers to a Guardian trade marked system (at column 11 line 44).  The Handbook says that this system has been approved for test level 3, and says:

‘The function of the 350 HIGHWAY KIT is to: 1. provide a strong and resilient outer surface to resist the wheel and bumper of a striking vehicle, and 2. link the barriers to each other and create a linear system such that the force of a striking vehicle will be distributed over many barriers, minimizing the lateral movement at the point of impact.’

Now produced and shown to me and marked RT-7 is a true copy of a pages 4.7.1 to 4.7.6 of the Handbook.

68        Pages 4.7.4 to 4.7.6 of the Handbook provide me with the same general information that I obtain from reading the Wasserstrom Patent.  While the photographs show that there are bolts through the pipe joints, the description in the Handbook also makes it clear to me that the pipes are to allow the forces developed on impact to be resisted by many barrier cells rather than one or two and therefore the joints between the pipes would need to be designed, in a routine manner, to achieve this.

69        The Handbook was prepared by the National Highway Institute, which is part of the Federal Highway Administration in the United States.  The National Highway Institute is, and has been since well prior to 1999, been a premier education and training facility for transport engineers and planners.  I consider that anyone in Australia conducting any research into road safety engineering would be aware of the Federal Highway Administration and the National Highway Institute and its publications which it makes available for purchase.

70        I owned a copy of the Handbook prior to 1999, and while I do not recall having seen a physical Guardian Safety Barrier system, I do recall that I carefully read and reviewed the Handbook prior to 1999.  The National Highway Institute also operated a stand at the Transportation Research Board Annual Meeting at which its materials were offered for sale.  This is a major conference, now attracting about 10,000 delegates, which I have attended since about 1990.  The conference has been growing, and probably attracted around 7,000 delegates in 1998.  I have generally attended this conference with a number of Australian colleagues of mine, and recall other Australians also attending this conference before 1999.  The conference covered all aspects of transportation, and was not restricted to safety barriers.

71        Section 6 of the Road Design Guide published by the Roads and Traffic Authority of New South Wales is entitled ‘Safety Barriers for Roads and Bridges’ and was published in May 1996.  Page 6.5.5-2 of that Guide describes the ‘Guardian with 350 Highway kit’ system.  The Guide contains a cross-sectional picture of the system, and explains that it is a patented, commercially available product which must be installed in accordance with the manufacturer’s drawings and specifications.  It also says that, with the 350 Highway Kit fitted, it met NCHRP test level 2.

…

73        The Road Design Guide is and was, including prior to 1999, a well known document in Australia, and I believe that it was owned by most people working in this area, including anyone who was interested in supplying any products to the RTA.  I considered prior to 1999, and still consider, that it was a comprehensive and well-respected publication and I believe that this view was generally held by people working in the area of relocatable barriers.

85                  The question is whether the Wasserstrom Patent is valid, or whether it is nothing more than routine improvement in the performance of a plastic barrier system, as Dr Troutbeck’s observation at para 66 of his affidavit might suggest.  The question is whether the Wasserstrom Patent teaches what is to be found in the applicant’s Patent.

Evidence of Dr Jenkins on novelty

86                  Paragraphs 24-28(a)-(r) of Dr Jenkins affidavit, filed 2 October 2006 (p 113 behind tab ‘Section 3’ in agreed bundle)

24.       I have read the Wasserstrom Patent.  I was not previously aware of that patent.

25.       I have looked at the description of the Guardian System as set out in the US User’s Handbook (exhibit RT7) and the RTA Road Design Guide (exhibit RT8).  I was not aware of the Guardian System before reading Dr Troutbeck’s affidavit.  I have not seen the Guardian System in use.

26.       I agree that the Guardian System as shown in the User Handbook when fitted with the 350 Highway Kit appears to correspond with the preferred embodiment as set out in the Wasserstrom Patent.  For clarity, when I refer to the Guardian System I mean the barrier units when fitted with the 350 Highway Kit as shown in exhibits RT7 and RT8.

27.       In my opinion the Guardian Barrier System (and the barrier system described in the Wasserstrom Patent) and the barrier system described in the Kinabalu Patent both set out to solve or reduce problems caused by the impact from collisions.  Both systems attempt to do this by using a structural component (the force distributing means or pipes in the Guardian and Wasserstrom Systems and the guard member in the Kinabalu Patent) which may be assembled from multiple segments and when assembled extends beyond the ends of individual barrier units.

28.       However, there are some very important differences between the Guardian or Wasserstrom System and the system disclosed in the Kinabalu Patent:

(a)       The passage from the User Handbook (exhibit RT7) quoted by Dr Troutbeck at para 67 of his affidavit is followed by the following passage:

The 350 HIGHWAY KIT consists of two inverted U saddles which are placed over the top of each barrier.  The saddles create an offset mounting point for the side panels, such that the upper longitudinal pipe is five inches from the vertical face of the barrier.  The pipe assemblies consist of two formed flat bars with two pipes welded across at specific elevations.  The pipe assemblies are then secured under the saddles and secured to the barrier with steel cables that pass under the barrier.  The cable prevents the system from lifting upon impact from a vehicle.  The barrier is connected to the next in line by means of an external pipe sleeve splice element.

(b)       I believe that this passage is a convenient and concise summary of the Guardian System and also the preferred embodiment described in the Wasserstrom Patent.

(c)        It is clear to me from this passage that the pipes (or the force distributing means as described in Wasserstrom) are not connected to the barrier units.  Rather the pipes are connected to the frame assembly consisting of the inverted U shaped saddles which are linked by the steel cable passing under the base of the barrier units.  The cable is necessary to prevent the saddles from riding up from the collision impact.

(d)       This corresponds with the description in the Wasserstrom Patent.  At para 53 of his affidavit Dr Troutbeck quotes from the abstract on the cover sheet of the Wasserstrom Patent but omits the words immediately before the quoted passage which state:

A reinforcement system for highway barriers comprising a frame structure mounted on the surface of an associated highway barrier and force distributing members …(my emphasis)

(e)        Similarly the passage at column 1 line 57 in the Wasserstrom Specification under the heading SUMMARY AND OBJECTS OF THE INVENTION states:

… the reinforcement system comprises a frame structure which adapted (sic) to be mounted on the surface of an associated highway barrier.  The reinforcement system also comprises force distributing means for distributing forces along a horizontal direction upon impact of a vehicle into the associated highway barrier … the forced (sic) distributing means is secured to the frame structure and extends substantially horizontally and parallel to the associated highway barrier … (my emphasis)

(f)        The frame structure is then discussed in column 2 of the Wasserstrom Specification.

(g)       It is clear to me from these passages that the force distributing means (or pipes) disclosed in Wasserstrom are not physically connected to the barrier units.  Neither is the frame assembly.  Rather the pipes are connected to the frame assembly which in turn sits upon the barrier units (using the inverted U shaped saddles) constrained against vertical movement by the steel cables.  The Wasserstrom Patent uses the term “mounted on” in the same way as a rider is mounted on a horse; there is no physical connection.

(h)       There is no disclosure in the Wasserstrom Patent or the User Handbook (exhibit RT7) or the RTA Design Guide (exhibit RT8) that the force distributing means or pipes are to be secured to the barrier units themselves or that the frame assembly is to be so secured.

(i)        This can be contrasted with the requirement in the Kinabalu Patent that (quoting from the broad statement of the invention) the guard member is:

Mounted on and overlies the side walls of at least two adjacent barrier elements.

Although in my opinion the pipes or force distributing means do overlie the side walls in the Guardian or Wasserstrom Systems they do not fulfil the other requirement that they be mounted on the side walls of the barrier units.

(j)        In my second report dated 28 June 2006 (at page 2) I stated my understanding at that time of the term mounted on in the Kinabalu Patent:

My understanding of the term mounted on in this context is that the guard member would be supported from the barrier element and in a position adjacent to the side wall.  There are two aspects of the term mounted on.  The first is that the guard element, being in some way supportively connected to the barrier element, would be adjacent to the side wall (as distinct from the top, bottom or other surface of the barrier element).  The second aspect would relate to the method of connection and support.  That is, the guard element would be mounted on the side wall if the connection or connecting structure were to the side wall (as distinct from the top, bottom or other surface of the barrier element).

I formed this opinion after reading the Kinabalu Patent and before I saw Dr Troutbeck’s affidavits or became aware of his interpretations or opinions.

(k)       For the reasons which I discuss in para 10.16(e) above, it is essential in the Kinabalu Patent that the guard member be secured (or supportively connected) to the barrier elements.

(l)        For these reasons, in my opinion, the pipes or force distributing means in the Guardian System or the Wasserstrom Patent are not mounted on the barrier units in the way required by the Kinabalu Patent.

(m)      Because the frame assembly in the Guardian or Wasserstrom Systems is not secured or connected to the barrier units it will not operate to provide the composite beam effect which I have discussed above.  For instance, because it is not secured or connected to the side wall of the barrier unit, it is possible for the frame assembly to move longitudinally as well as vertically.

(n)       Because the force distributing means (the metal pipes) in Wasserstrom are not physically connected to the barrier elements, the metal pipes will not work together with the barrier units to make up one structural unit to resist bending.  Structurally, the Wasserstrom and Kinabalu barriers operate differently.

…

(p)       Secondly, the Kinabalu Patent requires that the guard member be secured (or mounted on) the side wall of the barrier units.  This only requires connection to the side wall.  This can be contrasted with the frame assembly in the Guardian and Wasserstrom Systems which (when linked with the cable) encircles the whole barrier unit.

(q)       Thirdly, as I mention in para 22 above, the joints in the pipe assemblies as shown in the drawings in the Wasserstrom Patent and in the photographs in the User Handbook are located over the joints between the barrier units.  I expect that this is a deliberate choice by the designer.  The reason I say this is that assembling and fitting the frame assemblies, connecting the base plate cables and then connecting the pipes for each barrier unit could be a time consuming exercise.  I have never worked with the Guardian unit but I believe it would be difficult to assemble the 350 Highway Kit unless the barrier units were empty.  This suggests to me that the designer has in mind the possibility (or probability in my view) that the assemblies and pipes would be left in place on, and moved with, the barrier units.  The pipes would then be aligned and connected when the assembly is made up.  This would explain why the pipes stop at the ends of the barrier units.

(r)        This can be contrasted with the approach in the Kinabalu Patent.  Claim 1 makes it clear to me that the guard member must extend beyond the end of the individual barrier units.  The specification which I discuss in para 10.16(c) and 10.16(d) makes it clear that the inventor prefers that, where the guard member is constructed of segments (as is the case in the Guardian and Wasserstrom disclosures) the segments should extend over the join and end or terminate at the midpoint of the next barrier unit.  This is preferable from a structural stability viewpoint but it would make it more difficult to move the barrier units without first dismantling the guard member, as the guard member would extend beyond the end of the individual units.  However in my view the Kinabalu Patent more clearly appreciates the importance of having the guard member span the joint between the individual units;

87                  From the same affidavit, Dr Jenkins continues:

56.       In para 161 of his Affidavit Dr Troutbeck states that the Kinabalu Patent is directed to shielding the plastic barrier elements.  This is one of the functions of the guard member in the Kinabalu Patent but it also has the other two functions which I have discussed above.

57.       I disagree with the statement by Dr Troutbeck at para 163 of his Affidavit that claim 1 of the Kinabalu Patent does not require that the joint must resist the adjacent barrier elements from being pulled apart.  In my opinion, a person designing a barrier assembly made up of relocatable barrier elements of the type the subject of the Kinabalu Patent in 1999 would incorporate an effective joint design into the barrier elements.  To be effective the joint design would resist the tensile forces (the adjacent barrier elements being separated) whilst still allowing flexibility in use.

58.       I agree with Dr Troutbeck’s statement at para 164 of his Affidavit that, in 1999 a variety of joints were known.

59.       I agree with Dr Troutbeck’s statements in paras 165 – 167 of his Affidavit.  However, the metal pipes (or force distributing means) in the Wasserstrom Patent are mounted on the frame assemblies which, in turn, are not mounted on (in the sense used by Kinabalu Patent; this requires physical connection to achieve the composite structure effect) the side walls of the barrier elements.  In my opinion, the metal pipes as shown in the Wasserstrom Patent do overlie the side walls of the barrier elements.

60.       In para 171 of his Affidavit Dr Troutbeck says that the illustrations of the Wasserstrom Patent show that the metal pipes are slightly longer than the length of the plastic barrier elements in those illustrations.  I disagree with this statement.  The ends of the metal pipes coincide with the ends of the barrier elements.  Further, it should be self evident that if the metal pipes are longer than the barrier elements then the join between the pipes cannot be located at the end of the barrier element and must be located at a place further along the barrier elements (that is, not at the join between the two barrier elements).  Further, if the metal pipes on each barrier element are longer than the barrier element, then the barrier elements cannot be connected to each other as a barrier assembly so long as the metal pipes are connected.

…

            The Wasserstrom Patent obviously intends that the joint between the pipes be located at the ends of the barrier elements.  I believe this is a deliberate choice which has been made by the designer of the Wasserstrom system probably to achieve the benefit of modularity.  Because the Wasserstrom system is not concerned to achieve a single composite structure (the barrier elements and the guard element operating together as a single unit) the designer of the Wasserstrom system is not concerned with the problem that the two weak points are then located at the same position.

61.       I agree with the statement by Dr Troutbeck at para 173 of his Affidavit that the connected metal pipes in Wasserstrom operate as a single structural member.  The essential point of difference between the Wasserstrom system and the Kinabalu Patent system is that in the Kinabalu system the guard member and the barrier elements operate together as a single structural unit.  This does not occur in the Wasserstrom system because there is no physical connection between the metal pipes and the barrier elements.  In particular, relative longitudinal movement is possible between the metal pipes and the barrier elements.

88                  On the evidence dealing with lack of novelty, in my opinion, the Wasserstrom Patent anticipates the applicant’s Patent.

89                  I agree with the view of Dr Jenkins expressed in para 27 of his affidavit filed 2 October 2006 that the barrier system described in the Wasserstrom Patent, and the barrier system described in the Kinabalu Patent both set out to solve or reduce problems caused by the impact from collisions. 

90                  I agree also that both systems attempt to do this by using a structural component (the force distributing means or pipes in the Guardian and Wasserstrom systems, and the guard member in the Kinabalu Patent, which may be assemblied from multiple segments, and when assembled, extends beyond the ends of individual barrier units.

91                  I agree also with Dr Jenkins’ conclusion found in para 28(i) of that affidavit, that:

… the pipes or force distributing means do overlie the side walls in the Guardian or Wasserstrom Systems …

92                  I disagree, however, with Dr Jenkins’ conclusion that the Wasserstrom System does not fulfil the requirement that the force distributing means be mounted on the side walls of the barrier units.

93                  The Abstract speaks of “a reinforcement system for highway barriers comprising a frame structure mounted on the surface of an associated highway barrier …”.  Dr Jenkins frequently expresses the view that the frame assembly is not secured or connected to the barrier units.  The frame assembly in the Wasserstrom System is not secured or connected to the barrier units.  It follows, in Dr Jenkins’ view, that it would not operate to provide the composite beam effect, and by way example, because it is not secured or connected to the side wall of the barrier unit. 

94                  In Dr Jenkins’ view, “It is possible for the frame assembly to longitudinally as well as vertically.”

95                  Dr Jenkins, at para 59, again expressed the view that:

… the metal pipes (or force distributing means) in the Wasserstrom Patent are mounted on the frame assemblies which, in turn, are not mounted on (in the sense used by Kinabalu Patent; this requires physical connection to achieve the composite structure effect) the side walls of the barrier elements.

96                  Dr Jenkins does express the view that:

… the metal pipes as shown in the Wasserstrom Patent do overlie the side walls of the barrier elements.

97                  Later, Dr Jenkins expressed the view in para 61 that:

The essential point of difference between the Wasserstrom system and the Kinabalu Patent System is that in the Kinabalu System the guard member and the barrier elements operate together as a single structural unit.  This does not occur in the Wasserstrom system because there is no physical connection between the metal pipes and the barrier elements.

98                  In my view, there is a physical connection between the metal pipes and the barrier elements.  In my view, in the Wasserstrom patent, the force distributing means are mounted on the frame assemblies, which, in turn, are mounted on the side walls of the barrier elements.  The suggestion by Dr Jenkins is that the frame assemblies are mounted on the barrier elements in the same way that one could say a rider is mounted on a horse.  That is to say, the saddle, the frame structure, sits on the barrier element, but is not physically connected to the barrier element, in the same way that a rider mounted on a horse is not physically connected to the horse.

99                  In my opinion, a closer analogy relates to the relationship of a saddle to a horse.  The saddle is, in my view, secured or connected to the horse by means of the girth strap or cincture in the same way that the frame structure consists of the upper saddle secured to the barrier element by “at least one cable connected to one of the side assemblies, and the second end connected to the other side assembly”.  In this sense, the frame structure is “securely mounted” to the associated highway barrier.

100               In my judgment, therefore, the applicant’s Patent is invalid for want of novelty.

Lack of inventive step

101              The respondent’s Amended Particulars of Invalidity, filed 27 September 2006, sets out this claim:

Lack of Inventive Step (section 18(1)(b)(ii))

2          The alleged invention so far as claimed in each claim of the Patent is not a patentable invention within the meaning of the Act in that, so far as claimed in each and every claim, it did not involve an inventive step when compared with the prior art base as it existed on or before the priority date of each claim.

Particulars

(1)       The Cross-claimants will rely on the common general knowledge at or before the priority date of each claim, which included:

(A)       The documents referred to in Annexure “B”;

(B)       The matters admitted in the specification to be part of the common general knowledge, including:

(i)        the use of demountable traffic barriers including a plurality of hollow, water fillable, barrier elements which are arranged end to end and linked by a plurality of pin joints or interlocking end portions (page 1 lines 4 to 6);

(ii)       that barrier elements can be damaged by collisions from motor vehicles (page 1 lines 7 to 10); and

(iii)      that the use of a plurality of threaded fasteners extending through tubes connecting opposing side walls is a convenient means of securing the guard to the barrier element (page 3 lines 14 to 17);

(C)       Matters generally known to the skilled addressee, including, in addition to the matters referred to above:

(i)        the use of barrier elements incorporating a base that engages upon the surface upon which it is deployed;

(ii)       the use of pointed element, non-slip pad, and interlocking key devices to generate friction and/or physical interaction between two surfaces, including the base of a barrier element with the underlying surface;

(iii)       the use of water as ballast for relocatable safety barrier systems;

(iv)      The relevance of barrier displacement, joint stiffness, and continuity in structure of barrier systems to the performance of the barrier system.

(2)       The Cross-claimants will rely on the common general knowledge referred to in (1) considered separately or together with any one or more of the documents referred to in Annexure “B” (insofar as they were not part of the common general knowledge), each of which constituted prior art information that the skilled person could, before the priority date of each claim, be reasonably expected to have ascertained, understood, regarded as relevant and combined.

(3)       The Cross-claimants will further rely upon the following indicia of lack of inventive step:

(A)       The absence of any proven unmet need addressed by the Patent;

(B)       The absence of any commercial exploitation by the Applicant (directly or by licensing) of any safety barrier made in accordance with the claims or the drawings of the Patent (the particulars to paragraph 5 below are referred to and repeated in relation to this allegation).

102               The respondents claim that the invention in the applicant’s Patent is obvious, having regard to common general knowledge.  The contention for the respondents is that one sees in the claimed invention simply a guard being used for its function of protection.  The submission by the respondents is that the invention as claimed is obvious; that it really is a matter of ordinary perception that the guard member would have the shielding function and could be used as a truss, or as a reinforcement across the barrier elements.  I do not agree.

103               In my opinion, the Patent is not invalid for lack of inventive step pursuant to s 18(1)(b)(ii) of the Act.

Not a patentable invention and not a manner of manufacture

104               In N.V. Philips Gloeilampenfabrieken v Mirabella International Pty Limited (1995) 183 CLR 655 (Philips), the High Court (Brennan, Deane, and Toohey JJ with Dawson and McHugh JJ dissenting) held that the primary or threshold requirement of a patentable invention under s 18(1) of the Act was that it should be an alleged invention, meaning an alleged manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statue of Monopolies 1623 (Imp). 

105               In the majority judgment at 663-6:

The primary focus of inquiry should, as we have indicated, be upon the opening words (“… a patentable invention is an invention that …”) of that sub-section which impose a threshold requirement which must be satisfied before one reaches that contained in the body of par (a). 

The effect of those opening words of s 18(1) is that the primary or threshold requirement of a “patentable invention” is that it be an “invention”.  Read in the context of s 18(1) as a whole and the definition of “invention” in the Dictionary in Sch 1, that clearly means “an alleged invention” that is to say, an “alleged” “manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies…

[W]hat is involved in an alleged manner of new manufacture, that threshold requirement of “an alleged invention” will, notwithstanding an assertion of “newness”, remain unsatisfied if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of absence of the necessary quality of inventiveness, not a manner of new manufacture for the purposes of the Statute of Monopolies.  That does not mean that the threshold requirement of “an alleged invention” corresponds with or renders otiose the more specific requirements of novelty and inventive step (when compared with the prior art base) contained in s 18(1)(b).  It simply means that, if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further. …

106               The High Court in Philips dismissed an appeal from a majority of the Full Federal Court that the subject matter of the patent in suit as disclosed by the specification when read as a whole, was merely a new use of a particular known product.

107               The respondents’ cross-claim that the applicant’s Patent is invalid on the grounds that it is not a patentable invention or a manner of manufacture with the meaning of s 18(1) of the Act is framed as follows:

Not a patentable invention (section 181(1))

3          The alleged invention so far as claimed in each claim of the Patent is not a patentable invention within the meaning of the Act in that, so far as claimed in each and every claim, it does not satisfy the threshold requirement of ‘an invention’ and is not properly the subject of letters patent.

Particulars

(1)       The Patent does not, on the face of the specification, disclose an invention.

(2)       The alleged invention amounts to no more than the incorporation of a ‘guard member’ to overlie a series of barrier elements for the purpose of guarding the barrier elements against collisions which the barrier elements are expected to incur in their usual operation.

108               Mr Yates SC, counsel for the respondents, submitted that all that was claimed as the invention is, in fact, the use of a guard rail:

All that’s being provided is a guardrail to barriers for the purpose of protecting the barriers, including protecting the connection between barriers. So it is simply a guardrail for the barrier system, and that, we submit, is simply just another use of a known product for its known purpose, and for which its properties make it suitable.

109               I disagree.  The incorporation of the particular integer of “at least one thin walled, longitudinally extending, guard member that is mounted on and overlies the side walls of at least two adjacent barrier elements” to inhibit or prevent damage to interlocking barrier elements results in an invention, in my opinion.  There is, in my assessment, the necessary quality of inventiveness to constitute the subject matter of the claim a manner of new manufacture for the purposes of the Statute of Monopolies.

110               Further, the specification says of that integer: “advantageously, providing a guard which overlies a plurality of adjacent barrier elements serves to increase the stability of the barrier system and render it less deformable when subjected to minor impact”, and says of a preferred embodiment of the invention illustrated in Figure 1: “In use, the guards 17 protect the barrier elements 11 from direct contact with a motor vehicle and help strengthen the connection between adjacent barrier elements.”  The combination of integers including that integer therefore aids in the intended function of a barrier as set out in para 2 above, and is an invention, in my opinion.

111               In my judgment, for the above reasons, the threshold requirement of a patentable invention under s 18(1) is met in the case of the applicant’s Patent.

Manner of manufacture (section 18(1)(a))

4          The alleged invention so far as claimed in each claim of the Patent is not a patentable invention within the meaning of the Act in that, so far as claimed in claims 6 to 9, it is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies, 1623.

Particulars

(1)       Claims 6 to 9 are claims to a mere collocation of separate parts, not interacting to make up a new thing.

(2)        In claim 6, the plurality of threaded fasteners extending through tubes connecting opposing side walls does not interact with the other claim integers in a manner relevant to the function of the alleged invention.

(3)       In claims 7 and 8, the engageable base (including where the engagement is achieved by a plurality of pointed members, a non slip pad, and an interlocking key) does not interact with the other claim integers in a manner relevant to the function of the alleged invention.

(4)       Claim 9, insofar as the drawings encompass the features of claims 6 to 8 referred to above, is similarly invalid.

112               This proceeding, as conducted, concerns the validity of Claims 1, 2, and 4 of the Patent, and infringement thereof.  Whether the invention as claimed in Claims 6 to 9 is “a manner of manufacture” within the meaning of s 6 of the Statutue of Monopolies 1623 is therefore irrelevant.

Lack of clarity

113               This claim is framed by the respondents as:

Lack of Clarity (section 40(3))

7          The specification does not comply with the requirement of section 40(3) of the Act in that the claims are not clear.

Particulars

(1)        The phrase ‘guard member that is mounted on and overlies the side walls of at least two adjacent barrier elements’ in the description of the invention and in claim 1 and its dependent claims does not make clear whether it is a feature of the invention that the ‘guard member’ ‘overlies’ the side walls of at least two adjacent barrier elements for the total length of the side walls of each barrier element, or whether it is sufficient that the ‘guard member’ ‘overlie’ only some part of the side wall of each of the two adjacent barrier elements.

114               Again I disagree.  A requirement of the Patent in Claim 1 is that the guard member overlie the side walls of at least two adjacent barrier elements.  A guard member that overlies only some part of the side walls of each of two adjacent barrier elements does not overlie the side walls of two adjacent barrier elements, and thus does not satisfy that requirement of Claim 1.

115               I therefore propose to make a declaration that Australian Patent 774224 A barrieris, and has been at all material times, invalid; and order that Australian Patent 774224 A barrier, and each and all of the claims of the complete specification thereof, be revoked.

116               I will hear the parties on costs.

Associate:

Dated:         11 March 2008