FEDERAL COURT OF AUSTRALIA

Delnorth Pty Ltd v Commissioner of Patents [2013] FCA 165

FEDERAL COURT OF AUSTRALIA

Delnorth Pty Ltd v Commissioner of Patents [2013] FCA 165

CORRIGENDUM

1.    In paragraph 30 of the Reasons for Judgment substitute the following sentence in place of the second sentence:

“However, I have also set out s 7(4), (5) and (6) of the Act to assist in explaining how a claim of an innovation patent might be invalid on the ground that the claimed invention lacked any innovative step even though an identical claim appearing in a standard patent, which takes its priority from the same priority document, might not be invalid on the basis that it lacked any inventive step.”

2.    In the appearances, “Mr C Dimitradis” should read “Mr C Dimitriadis”.

Associate:    

Dated:        18 March 2013

THE COURT ORDERS THAT:

1.    The order made by the delegate on 21 July 2011 revoking claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 of Australian Patent No 2004249786 is set aside.

2.    The respondent pay the applicant’s costs of this proceeding.

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

REASONS FOR JUDGMENT

Background

1    This is an appeal by the applicant (the patentee) against a decision of a delegate of the respondent (the Commissioner) to revoke a number of claims of Australian patent No 2004249786 (the Patent). The decision was made on 21 July 2011 and is reported: see Re Delnorth Pty Ltd (2011) 93 IPR 326. By this decision, the Commissioner, by her delegate, exercised her power under s 101(1) of the Patents Act 1990 (Cth) (the Act) following a re-examination pursuant to s 97(2) of the Act allowing her to revoke a standard patent wholly or so far as it relates to a particular claim.

2    The appeal by the patentee is brought under s 101(4) of the Act. Even though it is called an appeal, this proceeding is not an appeal in the strict sense. In an appeal under s 101(4) of the Act, the Court is required to exercise de novo the power conferred on the Commissioner by s 101(1) of the Act.

3    A claim of a standard patent may be revoked under s 101(1) of the Act on the grounds that, when compared with the prior art base as it existed before the priority date, it was not novel or it did not involve an inventive step.

4    The decision of the Commissioner to revoke the relevant claims of the Patent was preceded by two re-examination reports dated 29 July 2010 and 30 November 2010. The patentee responded to the first report, but not to the second report, although it applied to make amendments to the claims which were allowed. All discussions of the claims of the Patent in these reasons relates to the claims in their amended form.

5    The Commissioner, in accordance with the decision of the delegate given on 21 July 2011, decided to revoke various claims notwithstanding the amendments which had been made. Claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 of the Patent were revoked by the Commissioner on the ground that none of them involve an inventive step.

THE PATENT

6    The Patent is entitled “Roadside post”. It states that “[t]he invention relates to roadside posts for supporting signage or delineating paths, roadways or boundaries.” The Patent ends with 36 claims.

7    The background to the invention is described in the Patent in these terms:

Common examples of roadside posts include sign posts and guide posts, which are usually located on the edge or shoulder of roadways to delineate lanes and direct traffic. Guide posts are particularly effective when visibility is impaired, such as at night on unlit highways. Retro-flective sheeting is commonly used on delineator guide posts in various grades to reflect light and indicate to motor vehicle drivers the varying contours and directions of the approaching section of road.

Roadside posts are often impacted and damaged by wayward vehicles and must be replaced or repaired. Timber posts will commonly fracture when impacted and must be replaced. Existing plastic or plastic/rubber composite posts are flexible and resilient enabling them to recover after impact. However, plastic or rubber posts tend to deteriorate due to UV exposure and repeated impacts over time. Steel posts have also been employed and are generally not resilient, plastically deforming upon impact and must be manually restraightened. Some known devices also employ a hinging mechanism between two or more rigid members. The hinging mechanism is typically a flexibly resilient rubber or plastic material. The rubber or plastic components of these posts also deteriorate due to UV exposure and repeated impacts. Other hinging mechanisms are either not resilient or complicated and expensive to manufacture.

Often the nature of the vehicle impact is a direct wheel-over in which the vehicle wheel rolls directly over the post pressing it flat against the surface of the ground. Known posts are installed in the ground to bend only above the surface of the ground and are therefore, not adapted to bend flat against the ground surface without enduring a tight right angle bend at the surface. During a direct wheel-over, flexible posts are forced to bend substantially at a tight right angle at the ground surface. Subsequently, during a direct wheel-over, crease points can occur in the post at the surface of the ground as the post is forced into a tight right angle bend. Tight right angle bends accelerate fatigue of the post and also increase plastic deformation in metal posts.

The object of the invention is “to substantially overcome or at least ameliorate one or more of the disadvantages of the prior art”.

8    The Patent contains a summary of the invention which includes a consistory clause and a brief description of various preferred embodiments. This is followed by a brief description of various drawings. These form the basis of a detailed description of the preferred embodiments that is followed by the claims.

9    Claims 1 and 2 of the Patent are in the following terms:

1.    A roadside post comprising an elongate body formed of sheet spring steel and having a longitudinal axis, a front face and a rear face, wherein:

    said body is elastically bendable through 90 degrees from an unbent state about a transverse axis transverse to said longitudinal axis, said front and rear faces transversely extending generally parallel to said transverse axis.

2.    The roadside post of claim 1, wherein said body is elastically bendable through 90° from said unbent state about said transverse axis to either side of said longitudinal axis.

10    It is unnecessary to set out the other claims which the delegate decided should be revoked. Claim 1 is the only independent claim. Claims 1 to 23 are product claims. Claims 24 to 28 are method claims. In each of the method claims, the method claimed is directed to the installation of the roadside posts claimed in one or more product claims.

11    The Commissioner accepts that none of the claims of the Patent should be revoked unless claim 1 is revoked. Thus, the Commissioner accepts that if I am not persuaded that it is appropriate to revoke claim 1 for lack of inventive step, then there is no basis for me to revoke any of the other claims in issue.

THE PROSECUTION HISTORY OF THE STANDARD PATENT

12    In order to understand the delegate’s decision, and much of the evidence which is relied upon by the parties to this appeal, it is necessary to provide a brief explanation of the events leading up to the grant of the Patent.

13    The application which led to the grant of the Patent was filed on 10 June 2004 as an application under the Patent Cooperation Treaty (PCT). It claimed priority from a provisional application filed on 23 June 2003. The application was advertised as accepted on 5 January 2006.

14    A notice of opposition was filed by Dura-Post (Australia) Pty Ltd (Dura-Post). Following a hearing of Dura-Post’s opposition, a delegate of the Commissioner decided that claims 1 to 32 of the application as it then stood lacked any inventive step. The delegate’s decision, which was given on 17 April 2009, is reported: Delnorth Pty Ltd v Dura-Post (Australia) Pty Ltd (2009) 81 IPR 396.

15    On 7 May 2009 the patentee appealed the delegate’s decision of 17 April 2009. On 15 April 2010 the judge who was to hear the appeal, Foster J, was advised that an administrator had been appointed to Dura-Post. That prompted the patentee to apply for orders allowing its appeal and directing that the patent application proceed to grant. The proceeding was adjourned by his Honour to enable the administrator to consider his position. The administrator then informed his Honour that he withdrew Dura-Post’s objection to the patent application, making it clear that Dura-Post had no intention of defending the patentee’s appeal. His Honour was also informed that the Commissioner did not wish to be heard.

16    Against that background, Foster J made orders (inter alia) setting aside the delegate’s decision of 17 April 2009, and directing that the application proceed to grant: Delnorth Pty Ltd (ACN 051 954 977) v Dura-Post (Australia) Pty Ltd (ACN 101 287 512) (admin apptd) (2010) 85 IPR 642. In adopting that course, his Honour followed the decision of Young J in European Community v Commissioner of Patents (2006) 68 IPR 539 and Lindgren J in Cadbury Schweppes Plc v Effem Foods Pty Ltd (2006) 69 IPR 584.

17    Affidavit evidence had been filed in the opposition proceeding to be heard by Foster J by both the patentee and Dura-Post prior to the appointment of the administrator. It was accepted by Dura-Post that, even though it was not the appellant, it still bore the onus of proving that the claims of the patent application would be, if the subject of a grant, invalid. The affidavit evidence filed by Dura-Post sought to demonstrate that such claims would be invalid on several grounds including, relevantly, that they did not involve an inventive step. I will return to consider this evidence, to the extent it is presently relevant, in more detail later in these reasons.

18    In accordance with the orders made by Foster J on 13 May 2010, the patent application proceeded to grant without any further opposition from Dura-Post or any other person. On 27 May 2010, the Patent was granted by the Commissioner. On 28 May 2010, the Commissioner informed the patentee that she proposed to re-examine the Patent in the light of prior art raised in the opposition proceeding. The Commissioner thereafter embarked upon a re-examination which culminated in the delegate’s decision of 21 July 2011 to revoke claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 of the Patent pursuant to s 101(1) of the Act. It is the delegate’s decision to revoke those claims that is the subject of this appeal.

THE DECISION OF GYLES J IN RELATION TO THE INNOVATION PATENT

19    Before turning to the details of the delegate’s decision of 27 July 2011, it is convenient to mention at this stage the fate of three related patents that were the subject of a revocation proceeding heard by Gyles J. The proceeding heard by Gyles J is reported: Delnorth Pty Ltd (ACN 051 954 977) v Dura-Post (Australia) Pty Ltd (ACN 101 287 512) (2008) 78 IPR 463. His Honour’s decision was upheld on appeal: Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239.

20    The proceeding heard by Gyles J concerned three innovation patents resulting from divisional applications based upon the same PCT application upon which the Patent was based. The Patent and the three innovation patents all claimed the same priority date. Gyles J found that claims of two of the innovation patents were invalid on the basis that they lacked any innovative step including, in particular, claims 1 and 2 of what was referred to by his Honour as patent No 2 (the Innovation Patent).

21    Claims 1 and 2 of the Innovation Patent were in these terms:

1.    A roadside post comprising an elongate body formed of sheet spring steel and having a longitudinal axis, a transverse axis transverse to said longitudinal axis, a front face and a rear face, said front and rear faces transversely extending generally parallel to said transverse axis, wherein said body is elastically bendable through 90 degrees from an unbent state about said transverse axis.

2.    The roadside post of claim 1 wherein said body is elastically bendable through 90 degrees from said unbent state about said transverse axis to either side of said longitudinal axis.

22    This brings me to a peculiar feature of the present case. A comparison of the claims of the Patent and those of the Innovation Patent reveals that claims 1 and 2 in each are, in substance, the same. In claim 1 of the Patent, the integers are presented in a slightly different order to the order in which they appear in claim 1 of the Innovation Patent. In the case of claim 2 of the Innovation Patent, the language used to describe the additional integer is identical to that used in claim 2 of the Patent.

THE RELEVANT STATUTORY PROVISIONS

23    The provisions of the Act that provide for re-examination of standard patents are found in Ch 9 (ss 96A-101) of the Act. The Patents Act 1952 (Cth) did not contain any provision which allowed for re-examination of a patent. The relevant provisions were incorporated in the Act in accordance with recommendations of the Industrial Property Advisory Committee contained in its August 1984 report entitled Patents, Innovation and Competition in Australia.

24    Section 97(2) of the Act provides for the re-examination of a patent which has been granted by the Commissioner. Such a re-examination may take place at the request of any person and may also take place at the Commissioner’s own initiative. The re-examination with which I am concerned occurred at the initiative of the Commissioner. The grounds of re-examination are limited to whether, as at the relevant priority date, the claims lack novelty or do not involve any inventive step: s 98(1)(a) and (b) of the Act. In conducting a re-examination, the Commissioner is required to report whether “to the best of his or her knowledge” the invention, so far as claimed, lacks novelty or an inventive step: s 98(1) of the Act. Where the Commissioner makes an adverse report on a re-examination under s 97(2), he or she may revoke the patent either wholly or in so far as it relates to a particular claim: s 101(1) of the Act. Before revoking a patent or any of its claims, the Commissioner must give the patentee a reasonable opportunity to be heard, and where appropriate, to amend the patent: s 101(2) of the Act.

25    By virtue of s 101(4), a patentee may appeal to this Court against a decision of the Commissioner to revoke a patent or the claims of a patent. As I have mentioned, the appeal to this Court is in the nature of a hearing de novo: Commissioner of Patents v Emperor Sports Pty Ltd (2006) 149 FCR 386 at [20] (Emperor Sports).

26    In deciding whether a patent or any of its claims should be revoked on the ground that it lacks an inventive step, the Commissioner and the Court must act in accordance with the requirements of s 7 of the Act.

27    Section 7 of the Act specifies when, for the purposes of the Act, an invention is taken to involve an “inventive step”. Subsections (2) and (3) provide:

(2)    For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

(3)    The information for the purposes of subsection (2) is:

(a)    any single piece of prior art information; or

(b)    a combination of any 2 or more pieces of prior art information;

    being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.

28    Section 7 also specifies when, for the purposes of the Act, an invention is to be taken to involve an “innovative step”. Subsections (4), (5) and (6) provide:

(4)    For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.

(5)    For the purposes of subsection (4), the information is of the following kinds:

(a)    prior art information made publicly available in a single document or through doing a single act;

(b)    prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information.

(6)    For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.

29    The expressions “prior art base” and “prior art information” are relevantly defined in the Dictionary as follows:

prior art base means:

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

(i)    information in a document that is publicly available, whether in or out of the patent area; and

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

…

prior art information means:

…

(b)    for the purposes of subsection 7(3)–information that is part of the prior art base in relation to deciding whether an invention does or does not involve an inventive step; and

(c)    for the purposes of subsection 7(5)–information that is part of the prior art base in relation to deciding whether an invention does or does not involve an innovative step.

30    Because the Patent is a standard patent, s 7(2) and (3) of the Act are of most relevance. However, I have also set out s 7(4), (5) and (6) of the Act to assist in explaining how a claim of a standard patent might be invalid on the ground that the claimed invention lacked any inventive step even though an identical claim appearing in an innovation patent, which takes its priority from the same priority document, might not be invalid on the same basis.

THE APPLICABLE PRINCIPLES

31    Before it was amended by the Patents Amendment Act 2001 (Cth), s 7(3) of the Act used the words “regarded as relevant to work in the relevant art in the patent area”. The reasons behind the deletion of the words “to work in the relevant art in the patent area” were explored by the Full Court in Ajinomoto Co Inc v NutraSweet Australia Pty Ltd (2008) 166 FCR 530.

32    Section 7(3) of the Act, in the form that it stood prior to the 2001 amendments, was considered by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 (Doric (No 2)). The High Court said (at paras [150]-[152]):

150    The proper construction of s 7(2) and (3) has been considered in Firebelt Pty Ltd v Brambles Australia Ltd [(2002) 76 ALJR 816 at 821-823 [31]-[36]; 188 ALR 280 at 287-289]. In recognising that s 7(3) relaxes the previous rule under the 1952 Act which forbade the use of prior disclosures not proved to be part of the common general knowledge at the priority date, this Court approved a statement by Burchett J in the Federal Court where he noted that s 7(3) in its pre-2001 version is limited [Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 414]:

“by the words ‘being information that the skilled person ... could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area’. And if a prior [disclosure] passes those tests, it must still be able to be said that, if that [disclosure] had been considered by the hypothetical skilled person together with the common general knowledge at the relevant time, ‘the invention would have been obvious’.”

151    That passage, noting the words of limitation in s 7(3), reflects the two statutory tests which have already been mentioned: the s 7(2) test of whether an invention is obvious when compared with the prior art base, and the s 7(3) test of whether information is to be included in the prior art base, each test to be determined objectively by the standard of “a person skilled in the relevant art”.

152    Given the history, context, purpose and specific words of limitation in s 7(3), all of which were addressed by this Court in Firebelt [(2002) 76 ALJR 816 at 823 [36]; 188 ALR 280 at 289], the phrase “relevant to work in the relevant art” should not be construed as meaning relevant to any work in the relevant art, including work irrelevant to the particular problem or long-felt want or need, in respect of which the invention constitutes an advance in the art. The phrase can only be construed as being directed to prior disclosures, that is publicly available information (not part of common general knowledge) which a person skilled in the relevant art could be expected to have regarded as relevant to solving a particular problem or meeting a long-felt want or need as the patentee claims to have done. Otherwise the words of limitation in the last forty words of s 7(3) would have no role to play. Any piece of public information in the relevant art would be included, as is the case with the much broader and quite different formulation in the cognate provisions in the United Kingdom [Patents Act 1977 (UK), s 2(2)…], which do not depend on the standard of a skilled person’s opinion of the relevance of the information.

33    Even though Doric (No 2) was concerned with s 7(3) of the Act in the form it stood prior to the 2001 amendments, the principles enunciated in that context are equally applicable to s 7(3) in its present form. In particular, s 7(3) does not draw in every published document that forms part of the “prior art base” (as that expression is defined for the purposes of the Act) but only those which the hypothetical skilled person could be reasonably expected to have ascertained, understood and regarded as relevant to solving a particular problem or meeting a long felt want or need that the patentee claims to have solved or fulfilled. Whether or not a particular document that forms part of the prior art base meets the requirements of s 7(3) of the Act is something that must usually be determined by evidence.

34    In Doric (No 2) (at [132]) the High Court also confirmed that the word “ascertained” as used in s 7(3) of the Act means “discovered or found out”. On this question, the Full Court in Emperor Sports stated (at [31]-[32]):

31    Section 7(3) does not assume an ascertainability by any and all skilled persons, of whatever description, of all publicly available prior art documents anywhere in the world. Nor does it assume that the skilled person has found the document in question, so that the only question is whether he or she has understood it and regarded it as relevant. Such a construction ignores the elements of expectation and reasonableness, as applied to the particular skilled person.

32    In considering who is the appropriate skilled person, and what such person might be reasonably expected to do when faced with the problem in hand, sometimes, indeed often, evidence may not be necessary. In many instances the answers will be obvious to the parties, the Commissioner and the Court. In high technology areas, eg it will usually be assumed that the relevant skilled person will be familiar with the major professional or academic journals and could reasonably be expected to consult them. No evidence is required.

35    The Full Court went on to quote the well known passage in the judgment of Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 which made clear that patent specifications do not form part of common general knowledge merely because they are published. The Full Court continued (at [33]):

… Of course, that case was decided under the pre-1990 law which did not make provision for documents which only became part of the prior art information as a result of s 7(3) ascertainment. Nevertheless the statement confirms that when identification of the relevant prior art is in dispute it is necessary to have either evidence or, which amounts to the same thing, reliance by an administrative decision-maker of expertise appropriate to the office.

THE DELEGATE’S DECISION

36    The delegate’s reasons for finding that the relevant claims should be revoked on the ground that they do not involve any inventive step hinge on the application of s 7(3) of the Act. In that regard, the delegate found that two United States patents, US 3,312,156 (Pellowski I) and US 3,362,305 (Pellowski II) should be considered to be, in the words of the delegate, “ascertainable, understandable and relevant for the purposes of s 7(3)”.

37    The delegate observed that Pellowski I and Pellowski II (collectively the Pellowski Patents) disclose essentially the same information. Neither party has suggested that there are any material differences between Pellowski I and Pellowski II.

38    As the delegate observed, the Pellowski Patents were considered by Gyles J in Delnorth Pty Ltd (ACN 051 954 977) v Dura-Post (Australia) Pty Ltd (ACN 101 287 512) (2008) 78 IPR 463. His Honour stated (at [39]):

In my opinion, the highway marking device which is disclosed by Pellowski is a device which is attached to, or on, or in the surface of the roadway whereas all claims of the patents in suit relate to a post in the ground adjacent to the roadway.

As previously mentioned, his Honour held that each of the claims 1 and 2 of the Innovation Patent was invalid on the ground that it lacked an innovative step. His Honour reached this conclusion in light of the Pellowski Patents which, having been published before the priority date, formed part of the prior art information for the purposes of s 7(4) of the Act.

39    The delegate regarded the decision of Gyles J as highly significant. As the delegate appreciated, if the Pellowski Patents formed part of the prior art base (as was admitted by the patentee) then Gyles J’s judgment pointed in favour of a conclusion that claims 1 and 2 of the Patent lacked an inventive step, but only if Pellowski I or Pellowski II was a piece of information which a person skilled in the relevant art could, before the priority date of the relevant claims of the Patent, be “reasonably expected to have ascertained, understood and regarded as relevant” in the sense those words are used in s 7(3) of the Act.

40    The delegate considered evidence before him that consisted of copies of affidavits or extracts from affidavits made by various witnesses in the revocation proceeding heard by Gyles J and in the opposition proceeding that was to be heard by Foster J. The evidence before the delegate also included extracts from the transcript of the oral evidence given by a number of those witnesses before Gyles J.

41    In total, the delegate had before him evidence from four witnesses which he considered relevant to the question whether the skilled addressee could reasonably be expected to have ascertained, understood and regarded as relevant, either Pellowski I or Pellowski II. These four witnesses, all of whom were persons skilled in the relevant art, were Mr Willbery, Mr Rootes, Mr Robinson and Mr Turner.

42    The delegate observed that the evidence showed that Mr Willbery and Mr Rootes did not review the patent literature. He then referred to evidence from Mr Robinson and observed that, although Mr Robinson was aware of the patent literature, he was not aware of it as a source of relevant information for developing roadside posts.

43    That left only the evidence of Mr Turner. The delegate said (at [39]) that it was clear from Mr Turner’s evidence that it was “routine” for Mr Turner’s company to review patent literature as part of developing new products.

44    The delegate went on to distinguish the Full Court’s decision in Emperor Sports. The delegate said (at [42]):

In the Emperor Sports case the person skilled in the art was considered to be a relatively “non-technical” person such as a referee, coach or umpire whereas in the present case the person skilled in the art has been determined to be an engineer. I consider it reasonable to expect that an engineer would review patent literature in seeking existing solutions to a particular problem since patents are widely known to be a comprehensive source of technical information.

(emphasis added)

The delegate then returned to the evidence of Mr Turner and Mr Robinson. He said (at [43]):

Furthermore, the evidence of Mr Turner and Mr Robinson suggests that roadside posts have a reasonable level of associated patenting “activity” thus these patents should provide a good source of information about the state of the art in this field. Consequently a person skilled in the art would have further impetus to review the patent literature for relevant information.

45    The crucial finding made by the delegate appears in the next paragraph of his reasons (at [44]) where he stated:

On balance I find that a person skilled in the art could have been reasonably expected to review patent literature at the priority date of the invention. In this case a person skilled in the art could be reasonably expected to review patents relating to the problem and in particular self-righting road signs or traffic signals. Thus any patent relating to self-righting road signs could be reasonably expected to have been ascertained by a person skilled in the art.

46    The delegate found (at [45]) that the Pellowski Patents were patents that were:

… clearly directed to self-righting road signs and could therefore be reasonably be expected to have been found by a person skilled in the art looking for solutions to the problem of a more durable roadside post.

He found (at [46]) that the Pellowski Patents were “written succinctly in plain English and thus could be understood by the person skilled in the art”, and (at [47]) that they refer to durability as one of the advantages of their inventions and “would thus clearly be regarded as relevant by a person skilled in the art.”

47    The delegate went on to find that claims 1 and 2 and the other claims of the Patent which he decided to revoke lacked an inventive step in light of the disclosures in the Pellowski Patents.

THE QUESTION IN THE APPEAL

48    The question for decision is whether, on the evidence now before me, any of the relevant claims should be revoked on the ground that it did not involve an inventive step as at the priority date of 23 June 2003.

THE EVIDENCE

49    The evidence upon which the Commissioner placed most reliance in this proceeding was the evidence of Mr Turner. In evidence is a copy of Mr Turner’s affidavit and the transcript of his cross-examination in the proceeding heard by Gyles J. The transcript reveals that Mr Turner was asked several questions concerning four patent specifications referred to in his evidence as “Blau”, “Schmanski” and “Kennedy”. The four patents, more fully identified in Mr Turner’s affidavit, were:

    United States Patent No 4486117 (Blau);

    Australian Patent No 526808 (Schmanski);

    Australian Patent No 539998 (Schmanski);

    United States Patent No 6375385 (Kennedy).

50    In his cross-examination Mr Turner was referred to these patent specifications which had been provided to him for the purpose of providing the expert opinion of a person skilled in the relevant art. While he agreed that they had been provided to him for that purpose, he also said that he had some prior knowledge of them. The following exchange then occurred:

Has it been part of your experience and activities to read patents occasionally?---Sir, we put about 11 per cent of our turnover into R and D and we employ a company – we’ve employed or worked with a company since the middle 80s to search for products that may be of interest to us or have a bearing on us and therefore I’d already come across Blau and Schmanski and Kennedy prior to this issue.

And so you were familiar, broadly speaking, with how you would go about reading a patent?---I’m a lay person in that regard, but I can read and ascertain as to whether that might have an impact on what we’re doing or what we’re not.

51    There are several points to make about this evidence.

52    Mr Turner’s evidence was not directed to the question whether a skilled addressee might reasonably be expected to have ascertained, in the sense of discovered and found, Pellowski I or Pellowski II nor whether he or she would have regarded either of them as relevant to the problem addressed by the Patent. In fact, Mr Turner’s evidence makes no reference to the Pellowski Patents. Even if they were known to him, they do not appear to have been perceived by him as relevant to the issues to which his affidavit was directed. As it happened, neither Pellowski I nor Pellowski II was advanced by Dura-Post as relevant to the issues to be decided by Gyles J until after the hearing at which Mr Turner gave his evidence had concluded. The evidence shows that Dura-Post first relied upon the Pellowski Patents only after his Honour had reserved his decision, and that it was only permitted to rely upon them following a successful application to re-open its case.

53    Mr Turner’s evidence was vague as to the nature of the patent searches undertaken by or on behalf of his company during and after the mid 1980s, and the circumstances in which they were undertaken. In particular, it said nothing about the scope of such searches including how they were targeted or how far back in time they extended. This lack of detail is not surprising because such matters had little, if any, relevance to the issues to be decided by Gyles J, and the evidence of Mr Turner now relied upon by the Commissioner appears to have been elicited to show no more than that Mr Turner had some experience in reading patent specifications.

54    Another matter of significance is the age of the Pellowski Patents. Both were published more than 35 years before the priority date of the Patent. Pellowski I was granted in April 1967, Pellowski II in January 1968. The evidence shows that two of the patent specifications referred to by Mr Turner were granted much later. Blau was granted in December 1984, Kennedy in April 2002. The evidence does not disclose when either of the Schmanski patents, also referred to by Mr Turner, was published, but there are three references in Kennedy to various other patents or patent applications in the name of Schmanski. The earliest of those publications are dated December 1977 and May 1978 and the last of them is dated September 1990. It is quite conceivable that the searches undertaken by or on behalf of Mr Turner’s company may have extended to those patent specifications. But there is no evidence to establish that Mr Turner or any other skilled addressee would have undertaken searches of patent specifications published in the 1960s for the purpose or solving the problem to which the Patent is directed.

55    Thus, even if it be assumed that the skilled addressee would have had some familiarity with the patent literature as at the priority date, Mr Turner’s evidence does not show that Pellowski I or Pellowski II were patent specifications which the skilled addressee might “be reasonably expected to have ascertained, understood and regarded as relevant” to the problem addressed by the patent as required by s 7(3) of the Act. Since the evidence of the other skilled addressees does not rise as high as that of Mr Turner, it cannot assist the Commissioner’s case. In the result, I am not satisfied that any of the relevant claims are invalid on the basis of the disclosure contained in either Pellowski I or Pellowski II. On the evidence before me, neither of those publications has been shown to meet the requirements of s 7(3) of the Act.

THE STANDARD OF PROOF

56    The patentee submitted that in deciding whether to revoke claims of a standard patent in the context of a post-grant re-examination, the Commissioner, and now the Court, should not make a revocation order unless satisfied that it is “practically certain” or “clearly shown” that such claims are invalid. The “practically certain” formula is that which was employed in Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 245, while the “clearly shown” (and like formula) has been employed in various other authorities including Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593 at 595-596. The first of these cases was concerned with a proceeding brought at the examination stage, while the second was concerned with a proceeding brought at the opposition stage.

57    The Commissioner submitted that neither of these formula concerning what was referred to in argument as “the standard of proof” should apply in the case of a post-grant re-examination. A similar submission may have been put to Lindgren J in Emperor Sports Pty Ltd v Commissioner of Patents (2005) 146 FCR 159. His Honour said in that case (at [107]):

I see no reason why the approach taken in pre-grant examination and in opposition proceedings should not be taken in relation to post-grant re-examination, that is, that it must be clear that a patent would be (or is) invalid before the Commissioner should refuse to grant (or should revoke) it; cf F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 at [67] (opposition proceeding); Commissioner of Patents v Microcell Ltd (1958) 102 CLR 232 at 245 (examination stage).

Lindgren J went on to make clear that he did not need to determine the point because he was satisfied that the Commissioner’s decision to revoke in that case was not supported by the evidence.

58    Nor did the Full Court need to consider the point now raised by the Commissioner in the appeal against Lindgren J’s decision. However, the Full Court said (Commissioner of Patents v Emperor Sports Pty Ltd (2006) 149 FCR 386 at [23]-[24]):

23    Senior counsel for the Commissioner submitted that the Commissioner can draw legitimate inferences from the material available to her. He said that his Honour erred in referring to a perceived need for the Commissioner to act only on “evidence”. In support of this argument senior counsel said that the stages of re-examination and report (ss 97 and 98), like the stages of initial examination and report (s 45) and acceptance (s 49), involved essentially an inquisitorial procedure. This was in contrast to the stages of opposition before grant (ss 59 and 60) and revocation by the Court after grant (s 138), both of which involved an adversarial procedure.

24    It is not necessary to explore the suggested inquisitorial/adversarial dichotomy because we accept the basic proposition put. The Commissioner is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory (see, eg s 101(2)), he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations: R v Milk Board; Ex parte Tomkins [1944] VLR 187 at 197; Kalil v Bray [1977] 1 NSWLR 256 at 261; R v Industrial Appeals Court; Ex parte Maher [1978] VR 126 at 142; Rodriguez v Telstra Corp Ltd (2002) 66 ALD 579 at 585; Tisdall v Health Insurance Commission [2002] FCA 97 at [103]. On an appeal by way of hearing de novo the judge would not be a person credited with technical expertise of his or her own. In such event the judge may be able to take into account conclusions of the Commissioner based on his or her expertise, subject of course to the rights of other parties to call rebutting or supporting evidence.

59    It may be assumed that the delegate was experienced in reading and understanding patent specifications. But there is nothing in the delegate’s reasons for decision to indicate that he brought to bear any other expertise for the purpose of deciding whether the person skilled in the art could reasonably be expected to have ascertained the relevant prior art documents. On the contrary, it seems clear that the delegate did not rely on any expertise of his own in reaching his conclusion on this issue, but that he instead relied upon the evidence of the expert witnesses who were called to give evidence before Gyles J.

60    In the present case I do not find it necessary to decide whether the Commissioner or the Court must apply either the “practically certain” or “clearly shown” standard when considering whether to revoke the claims of a standard patent under s 101(1) of the Act following re-examination. But having said that, I should make it clear that nothing that has been put to me by the Commissioner has caused me to believe that some other approach, less favourable to the patentee, should be adopted. Of course, the position may be different once recent amendments to s 101(1) come into effect on 15 April 2013: see Sch 1, Pt 1, Item 19, Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth).

DISPOSITION

61    In my view the evidence does not justify a finding that any of the claims which were revoked by the delegate is invalid. Accordingly, the decision of the delegate under s 101(1) of the Act to revoke claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 of Australian Patent No 2004249786 should be set aside.

62    Costs should follow the event. The applicant submitted that these should be payable by the Commissioner on an indemnity basis. I do not think there is any proper basis for making an indemnity costs order in this matter.

63    Orders accordingly.

Associate:

Dated:    6 March 2013