The Sunnyfield Association v Cronk [2010] FCA 143 (26 February 2010)

Last Updated: 26 February 2010

FEDERAL COURT OF AUSTRALIA

The Sunnyfield Association v Cronk [2010] FCA 143

Citation:		The Sunnyfield Association v Cronk [2010] FCA 143
Parties:		THE SUNNYFIELD ASSOCIATION v PAUL ANDREW CRONK
File number(s):		NSD 135 of 2009
Judge:		GRAHAM J
Date of judgment:		26 February 2010
Catchwords:		PATENTS – application for leave to appeal under s 158(2) of the Patents Act 1990 from a judgment given on an appeal against decisions of a delegate of the Commissioner of Patents – applicable principles Held: application dismissed
Legislation:		Patents Act 1990 (Cth) ss 40, 59, 60(4), 79B, 114,158(2) and 160 Federal Court of Australia Act 1976 (Cth) s 24(1A) Patents Regulations 1991 regs 3.12 – 3.14
Cases cited:		Sunnyfield Association v Cronk [2009] FCA 33; (2009) 80 IPR 300 Decor Corporation Pty Ltd v Dart Industries Inc [1991] FCA 655; (1991) 33 FCR 397 Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 Niemann v Electronic Industries Ltd [1978] VR 431 Re Luck [2003] HCA 70; (2003) 78 ALJR 177; 203 ALR 1 Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; (1999) 92 FCR 106 Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58; (2004) 217 CLR 274 Société des Usines Chimiques Rhône Poulenc v Commissioner of Patents [1958] HCA 27; (1958) 100 CLR 5 Rehm Pty Ltd v Websters Securities Systems (International) Pty Ltd (1988) 81 ALR 79
Date of hearing:	8 May 2009
Date of last submissions:	8 May 2009
Place:	Sydney
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	72
Counsel for the Applicant:	S C G Burley SC and A D B Fox
Solicitor for the Applicant:	Addisons
Counsel for the Respondent:	D M Yates SC and S Chrysanthou
Solicitor for the Respondent:	Horowitz & Bilinsky

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 135 of 2009

BETWEEN:

THE SUNNYFIELD ASSOCIATION Applicant

AND:	PAUL ANDREW CRONK Respondent

JUDGE:	GRAHAM J
DATE OF ORDER:	26 FEBRUARY 2010
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The application for leave to appeal be dismissed.
2. The applicant pay the respondent’s costs.
   

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 135 of 2009

BETWEEN:

THE SUNNYFIELD ASSOCIATION Applicant

AND:	PAUL ANDREW CRONK Respondent

JUDGE:	GRAHAM J
DATE:	26 FEBRUARY 2010
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. The matter presently before the Court is an application filed on 18 February 2009 for leave to appeal, pursuant to s 158(2) of the Patents Act 1990 (Cth) (‘the Act’), to a Full Court against a judgment of a judge of this Court given on 28 January 2009 (see Sunnyfield Association v Cronk [2009] FCA 33; (2009) 80 IPR 300, on an appeal by the applicant against decisions of a delegate of the Commissioner of Patents under s 60(4) of the Act, of 25 January 2007, rejecting oppositions by the applicant under s 59 of the Act to the grant of standard patents covered by Patent Application No. 716550 (first decision) and Patent Application No. 759725 (second decision).
2. The primary judge ordered that the appeal from the decisions of the delegate of the Commissioner of Patents rejecting the applicant’s oppositions should be dismissed with costs. For the reasons that follow the present application should also be dismissed with costs.
3. The parties are agreed that, for the purposes of the application, the relevant provisions of the Act are to be found in Reprint 5 which was reprinted on 30 September 2008 (with amendments up to Act No. 106 of 2006).
4. On the hearing of the application for leave to appeal it was made clear that the applicant did not wish to appeal from the primary judge’s judgment in respect of the applicant’s opposition to the grant of Patent Application No. 716550. The application was confined to the judgment of the primary judge in respect of the applicant’s opposition to the grant of Patent Application No. 759725 alone.
5. Sections 60(4) and 158(2)of the Act provided:

‘60(4) The applicant, and any opponent, may appeal to the Federal Court against a decision of the Commissioner under this section.

...

158(2) Except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a judgment or order of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner. [the Commissioner of Patents]’

Leave to appeal under s 158(2)

6. The need for leave to appeal normally comes under consideration when an aggrieved party wishes to appeal from a judgment that is interlocutory. Under s 24(1A) of the Federal Court of Australia Act 1976 (Cth), an appeal from an interlocutory judgment shall not be brought unless the Court or a Judge gives leave to appeal. The accepted approach to the grant of leave to appeal under s 24(1A) has been as summarised in Decor Corporation Pty Ltd v Dart Industries Inc [1991] FCA 655; (1991) 33 FCR 397 (‘Decor’).
7. Decor happened to be a patent infringement case, but the question of whether there should be a grant of a leave to appeal arose under s 24(1A) of the Federal Court of Australia Act rather than s 158(2) of the Act. The application for leave to appeal was granted and the appeal was allowed in part. The reason why leave to appeal under s 24(1A) was required was because Decor Corporation Pty Limited sought to appeal from certain answers given by King J in the Supreme Court of Victoria to two preliminary questions concerning the computation of profits. His Honour had previously made an order for delivery up by Decor Corporation Pty Limited of infringing articles in their possession, power, custody or control and an order directing that there be an inquiry as to damages or, at Dart Industries Inc’s option, an account of profits. An appeal from those latter orders of King J had been dismissed in 1998 (see Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385).

An appeal to a Full Court of this Court from King J’s answers to the preliminary questions concerning the computation of profits required a grant of leave to appeal under s 24(1A).

8. In Decor the Full Court pointed out that no rigid rules had been laid down which might destroy the Court’s unfettered discretion under s 24(1A) to grant leave to appeal. However, the Full Court considered that the tests stated in Niemann v Electronic Industries Ltd [1978] VR 431 provided general guidance when considering applications for leave to appeal. The first test was that leave to appeal should only be granted if the Court is of the opinion that the decision of the primary judge was attended with sufficient doubt to warrant its reconsideration by a Full Court and the second test was that leave to appeal should only be granted if substantial injustice would result if leave were refused, supposing the decision to be wrong (see Decor at 398-400).
9. In Re Luck [2003] HCA 70; (2003) 78 ALJR 177; 203 ALR 1 McHugh ACJ, Gummow and Heydon JJ stated essentially the same tests in relation to applications for leave to appeal from interlocutory judgments of single justices of the High Court of Australia. At [12] their Honours said:

‘[12] ... An application for leave should establish both that the decision, the subject of the proposed appeal, is sufficiently doubtful to warrant a grant of leave and that it is in the interests of the administration of justice for this court to hear it.’

Notwithstanding the attraction of dealing with applications for leave to appeal under s 158(2) of the Act in a substantially similar way, Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; (1999) 92 FCR 106 (‘Genetics Institute’) requires a stricter approach to be adopted.

10. In Genetics Institute Black CJ, Merkel and Goldberg JJ said at [14]:

‘[14] The various statements of this Court against the laying down of rigid rules that would restrict its discretion in determining applications for leave under s 24(1A) are particularly apposite in the present context given the diversity of cases to which s 158(2) will potentially apply. Those cases will include all matters originating from a decision or order of the Commissioner of Patents, and not just those involving a pre-grant opposition proceeding commenced under s 60(4) of the Patents Act or s 60(5) of the Patents Act 1952 (Cth). Indeed, even cases commenced under those provisions may require different treatment depending, for example, on whether or not opposition to the patent was upheld by the Commissioner and/or the single judge.’

11. In Genetics Institute the Full Court pointed out that an appeal to a Full Court against a decision of a single judge to reject a pre-grant opposition would follow a full hearing of the opposition before the Commissioner of Patents or his delegate and an appeal by way of rehearing before the single judge. In these circumstances, where an opponent to a patent has had the benefit of two hearings and has been unsuccessful in both, there should be limited scope for a further appeal, particularly where the matters primarily in issue are essentially questions of fact.

Only in exceptional circumstances would it be right to grant an applicant what would effectively amount to a further consideration of factual issues. This is particularly so given that an unsuccessful opponent of a patent will still be able to institute revocation proceedings under s 138 of the Act, with the result that a refusal to grant leave to appeal under s 158(2) will not be finally determinative of the opponent’s rights. In such circumstances it is unlikely that substantial injustice would be caused by the refusal of leave (see per Black CJ, Merkel and Goldberg JJ in Genetics Institute at [16]).

12. Putting to one side applications for leave on a question of pure law in the context of essentially undisputed facts, and subject always to considerations of fairness and the interests of justice raised by a particular case, the contextual and policy matters affecting decisions under s 60(4) and s 158 of the Act will ordinarily require that leave to appeal against a decision rejecting a pre-grant opposition only be granted where the applicant has demonstrated a clear prima facie case of error in the decision appealed from, such that the likely effect of that decision would be to allow an invalid patent to proceed to grant (see per Black CJ, Merkel and Goldberg JJ in Genetics Institute at [23]).
13. It needs to be remembered that the purpose of pre-grant opposition proceedings is to provide a swift and economical means of settling disputes that would otherwise need to be dealt with by the courts in more expensive and time-consuming post-grant litigation. The purpose is to decrease the occasion for costly revocation proceedings by ensuring that bad patents do not proceed to grant (see per Black CJ, Merkel and Goldberg JJ in Genetics Institute at [19]).
14. The statutory context of s 158(2) as it applies to pre-grant opposition proceedings, and the nature of those proceedings, are such as to require a relatively stringent filter for appeals to a Full Court against a decision of a single judge made under s 60(4) of the Act (see per Black CJ, Merkel and Goldberg JJ in Genetics Institute at [22]).
15. On the hearing of the appeal against the decision of the Commissioner’s delegate, the Court’s powers, as set out in s 160 of the Act, included power to:

‘(d) affirm, reverse or vary the Commissioner’s decision or direction;

(e) give any judgment, or make any order, that in all the circumstances, it thinks fit

(f) order a party to pay costs to another party.’

16. At [10] in the primary judge’s reasons for judgment he set out a Table provided by the applicant which summarised the relevant history of applications, amendments and proceedings. It is convenient to repeat the Table:

	Defined Term	Patent Number (allocated at filing date)	Relevant date
1	PM 2504	Provisional Application No. PM 2504	Filed on 18/11/93
2	PA 64800/94	AU 199464800 A1	Filed on 20/06/94
3	Patent 679737	AU 199464800 B	Accepted on 10/07/97
4	PA 716550	PCT/AU[95]/00303 (also known as Application No. 24416/95) [EX NM1 on the current motion]	Filed on 24/05/95
5	Amended PA 716550	AU 199524416 C	Amended on 03/09/03
6	PA 759725	AU 200027814 A1 [Annexure ‘A’ to O’Connor affidavit sworn 18 February 2009]	Filed on 17/04/00
7	First Amended PA 759725	AU 200027814 B2 [Annexure ‘B’ to O’Connor affidavit]	Filed on 18 February 2003 [and further amended on 4 March 2003]
8	Second Amended PA 759725	AU 200027814C	Filed on 05/10/06 (to remove additional status from Patent 679737 so that divisional status only claimed from PA 716550), and then published on 12/07/07

17. In explaining the appeals that were before him, the primary judge said at [2]-[3] and [7]-[9]:

‘2 The appeal concerns priority dates in relation to Patent Applications concerning an adjustable light reflector device, and a consideration of the issues calls for an understanding of the somewhat complicated history surrounding the applications and various amendments.

3 On 24 May 1995 Patent Application Number 244116/95 [presumably, his Honour intended ‘24416/95’] was filed for an adjustable reflector device. It was accepted on 2 March 2000 and became Patent Application (PA) Number 716550. ...
...

7 The history in relation to the second decision of the delegate on 25 January 2007 is as follows. On 17 April 2000 PA 759725 was filed by Mr Cronk as a Divisional Application of PA 716550. The former application was opposed by Sunnyfield. Amendments to PA 759725 were filed on 17 (sic) February 2003 (his Honour may have intended to say “18 February 2003”), with further amendments filed on 4 March 2003. These Amendments were made prior to acceptance of PA 7569725 (sic).

8 As a consequence of the amendments the question was raised whether the first amended claims of PA 759725 were fairly based on matter disclosed in the application PA 716550 as filed.

9 On 25 January 2007 the delegate decided that the amended claims were fairly based on matter disclosed in and entitled to the priority date based on PA 716550 of 18 November 1993, and that therefore the invention as claimed in PA 759725 was not anticipated by the alleged prior art and was novel. The delegate also rejected Sunnyfield’s submission that s 114(1) of the Patent (sic) Act 1990 (“the Act”) applied so as to result in a priority date of 4 March 2003, which was the date of the amendment. ...’

18. The primary judge proceeded to state ‘THE ISSUES’ at [11]-[13]. Relevantly, for present purposes the issues as stated at [12]-[13] were as follows:

‘12 In relation to PA 759725 the question is whether the claims in PA 759725 as amended on 4 March 2003 are fairly based on matter disclosed in the Specification of PA 716550 as filed. If these claims are found to have been fairly based then it is common ground that the claims of PA 759725 are entitled to a priority date based on PA 716550 as filed.

13 In relation to s 114(1) of the Act the relevant amendments are those made to PA 759725 on 4 March 2003. Section 114(1) of the Act requires a consideration of these amendments and the complete specification before amendment, that is to say, between the claims as amended and the Specification filed on 17 April 2000.’

(emphasis omitted)

19. The applicant was at pains to point out that the issue referred to at [12] of the primary judge’s reasons was not an issue which the applicant sought to raise on the hearing of the proposed appeal. The applicant confined its application for leave to appeal to the issue raised at [13].
20. The primary judge’s consideration of the second decision commenced at [54] in his reasons for judgment. Relevantly for present purposes his Honour said at [54]-[57]:

‘SECOND DECISION – AMENDED PA759725

54 The question is whether the claims of PA 759725 as amended claim matter that was in substance disclosed as a result of amending the application from PA 759725 as filed.

55 PA 759725 as filed is entitled “A Shielding Device” and the background of the invention is that it is said to relate to improvements in devices for reflecting light emitted by artificial sources. Sunnyfield first submits that, having regard to the fact that the applications (sic) is for a “shielding device,” there is no fair and reasonable disclosure in relation to the “Luminaire” reflector, which is the device the subject of the amended application. The independent claims in the amended PA 759725 are confined to a reflector, described in PA 759725 as filed, as being prior art. The invention disclosed in Claim PA 759725 as filed is said to be expressly confined to the “heat shield” that was described to have a function totally separate from that of the reflector device.

56 In my view, notwithstanding that the title of the application as filed related to a “shielding device” [Annexure ‘A’ to Mr O’Connor’s affidavit] it was capable of providing sufficient disclosure, and it contained matter which was sufficient to constitute a substantial disclosure of the “Luminaire” reflector device claimed in the amendment [Annexure ‘B’ to Mr O’Connor’s affidavit]. The description and numerous references to the adjustable reflector device used in conjunction with the shielding device, when considered in the light of Figures 3, 4 and 5, is a sufficient disclosure for the claim made in relation to the reflector device in the amended claim. Extensive references are made in the body of the application as filed to the reflector device, the non-limiting nature of the Figures, and the flexing required to create a double parabolic shape. This disclosure cannot be said to be in any way “loose or stray” remarks.

57 Accordingly, the amendment did not claim matter that was not in substance disclosed in the application as filed, so that s 114 of the Act has no application.’

21. The Figures numbered 3, 4 and 5 to which the primary judge referred in paragraph 56 of his reasons for judgment were as set out below:

22. The same figures were included PA759725 as filed on 17 April 2000 (Table No. 6) and in First Amended PA759725 filed on 18 February 2003 with further amendments filed on 4 March 2003.
23. In the original complete specification filed by the then Patent & Trademark Attorneys for Mr Cronk the ‘Invention Title’ was ‘Shielding device’. Under the heading ‘Brief Description of the Drawings’ the original complete specification included:

‘The present invention will become more fully understood from the following description of a preferred but non-limiting embodiment thereof, described in connection with the accompanying drawings, wherein:

FIG. 1 shows a preferred embodiment of the shielding device in accordance with the present invention;

FIG. 2 shows an alternatively preferred embodiment of the shielding device of the invention;

FIG. 3 shows an exploded view of one example of an adjustable reflector device used in conjunction with the shielding device of the present invention.

FIG. 4 shows a disassembled view of the skin of the reflector device of FIG. 3, depicting the transversely protruding skirts, present on sheet members;

FIG. 5 shows an assembled view of the skin of the reflector device of FIG. 3 prior to flexing, depicting the transverse alignment of sheet members;
...’

24. The COMPLETE SPECIFICATION FOR A STANDARD PATENT filed on 18 February 2003 and amended on 4 March 2003, by Mr Cronk’s current Patent and Trademark Attorneys, included under the heading ‘Brief Description of the Drawings’ the following:

‘ The present invention will become more fully understood from the following description of preferred but non-limiting embodiments thereof, described in connection with the accompanying drawings, wherein:

FIG. 1 shows a preferred embodiment of the shielding device disclosed in accordance with the present invention;

FIG. 2 shows an alternatively preferred embodiment of the shielding device disclosed in the present invention;

FIG. 3 shows an exploded view of one example of a luminaire;

FIG. 4 shows a disassembled view of the skin of the luminaire of FIG. 3, depicting the protruding skirts, present on sheet members;

FIG. 5 shows an assembled view of the skin of the luminaire of FIG. 3 prior to flexing, depicting the alignment of sheet members;
...’

25. Differences in terminology in the description of figures 3, 4 and 5 referred to, will be readily apparent. Primarily, an ‘adjustable reflector device’/’reflector device’ has become a ‘luminaire’.
26. The applicant submits that the primary judge fell into error in reaching the conclusions which he recorded at [56]-[57] of his reasons for judgment.
27. A draft Notice of Appeal was included as Annexure D to the affidavit of Martin Joseph O’Connor sworn 18 February 2009 and read by the applicant in support of its application for leave to appeal. The draft Notice of Appeal contained four grounds of appeal but, on the hearing of the application for leave to appeal, the applicant indicated that it did not press ground number 4.
28. The remaining grounds of appeal in the draft Notice of Appeal were expressed as follows:

‘1. His Honour erred in holding that the claims of PA 759725 (as amended) were fairly based on the disclosure in patent application No 759725 (as filed) within s.114 of the Patents Act 1990 (Cth) and Regulation 3.14(b) Patent Regulation 1991.

2. His Honour erred in finding that the disclosure contained in PA 759725 (as filed), which related to an invention described as a ‘shielding device’, provided fair basis for the claims of PA 759725 (as amended) being for a ‘luminaire’ reflector device (at [56], Judgment).
   

3. His Honour erred in failing to hold that:

3.1 The disclosure of the invention in PA 759725 (as filed) is confined to a ‘heat shield’ device; and

3.2 The claims of PA 759725 (as amended) were not fairly based on the disclosure in PA 759725 (as filed); and

3.3 The claims of PA 759725 (as amended) accordingly were not entitled pursuant to Regularion (sic) 3.14(b) of the Patents Regulations 1991 to a priority date earlier than the date of filing of the amendments, being 18 February 2003; and that therefore

3.4 The claims of PA 759725 (as amended) were invalid by reason of having been anticipated by patent application No. 64800/94 (“PA 64800/94”) and/or patent application No. 716550 (“PA 716550”).’

29. The central focus of the applicant’s submissions was upon differences between Patent Application 759725 which was filed on 17 April 2000, a copy of which was Annexure “A” to the affidavit of Mr O’Connor (Table No. 6), and First Amended Patent Application 759725 which was filed on 18 February 2003, a copy of which was Annexure “B” to the affidavit of Mr O’Connor (Table No. 7).
30. The respondent contrasted the First Amended Patent Application 759725 filed on 18 February 2003 (Table No. 7) with Patent Application 716550 which had been filed on 24 May 1995 (Table No. 4). As indicated above, a copy of that Patent Application was tendered by the respondent and became Exhibit NM1 on the hearing of the present application for leave to appeal.
31. The respondent submitted that each of Annexures “A” and “B” (Tables Nos. 6 and 7) were divisional applications of Patent Application 716550 (Exhibit NM1) (Table No. 4) and that application in turn was a divisional application of Patent Application 64800/94 which had been filed on 20 June 1994 (Table No. 2).
32. Section 114 of the Act dealt with the priority date of certain amended claims as follows:

‘114(1) Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.’

(emphasis added)

33. Section 79B of the Act dealt with divisional applications prior to grant of patent as follows:

‘79B(1) If a complete patent application for a patent is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a patent for an invention:

(a) disclosed in the specification filed in respect of the first-mentioned application; and

(b) where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal—falling within the scope of the claims of the accepted specification.

   (1A) The reference to a complete patent application first-mentioned in subsection (1) does not include a reference to a divisional application for an innovation patent provided for in section 79C.

   (2) In this section:

applicant has the same meaning as in section 38.’

34. In relation to priority dates regulations 3.12 – 3.14 of the Patents Regulations 1991 (‘the Regulations’) relevantly provided:

‘3.12(1) Subject to regulations 3.13 and 3.14 and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:

(a) the date of filing of the specification;

(b) if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority document in which the matter was first disclosed;

(c) if the specification is a complete specification filed in respect of a divisional application under section 79B of the Act and the claim is fairly based on matter disclosed in the specification referred to in paragraph 79B (1) (a) of the Act – the date mentioned in subregulation (2C);

(d) if the specification is a complete specification filed in respect of a divisional application under section 79C of the Act and:

(i) the claim is fairly based on matter disclosed in the specification referred to in section 79C (1) of the Act; and

(ii) examination of the divisional application is requested within 2 months from the date of the grant of the divisional application;

the date mentioned in subregulation (2D).

...
(2C) The date for a specification to which paragraph 3.12 (1) (c) applies is the date that would have been the priority date of the claim if it had been included in the specification referred to in paragraph 79B (1) (a) of the Act.
...

(3) For paragraphs 3.12(1) (c) and (d), a claim is not fairly based on the specification referred to in paragraph 79B(1)(a) or the specification of the first patent referred to in subsection 79C (1) of the Act if, in order to comply with paragraph 40 (2) (a) of the Act, the deposit requirements must be satisfied and on the date of making the divisional application:

(a) the requirement specified in paragraph 6(a) of the Act is not satisfied in relation to the specification referred to in paragraph 79B (1) (a) or the specification of the first patent referred to in subsection 79C (1) of the Act; or

(b) the period prescribed in subregulation 1.5(1) has ended and the requirements of paragraph 6(c) of the Act are not satisfied in relation to the specification referred to in paragraph 79B (1) (a) or the specification of the first patent referred to in subsection 79C (1) of the Act.

3.13(1) This regulation applies if, under subsection 36 (1) of the Act:

(a) the Commissioner declares a person to be an eligible person; and

(b) the person makes a complete application under section 29 of the Act.

(2) The priority date of a claim of the specification in respect of that application, being a claim that is fairly based on matter disclosed in the specification referred to in paragraph 36 (1) (c) of the Act and referred to in the declaration, is:

(a) if that specification is a complete specification — the priority date of the claim or the date that would have been the priority date of the claim if the claim had been a claim of the specification; and

(b) if that specification is a provisional specification — the date of filing of the provisional specification.

3.14 If subsection 114 (1) of the Act applies to a claim of a specification, the priority date of the claim is:

(a) in the case of an amendment to which subsection 89 (4) or (5) of the Act applies — the date on which the amendment is taken to have been made under that subsection; and

(b) in any other case — the date of filing of the statement of proposed amendments that resulted in the disclosure referred to in subsection 114 (1) of the Act.’

(emphasis added)

35. The provisions which are of primary importance for present purposes are s 114(1) of the Act and Reg 3.14(b) of the Regulations.
36. In relation to specifications s 40 of the Act included the following:

‘40(1) A provisional specification must describe the invention.

   (2) A complete specification must:

(a) describe the invention fully, including the best method known to the applicant of performing the invention; and

(b) where it relates to an application for a standard patent — end with a claim or claims defining the invention; ...

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

   (4) The claim or claims must relate to one invention only.’

37. In s 40(1) of the Act, ‘invention’ means ‘the embodiment which is described, and around which the claims are drawn’. It has the same meaning in s 40(2). Insofar as s 40(3) implicitly refers to an invention, it must bear the same meaning there. It does not mean the ‘inventive step taken by the inventor’ or the ‘advance in the art made by the inventor’. Nor does it refer to inventive ‘merit’ or to any ‘technical contribution to the art’ (per Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ in Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58; (2004) 217 CLR 274 (‘Lockwood’) at [53]).
38. Although s 40(3) does not use the word ‘invention’, the context suggests that the requirement in s 40(3) that the claims be fairly based on the matter described in the specification is a requirement that a claim or claims be fairly based on the matter in it that discusses the ‘invention’ (an expression which includes the ‘alleged invention’) (per Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ in Lockwood at [53]).
39. The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ ‘an over meticulous verbal analysis’. It is wrong to seek to isolate in the body of the specification ‘essential integers’ or ‘essential features’ of an alleged invention and to ask whether they correspond with the essential integers of the claim in question (per Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ in Lockwood at [68]).
40. Section 40(3) requires, in Fullagar J’s words in Société des Usines Chimiques Rhône Poulenc v Commissioner of Patents [1958] HCA 27; (1958) 100 CLR 5 (‘Rhône-Poulenc’) at 11, ‘a real and reasonably clear disclosure’. But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments (per Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ in Lockwood at [69]).
41. In Rhône-Poulenc at 11 Fullagar J said, by reference to s 45(5) of the Patents Act 1952:

‘... disclosure without claim is enough. An invention may be disclosed by a drawing. Again, the claim in the later specification must be “a claim fairly based on matter disclosed” in the earlier specification. This requirement would be senseless if the sub-section really meant that the subject matter of the later claim must have been actually claimed in the earlier specification. ... reference may be made to s. 51, which is referred to in sub-s. (4) of s. 45, and which speaks not of claiming, but of “disclosure”. There must, of course, be a real and reasonably clear disclosure.’

42. In Rehm Pty Ltd v Websters Securities Systems (International) Pty Ltd (1988) 81 ALR 79 (‘Rehm’) Gummow J, then sitting as a judge of this Court, said when dealing with ‘fair basing’, at 94-95:

‘The function of the claims is to define the invention and mark out the ambit of the patentee’s monopoly and primarily is addressed to potential rivals ... The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.’

Rehm was, of course, also decided under the Patents Act 1952.

43. The above passage from Gummow J’s judgment in Rehm was cited with approval by Gleeson CJ, HcHugh, Gummow, Hayne and Heydon JJ in Lockwood at [69].
44. Their Honours continued by saying that the phrase ‘a real and reasonably clear disclosure’ serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the ‘real’ disclosure, are in truth only loose or stray remarks (per Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ in Lockwood at [69].)
45. By couching a claim ‘in the same terms as the description of the invention in the specification’ does not of itself, by that mere ‘coincidence of language’, establish fair basing (per Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ in Lockwood at [87].)
46. A ‘coincidence of language’ between a claim and part of the body of a specification does not establish fair basing if that part of the language of the specification does not reflect the description of the invention in the light of the specification as a whole (per Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ in Lockwood at [87].)
47. The ‘ORIGINAL COMPLETE SPECIFICATION STANDARD PATENT’ filed 17 April 2000 included under the heading ‘SHIELDING DEVICE’:

‘Background of the Invention
This invention relates to improvements in devices for reflecting light emitted by artificial sources.

Description of the Prior Art
...
Many types of reflector devices associated with artificial illumination of industrial spaces are currently known, but these all require that a fixed shape and/or a fixed lamp mounting position within that shape be precisely specified to create optimal light distribution for a particular purpose. ... These known devices have the disadvantage that their rigid, non-adjustable designs limit their efficient use to a relatively small range of applications.

The Applicant’s related Australian Serial No. 716550 [Exhibit NM1 – Table No. 4] ... relates to a novel reflector having adjustable curvature, which overcomes such disadvantages of the prior art.

Horizontally mounted lamps coupled with appropriate reflectors ... are popular ... however, their efficiency is limited. The closer these fittings can be placed to the ‘target area’ the better the overall efficiency and the greater the intensity. However, there comes a point where the intensity and heat of the light beam directly below the lamp (focal hot spot) limits closer placement. In these conditions, addition of a ‘heat shield’ ... can help redistribute excess light and heat from the ‘hot spot’ to other areas below the reflector, dramatically increasing uniformity, functionality and efficiency in these extreme applications. ... Hence, the function of the heat shield is totally separable from that of the reflector it is coupled with, not limiting it to use in conjunction with any specific reflector design.

Summary of the Invention
The present invention seeks to provide an adjustable reflecting device which overcomes the disadvantages of the prior art.

In one broad form, the present invention provides a shielding device adapted to be disposed about at least part of a lighting means, said device being substantially V-shaped and perforated.
...

Detailed Description of the Preferred Embodiment(s)
...
Referring to FIG. 3 it can be seen that a preferred embodiment of adjustable reflector device used in conjunction with the shielding device of this invention includes a two piece resilient skin formed by two members 1 and 2, having a protruding skirt parallel with the longest edge thereof. ... The sheets are ... fixed together and flexed back to achieve a curved shape, such a a double-parabolic shape ... These sheets are adjustably secured by a pair of chain 4 and hook 5 retainers ...
...
The V-shaped perforated heat shield 17 slides onto the lamp fitting 18 and is secured to the underside thereof by a grub screw 19. ... The resilient reflective skin may comprise one or any number of sheet members and any necessary reinforcing members fashioned so as to approximate the predefined shape and conditions required for formation of a flexible double parabolic shape as herein defined.
...

The claims defining the present invention are as follows:

1. A shielding device adapted to be disposed about at least part of a lighting means, said device being substantially V-shaped and perforated.
....
3. A shielding device as claimed in 1 or 2, wherein said device is positioned on the opposed side of said lighting means relative to a reflector device associated with said lighting means.
...
8. A shielding device as claimed in any one of claims 4 to 7, wherein said reflector device has adjustable curvature.

9. A shielding device as claimed in any one of claims 4 to 8, wherein said reflector device has a double parabolic shape.
...’

48. The ‘COMPLETE SPECIFICATION FOR A STANDARD PATENT’ filed on 18 February 2003 and amended on 4 March 2003 included the following:

‘Background of the Invention
This invention relates to improvements in luminaire devices for reflecting light emitted by artificial sources.
...

Summary of the Invention
The present invention seeks to provide a luminaire having an adjustable reflecting device which overcomes the disadvantages of the prior art.
...

Detailed Description of the Preferred Embodiment(s)
...
The claims defining the invention are as follows:

1. A luminaire having a reflector device comprising a pair of resilient sheets positioned one to either side of a spine in the manner of the pages of a book, and a lamp holder positioned to align a lamp having a longitudinal axis with said lamp axis being substantially parallel to said spine and spaced to one side therefrom, said sheets when in an unbiased condition lying substantially in two planes intersecting at an obtuse angle, and in operation being flexed and retained against the bias of their normal resilience to create a doubly arched configuration which forms a reflective surface, said surface receiving light emitted from said lamp towards said spine and reflecting same past and beyond said lamp.

2. The luminaire as claimed in claim 1 wherein said sheets are formed from a plurality of separate pieces which are joined together.

3. The luminaire as claimed in claim 2 having two sheet members each of which is substantially rectangular and is provided with a skirt extending along one edge, each said skirt being bent out of the plane of said rectangle, and said sheets being joined together by overlapping said skirts.

4. The luminaire as claimed in claim 2 or 3 wherein said sheets are joined by fasteners.
....

12. The luminaire as claimed in claim 11 and including a heat shield positioned to a side of said lamp holder opposite to that on which said reflector device is positioned.
...

22. A method of adjusting the radiant intensity of a luminaire having a resilient doubly-arched reflective surface formed from a pair of sheets positioned one to either side of a spine in the manner of the pages of a book, the sheets when in an unbiased condition lying substantially in two planes intersecting at an obtuse angle and in operation being flexed and retained against the bias of their normal resilience creating said doubly-arched configuration, said method comprising the step of adjusting the degree of flexure of said sheets to change the curvature of said doubly-arched reflective surface.
...
24. The method as claimed in claim 23 including the further step of locating a heat shield to that side of said lamp holder opposite to that on which said reflective surface is positioned.
...’

49. In his reasons for judgment the primary judge said in respect of the relevant construction principles in relation to patents, there being no challenge to his Honour’s observations in that regard:

‘15 The relevant construction principles in relation to patents are set out in Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 391. It is common ground that it is appropriate for drawings or diagrams, where they form part of a specification, to be taken into account in construing the specification and when considering the claims: see CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168; (1994) 51 FCR 260 at 284. In that decision there is a detailed consideration of the principles relating to fair basing and the necessity for real and reasonably clear disclosure. Drawings are important in the present case because the specifications direct attention to the accompanying figures to assist with an understanding of the general disclosures made in the body of the document. A helpful discussion as to the use which may be made of drawings when considering whether there is a fair basis for claims is to be found in Leonardis v Sartas (No 1) Pty Ltd (1996) 67 FCR 126 at 137.’

50. In the supporting affidavit of the solicitor for the applicant sworn 18 February 2009 Mr O’Connor said at paragraphs 9 and 11:

‘9. The primary argument on appeal is whether the patent that discloses and claims as the invention a ‘heat shield’ provides a basis pursuant to s.114 of the Patents Act 1990 (Cth) for PA 759725 (as amended) to claim priority from it, where that application [see Table No. 7] concerns a ‘luminaire’ device.
...
11. The Applicant will submit that his Honour fundamentally erred in failing to apply Lockwood Security Products v Doric Products Pty Ltd (No. 1) [2004] HCA 58; (2004) 217 CLR 274 in concluding that the claims of PA 759725 (as amended) [Table No. 7] were entitled to the early priority date based on PA 759725 (as filed) [Table No. 6].’

51. The respondent accepts that if the impugned claims in PA 759725 (Table No. 7) (being claims numbers 1-11 and 22- 23 in the Complete Specification for a Standard Patent of 18 February 2003 as amended on 3 March 2003 (Table No. 7) are not entitled to a priority date derived from PA 759725 (Table No. 6) then those claims are not novel and accordingly should not proceed to grant.
52. The applicant submits that the ‘impugned claims’ are for a luminaire having a reflector but no heat shield. The applicant submits that these claims are claims for an invention that was not in substance disclosed in PA 759725 filed on 17 April 2000 (Table No. 6).
53. Notwithstanding the complexity of the background facts, it seems clear that the priority date of the several impugned claims of the Complete Specification for a Standard Patent will be the date of filing of the statement of proposed amendments that resulted in the relevant disclosure (i.e. 18 February 2003 or 4 March 2003) if they claim matter that was in substance disclosed as a result of those amendments (see s 114(1) of the Act and Reg 3.14(b) of the Regulations).
54. In determining whether such claims claim matter that was in substance disclosed as a result of amending the specification, it may be relevant to note that the amended application was itself said to be a divisional application of PA 716550 (Table No. 4) filed on 24 May 1995 (see Exhibit NM1).
55. The abstract included in the amended patent application 759725 (Table No. 7) was the same as that included in PA 759725 (Table No. 6). They in turn reproduced the abstract from PA 716550 (Table No. 4).
56. The ‘Detailed Description of the Preferred Embodiment(s)’ in PA 716550 included:

‘The present invention provides an adjustable light reflector device comprising a resilient reflective skin, flexed to form a double parabolic shape, which is held in place against its resiliency by adjustable retainers located at each end of the skin and an independently adjustable lamp mount which attaches to the skin when it is in the retained position. A slide on V-shape perforated heat shield is preferably attached to the lamp fitting.’

57. Ten claims were incorporated in PA 716550. These were replaced by twelve amended claims on or about 20 September 1996. The amended claims were recorded as follows:

‘1. A reflector device, comprising a pair of resilient sheet members, which are normally disposed at a substantially orthogonal angle relative to each other, and which are adapted to be flexed and retained against the bias of their normal resilience such that a reflective surface is formed to a curved, such as a double parabolic (as herein defined) shape.

2. A reflector device as claimed in claim 1, wherein said sheet members are retained in said curved or double parabolic shape by a retaining means linked between said sheet members at substantially edge portions thereof.

3. A reflector device as claimed in claims 1 and 2, wherein said retaining means is a chain, or wire or like means, optionally adjustable in length.

4. A reflector device as claimed in any one of claims 1 to 3, wherein lighting means is adapted to be attached to said device when in the retained position, by an optionally adjustable attachment means.

5. A reflector device as claimed in claim 4, further comprising a heat shield is disposed about at least part of said lighting means.

6. A reflector device as claimed in claim 5, wherein said heat shield is V-shaped.

7. A reflector device as claimed in claims 4 or 5, wherein said heat shield is attached to a mogule portion of said lighting means.

8. A reflector device as claimed in any one of claims 4 to 7, wherein said heat shield is positioned on the opposed side of said lighting means relative to said sheet members.

9. A reflector device as claimed in any one of claims 1 to 8, wherein each of said sheets members are integrally fabricated or separately fabricated and then secured together to form said device.

10. A reflector device as claimed in claim 9, wherein each of said sheet members are substantially rectangularly shaped and provided with a substantially orthogonally protruding skirt adjacent an edge of the respective sheet, whereby, to form said device, the skirt of a first sheet is connected to the edge of said second sheet, and the skirt of said second sheet is connected to the edge of said first sheet.

11. A reflector device as claimed in claim 10 wherein said skirts and said edges are connected by bolts, welds or the like.

12. A reflector device, substantially as herein described with reference to the accompanying drawings.’

58. The applicant has submitted that the primary judge erred in concluding that the amended PA 759725 (Table No. 7) did not claim matter that was not in substance disclosed in the application as filed (Table No. 6) so that s 114 of the Act had no application (see his Honour’s reasons at [57]). The applicant submits that his Honour fell into error in expressing the view which he did at [56] of his reasons for judgment. In so submitting, the applicant highlighted the words ‘numerous references to the adjustable reflector device used in conjunction with the shielding device’ and the words ‘non-limiting nature of the Figures’.
59. In the applicant’s written submissions the applicant reasoned that the primary judge had fallen into error as follows:

‘21. First, as his Honour noted, the only references to an adjustable reflector device are made for use “in conjunction with the shielding device”. His Honour failed to observe that the Original Application [referring to PA 759725 Table No. 6] distinguishes as inferior the prior art reflector devices that lack the shielding device.

22. Secondly, Figures 3, 4 and 5 of the Original Application must be understood in the context of the disclosure of the application as a whole. The “Summary of the Invention”, which describes the advance in the art asserted by the inventor ... makes plain that the invention is for the shielding device, either alone or together with lamp reflectors. Figures 3, 4 and 5 concern reflectors which are not part of the invention summarised but showing how the shielding device might be used with a reflector, and details of the reflector.

23. Thirdly, the references made in the body of the specification to the reflector device are all in the context of the reflector when used with the (inventive) heat shield.

24. Fourthly, as a matter of law, the test is not whether there is mere reference in the prior document to features that are subsequently claimed. There must be a ‘real and reasonably clear disclosure’ of the ‘invention’ disclosed in the earlier document. His Honour’s reasons indicated that “sufficient disclosure” is made when a lesser standard is met. That test is not in accordance with law.’

60. In the context of these submissions it is appropriate to note that in the original complete specification filed 17 April 2000 it was said under the heading ‘Description of the Prior Art’:

‘... the function of the heat shield is totally separable from that of the reflector it is coupled with, not limiting it to use in conjunction with any specific reflector design.’

61. The respondent submits that the amended PA 759725 (Table No. 7) was a divisional application of PA 716550 (Table No. 4) within the meaning of s 79B of the Act. That section permitted an applicant to make a further complete application prior to grant of patent for a patent for an invention that was disclosed in the specification filed in respect of the first application.
62. In his oral submissions senior counsel for the applicant contended that the primary judge failed to state and apply the complete test laid down in Lockwood. He submitted that his Honour should have drawn attention to what said by Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ in Lockwood at [87] as mentioned above. Mere ‘coincidence of language’ does not establish fair basing if that part of the language of the specification does not reflect the description of the invention in the light of the specification as a whole.
63. As senior counsel for the applicant put it:

‘A coincidence of language won’t be enough – that doesn’t establish fair basing – if that part of the language of the specification does not reflect the description of the invention in the light of the specification as a whole. And so, we say, coming back to heat shields and luminaires, we submit that claims, which are the subject of consideration in the amended application [Table No. 7], are for the reflector device.

There is a coincidence of language in the sense that the figure 3 has a picture of the reflector device, but that’s a coincidence because the language of the specification doesn’t reflect that that’s the invention, it reflects that it’s the heat shield, together with it, that’s the invention ...’

Earlier senior counsel submitted that the primary judge failed to add to the relevant test the question as to what was truly disclosed in the body of the specification as opposed to the reference to there being a mention of what was in the specification.

64. It does not seem to me that the primary judge fell into error by focussing upon any relevant ‘coincidence of language’. The question which his Honour addressed was, as I see it, whether there was a real and reasonably clear disclosure of the claimed luminaire invention in the light of the specification as a whole. The primary judge quoted the passage from the judgment of Gummow J in Rehm where his Honour said ‘the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed’. His Honour also observed that Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ had emphasised, in Lockwood, that the reference to a real and reasonably clear disclosure served the function of compelling attention to the construction of the specification as a whole.
65. Whilst the primary judge may not have referred to the observations of Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ in Lockwood at [87], it is clear that he did not act inconsistently with what was there said and correctly understood what the test required.
66. Senior counsel for the applicant takes exception to the primary judge’s conclusion that PA 759725 (Table No. 6) filed on 17 April 2000 ‘was capable of providing sufficient disclosure, and it contained matter which was sufficient to constitute a substantial disclosure of the “Luminaire” reflector device’ claimed in the amended PA 759725 (Table No. 7). The inference suggested by the applicant is that, for the purposes of s 114(1) of the Act, one should not be particularly interested in whether the words of the complete specification and the figures referred to therein are ‘capable of providing’ or ‘sufficient to constitute’ the relevant disclosure but rather whether ‘matter ... was in substance disclosed’. The applicant’s case is that what was truly disclosed in PA 759725 (Table No. 6) was one form of invention that must include the heat shield. It was submitted that ‘references’ to a reflector were not sufficient to provide fair basis.
67. In his oral submissions senior counsel for the respondent submitted that the question in this case was whether the adjustable luminaire was disclosed as a result of amending the specification. He submitted that the answer was plainly no because it was in the specifications filed on 17 April 2000 (Table No. 6) and also in PA 716550 (Table No. 4) which he described as being ‘the parent specification’.
68. The difference between the parties would appear to lie in distinguishing matter that is referred to in a complete specification from matter that was in substance disclosed in a complete specification.
69. Senior counsel for the respondent submitted that if the claims of the amended PA 759725 (Table No. 7) were fairly based on disclosures in PA 716550 (Table No. 4) then the claims of the amended PA 759725 (Table No. 7) must be fairly based on PA 759725 (Table No. 6) because in both Table No. 4 and Table No. 6 ‘we see both the luminaire and the heat shield device disclosed’. Senior counsel for the respondent relied upon the inclusion of the same figures which depicted the luminaire in both Table No. 6 and Table No. 7. Senior counsel for the respondent proceeded to submit that the first sentence of the primary judge’s reasons for judgment at [56] revealed that the primary judge was engaged in undertaking the correct task. He was asking whether PA 759725 (Table No. 6) in substance disclosed a matter being a luminaire. It was submitted that the primary judge was clearly seized of the correct task and that his findings were perfectly correct.
70. In my opinion the primary judge demonstrated in his reasons for judgment that he understood the test to be applied in determining whether claims of the complete specification in the amended PA 759725 (Table No. 7) claimed matter that was ‘in substance disclosed’ as a result of the amended specification rather than the specification in PA 759725 which was filed on 17 April 2000 (Table No. 6).

His Honour’s conclusions at [56]-[57] show that he was satisfied that the impugned claims in the amended PA 759725, as amended on 4 March 2003, claimed matter that was in substance disclosed in the application PA 759725 (Table No. 6) filed on 17 April 2000.

71. In the circumstances, the applicant has not demonstrated a clear prima facie case of error in the decision from which the applicant seeks to appeal such that the likely effect of the decision would be to allow an invalid patent to proceed to grant. Applying the relatively stringent filter for appeals to which Black CJ, Merkel and Goldberg JJ referred in Genetics Institute, I do not consider that leave to appeal should be granted.
72. Accordingly, the application should be dismissed and the applicant should be ordered to pay the respondent’s costs.
    

I certify that the preceding seventy-two (72) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Graham.

Associate:

Dated: 26 February 2010