|
|
[Home]
[Databases]
[WorldLII]
[Search]
[Feedback]
Federal Court of Australia - Full Court Decisions |
Last Updated: 8 December 2005
FEDERAL COURT OF AUSTRALIA
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd
PATENTS – patent for deadlock which can be unlocked from
outside – whether obvious – whether infringed – whether
insufficiency
Patents Act 1990 (Cth) ss 7, 18(1)(b),
40(2)(a)
Doric Products Pty Ltd v Lockwood Security Products Pty
Ltd [2001] FCA 1877; (2001) 192 ALR 306 approved
Lockwood Security Products Pty Ltd v
Doric Products Pty Ltd (2003) 56 IPR 479 cited
Lockwood Security
Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274
cited
Sami S Svendsen Inc v Independent Products Canada Ltd [1968] HCA 65; (1968) 119
CLR 156 not followed
Pinefair v Bedford Industries (1998) 87 FCR 458
cited
Catnic Components Ltd v Hill & Smith Ltd [1982] RPC
183
Radiation Ltd v Galliers and Klaerr Pty Ltd [1938] HCA 17; (1938) 60 CLR 36
cited
Shave v HV McKay Massey Harris Pty Ltd [1935] HCA 39; (1935) 52 CLR 701 at
708-710 cited
Marconi’s Wireless Telegraph Co v Phillips Lamps
Ltd [1933] RPC 287 at 303 cited
Olin Corporation v Super Cartridge Co
Pty Ltd [1977] HCA 23; (1977) 180 CLR 236 at 246 cited
Flexible Steel Lacing Company
v Beltreco Ltd [2000] FCA 890; (2000) 49 IPR 331 at [77] cited
Minnesota Mining &
Manufacturing Company v Beiersdorf (Australia) Limited [1980] HCA 9; (1980) 144 CLR 253 at
267, 292, 295 applied
NV Philips Gloeilampenfabrieken v Mirabella
International Pty Ltd [1993] FCA 404; (1993) 44 FCR 239 at 286 cited
K & S Lake
City Freighters Pty Ltd v Gordon & Gotch Ltd [1985] HCA 48; (1985) 157 CLR 309 at 315
cited
CIC Insurance Limited v Bankstown Football Club Limited [1997] HCA 2; (1997)
187 CLR 384 at 408 applied
Network Ten Pty Ltd v TCN Channel Nine Pty Ltd [2004] HCA 14;
(2004) 78 ALJR 585 at [10]- [13] cited
Kimberly-Clark Australia Pty Ltd
v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1 at 13
applied
Elconnex Pty Ltd v Gerard Industries Pty Ltd [1992] FCA 556; (1992) 25 IPR 173
at 183 cited
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12;
(1981) 148 CLR 262 at 280 cited
Re Raychem Corp’s Patents [1998]
RPC 31 at 41-42 cited
Winner v Ammar Holdings Pty Ltd (1992) 24 IPR
137 cited
Intalite International NV v Cellular Ceilings (No 2)
[1987] RPC 537 at 547
Bristol-Myers Squibb Co v FH Faulding & Co
Ltd [2000] FCA 316; (2000) 97 FCR 524 at 541 applied
Leonardis v Sartas No 1 Pty
Ltd (1996) 67 FCR 126 cited
Minnesota Mining & Manufacturing Co v
Tyco Electronics Pty Ltd [2002] FCAFC 315; (2002) 56 IPR 248 cited
Aktiebolaget Hassle v
Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 cited
Sunbeam Corporation v
Morphy-Richards (Aust) Pty Ltd [1961] HCA 39; (1961) 180 CLR 98 at 111 cited Advanced
Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR
171 at 181 applied
SW Hart & Co Pty Ltd v Edwards Hot Water
Systems (1985) 159 CLR 467 at 478, 491 applied
Bartlem Pty Ltd v Cox
Industries (Aust) Pty Ltd [2002] FCAFC 224; (2002) 55 IPR 449 at [89]- [91] cited
Biogen
Inc v Medeva plc [1997] RPC 1 at 45 cited
Branir Pty Ltd v Owston
Nominees (No 2) Pty Ltd [2001] FCA 1833; (2001) 117 FCR 424 at [25]
cited
Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157;
(2002) 55 IPR 354 at [50]- [54] cited
Firebelt Pty Ltd v Brambles Australia
Ltd [2002] HCA 21; (2002) 188 ALR 280 at [36] cited
Microsoft Corporation v
Intertrust Technologies Corporation (2003) 59 IPR 260 at [21]
cited
Raleigh Cycle Co Ltd v H Miller and Coy Ltd (1948) 65 RPC 141 at
146, 148, 161 followed
AMP Inc v Utilux Pty Ltd (1971) 45 ALJR 123 at
128 applied
Winner v Ammar Holdings Pty Ltd [1993] FCA 93; (1993) 41 FCR 205 at 217
applied
Grove Hill Pty Ltd v Great Western Corporation Pty Ltd [2002] FCAFC 183; (2002)
55 IPR 257 at [168]- [174] applied
Arrow Pharmaceuticals Ltd v Merck &
Co Inc [2003] FCA 642; (2003) 58 IPR 231 cited
British United Shoe Machinery Co Ltd v
A Fussell & Sons Ltd (1908) 25 RPC 631 at 651 applied
May v
Higgins [1916] HCA 8; (1916) 21 CLR 119 applied
CIPA Guide to the Patents
Act 5th ed (2001)
par 3.12
LOCKWOOD
SECURITY PRODUCTS PTY LTD v DORIC PRODUCTS PTY LTD
NSD 281 OF
2002
HEEREY, SUNDBERG AND BENNETT JJ
8 DECEMBER
2005
SYDNEY
ON APPEAL FROM A SINGLE JUDGE
OF THE FEDERAL COURT OF AUSTRALIA
|
BETWEEN:
|
LOCKWOOD SECURITY PRODUCTS PTY LTD
(ACN 000 577 195) APPELLANT |
|
AND:
|
DORIC PRODUCTS PTY LTD
(ACN 086 451 907) RESPONDENT |
THE COURT ORDERS THAT:
1. The appeal is
dismissed.
2. The appellant pay the respondent’s
costs.
Note: Settlement
and entry of orders is dealt with in Order 36 of the Federal Court Rules.
ON APPEAL FROM A SINGLE JUDGE OF THE
FEDERAL COURT OF AUSTRALIA
|
AND:
|
REASONS FOR JUDGMENT
1 The appellant Lockwood Security Products Pty Ltd ("Lockwood") is the proprietor of Australian patent No 702534 ("the Patent") concerning key controlled latches. The respondent Doric Products Pty Ltd ("Doric") is a rival manufacturer and supplier of door locks.
2 Doric sued Lockwood under s 128 of the Patents Act 1990 (Cth) ("the Act") alleging unjustified threats of infringement. Lockwood cross-claimed alleging infringement and Doric then cross-claimed seeking revocation of the Patent on a number of grounds.
3 Hely J held that 32 of the 33 claims of the Patent were invalid for lack of a fair basis, contrary to s 40(3) of the Act: Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [2001] FCA 1877; (2001) 192 ALR 306. His Honour also held that a number of claims were invalid for want of novelty but otherwise rejected all grounds of invalidity alleged. His Honour further held that Doric products infringed some claims (1-6, 12-15, 20 and 30-32) but not others (7-8, 17 and 22-23). The remaining claims were not alleged to have been infringed.
4 On appeal a Full Court (Wilcox, Branson and Merkel JJ) upheld the fair basis finding: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2003) 56 IPR 479. Their Honours did not reach any final view on other issues.
5 The High Court upheld Lockwood’s appeal on fair basis: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274. It remitted all other matters to a Full Court of this Court.
The remaining issues
6 Lockwood contends that the primary judge erred in rejecting the allegation of infringement in respect of claims 7-8, 17 and 22-23, both as to the construction of the claims and the existence of the relevant integers in the Doric products.
7 For its part, Doric seeks to challenge his Honour’s rejection of its allegations of:
(i) obviousness in respect of claims 13-15, 20, 21 and 30 (s 18(1)(b)(ii)); and
(ii) insufficiency in respect of claims 7-11 and 13-30 (s 40(2)(a)) in the sense described in Sami S Svendsen Inc v Independent Products Canada Ltd [1968] HCA 65; (1968) 119 CLR 156.
The Patent
8 The Patent is for what is commonly referred to as a deadlock but with an additional feature. With a deadlock the door can be locked from the inside, thus preventing intruders from gaining entry by smashing a glass panel, if there happens to be one in or adjacent to the door, and unlocking the lock. Also intruders who have obtained access from somewhere else in the premises cannot open the door so as to remove bulky items.
9 But there remains a problem. When the householder opens the door from the outside the deadlock remains operative. If the door slams shut with the key left in the outside the householder is trapped inside. Again, if the key is lost or misplaced, the householder cannot open the door from the inside in case of emergency such as fire.
10 The solution said to constitute the inventive step is to have the outside key render the locking means inactive.
11 Claim 1 is as follows (the Roman figures indicating the agreed integers):
"A latch assembly including, (i) a casing, (ii) a latch bolt mounted on the casing so as to be movable relative thereto between an extended latching position and a retracted release position, (iii) a first actuator operable from an inner side of the assembly to cause movement of the latch bolt to said release position, (iv) locking means operable from said inner side of the assembly to adopt an active condition and thereby render said first actuator inoperable, (v) a second actuator operable from an outer side of the assembly to cause movement of the latch bolt to the release position, and (vi) lock release means which is responsive to said operation of the second actuator so as to thereby render said locking means inactive."
12 An actuator is something which causes an operation to occur – here a handle or knob.
13 The specification, after referring to the problem abovementioned, states:
"It is an object of the present invention to provide a key controlled latch which can be released from a locked condition by use of a key at the outside of the door or other member with which the latch is used."
14 The High Court at [10] noted:
"The specification then described the inventive step as follows:
‘According to the present invention, a latch assembly of the foregoing kind [ie using integers (i)-(v)] is characterised in that it includes lock release means which is responsive to operation of the second actuator to render the locking means inactive.’"
Their Honours characterised this as a consistory clause.
INFRINGEMENT
Claim 7
15 The primary judge recorded the evidence concerning the components of the Doric product. He specifically noted at [40] that none of the experts called advanced the proposition that lock release means was not to be found in the Doric product. Accordingly, the Doric products were held to infringe claims 1-6 of the patent. That finding is not challenged.
16 Relevantly for present purposes, infringement issues commence with claim 7, which has three further integers. It is in these terms:
"A latch assembly according to any preceding claim, wherein said (vii) locking means includes a cam member which is movable between first and second positions at which said locking means is inactive and active respectively, (viii) cam biasing means urges said cam member towards said first position, and (ix) a retaining member is engagable with said cam member to thereby prevent movement of said cam member out of said second position when said locking means is in the active condition."
17 The primary judge identified the dispute as centring on the presence or absence of two of the additional integers of claim 7, integers (viii) and (ix).
18 "Cam biasing means" is something which has a biasing or rotating influence on the cam, such as a spring. A "retaining member" is something that acts to hold something else in position. There was no dispute as to the physical operation of the Doric products. It was accepted, as noted at [54] and as emphasised by Doric, that the products work differently to the preferred embodiment of the patent, although they both use a cam to drive the detent. The primary judge correctly observed that the comparison is between the allegedly infringed claim and the Doric products. The claim is construed without regard to the alleged infringement.
19 The evidence at [52] was that in the Doric products, the nose of the cam is engaged in a recess in the T-member. In that position, movement of the cam member is prevented. Once disengaged, the spring urges the cam member towards a position at which it is unlocked. The primary judge concluded at [62] that the recess in the cross-bar of the T-member of the Doric products which can also be described as the cross-bar of the T-member with a recess ground into it, is a "retaining member" in terms of integer (ix). That finding is not presently challenged.
20 Claim 7 requires a cam member moveable between the first (inactive, unlocked) position and the second (active, locked) position. The cam biasing means of integer (viii) urges the cam member towards the unlocked position. Integer (ix) refers to a retaining member engagable with the cam member to thereby prevent movement of the cam member out of the locked position when the locking means is in the active condition. That is, it is the retaining member that prevents the movement of the cam member.
21 As described by the primary judge at [14], the lock release means, responsive to operation of the second actuator to render the locking means inactive (integer vi), is the feature which distinguishes the invention from a typical latch assembly.
22 When one looks to the specification, the description of the invention (at page 2 line 22) includes a retaining means that may be operable to allow or prevent movement of the cam. In a preferred embodiment described at page 6 lines 23-25, the spring tends to move the cam back to the unlocked position and the releasable retainer prevents that movement. The cam retainer means as described at page 6 lines 26-28 includes a member, preferably a lever, which can be moved into and out of cooperative engagement with the cam. Operation of the outer lock removes the restraining influence of the lever on the cam as described at page 9.
23 The specification says that the release means may take any suitable form, of which one is described as an embodiment of the invention. The language used makes it clear that what is described is a preferred embodiment, an example of the invention.
"The first actuator will generally include a rotatable knob or handle which is connected to the latch bolt in a known manner so as to be operable to move that bolt into the release position, and the bolt may be spring biased into the latching position. The locking means preferably includes at least one cam controlled detent which is movable between actuator locking and actuator release positions. It is also preferred that the lock release means is operable to influence the detent cam in a manner such that operation of the second or outer actuator causes the detent cam to move to a position corresponding to the actuator release position of the detent. The cam may be spring biased towards that corresponding position, and retaining means may be operable to allow or prevent such movement according to whether or not, respectively, the second actuator is operated.
Embodiments of the invention are described in detail in the following passages of the specification which refer to the accompanying drawings. The drawings, however, are merely illustrative of how the invention might be put into effect, so that the specific form and arrangement of the various features as shown is not to be understood as limiting the invention."
(emphasis added)
24 The question posed by the primary judge was "does claim 7 require an interaction between the retaining member and the cam biasing means"? The contest was said at [64] to be whether claim 7 is satisfied if the engagement of the recess and the cam in fact prevents movement of the cam out of the recess position (Lockwood) or whether the recess prevents movement of the cam which is being, or would otherwise be caused by the cam biasing means (Doric).
25 The primary judge described integer (viii) at [69] as follows:
"Feature (viii) stipulates that the cam biasing means urges the cam member towards the unlocked position. It is implicit in this feature that the urging towards the unlocked position is from some other position. That other position is the second position or the recess position. Thus feature (viii) describes cam biasing means which urges the cam member from the recess position to the unlocked position."
(emphasis in original)
26 His Honour concluded at [72] that claim 7 "requires that the cam biasing means urges movement out of the locked position whilst (at the same time) the retaining member prevents it". That conclusion was drawn from a construction of the claim itself. His Honour observed that this accords with the description of the preferred embodiment but that the construction was not dependent on or derived from that description.
27 The thrust of Lockwood’s submissions is that the primary judge’s conclusion of no infringement of claim 7 was inconsistent with his findings.
28 In summary, it is contended:
• Integers (i) to (vii) were present in the Doric products and that finding was not challenged on appeal.
• Integer (ix) is "a retaining member [that] is engagable with said cam member to thereby prevent movement of said cam member out of said second position when said locking means is in the active position". The primary judge found that the recess of the cross-bar of the T-member is a "retaining member" in terms of integer (ix). In stating that the recess was a "retaining member", his Honour referred at [52] to the evidence of Mr Garland in which that witness "accepted that the features of claim 7 are present in the Doric product", including acceptance that "the engagement of the cam member with the retaining member does prevent movement of the cam member from the locked to the unlocked position". The effect of His Honour’s reasoning process was that every element of integer (ix) was satisfied by the Doric product.
• This left only the question whether the Doric product contained integer (viii). Integer (viii) "cam biasing means urges said cam member towards said first position". The answer to this question was clearly yes.
• The primary judge held at [72] that Claim 7 required an interaction between the retaining member and the cam biasing means. That reasoning is inconsistent with the finding that integer (ix) was satisfied in the Doric products. Further, the primary judge did not reach a conclusion as to whether integer (viii) was satisfied.
29 The evidence of Mr Garland to which his Honour referred is set out at [52]:
"- the spring functions as a cam biasing means inasmuch as once the nose of the cam is disengaged from the recess in the T-member [the retaining means] the spring urges the cam member to a position at which it is unlocked; [emphasis added]
- the ability of the spring to function in that way is a natural consequence of the fact that the spring was compressed as part of the locking process, although the intended role of the spring was to drive the T-member from out of the cavity in the casing into the hub as part of the unlocking process;
- the action of the spring is able to overtake the action of the hand in moving the cam because of the "lost motion" feature which was incorporated into the Doric products for a different purpose. Whether the action of the spring will overtake that of the hand depends upon their relative speeds;
- the engagement of the cam member with the retaining member does prevent movement of the cam member from the locked to the unlocked position."
30 His Honour held that, given Mr Garland’s evidence, the recess in the cross-bar of the T-member is a "retaining member" in terms of feature (ix). That was not a finding that the whole of feature (ix) was present in the Doric product. The finding related only to part of that integer. His Honour was dealing there with the discrete issue whether claim 7 necessitates a separate retaining member at [59] – [62].
31 A further element of claim 7 is the prevention of movement of the cam member. This element related to the second issue of construction identified by his Honour at [58] and considered at [63]-[72], namely whether movement is prevented by the retaining member alone or by the retaining member’s engagement with the cam member. Mr Garland’s evidence did not go so far as accepting that there was interaction between the cam biasing means and the retaining member. The cam member and the cam biasing means are not equivalent. A "means" describes the overall assembly whereas a "member" describes a separate element of that assembly at [60]. Accordingly, the question considered by his Honour at [63]–[72] remained open and was not foreclosed by his Honour’s acceptance of Mr Garland’s evidence.
32 Lockwood contends that the primary judge failed to identify the words of the claim that were not satisfied or the integer of the claim that was not identified in the Doric products. That is not correct. His Honour was clearly alive at [64] and [68] to the need to construe the claim and to give the words their ordinary meaning. He concluded at [69]-[72], by reference to integers (viii) and (ix) and the grammatical structure of the claim, that an interrelationship or interaction between the retaining member and the cam biasing means is required. As Lockwood notes at [16] of its written submissions, the interaction described by his Honour is between the cam biasing means urging towards the unlocked position and the retaining member preventing movement out of the locked position.
33 Lockwood contends that his Honour applied an impermissible gloss to the meaning of the words of the claim. The gloss that is said to have been added is that his Honour imported a requirement that, in addition to satisfying integer (ix) in urging the cam out of the locked position to the unlocked position when the retaining member is not engaged, the cam biasing means must be "uselessly" urging the cam to that position at the same time that the retaining member is engaged.
34 Lockwood points to the finding by the primary judge at [69] that the requirement that the cam biasing means urges the cam member towards the unlocked position includes an "implicit" feature that the urging towards the unlocked position is from some other position, the second or recess position. His Honour then said "thus feature (viii) describes cam biasing means which urges the cam member from the recess position to the unlocked position" (emphasis in original). This is said to import an impermissible gloss on the claim.
35 Doric now submits that this requirement, that the cam biasing means urges the cam member out of the locked position, is not implicit but an express requirement of the claim.
36 The primary judge’s reference to the fact that urging towards one position must be from another position is "implicit’ does not represent an addition of words to the claim. It reflects the meaning of the words of the claim in context and the relationship between the integers of the claim. All that his Honour was saying was that if movement is urged towards one position, it must be from another position. That is not adding an additional requirement or an impermissible gloss. In any event, those "additional words" are not necessary to construe the claim or the requirement that it is the cam biasing means which urges the cam member towards the first or unlocked position, which movement is prevented by the engagement of the cam member with the retaining member in the second or locked position.
37 A number of matters were not in dispute in the appeal:
• The retaining member is constituted by the recess in the T-member.
• The retaining member is engageable with the cam member.
• Once the cam is in the recess in the T-member, it is in the zero degrees position. It is locked, the locking means is active and the cam member cannot move.
• At the zero degrees position, there is zero turning force or torque.
• If the cam is rotated just out of the recess, the locking means releases.
• If the cam is rotated just out of the recess, the cam biasing means urges it towards the first, unlocked position.
38 The alternative presentation of Lockwood’s argument was that the words "out of said second position" did not qualify "cam biasing means urges". Lockwood argues that claim 7 simply requires that the engagement of the cam member with the retaining member must prevent movement. Accordingly, there is no need for the cam biasing means to be "uselessly" urging the cam towards the unlocked position in the zero degrees position while the retaining member is engaged. The issue as framed is whether the cam biasing means must be operative to urge the cam member when it is in the actual locked (second) position towards the unlocked (first) position. This raises the question whether the second or locked position is equivalent to the zero degrees position.
39 Approaching the latch assembly from the outside of the lock, Mr Bannon described the action of turning the key to rotate the cam out of the recess. The spring pushes the T-member back out so that it is unlocked and then, if the key is turned further, the latch bolt is withdrawn. The lock release means is present. That is not in dispute. Mr Bannon relies upon the action of the lock release means to move the cam member to a position where the cam biasing member urges it towards the unlocked position.
40 Lockwood contends that the lock release means moves the cam out of the locked position and only then does the cam biasing means have work to do. That may be the case in the practical working of the Doric products but that does not avoid the fact that claim 7 requires the cam biasing means to be urging the cam member out of the second or locked position.
41 Lockwood contends that the second or locked position was not only the zero degree position. Mr Bannon relied upon the fact that, in the absence of the recess, a fully locked position was achieved before the zero degrees position. Without the recess, the device would be unstable and there would be movement out of the locked position.
42 The claim uses the word "urges". This is in the context of "urges said cam member towards said first position". That suggests that the urging is operative. Mr Bannon submits that the urging need not be operative at all times but just needs to be a "physical, identifiable feature of the product." To the extent that this meaning is not clear and to determine whether such a meaning is consistent with the specification as a whole it is necessary to go to the specification. Mr Bannon accepted that the description is of the cam biasing means, the spring, urging in the locked position, such movement being prevented by the retaining member. He relied upon that as supporting the construction that the specification does not describe an actual urging by the spring at all times.
43 The specification, however, supports his Honour’s construction of the urging of the cam member. At page 6 lines 14 to 16, the specification describes "a spring 30 acts between the turn knob 9 and the cam arm 27 so as to normally urge the arm 27 against the stop 28 (Figures 3, 7 and 9), but other arrangements could be adopted for that purpose" and, at page 6 lines 23-24 "The spring 30 tends to move the cam 22 back to the Figure 3 position and releasable retainer means is provided to prevent that movement" (emphasis added). While this supports a construction that there does not need to be operative urging at all times, it also supports an arrangement where the spring itself urges movement of the cam member at all times, which is prevented by the retaining member. If at zero degrees there is no movement urged, the retaining member is not preventing that movement.
44 Conceding that the specification does describe an assembly in which the cam biasing means urges at all times and that it does not do so in the locked position in the Doric products, Mr Bannon submits that, while there may be "a point in time in use" when there is no infringement, there is still infringement (Pinefair v Bedford Industries (1998) 87 FCR 458).
45 If the only relevant part of the claim was the requirement that the cam biasing means urge the cam member towards the first position, there may be some force to this argument. However, an additional requirement is that the retaining member thereby prevent movement of the cam member out of the second position. This imports the requirement that the cam biasing means is operative while the cam member is engaged with the retaining member. It is conceded that this does not occur in the Doric product.
46 The primary judge considered whether the spring (the cam biasing means) urges the cam member towards the unlocked position when the cam is in the recess position. He based his consideration upon the finding at [73] that the spring exerts no torque on the cam member until the nose of that member is manually disengaged from the recess in the T-member, the retaining member. His Honour noted evidence about the fact that zero torque is recorded when the cam is at the zero position and that positive torque is first recorded when the cam is 10o from the zero degree position. This was in the context of the result that it is only once the nose of the cam is manually rotated out of the recess that the spring can push the cam to the unlocked position. That is, as concluded at [76], there is no urging towards the unlocked position in the Doric products when the cam is in the recess position.
47 The primary judge concluded at [77] that there was no infringement as, "in order to infringe, there must be urging towards an unlocked position by the cam biasing means at the point where the cam biasing means is in the recess, which is restrained by the engagement of the retaining member and the cam member".
48 His Honour considered submissions based on Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 affecting reliance on a single point at which the cam biasing means is not operative. Lockwood’s submission at [79] was that the recess position and the zero degree position (the single point) are not necessarily coincident and that whilst accommodated within the recess, the cam need not maintain the precise zero position. Once there was movement away from the single point, zero degrees, the cam biasing means would urge the cam to the unlocked position. That contention was based upon the assertion that there was, in use, "play" in the movement of the cam in the recess away from the precise zero position, at which point the cam biasing means would exert an effect. His Honour considered, however, that the evidentiary basis for the contention was absent. Accordingly, he held at [81] that the reasoning in Catnic was not applicable. That finding has not been shown to be in error.
49 His Honour held, and it is apparent, that the Doric products had not taken the substantial idea made the subject of claim 7 (Radiation Ltd v Galliers and Klaerr Pty Ltd [1938] HCA 17; (1938) 60 CLR 36) namely that movement towards the unlocked position from the locked position that would otherwise result from the urging of the spring is restrained by the retaining member. In the Doric products there is no effect of the cam biasing means when the cam is in the locked position; manual rotation of the cam is required for the cam to clear the recess and for the spring to have practical effect. This is functionally different.
50 Lockwood points to the lock release means, integer (vi) of claim 1, which is also integer (vi) of dependent claim 7. The lock release means is responsive to the operation of the second actuator which is operable from the outer side of the assembly to cause movement of the latch bolt to the release position. This was described by Doric as "the trigger released by a second outside cam". However, Lockwood has emphasised that claim 7 does not say anything about the form of the lock release means, the form of the cam biasing means or the form of the retaining member. Claim 7 is not limited by the description in the specification of the preferred embodiment, on which Doric relied.
51 In Shave v HV McKay Massey Harris Pty Ltd [1935] HCA 39; (1935) 52 CLR 701 at 708-710 the High Court discussed the importance of the claims in the determination of infringement and drew a contrast with earlier cases where claims did not form part of the specification. There, as here, the invention embodies "a principle or application of principle capable of expression by a number of mechanical alternatives". However, the way that the claim is drawn is determinative of the scope of the monopoly protected by that claim. As was adopted by the High Court in Shave at 709 from Marconi’s Wireless Telegraph Co v Phillips Lamps Ltd [1933] RPC 287 at 303: "It is not sufficient for the inventor to discover his gold mine- he must also peg out his claim. Outside the pegs, the gold, if it be there, is free to all". It is in that context that the words of Rich, Dixon, Evatt and McTiernan JJ at 709, adopted by the High Court in Lockwood at [59], appear.
52 Doric’s products are not obvious mechanical substitutes for the mechanism of claim 7 but involve a change in design and a different mechanism of action. As in Shave, the ideas which flowed from the claimed invention are not entirely included within the claim.
53 Doric’s submissions emphasised the differences between the Doric lock on the one hand and the preferred embodiment and the description in the specification on the other. Doric also emphasised the fact that the primary judge accepted that Doric did not set out to copy the Lockwood lock. However, as the primary judge accepted, it is the claim which is to be construed in the context of the specification that determines the boundaries of infringement.
54 Doric says that the spring of the Doric lock is not the cam biasing means and performs a different function. It pushes the T member (the detent) out of its recess when the cam is turned by the key out of the locked position to the unlocked position. In doing so, it is conceded that it provides some torque to the cam via the T-member but only after it has been rotated by the use of the key. Doric emphasises that the torque is irrelevant to the functioning of the lock because the key turns the cam. In that regard the evidence of Mr Garland at [52] of his Honour’s reasons (set out in [29] above) as to the role of the hand and the spring is relevant.
55 The Doric product replaces the essential integer of a cam biasing means urging the cam member out of the second, locked position with the lock release means moving the cam out of the locked position after which the cam biasing means moves it to the unlocked position. Where there has been no taking of all of the essential integers of the claim, there is no infringement (Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1977) 180 CLR 236 at 246 per Gibbs J).
56 Claim 7 is a combination claim. It defines a latch assembly with a combination of integers in a working interrelationship so as to achieve a claimed result. Doric submitted that the primary judge correctly approached the construction of claim 7 by looking at the relationship of the integers of the latch assembly as a whole, in combination, to see how the assembly functions mechanically to achieve a particular end. His Honour did this, carefully confining himself to the words of the claim, in the context of the claim. There is no error in this approach.
57 In addition, his Honour looked to the specification as a whole. That can not be said to have been an error: see Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) 49 IPR 331 at [77]; Minnesota Mining & Manufacturing Company v Beiersdorf (Australia) Limited [1980] HCA 9; (1980) 144 CLR 253 at 267, NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1993] FCA 404; (1993) 44 FCR 239 at 286; K & S Lake City Freighters Pty Ltd v Gordon & Gotch Ltd [1985] HCA 48; (1985) 157 CLR 309 at 315; CIC Insurance Limited v Bankstown Football Club Limited [1997] HCA 2; (1997) 187 CLR 384 at 408; Network Ten Pty Ltd v TCN Channel Nine Pty Ltd [2004] HCA 14; (2004) 78 ALJR 585 at [10]- [13] and Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1 at 13. There was nothing in the specification inconsistent with the conclusions he reached. In the specification commencing at page 8 line 19, the operation of the preferred embodiment is described. Relevantly, the lock release means of the Lockwood patent is rotated by a key, the retaining member (a lever) moves and pushes the cam against the influence of the spring so that the cam moves from the first (inactive, locked) position to the second (active, unlocked) position. A consideration of the specification served to emphasise the differences between the preferred embodiment of the patent and the Doric locks.
58 The primary judge was not in error in finding that claim 7 was not infringed by the Doric products.
Claim 8
59 Claim 8 is dependent on claim 7. The additional integer is:
"(x) ...wherein said retaining member is responsible to operation of said lock release means to disengage from said cam member and thereby permit said cam member to be driven into said first position by said cam biasing means."
60 As a dependent claim, if claim 7 is not infringed, there is no infringement of claim 8. The primary judge held that integer (x) was present in the Doric products. It is conceded by Doric that, if claim 7 is infringed, so is claim 8.
61 We agree with the primary judge that, as claim 7 is not infringed, claim 8 is not infringed.
Claim 17
62 Claim 17 is dependent on claims 1-6 and 12-15. It is a claim to a latch assembly with the further integer:
"(xi) ...wherein cam biasing means acts on said cam to urge it into said first position of rotation at which said detent is able to adopt said actuator release position."
63 The cam biasing means is the same physical integer as in claim 7, a spring. The cam is defined in claim 13 to be a cam which is "movable about an axis of rotation between first and second positions of rotation so as thereby to control said detent means". If the cam is movable between the first and second positions and the cam biasing means urges it into the first (unlocked) position, it must be from the second position.
64 Claim 17 is not dependent on claim 7. Integer (viii) is not an integer of this claim. Neither is integer (ix), a retaining member.
65 Lockwood submits that the claim should be construed such that the cam biasing means does not urge the cam at and from the locked position. Accordingly, it is submitted, the Doric products infringe as the spring biasing effect occurs once the nose of the cam is moved out of the recess in the T-member. That is inconsistent with the clear words of the claim. The cam biasing means must act on the cam to urge it into the first position.
66 The primary judge resolved the issue at [97] by noting that the patent may relate to one invention only (s 40(4)) and construed the claim so that there was internal consistency. On this basis, his Honour concluded that the cam biasing means is the same in claim 7 and claim 17, so that "it is implicit" that it urges the cam member from the recess position to the unlocked position; claim 17 "spells out an effect of cam biasing means". This led to the conclusion, following from the conclusion in relation to claim 7, that there is no infringement of claim 17.
67 Lockwood is not deterred. It submits that, in the Doric lock, a fully locked condition is maintained when the cam is located just outside of the recess of the T-member. At this position, the cam is under the influence of the spring and is urged towards the unlocked position or condition. In addition, Lockwood contends that there is no basis to include the retaining member of claim 7 in claim 17. Lockwood contends that it is a product which has a cam biasing means as described which can achieve a locked position without the need of a retaining member and the evidence demonstrates that, while this is possible, it is only if there is no urging towards the unlocked position in the precise zero degrees locked position. This is said, as a matter of logic, to mean that the occasion for the cam biasing means to do its work arises after activation of the lock release means which removes the lock from the lock position.
68 This is so. However, claim 17 requires that it is the cam biasing means that urges the cam member into the first position. The evidence was that the cam biasing means, once it exerts torque, does not drive the cam fully into the first position. Lockwood relies upon the fact that a fully unlocked condition is achieved at the point where the spring has exerted all of its force on the cam and rotated it to about the 60o position. The additional rotation under the influence of the turning handle to 90o does not affect the extent of the unlocked position. The submission is that, by reference to claim 13, the first position is one at which the cam controls the location of the detent, that is functional rather than physical. Claim 13 on which claim 17 depends, refers to the positions of rotation "so as to thereby control said detent means". This is said to suggest a functional condition rather than a precise location.
69 Doric does not accept this construction and contends that the first position is a precise location. Doric submits that claim 17 does address position, as a physical location. This is reinforced by claim 13, which refers to "locking and release positions". As found by his Honour on the evidence, the cam biasing means of the Doric product does not urge the cam member while the cam member is in the second position. As noted, the cam biasing means does not exert an effect on the cam member till the nose of the cam is moved out of the recess. The fact that this is due to the retaining member in the Doric products, an integer not required by claim 17, is not to the point. Lockwood relies upon the fact that, functionally, when the nose of the cam is out of the recess, the locked position is still maintained.
70 If the first position is the fully unlocked position and the second position the one at which the cam is in the recess of the T-member, the requirements of claim 17 are not met by the Doric products. If the positions in the claim are "functional", encompassing a range of locations at which the locked and unlocked conditions are maintained, the cam biasing means does urge the cam from the second position to the first position.
71 To resolve this "ambiguity" it is appropriate to consider the specification as a whole.
72 If claim 7 were to be taken into account in construing claim 17, it would suggest that the second position (and by analogy the first position) are locations. The retaining member prevents movement out of the second position, which is the location of the cam member in the recess.
73 The language of the specification, including the descriptions of the figures, consistently refers to "position" in a context indicating a physical location rather than a range of positions or a description of a functional result. For example, page 6 lines 9-20 describe the positions in terms of fixed location rather than functional effect.
74 We conclude that the "position" in claim 17 is used in the sense of a location and not a functional effect. The cam biasing means of the Doric products does not act in accordance with claim 17. Claim 17 is not infringed.
Claims 22 and 23
75 Lockwood acknowledges that infringement of these claims depends on establishing infringement of claim 17. Accordingly, they are not infringed.
OBVIOUSNESS
Introduction
76 In its Particulars of Invalidity Doric claims that
"The alleged invention, so far as claimed in each claim of the Patent:
(i) is not a patentable invention within the meaning of the Act in that the invention so far as claimed in each claim did not involve an inventive step when compared with the prior art base as it existed before the priority date of each claim;
(ii) was obvious and did not involve an inventive step having regard to what was known and used prior to the priority date of each claim."
77 Section 18 of the Act defines a "patentable invention". So far as presently material it provided that
"a patentable invention is an invention that, so far as claimed in any claim:
...
(b) when compared with the prior art base as it existed before the priority date of that claim:
...
(ii) involves an inventive step ...
..."
78 Section 7(2) provided:
"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 either of the kinds of information mentioned in subsection (3), each of which must be considered separately."
The "kinds of information" mentioned in sub-s (2) were described in sub-s (3) as
"(a) prior art information made publicly available in a single document or through doing a single act; and
(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 in the patent area would treat them as a single source of that 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 and regarded as relevant to work in the relevant art in the patent area."
79 Section 138(3)(b) provides for revocation of a patent, either wholly or so far as it relates to a claim, on the ground that the invention is not a patentable invention.
80 It was common ground that obviousness is to be determined as against claim 1. Although claim 1 is not in issue before us, if it is bad for obviousness, so too is claim 13, which is in issue. Each of the claims that are challenged for obviousness has been challenged under both s 7(2) and (3) of the Act.
Before the primary judge
81 The primary judge first summarised what he described as the "direct expert evidence as to inventive step". The principal witnesses were Mr Garland and Mr Alchin for Doric, and Mr Wilson and Mr Freestone for Lockwood.
82 Mr Garland had for many years been directly involved in the design and development of a large range of door locks and window locks and fittings. He was the designer of the Doric DS30 lock. He said that if he had been given a brief as at 14 February 1996 (the priority date) to design a lock assembly to address the problem referred to in the Patent ("the problem"), he believed that one or more solutions would have been readily apparent to him without the use of any inventive facility, by the application of then well-known and available locking techniques and locking parts and fittings. One solution would have been, in effect, to produce the Doric lock. Another quite independent solution would have been, in effect, to produce the preferred embodiment in the Lockwood patent.
83 His Honour noted that in 1995 Doric had set Mr Garland the specific task of designing a rim mounted deadlatch to compete with the old Lockwood 001. The solution to the problem did not occur to him at that time. His Honour also observed that in cross examination Mr Garland said that he "may well have" come up with one of the two solutions he referred to. This, his Honour said, fell short of establishing that a non-inventive skilled worker would, as a matter of routine, have come up with either one of these solutions. It was not sufficient for a finding of obviousness that the skilled person "could" have done what had been claimed: CIPA Guide to the Patents Act 5th ed (2001) par 3.12. The primary judge also noted that Mr Garland’s views were contrary to those of Mr Alchin, the inventor of the Doric products, who claimed that those products were inventive, and represented an advance over the prior art, including the locks relied upon by Doric as being novelty destroying.
84 Mr Wilson, a locksmith rather than a lock designer, had been aware of the problem since the late 1970s. It was his practice to caution clients that they should get into the habit of always leaving the key in the inside lock when returning home. He said that before the release of the new Lockwood 001 with safety release, it would never have occurred to him to design "such a lock" that operated with a safety release mechanism to overcome the problem. His Honour pointed out that it was not clear whether "such a lock" was the physical Lockwood product manufactured in accordance with the preferred embodiment, or a lock containing integer (vi) of claim 1 (see [159]). Mr Wilson had never been asked to design a lock.
85 Mr Wilson said he was not aware of the Doric sliding door lock, DS60, before the priority date. Even if he had been aware of that product, he did not think it would have occurred to him that the internal mechanism of the DS60 provided a solution to the problem.
86 Mr Freestone had been involved in the design of numerous locks and lock components for Lockwood. He said the problem had been known to him since deadlatch locks were first used in Australia in the 1950s. He said that in 1992 Mr Blanch of Lockwood, the inventor of the latch assembly the subject of the Patent, was instructed to improve the old 001 deadlatch in various ways. In May/June 1993 Mr Blanch said to him:
"What if I could do auto-unlocking in the 001 project?"
Mr Freestone replied:
"If you can do that, good luck to you. I don’t think you can do it."
Mr Freestone continued:
"I said these discouraging words because at the time, I considered that the problem posed by the deadlatch would be too difficult to resolve. I had put the question of solving this problem in the ‘too hard basket’ and I believe that other lock designers at Lockwood had done the same. However, I considered Mr Blanch to be a lateral thinker and whilst I was doubtful that he would succeed, I was prepared to support him if he thought he could find a solution."
87 After noting that the issue before him was whether the alleged invention would have been obvious to a non-inventive worker in the field, namely the manufacture and design of locks, equipped with the common general knowledge at the priority date, the primary judge said he preferred the evidence of Mr Freestone to that of Mr Garland. Mr Garland was an inventor of a number of locks or lock type products, whose field was that of research and development. What may have been obvious to him gave no indication as to what would be obvious to the ordinary skilled but non-inventive worker. His Honour concluded:
"Mr Freestone impressed me as a careful and reliable witness. I accept his evidence that the problem identified by the Patent was one which had been recognised within Lockwood for many years, the resolution of which had been placed by Lockwood personnel into the ‘too hard’ basket. I do not accept Mr Garland’s evidence that a non-inventive skilled worker in the field would have lit upon the solution as embodied in the Doric and Lockwood locks as an obvious solution to that problem."
88 The primary judge then considered whether Doric had copied the new Lockwood product. He concluded that the new Lockwood 001 with safety release feature was the inspiration for the Doric products, but that Doric had not set out to copy the 001, beyond taking the bare idea of the inclusion of a lock release means whereby the inside lock would be released by the operation of the outside actuator. Rather Doric set out to design a simpler product from the ground up which would include this new functionality and which could be more cheaply manufactured. His Honour said that Doric’s conduct in this respect provided some evidence on the issue of obviousness to be considered in conjunction with the other evidence on that question: see Elconnex Pty Ltd v Gerard Industries Pty Ltd [1992] FCA 556; (1992) 25 IPR 173 at 183.
89 His Honour then considered the way in which Lockwood arrived at the solution of the problem, and concluded that neither the time frame in which the invention was completed, nor the failure to call the inventor, Mr Blanch, had any real impact on the assessment of obviousness. Cf Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at 280. His Honour said that while evidence from Mr Blanch about the perceived problem, what he had done to overcome it, and how long it had taken him to do this, would have been relevant to obviousness, ultimately "invention" depends on the nature of the result claimed against the background of common general knowledge: Wellcome at 287. His Honour turned to that question.
90 The specification admits that integers (i)-(v) of claim 1 were part of the common general knowledge at the relevant date. The other locks upon which Doric relied were the storeroom locks (described by his Honour at [112]-[121]), the Lockwood 530 (described by his Honour at [150]-[153]), the sliding door locks (described by his Honour at [134]-[144]) and the Boyd mortice lock (described by his Honour at [146]-[149]). It was common ground amongst the expert witnesses that feature (vi) of claim 1 is found in each of these locks. Having reviewed the evidence of the experts (Messrs Garland, Alchin, Wilson and Freestone), his Honour was not satisfied that any of these locks, and in particular the fact that feature (vi) was to be found in them, formed part of the common general knowledge at the relevant times. He went on:
"Mr Garland does not say in terms that the storeroom locks provided the solution to the problem described in the Patent, or a step toward that solution. Rather, Mr Garland points to the DS60 as disclosing the solution to the problem. There are two problems with this. First, the only witnesses for the applicant who deposed to knowledge of the DS60 (Messrs Garland and Alchin) were involved in its design. It was not known to Mr Wilson or Mr Freestone. Second, it was Mr Wilson’s evidence that had he been aware of the DS60 before the priority date, he does not think that it would have occurred to him that the internal mechanism of the DS60 provided a solution to the problem. Similarly, Mr Freestone pointed to a number of important differences between the lock the subject of the alleged invention, and the Doric DS60 lock, which would make it difficult to conclude without specific evidence, that the invention would have been obvious to a practical and skilled but non-inventive worker in the field of manufacture and design of locks if he were equipped with knowledge of that product."
91 On the basis of the foregoing the primary judge found that the fact that the storeroom locks, the sliding door locks and the Boyd mortice lock had been sold in Australia before the priority date did not establish want of an inventive step.
92 The primary judge then dealt with Doric’s obviousness claim based on admissions in the specification. Doric divided the claims into two groups:
(a) claims which consist of matters that are admitted or proved to be common general knowledge, in combination with the addition of integer (vi) of claim 1 ("CGK claims"), and
(b) claims which claim elements of the preferred embodiment ("preferred embodiment claims").
CGK claims
93 These are claims 1-6, 12-15, 20, 21, 30, 31 and 32. The primary judge accepted that it was common general knowledge that a person could be locked inside using locks like the old Lockwood 001 deadlatch, because the inner handle remains locked notwithstanding key operation of the latch on the outside. His Honour rejected Doric’s submission that the "corollary of this", namely the advantage of unlocking the door from the outside, was also common knowledge. Mr Freestone’s evidence (see [86]), relied on by Doric, did not support it, and it was inconsistent with his evidence that while the problem was a matter of common general knowledge, finding a solution to it had been placed in the "too hard basket", where it remained until Mr Blanch’s efforts in mid-1993, which were the subject of public release in early 1997.
94 His Honour also rejected Doric’s submission that claim 1 was obvious on its face, because the supposed improvement over the prior art consists of any means of releasing the inside lock from the outside of the door. The obvious solution to the problem, said Doric, was to change the device so that the operation of the outer actuator achieves that result. His Honour concluded that the specification admits no more than that at the priority date two things were known: first, that key operation of the latch from the outside of the door does not release the inner handle; second, that as a result, people may be locked in.
95 The primary judge then considered two cases relied on by Doric in support of its submission that both the problem and the solution were readily apparent to a person skilled in the patent area: Re Raychem Corp’s Patents [1998] RPC 31 at 41-42 and Winner v Ammar Holdings Pty Ltd (1992) 24 IPR 137 (on appeal [1993] FCA 93; (1993) 41 FCR 205). His Honour said that guided by those cases:
"my initial impression was that the generality of the description of the invention in claim 1, and in particular feature (vi), was sufficient to lead to the conclusion that the alleged invention as claimed is obvious.
However, obviousness is a question of fact. It is sometimes referred to as a jury question. The factual question is whether the claimed invention would have been obvious to a skilled worker in the field at the priority date. Whether the latch assembly described in claim 1 is merely a product described by reference to a set of ‘obviously desirable’ parameters is to be determined on the evidence, rather than by the ex post facto application of judicial intuition, or by deduction from the matters accepted in the Patent. From the perspective of the skilled worker, obviousness is or may be bound up with practical considerations. In the absence of evidence, those considerations would not necessarily be apparent to a judge."
In this connection his Honour referred to Intalite International NV v Cellular Ceilings (No 2) [1987] RPC 537 at 547 and Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316; (2000) 97 FCR 524 at 541 ("Bristol-Myers").
96 His Honour concluded that his initial obviousness impression was not supported by the evidence, and indeed was inconsistent with Mr Freestone’s evidence noted at [86]. He said:
"No witness deposes to the fact that it was understood at the priority date that a solution to the problem identified in the specification was to use the outside key to release the inside lock. It was not obvious to Mr Freestone or Mr Wilson. The fact that resolution of the problem was placed in the ‘too hard’ basket by Mr Freestone is inconsistent with obviousness. The evidence of Mr Wilson and Mr Freestone establishes that there was a perceived need to find a solution to the problem, but it had not occurred to Mr Alchin or Mr Garland until after the release of the new Lockwood 001 that the problem should be solved in a manner which, in Doric’s submission, was obvious. My conclusions under the heading: ‘Did Doric copy Lockwood’ also point against a conclusion of obviousness."
Thus his Honour rejected the obviousness ground of invalidity so far as the CGK claims were concerned.
Preferred embodiment claims
97 These are claims 7-11, 16-19, 22-29 and 33, each of which, said Doric, added to the CGK/001 lock plus feature (vi), one or more further integers drawn from the preferred embodiment. Each addition was said to be merely the inclusion of a workshop variation drawn from the locksmith’s repertoire of springs, triggers, cams and detents etc. To supply these was not "beyond the skill of the calling": Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126. His Honour disposed of this submission shortly:
"It is the inventiveness of the combination as a whole that must be determined: it is impermissible to determine inventiveness by piecemeal examination, integer by integer: Elconnex Pty Ltd v Gerard Industries Pty Ltd (supra) at 184.
No witness was called to say that the particular combination of features in each of these claims was obvious. I agree with Mr Bannon’s contention that it has not been established on the evidence that each of these claims is obvious. That is particularly so given my finding on the CGK claims."
CGK + 1
98 Under this heading the primary judge dealt with Doric’s claim based on s 7(2) and (3) of the Act, set out at [78]. As his Honour said, these provisions allow the common general knowledge to be combined with (relevantly) information from the doing of one act, if a person skilled in the relevant art could, before the priority date, be reasonably expected to have ascertained, understood and regarded the information as relevant to work in the relevant art in the patent area. Doric relied, as relevant acts, taken individually, on the sale before the priority date of the following locks: storeroom locks, the Abloy rim lock, the sliding door locks, the Boyd mortice lock and the Lockwood 530. The Abloy rim lock is described by the primary judge at [130]-[133].
99 His Honour accepted Mr Freestone’s evidence that going to a number of locks to get ideas was a not uncommon practice if one were designing a new lock. But his Honour went on:
"However, the large range of locks on the market, and the cost of acquiring one type of each lock in order to take it apart so as to understand its internal mechanisms, impose practical constraints on this approach. According to Mr Freestone, even Lockwood did not undertake this exercise on a general scale. Further, if Mr Freestone were comparing lock designs, he would have regard to other rim mounted locks only. Accordingly, I am not satisfied that a skilled addressee could, before the priority date, be reasonably expected to have ascertained, understood and regarded as relevant, the storeroom locks, the Lockwood 530 or the Boyd mortice."
100 His Honour reached the same conclusion in relation to the DS60 sliding door lock, upon which, he said, Doric placed the greatest reliance. Neither Mr Wilson nor Mr Freestone was aware of the lock prior to the proceeding, notwithstanding evidence as to the extent of its sale. Further, it was "not immediately obvious" why a person engaged in the design of a rim mounted latch bolt would consult a sliding door lock. Accordingly his Honour was not satisfied that a skilled addressee could be reasonably expected to have ascertained, understood and regarded the DS60 as relevant.
101 That left the Abloy, a rim mounted lock. The primary judge rejected this lock too as potentially relevant:
"Having regard to the large range of locks on the markets, and the cost of obtaining a sample of each, I do not think that I should infer that the skilled worker could reasonably be expected to have ascertained, understood and regarded the Abloy as relevant. That is particularly so as sales of the Abloy appear to have ceased many years before the priority date. Feature (vi) of claim 1, which characterises the invention, is not to be found in the Abloy. Therefore, the same conclusion applies in relation to this lock. Even if the skilled worker could be reasonably expected to have ascertained the Abloy as relevant, the evidence does not squarely address the question of whether the invention claimed would have been obvious to a practical, skilled non-inventive worker in the field of manufacture and design of locks equipped with the common general knowledge in that field at the relevant date, and knowledge of the Abloy."
Conclusion on obviousness
102 Accordingly Doric had not established that any of the claims in the Patent was invalid for want of an inventive step.
In the Full Court
103 In the Full Court Doric did not press its case on obviousness in relation to the preferred embodiment claims. Ultimately the Full Court did not decide the obviousness issue. Nevertheless remarks were made about obviousness which should be recorded. It will be recalled that the Full Court upheld the primary judge’s conclusion that claims 1 to 32 were not fairly based upon the matters disclosed by the specification. Wilcox J, with whose reasons Branson J expressed broad agreement, under the heading "fair basis, insufficiency and obviousness", said at [69]:
"a common fundamental question affects the three issues I have noted: what, exactly, was the invention the subject of the patent? It is impossible to determine whether a complete specification fully describes, and ends with a claim or claims defining, the invention without forming a clear view about the nature of the invention. This is also true in relation to obviousness."
104 His Honour went on to say at [70] that there was a measure of inconsistency at trial in Lockwood’s case about what was the invention. For the purposes of its fair basis and sufficiency arguments, it was necessary for it to assert that the invention was the addition of integer (vi) of claim 1, which Wilcox J said could fairly be described as a concept: "the concept of the external key (or other activator) also releasing the internal locking mechanism". His Honour went on:
"However, if the invention consisted only of the addition of that broadly described element to the previously-known elements, then the issue of obviousness had to be determined by reference to the question whether it would be obvious to an ordinary, skilled but non-inventive, worker that the problem identified by the specification (that the inside handle lock was not operable from the outside of the door) could be resolved by making it operable from outside the door. Obviousness would not turn on the question whether the hypothetical worker would have realised how to achieve that result. No doubt for that reason, Lockwood’s case on obviousness dealt not with the question whether the concept was obvious but whether it was obvious to adopt the particular solution devised by Mr Blanch and described in the portion of the specification quoted at para 28 above."
105 At [71]-[72], speaking of the problem, Wilcox J said:
"... the solution to the problem of the inside lock not being responsive to the key, or other outside actuator, is to make it so. Consistently with that statement of the nature of the invention, claim 1 identifies the additional integer widely as ‘lock release means which is responsive to the operation of the second actuator’ so as to inactivate the inside lock.
During the hearing of the appeal, counsel for Lockwood took the unequivocal position that the inventive step was the addition of the widely-expressed sixth integer. However, it can hardly be an inventive step simply to say that the solution to the problem of the inside lock not being responsive to an outside actuator is to make it so. That tells the addressee nothing."
106 Then his Honour agreed with the primary judge that the specification "does not contain a real and reasonably clear disclosure of matters broader than the particular embodiment" (claim 33). He went on to say at [73]:
"If, contrary to my opinion, the addition of the widely expressed sixth integer was thought to be an inventive step, Lockwood would face a serious difficulty in relation to obviousness; it would be immaterial that (as Hely J found) it was not obvious to a skilled, but non-inventive worker, to adopt the particular means used by Lockwood."
107 At [74]-[75] Wilcox J accepted that obviousness is a matter of fact, in relation to which an appellate court should be slow to interfere with the view of a trial judge, and continued:
"But that is the situation only where the trial judge has correctly identified the factual issue that needs to be determined. It is not apparent to me, with respect, that Hely J did so. The equivocation in Lockwood’s case concerning the nature of the invention seems to have spilled over to his Honour’s consideration of the issue of obviousness.
Hely J commenced his discussion of obviousness by referring to the particulars supplied by Doric and summarising the expert evidence. ... Hely J commented that Mr Freestone’s evidence about Mr Blanch’s prototype related ‘to the physical Lockwood product’; it said nothing about the obviousness of the concept (claim 1). However, his Honour immediately introduced ambiguity by saying that ‘the fact that the problem identified by the patent had previously been recognised by Lockwood personnel, and put into the "too hard" basket is germane to that question’ . That is correct, with respect, only if the ‘problem’ is identified, not as the need to add the sixth integer (which Mr Freestone and Mr Blanch already knew, and referred to as ‘auto-unlocking’), but as to the best way of providing this integer; that is, how to provide the sixth integer."
108 Wilcox J then said it was unnecessary to express a final conclusion about obviousness.
In the High Court
109 In the High Court remarks were made that were somewhat critical of what Wilcox J had said in the passage quoted at [107]. At [71]-[72] of the report the Court said:
"At the start of that section of his reasons, he said that there was a common fundamental question affecting the three issues referred to in the heading: ‘what, exactly, was the invention the subject of the patent?’ That is true, in the sense that once that question is answered, it becomes possible to consider whether the invention is fully described, whether the claims are fairly based on it, and whether it is obvious. But the question must precede, rather than accompany or follow, any resolution of those three issues. The correct way of answering the question is to examine the body of the specification in order to see what it describes as the invention. This Wilcox J did not immediately do. Instead of discussing the issue of ‘invention’ - part of the s 40(3) question - he discussed the issue of ‘inventive step’ which relates to the s 18(1)(b)(ii) question of what a skilled but non-inventive worker would have seen as obvious in the light of common general knowledge. His Honour said that at the trial the Patentee had adopted an inconsistent case about what the invention was. Whether or not that is so, Wilcox J then observed that, as in this Court, the Patentee ‘took the unequivocal position that the inventive step was the addition of the widely-expressed sixth integer’. He then said:
‘However, it can hardly be an inventive step simply to say that the solution to the problem of the inside lock not being responsive to an outside actuator is to make it so. That tells the addressee nothing ....
If, contrary to my opinion, the addition of the widely-expressed sixth integer was thought to be an inventive step, [the Patentee] would face a serious difficulty in relation to obviousness.’
In assessing whether the invention claimed by a patentee is fully described or fairly based, it is necessary to take into account, apart from common general knowledge so far as it casts light on questions of construction, only what is said about it in the specification, independently of whether it is a ‘patentable invention’, and, in particular, independently of whether it is a patentable invention on the ground that it is not obvious. The first and third of the three sentences quoted in the above passage centre on ‘inventive step’ – a s 18(1)(b)(ii) but not a s 40(3) issue. The second, as Doric conceded in argument, appears to make a different point about whether the invention is fully described for s 40(2)(a) purposes. No part of this passage explains why the claims are not fairly based on the invention claimed in the consistory clause. Any force in the points made is immaterial to the fair basing question. For the reasons given above, the various grounds of invalidity ought to have been kept distinct."
Doric’s obviousness submissions
110 As we have said, on the earlier appeal to the Full Court Doric did not pursue its obviousness attack on the preferred embodiment claims. Of the CGK claims, only 13-15, 20, 21 and 30 remain for decision on this issue.
111 Doric’s obviousness submissions can be summarised as follows:
(a) The claims of the Patent fall into two groups: the CGK claims and the preferred embodiment claims.
(b) The primary judge correctly identified the groups, but confused them in his reasoning on the inventive step.
(c) Each of the CGK claims includes integers (i)-(vi) of claim 1 in combination with one or more mechanical features, each of which was part of the prior art Lockwood 001 lock.
(d) The parties’ approach before the primary judge and the Full Court was that the obviousness of the CGK claims is able to be tested most simply against claim 1.
(e) The two extra integers of claim 13 saved it from lack of novelty, but are both part of the common general knowledge. The inventive step for claim 13 is exactly the same as for claim 1 (ie add integer (vi) to the 001). The later claims still in issue follow on from claim 13. If it fails on obviousness, so do they.
(f) Doric did not pursue its obviousness attack on the preferred embodiment claims before the Full Court (ie it no longer submits that the particular arrangement of the lock release means is obvious).
(g) The obviousness issue is whether it was obvious to add to the known 001 lock integer (vi) in combination.
(h) The problem created by integer (iv) as identified by the specification (and by the High Court) was that while it was possible for an occupant to enter premises by unlocking the door from the outside and then to close it, the internal handle or knob remained locked until the key was used to unlock it from the inside.
(i) The solution to the problem (the inventive step) lay in including in a latch assembly using integers (i)-(v), a "lock release means which is responsive to operation of the second actuator to render the locking means inactive" (the consistory clause).
(j) Claim 1 adopted the concept in (i), and accordingly obviousness must be determined by reference to the question whether it would be obvious to an ordinary skilled but not inventive worker, that the problem could be resolved by making the inside handle operable from outside the door. Obviousness would not turn on whether the hypothetical worker would have known how to achieve that result.
(k) It is not an inventive step to say that the solution to the problem of the inside lock not being responsive to an outside actuator is to make it so.
(l) The specification admits the corollary of integer (vi). The inventive step is the corollary of the fact that the key does not release the lock, namely that the key will release the lock.
(m) Doric does not contend that the specification expressly admits that claim 1 is obvious. Rather it says it was common general knowledge that in the typical lock the outside key did not release the inside lock. Given that admission, it is no inventive step to remedy that problem.
(n) Evidence as to the ultimate issue (obviousness), though theoretically admissible, is unlikely to be of assistance: Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315; (2002) 56 IPR 248 ("Tyco").
(o) Wilcox J was correct in what is recorded at [28]-[31].
(p) The primary judge confused the general concept in (i) and the particular means used by Lockwood – the preferred embodiment.
(q) The primary judge’s initial impression that the invention is obvious was correct.
(r) His Honour’s error lies in confusion between the inventive steps involved in the two groups of claims. This appears in the critical paragraphs of his reasons ([211] and [212], recorded at [96]), where he says that the evidence of Mr Freestone is inconsistent with obviousness. Mr Freestone’s reference to the "too hard basket" was to the provision of particular means to unlock the complex mechanism of the Lockwood 001 deadlock automatically.
(s) The primary judge’s error also appears in his treatment of CGK+1, where at [222] he referred to the need to acquire one type of each lock in the large range on the market "so as to understand its internal mechanisms". See [99]. There was no need to take apart the storeroom locks to see that they possess integer (vi). The need to understand internal mechanisms is relevant only to the manner of solving the problem.
(t) Thus there was no occasion for his Honour to be moved from his initial impression by the Bristol-Myers warning that the Court should be careful to avoid assuming a technical expertise it does not have. The solution to the problem in the case of the CGK claims is simply to provide any means to solve the problem.
(u) The invention is also obvious because three other manufacturers had arrived at the same invention as that in claim 1, thus resulting in lack of novelty. Conception by others is a powerful secondary indicator of obviousness. It is the obverse of long-felt want.
(v) Lockwood’s conception of the alleged invention is evidence of obviousness. Mr Blanch’s statement "what if I could make the outside key automatically release the lock" and the 2 June 1993 minute at [113] contain the conception of each of integers (i)-(vi) in combination.
In support of (j) to (m) and (o) Doric relies on Winner.
112 Part of Mr Freestone’s evidence referred to in (r) was summarised by the primary judge at [161]-[164]. See [86]. In this connection Doric relied on Branson J’s understanding of what Mr Blanch meant, and Mr Freestone understood him to mean, by the words "What if I could do auto-unlocking on the 001 project". Her Honour said they
"were plainly intended to convey the meaning of ‘What if I could make the outside key automatically release the lock?’; Mr Freestone’s explanation of his response to Mr Blanch’s words revealed that he and, as he believed, others at Lockwood had given consideration to the principle of making the outside key automatically release the lock on the Lockwood 001 lock but had formed the view that the task of carrying that principle into effect was too difficult."
113 The minutes of the Product Development Meeting of 2 June 1993, at which Mr Blanch was present, are said by Doric to confirm this. They record:
"It is possible that design could be such that operating exterior cylinder will automatically unlock the interior knob."
114 Doric submits that Mr Wilson’s evidence, though less distinct than Mr Freestone’s, is to the same effect. He said:
"Before the release of the new Lockwood 001 with safety release, it would never have occurred to me to design such a lock that operated with a safety release mechanism to overcome the problem addressed by the Patent."
Doric says that given the existence of the new 001 with safety release, Mr Wilson’s reference to "designing" such a lock with the "mechanism" to overcome the problem is clearly to the intricacies of constructing a device that was effective in practice to solve the problem.
Lockwood’s submissions on obviousness
115 Lockwood’s submissions can be summarised as follows:
(a) Whether an invention would have been obvious to a person skilled in the prior art in the light of common general knowledge before the priority date is a question that requires expert evidence, because the court does not equate to the skilled worker: Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411.
(b) Tyco turned on the weight to be given to the expert evidence in view of the way it came into existence.
(c) Winner turned on the evidence before the primary judge and not on admissions in the specification. This is made clear by the Full Court: [1993] FCA 93; (1993) 41 FCR 205 at 215-217.
(d) Doric called no obviousness evidence as to embodiments other than the Lockwood and Doric locks, which it now accepts as non-obvious.
(e) In the absence of such evidence, Doric contends that the problem with the prior art was that the outside key does not release the inside lock mechanism, that the invention claimed is for a mechanism in which the key does release the inside lock mechanism, and that cannot involve invention.
(f) The effect of the argument in (e) is that the claims now said to lack an inventive step are claims for a mere idea or concept. That would be relevant to the ground of no new manner of manufacture (s 18(1)(a)), which has not been pleaded. It is not relevant to obviousness.
(g) Doric’s claim that the Patent has "recited itself out of court" because the statement of the problem of integer (iv) also states its solution, namely integer (vi), should be rejected for two reasons. First, since Doric does not allege that the Patent is invalid because the invention does not involve a new manner of manufacture, and in particular that there is no invention disclosed on the face of the specification, the obviousness attack must be dealt with on the assumption that there is an invention so disclosed: Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd [1961] HCA 39; (1961) 180 CLR 98 at 111; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171 at 181. Second, that construction of the specification is not open to Doric because it treats the document as, at one and the same time, identifying the problem with the prior art and saying that the solution to the problem is already well known. That absurd construction could not have been intended by Lockwood.
(h) The only basis propounded by Doric for the contention that, as at the priority date, it was well known that the solution to the problem was to use the outside key to perform an additional function of releasing the locking mechanism which locked the inside handle, is the claim that the specification admits that fact. The primary judge’s finding that the specification admitted no more than that it was generally known at the relevant date that operation of the latch from the outside of the door did not release the inner handle, and that as a result people may be locked inside, should not be disturbed.
(i) The primary judge’s finding at [10]-[12] and [202] was that the problem identified in the Patent was that people could be locked in, not the absence of integer (vi) (ie that the outside key did not release the inside locking mechanism). Mr Wilson, Mr Freestone and Mr Garland all treated the problem as being the possibility of being locked in – a safety issue. It is odd to describe the outside key as having a problem when it was only doing the job it was intended to do, namely withdrawing the latch bolt.
(j) Both the specification and the High Court explain that the problem of being locked inside arises from a combination of factors, and not just from the fact that the outside key does not release the inside lock. These factors are: the internal handle remains locked after the door is opened with the outside key, the internal lock is key-operable, the key may be left in the outside keyhole while the door closes or once inside the key may be misplaced, and urgent exit is thus impeded by the need to obtain the key.
(k) Doric’s statement of the problem conflicts with the evidence of its own witnesses, Mr Garland and Mr Freestone, who identified it in the same manner as the primary judge.
(l) It is apparent from (j) that integer (vi) is not merely the reverse of the problem (though it may be the reverse of part of the problem), namely that the outside key does not release the inside lock.
(m) Doric’s assumption that the only solution to the problem (ie the reverse of the problem) was to include in the Lockwood 001 an internal (first) lock release means which is responsive to operation of the outside (second) actuator so as to render the first locking means inactive, is not stated by the specification and is not supported by any evidence. Indeed, in cross-examining Mr Freestone, Doric elicited that the prior art included a "kick off" mechanism in which the shutting of a door released a lock, not the turning of an outside key.
(n) The only evidence supports the conclusion that the solution described in integer (vi) of claim 1 was inventive. When Mr Blanch said he might have a try at auto-unlocking, Mr Freestone didn’t think he could do it. The fact that the problem identified had previously been recognised by Lockwood personnel and put in the "too hard basket" also supports that conclusion.
(o) It is not clear what Mr Freestone understood by "auto unlocking", even if Mr Blanch understood him to mean integer (vi). The concept "auto unlocking" is at best ambiguous. It could include the outside key releasing the inside lock, but is not necessarily limited to that. In any event, the primary judge did not rely on the Freestone/Blanch conversation, but on the "too hard basket" remark.
(p) The passages in the judgment of Wilcox J in the Full Court that integer (vi) "may fairly be described as a concept", and that of Branson J that it is a mere idea, do not, in the events that happened, afford Doric much assistance. The High Court was critical of the elision or conflation of grounds of invalidity in those judgments. The various grounds are "conceptually distinct". None "is identical with or overlaps with the others". Further, neither Wilcox J nor Branson J decided the obviousness issue. In addition, the concept/idea notion, which Doric did not plead, is referable to the ground of no manner of manufacture, as the High Court made clear.
(q) Obviousness is a question of fact. The advantages enjoyed by the trial judge included seeing and hearing the lay and expert witnesses, and being educated in the factual and technical issues in a comprehensive and orderly fashion, which is difficult to recreate on appeal: SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 467 at 478, 491; Bartlem Pty Ltd v Cox Industries (Aust) Pty Ltd [2002] FCAFC 224; (2002) 55 IPR 449 at [89]- [91]; Biogen Inc v Medeva plc [1997] RPC 1 at 45.
(r) Obviousness is open to legitimate differences of opinion. The nature of the issue is such that there cannot be said to be truly only one correct answer. The availability of a different view, indeed even perhaps the preference of the appeal court for a different view, may not be alone sufficient. Cf Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd [2001] FCA 1833; (2001) 117 FCR 424 at [25] and Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; (2002) 55 IPR 354 at [50]- [54].
(s) Doric’s submissions do not satisfy the appellate test. They merely invite the Court to revisit the evidence and come to a different view to that of the primary judge.
(t) Issues of credit were involved. The primary judge did not accept Mr Alchin’s evidence that the Doric products were independently conceived. On the other hand, he considered Mr Freestone a "careful and reliable witness".
(u) Doric’s assertion that the primary judge confused the CGK claims and the preferred embodiment claims is unfounded. The reasons at [159] show that his Honour was alert to the distinction between them. Doric fastens on [211] of the primary judge’s reasons (quoted at [96]). There the first reference to Mr Freestone is to the locking in problem being put in the "too hard basket". It is evidence directed to the correct comparison between, on the one hand, the common general knowledge which did not include a product which solved the locking in problem, and on the other hand, the situation where that problem is solved by a product which satisfies claims 13-15, 20, 21 and 30.
(v) Doric’s reliance on the fourth sentence in [211] of the primary judge’s reasons does not establish its confusion case. What Doric calls the first of the two conflicting ways in which to understand this sentence assumes that the problem is not that of people being locked in. That assumption is wrong. See (i) to (k) above. The second way of understanding the sentence does not show the relevant confusion. The words "until after the release of the new Lockwood 001 that the problem should be solved in a manner which, in Doric’s submission was obvious", do not show that his Honour was looking at the particular Lockwood solution.
(w) The exchange between Mr Blanch and Mr Freestone recorded at [86] does not advance Doric’s case. The primary judge did not say it was probative of invention; only that it was admissible on the issue of obviousness.
(x) There was no exploration of what was meant by "auto-unlocking" in the exchange in (w). Mr Blanch may have been referring to mechanisms such as that in the Abloy lock or the "kick off" mechanism.
(y) Even if by "auto unlocking" Mr Blanch was referring to the performance by the outside key of the additional function of releasing the inside locking mechanism and that was so understood by Mr Freestone, the latter’s scepticism assists Lockwood. It shows that Mr Freestone did not regard such a solution as workable.
Reasoning
The problem
116 Doric identified the problem the invention was concerned to solve as the fact that, after an occupant had entered premises by unlocking the door from the outside and then closing it, the internal handle or knob remained locked until the key was used to unlock it from the inside. On the other hand Lockwood identified the problem as the fact that after the occupant had secured entry and closed the door, the occupant was locked inside, which arose from a number of factors, not just the fact that the internal handle remained locked after the door had been opened with the outside key.
117 The specification first describes conventional latch assemblies:
"Latch assemblies for doors commonly include a turn knob or handle which is generally located at the inside of the door and which is rotated to withdraw the latch bolt into its casing. In order to improve the security of such assemblies, manufacturers have included a key operated lock which is operative to releasably hold the turn knob or handle against rotation. Such locks are typically arranged so as to be operated from the inside of the door and are not operable from the outside of the door. In particular, key operation of the latch from the outside of the door will not release the lock. That can lead to serious problems in circumstances where the door needs to be opened urgently from the inside, particularly if the lock key has been misplaced or is not conveniently accessible."
118 The first four sentences describe the conventional latch assembly, including, in the fourth, its perceived deficiency. The fifth sentence says the deficiency can give rise to serious problems, including being locked in. However the deficiency the invention was designed to overcome was that inherent in the conventional assembly, namely that the key operation of the latch from the outside of the door did not release the inside lock. It is true that the specification refers to "serious problems" arising from the configuration of the conventional assembly, but that is a mere consequence of a deficiency in the assembly. In the context of construing a patent specification, the invention was not to solve the consequential problem, but to overcome an inadequacy in the existing art by remedying the deficiency in the assembly. Of course, if that deficiency were cured, the consequential problem would evaporate. But it was the initial deficiency to which the invention was directed.
119 The specification goes on to say:
"It is an object of the present invention to provide a key controlled latch which can be released from a locked condition by use of a key at the outside of the door ...."
The cure for the deficiency is thus stated: to provide a latch which can be unlocked by the use of a key at the outside of the door.
120 The specification then describes the components of the typical latch assembly to which the invention is applicable, and continues:
"In normal latch assemblies of the foregoing kind operation of the outer or second actuator does not affect the operation of the locking means. That locking means remains active in spite of the operation of the outer actuator, and can be rendered inactive only by appropriate and deliberate operation of the locking means from the inner side of the latch assembly. It is usually the case in such prior assemblies that the locking means is key operated. That is, the locking means will generally include a key operated tumbler lock and locking mechanism connected to that lock so as to be influenced by operation of the lock. The second or outer actuator may also include a key operated tumbler lock, but in conventional assemblies of the foregoing kind operation of that lock does not influence operation of the first actuator locking means. The two locks are arranged so that one is operated from the inner side of the assembly and the other is operated from the outer side."
There is another statement of the deficiency to be cured: unlocking the outer lock does not unlock the inner lock. There is no reference to the consequential problem caused by the deficiency in the prior art. That is not the occasion for surprise, because the invention claims to add an integer to those comprising the prior art. It is thus directed to that art, and not to consequential, albeit serious, practical consequences of a deficiency in the art.
121 The primary judge correctly identified the deficiency in the conventional latch assemblies and the practical disadvantages that can flow from it. Thus at [198] his Honour said:
"The fact that a person could be locked inside using locks like the old Lockwood 001 deadlatch was common general knowledge at and prior to the priority date. ... The specification discloses that in typical latch assemblies, key operation of the latch from outside the door does not release the lock on the inner handle.... That disclosure is made in the context of a discussion of the practical disadvantages involved in the use of typical latch assemblies so as to suggest that it is a matter well known to skilled workers in the trade. One only has to operate the old Lockwood 001, for example, to observe that the inner handle remains locked notwithstanding key operation of the latch on the outside."
122 And then at [202] his Honour said:
"The specification accepts two matters as generally known as at the priority date:
- key operation of the latch from the outside of the door does not release the inner handle;
- as a result, people may be locked in ...."
123 On appeal, Wilcox J at [71] described the "problem" identified by the specification as:
"it is not possible to release the inside lock from outside the door. As the specification says: ‘In particular, key operation of the latch from the outside of the door will not release the lock.’ The evidence demonstrates that this was widely perceived, in the trade, to be a problem in relation to double-lock latch assemblies. The specification then describes the ‘invention’ in broad terms: ‘a latch assembly of the foregoing kind is characterised in that it includes lock release means which is responsive to operation of the second actuator to render the locking means inactive.’ In other words, the solution to the problem of the inside lock not being responsive to the key, or other outside actuator, is to make it so."
It is only the last sentence’s identification of the problem that is material for present purposes.
124 Wilcox J was alert to a "problem" consequential on that affecting or inherent in conventional locks. This was the "problem" that a person might be locked in. But, as is apparent from the passage quoted above, what the invention was intended to do was to remedy the deficiency in the prior art by enabling the outside key to unlock the inside lock.
125 Branson J’s identification of the problem was to the same effect. Her Honour quoted from the specification’s description of the typical lock, including the sentence, which she emphasised, "In particular, key operation of the latch from the outside of the door will not release the lock", and continued:
"The evidence before the learned primary judge revealed that the problem identified in the specification was well known by locksmiths and lock designers well before the date of the specification. Wilcox J has referred to the evidence of Mr Freestone that, shortly after Mr Blanch commenced working on the new Lockwood 001 lock, Mr Blanch said to him words to the following effect:
What if I could do auto-unlocking on the 001 Project?
These words were plainly intended to convey the meaning of ‘What if I could make the outside key automatically release the lock?’."
The balance of her Honour’s remarks is set out at [112].
126 Merkel J referred to the "problem of the inside lock of the latch assembly not being responsive to the outside actuator", and said it had been solved by "providing a ‘key controlled latch’ which can be released from a locked condition by use of a key at the outside of the door ...".
127 Although the High Court was critical of parts of the reasoning of the members of the Full Court, no criticism was directed at their Honours’ identification of the problem or deficiency in the prior art locks that the invention was designed to remedy or overcome. Indeed the High Court identified the same problem at [8]:
"The problem created by integer (iv). However, a problem arose with latches incorporating integer (iv). The body of the Patent specification described the problem thus:
‘Such locks are typically arranged so as to be operated from the inside of the door and are not operable from the outside of the door. In particular, key operation of the latch from the outside of the door will not release the lock. That can lead to serious problems in circumstances where the door needs to be opened urgently from the inside, particularly if the lock key has been misplaced or is not conveniently accessible.’
The problem was that while it was possible for an occupant of the premises to enter by unlocking the door from the outside and then to close it, the internal handle or knob remained locked until the key was used to unlock it from the inside. If the occupant failed to do this on entry, dangerous circumstances could arise."
Their Honours gave some examples, and went on:
"The solution to the problem created by integer (iv): integer (vi). According to the Patent specification, this problem was overcome by integer (vi). The specification said:
‘It is an object of the present invention to provide a key controlled latch which can be released from a locked condition by use of a key at the outside of the door ....’"
128 It will be observed that the High Court distinguished between the "problem" that although the occupant could enter by unlocking the door from the outside and then close it, the internal handle remained locked until it was unlocked from the inside, and the "dangerous circumstances" to which this could give rise. The Court saw the "problem" not as someone getting locked in, but the fact that the unlocking from the outside did not also unlock the inside lock. Their Honours went on to say that the solution to the "problem" was overcome by integer (vi) – the addition of a lock release mechanism which is responsive to operation of the second actuator to render the locking means inactive. That is what Lockwood says is the inventive step.
129 Accordingly we accept Doric’s submission that the deficiency sought to be remedied, or the problem sought to be cured, by the invention was the fact that operation of the key from the outside of the door did not release the inside lock.
Obviousness – the proper question
130 The importance of thus identifying the problem sought to be solved by the invention, and the inventive step employed to do so, is that it enables the "obviousness" question to be properly propounded: would it be obvious to an ordinary skilled but not inventive worker that the problem created by integer (iv) could be resolved by making the inside handle operable from outside the door? The question is not whether the hypothetical worker would have known how to achieve that result.
Winner
131 Doric relies on Winner to support its submission that it is not an inventive step to say that the solution to the problem of the inside lock not being responsive to an outside actuator is to make it so. In that case the invention the subject of the patent in suit related to a telescopic tubular metal locking device which, when fitted to the steering wheel of a motor vehicle, prevented the wheel from being turned. The alleged infringer claimed that the invention was obvious or was not novel in the light of prior published patent specifications, particularly one relating to a predecessor of the locking device. It was said that the only difference between the inventor’s device and the devices disclosed in the prior patents was that the former featured a well-known ratchet and pawl arrangement to prevent inward, but allow outward, movement of a shaft when the device was in the locked position. This overcame the problem that prior locking devices had to be fitted as well as removed with a key. The inventor contended that the invention involved two steps: the identification of the problem and the provision of the solution. Heerey J held the patent invalid on the ground of obviousness. His Honour said:
"The fact that the Club lock has to be locked with a key is something which would be obvious to the user, as would the corollary that it would be convenient to be able to secure the lock without a key. I think this was sufficiently a ‘recognised problem’ or ‘recognised need’ ....
...
In my opinion, the invention claimed is for a combination patent for an invention to achieve a known result by a combination of known means operating in a known manner. It is a mere collocation, without invention."
132 The decision was upheld on appeal. After setting out the above passage, Davies J, with whom Morling J agreed, said at 217:
"It seems to me, as it must have seemed to his Honour, that the Club was an anti-theft device developed to the point where it was a useful device which still had some unnecessary inconveniences, so that the next step was to make an improvement to the design. The step taken did not involve inventive ingenuity."
Cooper J said at 228:
"I agree ... that the perceived deficiency in the Club lock ... was the inconvenience of having to use a key to adjust the movable shaft upon installation and removal of the lock from the steering wheel of a car. Likewise, I agree that the desirable improvement to overcome the deficiency was to add to the existing product an automatic means of adjustment of the shaft upon installation. The problem and the solution were readily apparent to a person skilled in the patent area."
133 Lockwood submits that obviousness is a question of fact, and that Doric called no obviousness evidence. Winner, it says, depended on expert evidence that the claimed invention was obvious. In that case there was evidence from a locksmith and a Professor of Mechanical Engineering that the improvements claimed were not inventive. However Heerey J did not, in his reasons, refer to that evidence. Rather, his Honour referred to the specification in order to identify the problem with the Club lock that was said to be solved by Super Club, and reached the conclusion that the invention claimed achieved "a known result by a combination of known means operating in a known manner", and was a "mere collocation, without invention".
134 On appeal counsel criticised Heerey J’s reliance on the specification, submitting that the question of obviousness is different from that of novelty, and that the test of what is obvious depends on the common knowledge of persons skilled in the art, and generally not upon what is contained in the specification. Davies J accepted that his Honour did not identify whether the prior art he discussed was the subject of common general knowledge amongst persons skilled in the art. Nevertheless Davies J was satisfied that Heerey J dealt with the matter having regard to the facts proved before him, and that in reaching his ultimate conclusion (see [131]) he had in mind the expert evidence of the locksmith and the Professor.
135 Cooper J said Heerey J was entitled to rely on the expert evidence of obviousness
"irrespective of whether the disclosures in the patent in suit ... of the practical disadvantages of the known device (the Club) constituted admissions of obvious problems as found by his Honour or, whether the disclosures were merely descriptive of the identification of the problem by the patentee which identification, together with the solution, constituted the inventive step as contended by the appellant."
136 Doric accepts that it did not call witnesses to give evidence that in their opinion the alleged invention was obvious, but it disputes that there was no evidence of obviousness. It first relies on admissions in the specification. Admissions in a specification as to matters such as common general knowledge or the state of the prior art are admissible against the patentee on a claim of lack of inventive step. See Winner in the Full Court at 215 and 228 and Bristol-Myers at 535-536.
137 Doric does not claim that the specification expressly admits that claim 1 (and thus claim 13 and the other live claims dependent on that claim) is obvious. Rather it says that the specification admits that it was common general knowledge that, in the typical lock, the outside key did not release the inside lock. Doric goes on to contend that given that admission, there was no inventive step merely to conceive of remedying that defect by any means using an outside actuator. That submission should be accepted. Heerey J’s decision in Winner is in point. The fact that the Club had to be locked with a key was obvious to the user, "as would the corollary that it would be convenient to be able to secure the lock without a key": (1992) 24 IPR at 142.
Dispelling the initial impression
138 The primary judge’s initial impression was that the alleged invention as claimed was obvious. That impression was influenced, so his Honour said, by Winner (at first instance and on appeal), and by Laddie J’s observations in Re Raychem Corp’s Patents at 41 which included these sentences:
"If the patent claim consists of no more than a product or process selected by reference to a set of obviously desirable parameters, then the technical contribution is the selection of those parameters. Since that selection is obvious, so is the claim."
139 After the first sentence set out at [95], his Honour went on to say that obviousness is a question of fact, and that his initial impression was dispelled by the evidence to which he referred at [211], particularly that of Mr Freestone. That paragraph has already been quoted at [96], but it is convenient to repeat part of it here:
"No witness deposes to the fact that it was understood at the priority date that a solution to the problem identified in the specification was to use the outside key to release the inside lock. It was not obvious to Mr Freestone or Mr Wilson. The fact that resolution of the problem was placed in the ‘too hard’ basket by Mr Freestone is inconsistent with obviousness. The evidence of Mr Wilson and Mr Freestone establishes that there was a perceived need to find a solution to the problem, but it had not occurred to Mr Alchin or Mr Garland until after the release of the new Lockwood 001 that the problem should be solved in a manner which, in Doric’s submission, was obvious ...."
140 The problem referred to in the first sentence is that key operation of the latch from outside does not release the inside lock. That sentence, while literally true, ignores the implicit "corollary" admission to which we have referred at [137]. We respectfully differ from the primary judge’s conclusion at [202] that the specification does no more than admit the existence of the problem and its possible consequence. So far as the second sentence relates to Mr Wilson, his Honour had earlier seemed to put aside the relevant part of his affidavit, which was that before the release of the new Lockwood 001 with safety release, it would never have occurred to him "to design such a lock that operated with a safety release mechanism to overcome the problem". His Honour said there was a potential ambiguity in that evidence. It was not clear whether "such a lock" refers to the physical Lockwood product manufactured in accordance with the preferred embodiment, or to a lock containing integer (vi). His Honour then appeared to dismiss the evidence when he noted that in cross-examination Mr Wilson said he had never been asked to design a lock.
141 In the paragraph of Mr Wilson’s affidavit in which he refers to "such a lock", he is responding to a request that he comment on what appears in par 4 of Mr Garland’s affidavit of 19 April 2001. There Mr Garland said that had he been asked to solve what he called the "locked inside problem", he believed that one or more solutions would have been readily apparent to him without the use of any inventive faculty, by the application of then well-known and available locking techniques and locking parts and fittings. One solution would have been, in effect, to produce the Doric DS60 lock. Another quite independent solution would have been "the use of a pre-tensioned or spring loaded cam member held in position, until activation, by a ‘retaining member’ (as is described in the Lockwood Patent)". In his response, Mr Wilson first described the problem with conventional locks, and said that his wife had recently replaced the old Lockwood 001 in their house with a Lockwood 001 with safety release in order to avoid the problem. Then came the "such a lock" sentence:
"Before the release of the new Lockwood 001 with safety release, it would never have occurred to me to design such a lock that operated with a safety release mechanism to overcome the problem addressed by the Patent."
142 Mr Wilson then dealt with Mr Garland’s opinion about the other solution to the problem, namely the DS60. He said he was not aware of the Doric DS60 lock before the priority date. Had he been aware of it:
"I do not think that it would have occurred to me that the internal mechanism of the DS60 provided a solution."
He then described the lock, which he had inspected, partially dismantled and photographed in various stages of dismantling. He went on to say that this lock did not have the problem of the original Lockwood 001. He concluded:
"Further, the solution in the Patent to the problem is a lock release means which responds to the operation of the outside actuator. As noted by Mr Garland, the DS60 lock employs a different locking mechanism. If I were aware of the DS60 lock at 14 February 1996, it certainly would not suggest to me the lock release means which is described in the Patent."
143 Every indicator points towards Mr Wilson’s "such a lock" being the Lockwood preferred embodiment. First, he is responding to Mr Garland’s second solution to the problem. The words "retaining member" in Mr Garland’s phrase "‛retaining member’ (as is described in the Lockwood Patent)" appear only in the preferred embodiment claims. Second, "such a lock" is his shorthand for "the new Lockwood 001 with safety release" appearing earlier in the sentence. Third, the words "design such a lock" suggest more than simply identifying the concept of making the key operation of the latch from outside release the inside lock. Fourth, Mr Wilson’s response to Mr Garland’s other solution to the problem is concerned with the detailed workings of an existing lock, the DS60. It refers to the "internal mechanism" of that lock. The primary judge described the other solution as "in effect, to produce the Doric lock". Fifth, his reference to the lock release means described in the Patent must be to the preferred embodiment, and not to claim 1 or the other CGK claims such as claim 13, because those claims do not describe the lock release means. Sixth, the primary judge himself described the second solution as "in effect, to produce the preferred embodiment in the Lockwood patent".
144 Having regard to the foregoing, we do not discern any ambiguity in Mr Wilson’s evidence. The context makes clear that he was speaking of the preferred embodiment. Accordingly, it is not possible to derive from his evidence that it was not obvious to him that the problem could be solved by using the outside key to release the inside lock. He was not directing his mind to that concept, but to the way in which Lockwood had, by the preferred embodiment, solved the problem.
145 So far as the second sentence in the passage set out at [139] relates to Mr Freestone, his evidence was that the problems described on page 1 of the specification had been known to him since the 1950s when deadlock locks were first used in Australia. On a number of occasions in the 1980s and early 1990s he had discussed with other lock draftsmen and designers at Lockwood the difficulties that arose as a result of people being unable to unlock the door from inside without the key. Newspaper clippings concerning fatalities or other mishaps resulting from this problem were occasionally pinned up on the notice board, and this led to further discussions concerning the problem.
146 In October 1992 Mr Blanch was instructed to improve the 001 deadlatch in various ways, mainly to improve assembly and thereby reduce production costs. Shortly after this a further clipping referring to the problems associated with dead latches was circulated amongst the design group at Lockwood. The exchange between Mr Blanch and Mr Freestone in about May/June 1993, and Mr Freestone’s explanation of his response, are set out at [86]. On 2 June, at a product development meeting for redesign of 001 at which Mr Freestone was present, Mr Blanch proposed that the project be expanded to permit him to research whether or not an automatic unlock function would be feasible. It was agreed that this design concept should be further explored and confirmed. The minutes record that
"It is possible that design could be such that operating exterior cylinder will automatically unlock the interior knob."
147 Mr Freestone, Mr Blanch and others at Lockwood knew that the problem with the 001 lock was that operating the key from outside the door did not unlock the inner lock. When Mr Freestone says the problem was discussed from time to time over the years, especially when some mishap due to the problem had recently become known, it is to be inferred that those involved did more than just moan about the problem. They must have thought about solving it, by making the key used to unlock the door from the outside also unlock the inner lock. That is what Mr Blanch proposed at the product development meeting that he be authorised to do – investigate the feasibility of solving the problem in that way; in other words, how to do it. Similarly, when Mr Blanch said "What if I could do auto-unlocking in the 001 project?", he was not referring to the concept of the outside key unlocking the inside lock, but to how it might be done; the mechanics or, colloquially, the nitty-gritty of effecting the solution. When Mr Freestone said "I don’t think you can do it", he too was directing his mind to the mechanics or nitty-gritty. He was responding to Mr Blanch at the level at which the latter had posed the question. As Mr Freestone said, he responded as he did because he thought the problem would be too difficult to solve. What he and others had put in the "too hard basket" was the way in which the solution to the problem might be brought to fruition; again the mechanics or nitty-gritty which he thought would be so difficult. The observations of Branson J in the Full Court, set out at [125], accord with this view of Mr Freestone’s evidence.
148 This understanding of Mr Freestone’s evidence is supported by his account of the results of Mr Blanch’s design work. In about August 1994 a first prototype of the redesigned 001 deadlatch with safety lock release was produced. Mr Freestone exhibited a drawing showing its main construction features. He noted that
"in the prototype the triggering mechanism included the components shown in [the drawing] and identified as ‘hub’, ‘locking lever’, ‘lever spring’ and ‘lever block’. The component identified as ‘cam return spring’ formed the cam biasing means. The component identified as ‘hub’ was connected to the outside key operated lock so as to rotate in response to operation of that lock."
Mr Freestone said that when he saw the prototype
"I considered that the solution proposed was ingenious. I had certainly never seen such a safety lock release mechanism. That is, I had never seen the application of a bias to the cam so that it could be driven from the detent lock position to the detent release position. The provision of a triggering mechanism that would hold the cam against the influence of the bias until operation of the outside lock, at which time the cam would be released so that it would be driven by the bias to the detent release position, was also not previously known to me."
149 When he saw the prototype, Mr Freestone did not exclaim "Fancy my not thinking about making the key operation of the outside lock release the inner lock; it’s so obvious!". He was interested in its "main construction .... features", which he described. What he regarded as ingenious in the prototype’s solution was the way in which Mr Blanch had made the key operation of the outside lock release the inner lock, not the fact that he had the bright idea of somehow making that operation release the inner lock. He had never seen "such a safety lock release mechanism". The prototype’s triggering mechanism "was also not previously known to me". All these observations are directed to the inner workings of Mr Blanch’s mechanical solution to the problem with conventional locks.
150 Accordingly, we are unable to read Mr Freestone’s evidence as showing that it was not obvious to him that the solution to the problem was to use the outside key to release the inside lock. As with Mr Wilson, he was not directing his mind to that question, but to how to make that happen; what we have described as the mechanics or nitty-gritty of the solution.
151 As to the third sentence of the passage set out at [139], we are unable to agree that the fact that resolution of the problem was put in the "too hard basket" by Mr Freestone is inconsistent with obviousness. What was put aside was how to make the operation of the key in the outside lock release the inside lock.
152 As his Honour said, it was Mr Freestone’s evidence that was crucial to his conclusion. For the reasons we have given, Mr Freestone’s evidence was directed to the mechanics or nitty-gritty of the solution, and not to the concept or idea. It was not relevant to the CGK claims.
153 In the fourth sentence of the passage set out at [139] the primary judge said it had not occurred to Mr Alchin until after the release of the new Lockwood 001 that the problem should be solved "in a manner which, in Doric’s submission is obvious". His Honour is there pointing to an actual product, which Mr Alchin says he took apart and examined. The word "manner" is thus directed to the way in which Lockwood produced its new product. It is not applicable to the CGK claims, but to the preferred embodiment claims. The former do not contain the means by which key operation of the outside lock releases the inside lock. The passage quoted above fails to distinguish between the two classes of claims. While Mr Alchin did not realise until after the release of the new Lockwood that the problem could be solved in the manner shown by the new lock, Doric’s submission has never been that that was obvious. It has always been that the concept reflected in claim 1 was obvious, namely "make the operation of the outside lock release the inside one", by any means.
154 What we have said is the proper understanding of the word "manner" in the passage quoted at [153] is confirmed by an examination of Mr Alchin’s evidence. He said:
"Although I am not aware of precisely when the deadlatch known as the ‘Lockwood 001 Deadlatch with Safety Release’ (which I believe corresponds to certain of the claims of the Lockwood Patent) was first sold in Australia, I believe that such sales did not commence until about late 1998. Certainly I was not aware of either the Lockwood Patent (or the alleged invention the subject of the patent), until about May 1998 ...."
In a later affidavit he corrected that date to about 18 June 1997. In the earlier affidavit Mr Alchin then described in detail the differences between the locking mechanism of the Doric DS 1180 Deadlatch Mechanism and that of the new Lockwood 001. He concluded:
"Put simply, each of the Doric DS 1180 Deadlatch Mechanism and the mechanism used in the ‘Lockwood 001 Deadlatch with Safety Release’ incorporates a safety release unlocking mechanism which was, prior to the lodgement date of the Lockwood Patent (14 February 1996), well known in Australia to have practical advantage. However, the means by which such mechanism is employed in each of the Doric 1180 Deadlatch Mechanism and the locking mechanism of the ‘Lockwood 001 Deadlatch with Safety Release’ (and, by implication, the Lockwood Patent) differs markedly."
155 What we have said about the primary judge’s statement about Mr Alchin is applicable to his Honour’s comparable statement about Mr Garland. It is unnecessary to refer to Mr Garland’s evidence, because his Honour found at [168] that Mr Garland’s two solutions were expounded "only after he had the benefit of inspecting" the Doric and Lockwood products. It is clear therefore that when the primary judge referred to the manner in which the problem should be solved, his Honour was referring to how it should be solved. As we have said in connection with Mr Alchin, Doric did not submit that that solution was obvious.
156 Accordingly, nothing that Mr Alchin or Mr Garland said about "the solution" was to the contrary of the fact that it was understood at the priority date that a solution to the problem was to use the outside key to release the inside lock.
157 Having regard to the prime role his Honour assigned at [212] to Mr Freestone’s evidence, his Honour’s initial impression of obviousness would not have been displaced had he appreciated that his evidence, and that of the other experts, was relevant only to the preferred embodiment claims. However there was other evidence that pointed to obviousness. First, there was the obvious corollary of the problem with the existing 001. That is available to be taken into account without a witness deposing to it. See [136]. Second, Mr Blanch’s proposal that his project be expanded to permit him to research whether an automatic unlock function would be feasible, shows that it was not the concept of having the outside key release the inside lock, but how to achieve it, that was in need of discovery. Third, Mr Blanch’s statement to Mr Freestone - "What if I could do auto-unlocking in the 001 project?" - when properly understood as indicated at [147], supports the view that the corollary of the problem was common general knowledge. We have already expressed our disagreement with his Honour’s view that the claim that the corollary was common general knowledge was inconsistent with Mr Freestone’s "too hard basket" evidence. That evidence was directed to the mechanics or nitty-gritty of design. Mr Blanch’s statement is accompanied by the record in the minutes of the 2 June 1993 meeting that it is "possible that design could be such that operating exterior cylinder will automatically unlock the interior knob". Later minutes record that "design concept for unlocking inside knob from external cylinder completed by 18/8/93" and that "Part drawings are well underway. Checking has commenced. Design check to be finished 30/9/93". Fourth, there was evidence that before the priority date that lock had been sold in Australia. Mr Garland was aware of that lock before the priority date and believed it formed part of the relevant common general knowledge. It was well known to him by that date and had by then become part of his background knowledge.
158 We have recorded at [115(q)-(r)] Lockwood’s submission that the appellate test for interfering with the primary judge’s conclusion on obviousness is not satisfied. We do not accept the submission. Wilcox J’s tentative view in the Full Court that the primary judge did not properly identify the factual issue to be determined is correct. See [107] and [130].
159 Returning to s 7(2) of the Act, we are of the view that the invention as claimed in claim 1 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. The primary judge should have found that Doric’s extant grounds of invalidity on the basis of obviousness were made out. The relevant parts of its notice of contention (par 2(vi)A, so far as it relates to the storeroom locks, the Falcon S371, the Boyd mortice lock and the Lockwood 530), should be upheld.
CGK + 1
160 Under the Patents Act 1952 a prior disclosure, in particular in a specification open for public inspection, did not provide a basis for a conclusion as to obviousness without evidence that the disclosure was part of the common general knowledge at the priority date: Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 292, 295.
161 Section 7(2) and (3) of the current Act, set out at [78], were intended to provide some relaxation of the rule established in Minnesota: Alphapharm at [16]. Those provisions allow the common general knowledge to be combined with (relevantly) information arising from the doing of one act, if a person skilled in the relevant art could, before the priority date, be reasonably expected to have ascertained, understood and regarded the information as relevant to work in the relevant art.
162 In Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21; (2002) 188 ALR 280 at [36] the High Court said:
"In Tidy Tea Ltd v Unilever Australia Ltd, Burchett J considered the provisions respecting inventiveness in the new s 7. His Honour observed that it was one thing to say that there had been a relaxation of the rule forbidding the use of prior disclosures not actually proved to be part of common general knowledge at the relevant time and another to say that, in all circumstances, such a disclosure might be used to some relevant effect. His Honour continued:
‘The new provisions are limited 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’.
That construction of s 7 should be accepted."
163 Their Honours went on at [37]:
"The trial judge correctly construed s 7(2) as looking first to the light shed by the common general knowledge as it existed in the patent area before the priority date, considered separately, and, secondly, to that common general knowledge considered together with either of the kinds of information mentioned in s 7(3); each of those kinds of information is to be considered separately but in either case must be information which a person skilled in the relevant art in the light of the common general knowledge could, before the priority date, reasonably be expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."
164 Before the primary judge the relevant "act" relied on by Doric for the purposes of s 7(3)(a) was the sale, taken individually, of the locks enumerated at [96], each of which was sold before the priority date.
165 The primary judge held that s 7(3) did not assist Doric. His Honour’s reasons in relation to the storeroom locks, the Lockwood 530 and the Boyd mortice lock have been recorded at [99]. His Honour then considered separately the DS60 sliding door lock and the Abloy rim lock. It is not necessary to record what was said about them. On the appeal Doric did not rely on the Abloy, and the DS60 was not at the forefront of its case.
166 As appears from [99], the primary judge gave two reasons for denying Doric resort to s 7(3). The first was the "practical constraints on this approach". The "approach" is looking at other locks to get ideas. The constraints were the need to buy the locks in order to take them apart so as to understand their internal mechanisms. What we have said at [138] to [159] establishes that the primary judge erred in his considerations of common general knowledge by failing to distinguish between the CGK claims and the preferred embodiment claims. That failure appears again in connection with his treatment of s 7(3).
167 In order to determine whether a storeroom lock, a Lockwood 530 or a Boyd mortice lock possesses integer (vi), it is only necessary to operate it or read a brochure describing its attributes. There is no need to take it apart so as to understand its internal mechanisms. For example, the Lockwood brochure for the storeroom locks (510, 5110 and 5210) says "Key outside locks or unlocks both knobs". The primary judge was thus wrongly focusing on the preferred embodiments.
168 The primary judge’s apparent finding, on the basis of Mr Freestone’s opinion, that in comparing lock designs one has regard to other rim mounted locks only, is mistaken. Claim 1, and thus claim 13 and the other dependent claims, is not limited to rim mounted locks or even to locks for doors. Indeed figure 1 of the Patent is a mortice lock. Further, his Honour’s reliance on Mr Freestone’s opinion again reflects the failure to distinguish between the CGK claims and the preferred embodiment claims. Mr Freestone’s evidence was directed to the latter, and is thus inapposite. In the relevant part of his affidavit he first describes the inner workings of the Blanch prototype, see [148]. Then he disputes Mr Garland’s evidence about the prior art base, saying that much of it "does not relate to the design of rim-mounted locks of the type that Mr Blanch was designing". Then he opines that "the internal mechanisms of Mortice locks ... are completely different in design to those of rim-mounted locks". He then concludes that if he were endeavouring to design a new form of rim-mounted lock, he would not have regard to the way in which a Mortice lock operated, but would restrict himself to rim-mounted locks. Mr Freestone’s evidence was thus directed to the internal workings of the various locks, and may well be apposite to the design of a new rim-mounted lock, such as an improvement of the old 001. But that is not the issue here. Rather, it is whether other locks available before the priority date possessed integer (vi).
169 Because of the view he took about the need to take locks apart and the irrelevance of non-rim-mounted locks, the primary judge did not reach the stage of asking whether prior art information consisting of the sale, taken individually, of the storeroom locks, the Boyd mortice lock and the Lockwood 530 was "information that the skilled person ... could, before the priority date ..., be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area".
170 The Lockwood 530 was sold in considerable numbers before the priority date. Mr Garland produced photographs of its locking mechanism. He was of the view that it possessed each integer of claim 1. Mr Wilson said he was familiar with the 530 and had been involved in installing it. It contained all the integers of claim 1. He explained the lock’s features:
"The features of this are that when you are on the inside you can optionally lock and unlock the handles from both sides, from the inside.
...
The inside handle when it’s in the unlocked position can retract the latch and when it’s turned and locked it won’t retract it. From the outside we have a similar operation except for this time it’s using a key. So that you can optionally lock or unlock the lock by turning the key."
The following exchange then took place with Lockwood’s counsel:
"If you leave a room which had that lock on it and you wanted to lock the room, may we take it you turn the inside snib and then pull the door shut behind you? --- Yes
When you return to get in, the outside handle is locked? --- Yes.
So you put the key in and the effect of unlocking with the key on the outside, what does that do to the inside handle? --- It also releases the inside handle.
Then you go in the door and you shut the door behind you, may we take it you don’t have in that circumstance a problem with being locked inside? --- No."
171 In the course of cross-examination Mr Wilson said that with the 530 a person on the outside of the door could use the key to withdraw the latch. He was aware of that lock in February 1996. He was also aware of other types of lock used by builders that performed the same function as the 530. Many builders used such a lock with a push button on the inside rather than a snib.
172 Mr Wilson was also familiar with the Lockwood storeroom locks (510 and 5110). The two locks operated in the same way. They worked similarly to the 530, except that instead of a snib on the inside, they have a key hole. The problem of locking yourself in does not arise with these locks. When the lock is in a deadlocked condition and someone uses the key to open it, that renders the locking means inactive. These locks have a lock release means which is responsive to the operation of the outside actuator so as to render the inside locking means inactive.
173 Mr Wilson said the Boyd mortice lock had all the integers of claim 1. The outside key undoes the inside locking means. Mr Garland said the Boyd mortice lock formed part of the relevant common general knowledge, and was well known to him before 14 February 1996 and had become part of his background knowledge by that date. That lock contained each integer of claims 1 to 5. Each lock forming part of the prior art base (including the Boyd mortice) was sold, installed and used in large quantities in Australia prior to 14 February 1996, and as such was well known to him and to other skilled workers. In a later affidavit he repeated that the Boyd mortice had become part of his background knowledge by 14 February 1996.
174 Mr Alchin said that prior to 14 February 1996 the Boyd mortice lock was manufactured and sold in Australia in large numbers by one or more of the Alchin & Long Group of Companies for domestic and commercial application. He was also aware of significant quantities of Falcon S371 and the storeroom locks having been sold, installed and used throughout Australia prior to 14 February 1996. In his opinion each of the above locks, including parts and locking mechanisms, would have been well known to locksmiths and lock designers in Australia as at and prior to 14 February 1996.
175 Mr Garland gave evidence about the Falcon S371, a storeroom type lock. He said that when the lock is in the unlocked position, each handle may be rotated to cause the retraction of the latch bolt. If the key is inserted in either handle and rotated in a clockwise direction, both handles are locked. If the key is inserted in either handle (when locked in position) and rotated in an anti-clockwise direction, the movement of the key (alone) first unlocks both that handle and the opposite handle and secondly causes the latch bolt to be retracted.
176 In the course of Mr Garland’s cross-examination this exchange occurred:
"And you know that locks such as the Falcon lock don’t give rise to the problem which the patent’s attempting to address, do they? --- No, but they solve the problem.
...
The reason it didn’t was because the locking means of the Falcon lock operated simultaneously on both an inside and outside handle? --- Yes, or individually.
Well, the locking means of the Falcon lock is such that if you turn the key on the outside, it unlocks both the inside and outside handle? --- That’s correct.
Once you do that and go inside the door, the inside handle is free? --- That’s correct.
So there’s no circumstance in which you might be locked in? --- That’s correct.
...
And that’s how the Lockwood 530 worked, as well, correct? --- Yes.
That’s how the Boyd Mortise lock worked, as well, wasn’t it? --- Yes.
All the locks you’ve referred to as containing the features of claims 1 to 5? --- Which they do.
Didn’t present the problem which you understood the patent was trying to address? --- No, but I did say they presented claims 1 to 5.
I understood that but you accepted that they didn’t present the problem which the patent was trying to solve? --- No, ... they didn’t ... because they never had the problem.
...
You didn’t understand the patent was directed to claiming as inventions locks of that type? --- I think a lock of that type overcame the problem that was created prior to the Lockwood lock."
It was common ground that the Falcon S371 lock was publicly offered for sale in Australia before 14 February 1996.
177 Mr Garland also said he was well aware prior to 1996 of certain of the Lockwood storeroom locks (510, 5110 and 5210), though he could not recall precisely with which of them he was familiar. Each of the storeroom locks discloses the integers of claims 1 to 6. Speaking of 510, he said that when the lock
"is in the ‘unlocked’ position, each handle of that lock may be rotated to cause the retraction of the latch bolt. I have also observed that if the key is inserted in either handle and rotated in a clockwise direction, that handle and the opposite handle are locked. I have further observed that if the key is then inserted in either handle (when in ‘locked’ position) and rotated in an anti-clockwise direction, the movement of that key (alone) first unlocks both that handle and the opposite handle and secondly causes the latch bolt to be retracted."
He then said the 5110 operated in the same manner. It was common ground that the Lockwood storeroom locks were publicly offered for sale in Australia before 14 February 1996.
178 Mr Freestone was familiar with the storeroom locks in the 1980s. He was aware that the operation of the outside key retracts the latch bolt: in other words, the inner lock could be unlocked with the outer key. He was also aware of the Falcon range before 1996, including the S371. Lockwood distributed them in the 1980s and 1990s. Key operation of the latch from the outside will release the inside lock, so that the problem to which the Patent was directed did not arise. That was the whole point of the storeroom type locks; to stop people getting locked inside a storeroom.
179 On the basis of the evidence described at [167] to [178], in our view a skilled addressee could reasonably be expected to have ascertained the storeroom locks, and understood and regarded them as relevant. Perusal of the Lockwood brochures would disclose products described as locks where the use of the key on the outside locks or unlocks both knobs. The word "ascertained" simply means discovered or found out. A skilled addressee who did not bother to look at brochures distributed by Lockwood would not be behaving reasonably. In the present context, the word "understood" means that, having discovered the information, the addressee would have comprehended it, or appreciated its meaning or import. There could be no doubt about that. The language is plain; the concepts simple, especially to a skilled addressee. The evidence establishes that a skilled addressee would know of the problem with locks such as the Lockwood 001 and the consequences that could flow from the problem. Such a person who read in the brochures that operation of the key on the outside locks or unlocks both knobs of the storeroom locks could be in no doubt that that information was relevant to the solution of the problem.
180 Section 7(3) speaks of prior art information made publicly available through doing a single act. In view of our conclusion about the storeroom locks, it is not necessary to determine whether sales of the Boyd mortice and Lockwood 530 also satisfy s 7(3).
181 Had the hypothetical skilled worker considered the common general knowledge referred to at [159] together with the kind of information mentioned in the second limb of s 7(3)(a) of the Act, the alleged invention in claim 1 would have been considered obvious. The relevant parts of Doric’s notice of contention (par 2(vi)B, so far as it relates to the storeroom locks, and (vii)) should be upheld.
SUFFICIENCY
182 Section 40(2)(a) provides that a complete specification must:
"describe the invention fully, including the best method known to the applicant of performing the invention."
Non-compliance is
a ground for revocation: s 138(3)(f).
183 In the present case the first limb of s 40(2)(a), description of the invention, is in issue. Doric relies on a particular aspect of sufficiency which comes from the decision of Kitto J in Sami Svendsen. That case concerned a patent for a sausage casing holder. The specification described tabs attached to the holder and (by amendment) the tabs were for gripping the holder on to the stuffing horn which introduced the meat into the sausage casing. On appeal against the Commissioner’s direction for a grant Kitto J, sitting as a single judge of the High Court, held that the amended specification offended the equivalent in the 1952 Act of s 40(2)(a) by not describing the invention since it "d(id) not enable the reader to discern what was the invention in the total thing that it describes".
184 Kitto J said (at 159):
"A reader of the specification who knew nothing of the prior art would gain a clear impression that the quality of invention was being claimed for the whole idea of a holder for casing gut, having an ear or tab and various other features including a stiffening insert. He would not learn that the idea of a holder was old and that the provision of the tab to facilitate drawing the holder on to the stuffing horn was the only advance the inventors had made."
185 His Honour discussed the evidence and found at 161 that the invention asserted consisted solely in the provision of a tab or tabs for pulling a sausage casing of a known kind on to a stuffing horn and that other features formed no part of the invention.
186 His Honour concluded (at 164-165, emphasis added):
"The provision of the tab or ear was at best an improvement on a known device, not making the device a new thing but merely facilitating the use of an old thing in the old way for the old purpose. It seems to me impossible to regard the claims of the specification as being for a new combination of old integers; they are for the known device of a sausage casing holder (or unit) with an improvement in a particular part of it, consisting of an extension of the walls with a cut-out or cut-outs made in it so that what remains of the extension, namely the tab or ear, may be used for gripping to pull the holder (or unit) on to the stuffing horn more easily and therefore more quickly than before. Assuming that there was an inventive step in this improvement, I am of opinion, first, that the specification as a whole offends against s 40(1) by not describing the invention, since it does not enable the reader to discern what was the invention in the total thing that it describes; and, secondly, that the claims themselves offend against s 40(1) by defining as the invention something that was much more extensive than the invention."
187 Doric does not rely on the second of the two reasons stated by Kitto J.
188 In the present case the primary judge at [247] thought that the specification made it clear the integer (vi) was the particular improvement to be found in the combination.
189 In our view this was correct. The High Court noted, in the passage at [10] already quoted, that the inventive step was described in the consistory clause. The specification goes in some detail into the practical problems with the prior art and how the claimed invention solves them: see the High Court’s judgment at [6]-[9].
190 It was put by Doric that the consistory clause "misleads the reader as to the particular improvement". This, it was said, was not the lock release means because the addition of such means were already present in a number of other locks produced in evidence which "possessed all six integers of the consistory clause". But this is to mix up the test for sufficiency with other grounds of invalidity such as want of novelty. The combinations the subjects of attack on this ground have all been found to be novel combinations.
191 Doric also submitted that the patentee has supported broader claims than was otherwise warranted by the disclosure and has thereby failed to describe the invention fully. But this argument is distinct from the s 40(2)(a) Sami Svendsen ground. It is in reality a s 40(3) fair basing point and is foreclosed by the High Court’s decision.
192 More fundamentally however, we think that the element of Sami Svendsen relied on is not good law.
193 The function of s 40(2)(a) is directly related to the notion of bargain which underlies the law of patents. In return for disclosing the invention, the inventor obtains a monopoly for its exploitation for a specified period. Whether what is disclosed is in truth an invention is not a matter dependent on the inventor’s opinion. It is the Commissioner or, in appropriate proceedings, the Court, which must decide whether the alleged invention involves an inventive step when compared with the prior art base as it existed before the priority date; s 18(1)(b)(ii): Microsoft Corporation v Intertrust Technologies Corporation (2003) 59 IPR 260 at [21] per Lindgren J.
194 Likewise, the persons with whom s 40(2)(a) (and (b)) is concerned are the skilled addressees, who need to know just what is the claimed invention and how it might be best worked so that they can either seek a licence from the patentee or work outside the area of monopoly or work the invention at the expiry of the patent. Such persons do not adjudicate on obviousness or other grounds of invalidity.
195 Courts of high authority have consistently held that an applicant for a grant is not, pursuant to the statutory requirements to describe the invention, under an obligation to identify the inventive step involved; see for example Raleigh Cycle Co Ltd v H Miller and Coy Ltd (1948) 65 RPC 141 at 146, 148, 161 (House of Lords), AMP Inc v Utilux Pty Ltd (1971) 45 ALJR 123 at 128 (per McTiernan J), Winner v Ammar Holdings Pty Ltd [1993] FCA 93; (1993) 41 FCR 205 at 217 (per Davies J with whom Morling J at 221 agreed), Grove Hill Pty Ltd v Great Western Corporation Pty Ltd [2002] FCAFC 183; (2002) 55 IPR 257 at [168]- [174] (per Dowsett J with whom French J at [124] agreed). Indeed, courts have declined to order that a patentee give particulars of what is alleged to be the inventive step, on the basis that the patentee could do no more than give its opinion as to this: Microsoft at [22], Arrow Pharmaceuticals Ltd v Merck & Co Inc [2003] FCA 642; (2003) 58 IPR 231 (Conti J).
196 It is clear in the passage from Sami Svendsen at 164-165 quoted above that Kitto J was using "invention" in the sense of inventive step. This is one of the senses in which the term is used both in ordinary parlance and in patents legislation: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Limited [2001] HCA 8; (2001) 207 CLR 1 at [18]- [21] citing British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 651 per Fletcher-Moulton LJ. However, in the present case the High Court, when dealing with the fair basing argument under s 40(3), held at [50]-[54] that "invention" in that provision did not mean "inventive step" (or "merit" or "technical contribution to the art") for the very reason that it bore the same meaning in s 40(3) as in s 40(1) and (2), namely the embodiment which is described, and around which the claims are drawn.
197 We conclude therefore that s 40(2)(a) did not oblige Lockwood to identify in the specification any particular inventive step. If there was in fact no inventive step when compared with the prior art base, then Doric would make out its case on obviousness. In particular, in the case of a combination patent it would not be inventive simply to make an improvement of one previously existing integer: May v Higgins [1916] HCA 8; (1916) 21 CLR 119. However, as the High Court has made clear in the present case, grounds of invalidity must be considered separately; see for example at [43] et seq, [82].
198 Doric submitted that Kitto J’s decision as it relates to the present issue was endorsed, implicitly at least, by the High Court in Kimberly-Clark. This is not so. Sami Svendsen is referred to on two occasions in Kimberly-Clark. At [17] it is mentioned as authority for the proposition that full description must be ascertained by reference both to the body of the specification and the claims. At [22]-[23] their Honours cite it to refute the holding by the majority in the Full Court that s 40(2)(a) requires the Court to read the specification from the standpoint of a person unskilled in the relevant art. In neither instance were their Honours dealing with the point presently at issue.
199 We conclude that Doric fails on this issue.
ORDERS
200 The appeal will be dismissed with costs.
|
I certify that the preceding two hundred (200) numbered paragraphs are a
true copy of the Reasons for Judgment herein of the Honourable
Justices Heerey,
Sundberg and Bennett.
|
Associate:
Dated: 8 December 2005
|
Counsel for the Appellant:
|
AJ Bannon SC with SCG Burley
|
|
|
|
|
Solicitors for the Appellant:
|
Phillips, Ormonde & Fitzpatrick Lawyers
|
|
|
|
|
Counsel for the Respondent:
|
DK Catterns QC with SJ Goddard
|
|
|
|
|
Solicitors for the Respondent:
|
Spruson & Ferguson Lawyers
|
|
|
|
|
Date of Hearing:
|
16 – 18 May 2005
|
|
|
|
|
Date of Judgment:
|
8 December 2005
|
AustLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.austlii.edu.au/au/cases/cth/FCAFC/2005/255.html