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Federal Court of Australia |
Last Updated: 9 May 2000
Stack v Brisbane City Council [1999] FCA 1279
GEORGE STACK AND G S TECHNOLOGY PTY LTD v THE BRISBANE CITY COUNCIL, DAVIES SHEPHARD PTY LTD AND DAVIES SHEPHARD (QUEENSLAND) PTY LIMITED
NO QG 28 OF 1994
G S TECHNOLOGY PTY LTD v DAVIES SHEPHARD PTY LTD AND GSA INDUSTRIES (AUST) PTY LTD
NO QG 29 OF 1996
COOPER J
BRISBANE
15 SEPTEMBER 1999
IN THE FEDERAL COURT OF AUSTRALIA |
|
QUEENSLAND DISTRICT REGISTRY |
QG28 OF 1994 |
BETWEEN: |
GEORGE STACK First Applicant G S TECHNOLOGY PTY LTD Second Applicant |
AND: |
THE BRISBANE CITY COUNCIL First Respondent DAVIES SHEPHARD PTY LTD Second Respondent DAVIES SHEPHARD (QUEENSLAND) PTY LIMITED Third Respondent |
IN THE FEDERAL COURT OF AUSTRALIA |
|
QUEENSLAND DISTRICT REGISTRY |
QG29 OF 1996 |
BETWEEN: |
G S TECHNOLOGY PTY LTD Applicant |
AND: |
DAVIES SHEPHARD PTY LTD First Respondent GSA INDUSTRIES (AUST) PTY LTD Second Respondent |
JUDGE: |
COOPER J |
DATE: |
15 SEPTEMBER 1999 |
PLACE: |
BRISBANE |
In the judgment of Justice Cooper, the following amendments are made :
1. In the heading on the orders page, the "Date of Order" should read 15 September 1999;
2. In the heading on the first page of the judgment, the "Date" should be replaced with 15 September 1999;
3. At paragraph 40, line 2, there should be a full stop after "than that." and the next word should be capitalised to read "The", so that the sentences will read as follows :
"In the instant case, the registration of GST as the assignee of the petty patent in the Register on 23 October 1995 is evidence of nothing more than that. The entry is prima facie ..."
4. At paragraph 56, line 1, the word "second" should be inserted before the words "petty patent", so that the sentence will read as follows :
"The application for the second petty patent was filed on 17 February 1994. ..."
5. At paragraph 58, the word "second" should be inserted before the words "petty patent" in lines 3, 5 and 6, so that those sentences will read as follows :
"... The original application as disclosed in the request for the second petty patent, was number 85236/91 the application for a standard patent. The applicant in 85236/91 was Stack alone. Further, Grieves was not nominated for the grant of the second petty patent in the request filed 17 February 1994. The notice of entitlement for the second petty patent filed 22 June 1995 was incorrect."
6. At paragraph 65, line 5, the date "17 February 1994" should be replaced with "25 August 1993".
7. At paragraph 71, line 1, the date "17 February 1994" should be replaced with "25 August 1993".
At line 3, the date "February 1994" should be replaced with "August 1993".
At lines 4/5, the date "February 1994" should be replaced with "January 1994".
8. At paragraph 72, line 2, the word "also" should be inserted between the words "was the" and the date "28 June 1999" should read "28 June 1995", so that the sentence should now read :
"It was also the basis of entitlement set out in paragraph 2 of the notice of entitlement filed on 28 June 1995. ..."
9. At paragraph 77, line 4, the word "justice" should be replaced with the word "just", so that the sentence now reads :
"It was further submitted that, in the absence of a "just claim" by another, including DS, DSQ or GSA, ... "
10. In the certification, the date "15 September 1990" should be replaced with "15 September 1999".
Associate:
Date: 9 May 2000
Stack v Brisbane City Council [1999] FCA 1279
INTELLECTUAL PROPERTY - patents - petty patent - entitlement - nominated person - consideration of who may be granted a patent - divisional applications - discussion of co-inventors - assignment of patent - consideration of successor in title of patent and original grantee - entitlement of employee to workplace invention.
INTELLECTUAL PROPERTY - patents - invalidity - whether the claims of the petty patent are fairly based on the specifications - whether the claims lack clarity.
INTELLECTUAL PROPERTY - patents - priority date of the petty patent - divisional and associated applications - whether claims are fairly based on provisional specification to obtain earlier priority date.
INTELLECTUAL PROPERTY - patents - manner of manufacture within s 6 Statute of Monopolies - whether the invention claimed is a manner of manufacture - whether the invention was a mere collocation of well-known integers - whether inventive step disclosed in complete specification.
INTELLECTUAL PROPERTY - patents - obviousness - prior art base - whether invention claimed had inventive step when compared to the prior art base.
INTELLECTUAL PROPERTY - patents - novelty - compared with prior art base - discussion and application of the test "reverse infringement" for novelty.
Patents Act 1990 (Cth) ss 5, 7, 15, 18, 28, 29, 38, 40, 43, 138
Patents Regulations Regs 3.1, 3.12, 6.6, 19.1
Stack v The State of Queensland (1996) 68 FCR 247 Cited
Martin and the Miles Martin Pen Coy Ld v Scrib Ld (1950) 67 RPC 127 Appr
Stack v Brisbane City Council (No 2) (1996) 67 FCR 510 Cited
Worthington Pumping Engine Company v Moore (1902) 20 RPC 41 Cited
Fine Industrial Commodities Limited v Powling (1954) 71 RPC 253 Cited
Sterling Engineering Co Ld v Patchet [1955] AC 534 Cited
Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588 Cited
Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1977) 180 CLR 236 Cited
Electric & Musical Industries Ld v Lissen Ld and Boonton Research Corporation Ld (1939) 56 RPC 23 Cited
Henriksen v Tallon Limited [1965] RPC 434 (HL) Appl
No-Fume Ld v Frank Pitchford & Co Ld (1935) 52 RPC 231 (CA) Appl
Valensi v British Radio Corporation [1973] RPC 337 Appl
CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168; (1994) 51 FCR 260 (FC) Foll
Stauffer Chemical Company's Application [1977] RPC 33 Cited
Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 FC Cited
NV Phillips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15; (1995) 183 CLR 655 Cited
National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 Cited
Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171 Cited
British Celanese Ltd v Courtaulds (1935) 52 RPC 171 cited
Palmer v Dunlop Perdriau Rubber Co Ltd [1937] HCA 43; (1937) 59 CLR 30 Cited
British Westinghouse Electric and Manufacturing Company Ltd v Braulik (1910) 27 RPC 209 Cited
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253 Foll
Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 Appr
Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228 Cited
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 (FC) Foll
Winner v Ammar Holdings Pty Ltd [1993] FCA 93; (1993) 41 FCR 205 (FC) Cited
C Van der Lely NV v Bamfords Ltd [1963] RPC 61 Foll
GEORGE STACK AND G S TECHNOLOGY PTY LTD v THE BRISBANE CITY COUNCIL, DAVIES SHEPHARD PTY LTD AND DAVIES SHEPHARD (QUEENSLAND) PTY LIMITED
NO QG 28 OF 1994
G S TECHNOLOGY PTY LTD v DAVIES SHEPHARD PTY LTD AND GSA INDUSTRIES (AUST) PTY LTD
NO QG 29 OF 1996
COOPER J
BRISBANE
15 SEPTEMBER 1999
IN THE FEDERAL COURT OF AUSTRALIA |
|
QUEENSLAND DISTRICT REGISTRY |
BETWEEN: |
GEORGE STACK First Applicant G S TECHNOLOGY PTY LTD Second Applicant |
AND: |
THE BRISBANE CITY COUNCIL First Respondent DAVIES SHEPHARD PTY LTD Second Respondent DAVIES SHEPHARD (QUEENSLAND) PTY LIMITED Third Respondent |
IN THE FEDERAL COURT OF AUSTRALIA |
|
QUEENSLAND DISTRICT REGISTRY |
QG29 OF 1996 |
BETWEEN: |
G S TECHNOLOGY PTY LTD Applicant |
AND: |
DAVIES SHEPHARD PTY LTD First Respondent GSA INDUSTRIES (AUST) PTY LTD Second Respondent |
JUDGE: |
COOPER J |
DATE OF ORDER: |
15 SEPTEMBER 1999 |
WHERE MADE: |
BRISBANE |
1. George Stack is not, and was not at any material time, entitled under s 15 of the Patents Act 1990 (Cth) to the grant to him of a patent in consequence of the filing of the provisional specification PK2036.
2. George Stack is not, and was not at any material time, entitled under s 15 of the Patents Act 1990 (Cth) to a grant to him of a standard patent in consequence of the filing of application 85236/91.
3. George Stack was not entitled under s 15 of the Patents Act 1990 (Cth) to the grant to him of Australian Petty Patent Number 645740.
4. GST Technology Pty Ltd was not entitled under s 15 of the Patents Act 1990 (Cth) to a grant to it of Australian Petty Patent Number 645740.
5. GS Technology Pty Ltd is not entitled to Australian Petty Patent Number 645740 within the meaning of s 138(3)(a) of the Patents Act 1990 (Cth).
6. The invention claimed in each of the claims of Australian Petty Patent Number 645740 is a patentable invention within the meaning of s 18 of the Patents Act 1990 (Cth).
7. The specification of Australian Petty Patent Number 645740 complies with the requirements of s 40(2) and s 40(3) of the Patents Act 1990 (Cth).
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA |
|
QUEENSLAND DISTRICT REGISTRY |
QG28 OF 1994 |
BETWEEN: |
GEORGE STACK First Applicant G S TECHNOLOGY PTY LTD Second Applicant |
AND: |
THE BRISBANE CITY COUNCIL First Respondent DAVIES SHEPHARD PTY LTD Second Respondent DAVIES SHEPHARD (QUEENSLAND) PTY LIMITED Third Respondent |
IN THE FEDERAL COURT OF AUSTRALIA |
|
QUEENSLAND DISTRICT REGISTRY |
QG29 OF 1996 |
BETWEEN: |
G S TECHNOLOGY PTY LTD Applicant |
AND: |
DAVIES SHEPHARD PTY LTD First Respondent GSA INDUSTRIES (AUST) PTY LTD Second Respondent |
JUDGE: |
COOPER J |
DATE: |
15 SEPTEMBER 1999 |
PLACE: |
BRISBANE |
Background
1 On 17 March 1994 George Stack ("Stack") and GS Technology Pty Ltd ("GST") commenced proceedings QG28 of 1994 against the Brisbane City Council ("BCC"), Davies Shephard Pty Ltd ("DS") and Davies Shephard (Queensland) Pty Ltd ("DSQ").
2 The proceedings were brought by Stack as patentee of Australian Petty Patent No 645740 ("the petty patent") and by GST as the registered patentee by assignment of the petty patent as and from 23 October 1995. The applicants claimed against the BCC a declaration that the BCC, as an authority of State, had exploited the petty patent within the meaning of s 163 of the Patents Act 1990 (Cth) ("the Act") and sought orders fixing the terms for such exploitation pursuant to s 165 of the Act. The applicants sought against DS and DSQ, injunctive relief to restrain an alleged infringement by them of the petty patent and damages or an account of profits for such infringement.
3 DS and DSQ, by their defence and cross-claim, inter alia, alleged that each of the claims of the petty patent was invalid and sought revocation. In their particulars of objection filed with the defence and cross-claim, DS and DSQ alleged that Stack was not entitled to be granted the petty patent (paragraph 1), that the claimed invention was not novel (paragraph 2), that the claimed invention was obvious and did not involve an inventive step (paragraph 3), that the complete specification of the petty patent did not comply with s 40(2) or s 40(3) of the Act (paragraph 4), and finally, that the claimed invention was not a "manner of manufacture" within the meaning of s 6 of the Statute of Monopolies (paragraph 5).
4 On 19 December 1994 Stack applied for an extension of the petty patent for a further period of twelve months. The application was made pursuant to s 69 of the Act. On 20 December 1994, DS and GSA Industries (Australia) Pty Ltd ("GSA") each filed a notice pursuant to s 28 of the Act notifying grounds upon which they contended the petty patent was invalid.
5 On 5 January 1996, a Deputy Commissioner of Patents delivered a preliminary decision on the objections taken in the s 28 notices filed by DS and GSA. On the basis of a priority date of 30 August 1990 he held that Claims 1 and 2, and on the basis of a priority date of 30 August 1991 for claim 3, were novel, involved an inventive step and that the invention was a "manner of manufacture" within the meaning of the Statute of Monopolies. Notwithstanding registration on 23 October 1995 of GST as patentee by deed of assignment dated 16 March 1994, the Deputy Commissioner was not satisfied that Stack was originally entitled to the petty patent. Over objection, the Deputy Commissioner allowed Stack three weeks to make an application to adduce further evidence of entitlement.
6 On 25 January 1996, DS filed a notice of appeal pursuant to s 69(7) of the Act from the decision of the Deputy Commissioner. Those proceedings (VG39 of 1996) were filed in the Victorian District Registry of the Court. On 29 January 1996 GSA also filed an appeal (VG40 of 1996) in the Victorian District Registry against the decision of the Deputy Commissioner. Each appeal sought revocation of the petty patent on the grounds contained in the s 28 notices. Those grounds replicated the invalidity grounds pleaded in the defence and cross-claim in QG28 of 1994.
7 On 29 January 1996, Stack also appealed against the decision of the Deputy Commissioner by proceedings QG11 of 1996. The Deputy Commissioner, on 27 February 1996, found that the further evidence tendered by Stack and GST did not establish a prima facie case that Stack was entitled to the grant of the petty patent. On that date the Deputy Commissioner refused to admit the further evidence and concluded that the petty patent was granted to a person who was not entitled to be granted the petty patent. As this circumstance was not capable of rectification by amendment, the Deputy Commissioner refused to extend the term of the petty patent and awarded costs against Stack and GST.
8 On 1 March 1996, GST appealed the decision of the Deputy Commissioner given on 27 February 1996. The appeal proceedings (QG29 of 1996) sought orders that the term of the petty patent be extended and that DS and GSA pay the costs of the appeal.
9 On 24 April 1996, Kiefel J ordered that QG11 of 1996 be heard with QG29 of 1996. In the Victorian District Registry, Heerey J, on 29 April 1996, ordered that VG39 of 1996 and VG40 of 1996 be transferred to the Queensland District Registry and be heard with QG11 of 1996 and QG29 of 1996.
10 Stack and GST commenced proceeding QG21 of 1996 on 14 February 1996 against the State of Queensland ("Queensland") and the Commissioner of Patents in respect of another Australian Petty Patent No 662284 ("the second petty patent"). The second petty patent, like the petty patent, concerned water meter assemblies. The proceedings sought, as against Queensland, the fixing of terms pursuant to s 165 of the Act for exploitation of the second petty patent. The proceedings sought orders against the Commissioner that the assignment of the second petty patent to GST be registered. After a hearing before Kiefel J the assignment was registered and the proceedings against the Commissioner were dismissed by consent.
11 On 6 December 1996, Kiefel J ordered that proceedings QG28 of 1994, QG11 of 1996, QG21 of 1996, QG29 of 1996, VG39 of 1996 and VG40 of 1996 be heard concurrently. Her Honour made other orders to progress the various proceedings, including orders that :
(a) the validity issues be tried and determined before the issue of infringement;
(b) Queensland, the Commissioner of Patents and the BCC be excused from participation in the hearing of the validity issues;
(c) the witness statements, affidavits and other evidence filed and served, or to be filed and served in any one of the concurrent proceedings, be taken as filed and served in any other of the concurrent proceedings;
(d) the evidence filed by DS may be relied upon by DSQ and GSA.
12 The trial of the action, on the issues of entitlement and validity, was set down on 22 August 1997 for a period of fifteen days, commencing 1 December 1997. In the event, it went for thirty-seven days. At the commencement of the trial DS, DSQ and GSA tendered into evidence witness statements of those witnesses they intended to call on the trial of the issues. Stack and GST also tendered into evidence witness statements and documents which they intended to rely upon on the trial of the issues. DS, DSQ and GSA, having the onus of proof on the validity issues, undertook the carriage of the proceedings. The witnesses called by DS, DSQ and GSA were, for the main part, all cross-examined, and many cross-examined by reference to the witness statements tendered by Stack and GST, including statements of expert witnesses, and by reference to documents, including documents obtained upon subpoena.
13 After twenty-eight days of hearing, DS, DSQ and GSA closed their case. Stack and GST sought that the Court entertain a submission that Stack and GST had no case to answer on the issues of entitlement and validity as particularised in the Particulars of Objection. I refused to entertain submissions of no case to answer and gave reasons for my refusal. Subsequent to my ruling, Stack and GST, by their solicitor, advised the Court that they did not intend to call evidence on the entitlement and validity issues and sought to withdraw the witness statements which had been tendered in their case at the commencement of the trial. That course was objected to by DS, DSQ and GSA. In particular, they had relied upon certain evidence contained in the witness statements and they had conducted and closed their case on the basis that this material was in evidence.
14 In the result, I refused leave to withdraw the witness statements, but struck out so much of those statements as was objected to by DS, DSQ and GSA on the basis that the maker of the statement was not produced for cross-examination on the statement. As a result, a number of exhibits were wholly or partly struck out, including exhibits which had been the subject of substantial questioning when put to the witnesses of DS, DSQ and GSA in cross-examination.
15 The failure of Stack and GST to go to evidence leaves much of the evidence led by DS, DSQ and GSA unanswered or unexplained. It also leaves the evidence in a confused and unsatisfactory state, as certain concessions or answers were given upon the assumption that experts' opinions put to the witnesses, or factual assertions put to the witnesses, would be proved up in evidence as part of the case of Stack and GST. The result has been the unnecessarily difficult task of attempting to isolate and evaluate the admissible evidence on each of the myriad issues argued on the trial.
The issues for determination
16 The issues which arise for determination are :
1. Whether Stack or GST were entitled to the grant of the petty patent.
2. Whether the complete specification of the petty patent complied with the requirements of s 40(2) or s 40(3) of the Act.
3. The priority date of the claims of the petty patent.
4. Whether the alleged invention was a "manner of manufacture" within the meaning of s 6 of the Statute of Monopolies.
5. Whether the alleged invention was obvious when compared with the prior art base as it existed at the priority date of the claims.
6. Whether the alleged invention was novel when compared with the prior art base at the priority date of the claims.
Entitlement
17 On 20 January 1994, the petty patent was sealed in the name of Stack as the patentee. The petty patent disclosed the names of the actual inventors as Stack and Alan Joseph Grieves ("Grieves"). DS, DSQ and GSA allege in the Particulars of Objection that Stack was not the inventor of the invention claimed in any of the claims of the petty patent. Nor, it is alleged, was he entitled to have the invention or inventions assigned to him, nor was he a person who derived title to the invention from the inventor, nor was he a person entitled to have the invention assigned to him.
18 DS, DSQ and GSA allege, and I find, that Stack applied in his own name for the petty patent on 25 August 1993. On 10 November 1993 a Notice of Entitlement was filed which recited that Stack and Grieves were the inventors of the invention claimed. It is alleged that until at least after 30 August 1990, when the first provisional specification in respect of the application for a standard patent PK2036 was lodged, Stack and Grieves were employees and officers of Russell Plastics Pty Ltd ("Russell Plastics"). If the provisional specification disclosed the claimed invention, then DS, DSQ and GSA allege that it was invented by Stack and Grieves as officers and employees of Russell Plastics for the purpose of supplying water meter assemblies to the BCC under contract WS34/90/91.
19 In these circumstances it is alleged that entitlement to the patent lay in Russell Plastics and not Stack, and further, that Stack did not satisfy the statutory requirements for the grant of the patent.
20 A person may apply for a patent for an invention by filing, in accordance with the regulations, a patent request and such other documents as are prescribed in s 29(1) of the Act. A body of persons, whether incorporated or not, may apply under s 29(1): s 29(5). Also, two or more persons (within the meaning of s 29 of the Act) may make a joint patent application: s 31. The other documents required are prescribed by Regulation 3.1 of the Patents Regulations 1991 (Cth) which, so far as is presently relevant, provides :
"3.1 (1)For the purposes of subsection 29 (1) of the Act (`application for patent'), an abstract, and a copy of the abstract are required to be filed with a patent request made in relation to a complete application.(2) For the purposes of subsection 29 (1) of the Act, if a complete application is made, the following documents are required to be filed before acceptance:
(a) a notice by the applicant stating the entitlement of the nominated person to the grant of the patent; and
(b) if the applicant claims priority from another application - a notice by the applicant stating the entitlement of the nominated person to claim that priority; and ..."
21 The term "nominated person" is defined in the Dictionary, Schedule 1 to the Act. It means "the person identified in a patent request as the person to whom the patent is to be granted".
22 The entitlement of a person to the grant of a patent is provided for in s 15 of the Act, which states :
"15. Who may be granted a patent?(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
(2) A patent may be granted to a person whether or not he or she is an Australian citizen."
23 A patent may be granted to two or more nominated persons jointly: s 63.
24 Section 39 of the Act allows for divisional applications and provides :
"39. Divisional applications(1) Where a complete patent application is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a standard patent or a petty patent for an invention:
(a) disclosed in the specification filed in respect of the first-mentioned application; and
(b) where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal - falling within the scope of the claims of the accepted specification.
(2) A patentee of a petty patent may, in accordance with the regulations, make a further complete application for a petty patent or a standard patent in respect of an invention disclosed in the complete specification filed in respect of the application on which the first-mentioned petty patent was sealed."
25 On 26 March 1991, Stack filed an application for a standard patent for an invention entitled "Water Meter Assemblies". The application was accompanied by a provisional specification which was given the provisional number PK5286. The invention was described as "an improvement of our co-pending application no PK2036".
26 On 30 August 1991 Stack and Grieves filed an International Application PCT/AU91/00404 for processing according to the Patent Co-Operation Treaty. Stack was identified as the applicant and inventor and was the applicant for all designated countries. Grieves was also identified as an applicant and inventor, but was only an applicant for the United States of America. The application claimed priority dates of 30 August 1990 based on the filing of application PK2036 and 26 March 1991 based on the filing of application PK5286. The International Application designated Australia for a National Patent and was in consequence allocated Australian Application Number 85236/91. The application was accompanied by a complete specification which contained twenty-four claims defining the invention.
27 On 25 August 1993, Stack filed a patent request under s 29 of the Act for a Petty Patent. The application numbered 44897/93 identified in the appropriate place, Stack as the applicant, and as the Nominated Person. The "names of the actual inventor" were given as Stack and Grieves. Under the heading "DIVISIONAL APPLICATION DETAILS", the following appeared :
"Original Application Number: 85236/91Person to whom made: George Stack"
28 The application was accompanied by a complete specification which contained three numbered claims defining the invention.
29 On 10 November 1993 a Notice of Entitlement was filed for the purpose of Regulation 3.1(2)(a) of the Patents Regulations. The notice stated, so far as is relevant :
"* George Stack and Alan Grieves are the actual inventors.* The person nominated is entitled to the grant of the patent."
30 DS, DSQ and GSA allege that the alleged invention was, throughout, the property of Russell Plastics and that it was entitled, if any person was entitled, to the grant of the petty patent. GST, they allege, never became entitled to the petty patent, either in fact or under the Act. Further, they submit that the inventions claimed in the three numbered claims of the petty patent were made by persons other than Grieves and Stack. It is alleged that the invention claimed in claims 1, 2 and 3 were made by one or more employees of Reliance Manufacturing Company ("RMC") which was a trading division of GSA, or at a minimum, co-invented by them.
31 Stack and GST filed a written response to the grounds of objection. In paragraph 2 of that document they allege that Stack was entitled to the grant of the petty patent because :
(a) Stack and Grieves were the inventors;
(b) Stack was a person to whom Grieves had agreed to assign his interest in the invention;
Alternatively :
(c) Stack derived title to the invention from the inventors in that :
(i) Stack applied for the petty patent with the knowledge and consent of Grieves, the other inventor;
(ii) the application was done with the common intention that once the patent was obtained in Stack's name it would be assigned to GST;
(iii) it was at all material times the common intention of Stack and Grieves that the petty patent (and all patent rights obtained by Stack in water assemblies invented by Stack or Grieves or either of them) would be transferred to GST;
(iv) on 30 August 1990, the date of filing PK2036, GST was not available, so the application was made in the name of Stack with the knowledge and consent of Grieves, with the intention that any patents granted in consequence of that application would be assigned to a company to be incorporated;
(v) the divisional application upon which the petty patent was based was number 85236/91 filed 30 August 1991 which in turn was based on PK2036 filed 30 August 1990;
(vi) application 85236/91 was made in the name of Stack because of the terms of s 39(1) of the Act.
32 Further, Stack and GST submit that GST, having been registered as the patentee in the Register of Patents ("the Register") kept in the Patents Office (s 186), is for the purpose of s 138(3)(a) the patentee entitled to the patent. Thus, they submit the petty patent cannot be revoked under s 138 on the ground that the patentee is not entitled to the patent: s 138(3)(a). This follows, they submit, from the definition of "patentee" in the Dictionary: Schedule 1 to the Act. In the Dictionary, "patentee" means "The person for the time being entered in the Register as the grantee or proprietor of a patent". Whether or not Stack was entitled to the original grant of the petty patent they submit becomes irrelevant upon registration of GST as proprietor of the patent by assignment.
33 DS, DSQ and GSA, in response to this latter submission, submit that the entitlement of GST to the patent is no better than the entitlement of its predecessor in title. So that, if Stack was not entitled to the grant of the petty patent because of the operation of s 15 of the Act and that the patent was thereby invalid, GST is at best the holder of an invalid patent which is subject to revocation at the suit of DS, DSQ and GSA.
34 The Act in Chapter 2 deals separately with the rights given by or attaching to a patent (Part 1), ownership of a patent (part 2) and validity of a patent (Part 3). In the present case it is important that the matters be treated separately notwithstanding that at different times in the Act the treatment of ownership and validity may overlap with respect to some proceedings which touch on the enjoyment or exploitation of the patent.
35 Section 15 deals with the entitlement of a person to be granted a patent for an invention (as defined by the Act). It is the entitlement to own the patent for the invention. When a patent is granted by the Commissioner of Patents, particulars of the patent are entered in the Register: s 186. The grantee of the patent, upon being entered in the Register, may deal with the patent as the absolute owner of it: s 189.
36 The original grantee of a patent obtains the exclusive rights given by s 13 of the Act. Those rights are personal property and are capable of assignment and of devolution by law: s 13(2). The transfer of ownership of the patent by the original grantee and thereafter by successive assignees, is dealt with by Regulation 19.1 of the Patent Regulations. Section 187 of the Act as well as requiring particulars of patents in force to be registered in the Register also makes such a requirement in respect of prescribed particulars. Regulation 19.1, so far as presently relevant, provides :
"19.1 (1) For the purposes of section 187 of the Act (`registration ofparticulars of patents etc'), the following particulars are prescribed, that
is, particulars of:
(a) an entitlement as mortgagee, licensee or otherwise to an interest in a patent;
(b) a transfer of an entitlement to a patent or licence, or to a share in a patent or licence; ....
(2) A request for registration of particulars referred to in paragraph (1)(a) or (b) must be in the approved form and have with it proof to the reasonable satisfaction of the Commissioner of the entitlement of the person making the request."
37 The entitlement of the person making the request referred to in Regulation 19.1(2) is the entitlement to be registered in respect of the particular interest specified in Regulation 19.1(1)(a) or (b). Thus, in the case of an assignment of the patent it is registration of a transfer of the proprietorship of the patent the subject of the assignment. The relevant entitlement is as to ownership of the patent: Stack v The State of Queensland (1996) 68 FCR 247 at 251 - 252. Until the particulars of the transfer of ownership are entered in the Register, a document in respect of which particulars have not been entered in the Register is not admissible in any proceedings as proof of the title to a patent, or to an interest in a patent, unless the court or tribunal in which proceedings are brought otherwise directs, or, the proceedings are of the type referred to in s 196(b) of the Act. Further, the rights of a patentee under the Act are those of a patentee as defined. In Schedule 1 to the Act, "patentee" is defined and means "The person for the time being entered in the Register as the grantee or proprietor of a patent."
38 The underlying policy of the Act is to deal with ownership of a patent by registration of the original grant and by registration of any subsequent dealings in or with the patent in the Register. The scheme is to treat the registered proprietor as the owner of the patent subject to any interests in it created by the owner and registered in the Register and thereby to ensure some certainty and finality as regards title to patents: Stack at 251-2 citing with approval Martin and the Miles Martin Pen Coy Ld v Scrib Ld (1950) 67 RPC 127 at 133. Registration in the Register, while prima facie evidence of any particulars registered in it (s 195) and prima facie evidence of entitlement to ownership of the patent says nothing as to the validity of the patent.
39 Disputes as to ownership of patents and interests held in or over them are to be resolved primarily, but not exclusively, in proceedings for rectification of the Register between the rival claimants to the property interests: s 192. Such proceedings assume the continued existence of the patent, with patent rights being held by those properly entered in the Register.
40 In the instant case, the registration of GST as the assignee of the petty patent in the Register on 23 October 1995 is evidence of nothing more than that. The entry is prima facie evidence that GST became the owner of the patent by assignment from the registered grantee, Stack. Neither the registration, nor the subsequent decisions in Stack, and Stack v Brisbane City Council (No 2) (1996) 67 FCR 510, resolve the issues of validity or revocation in favour of GST.
41 The requirements for a valid patent are contained in Part 3 of Chapter 2. The granting of a patent does not guarantee that a patent is valid. Validity issues are concerned with whether the patent could properly have been granted. The Part makes provision for the giving of notice by a person to the Commissioner of matters affecting validity of a proposed standard patent (s 27) or a petty patent (s 28).
42 Section 28 of the Act provides :
"28 Notice of matters affecting validity of petty patents(1) A person may, within the prescribed period after the grant of a petty patent, notify the Commissioner, in accordance with the regulations, that the person asserts, for reasons stated in the notice, that the petty patent is invalid on one or more of the following grounds:
(a) that the patentee was not entitled to be granted the petty patent;
(b) that the invention is not a patentable invention because it does not comply with paragraph 18 (1) (a) or (b);
(c) that the specification does not comply with subsection 40 (2) or (3).
(2) The Commissioner must inform the patentee in writing of any matter of which the Commissioner is notified and send the patentee a copy of any document accompanying the notice.
(3) If the Commissioner becomes aware, otherwise than by a notification under subsection (1), of any matter that may affect the validity of a petty patent on one or more of the grounds mentioned in that subsection, the Commissioner must inform the patentee in writing of the matter.
(4) A notice given to the Commissioner and any document accompanying it are open to public inspection."
43 The prescribed period, for the purposes of s 28(1), is eleven months from the date of which the petty patent was granted: Regulation 2.6.
44 Section 28 is concerned with the grant of the petty patent. In the context of s 28(1), the patentee is the original grantee and the provision is concerned with the eligibility of the original grantee to become the owner of the petty patent. In this context, the definition of "patentee" in the Dictionary in Schedule 1 to the Act is not applicable, as a registered assignee from the grantee after grant would never satisfy s 28(1)(a) because it could not satisfy the description in s 15(1). This follows because s 15(1) is only concerned with the eligibility to receive a grant and to become the owner of the patent upon the granting of it by the Commissioner.
45 In the present case, for the purposes of s 28(1)(a), Stack is the relevant patentee whose entitlement to be granted the petty patent is in issue.
46 The giving of the notice under s 28 entitles the person giving the notice to be heard on any application for extension of the term of the petty patent: s 69(3). Such an application must be made within eleven months of the date of sealing the patent: Regulation 6.5(1)(b). On the hearing of the application for an extension of the term of a petty patent the Commissioner must decide the application in accordance with the Patent Regulations: s 69(2). Regulation 6.6 relevantly provides :
"6.6(1) For the purposes of subsection 69 (2) of the Act (`extension of term of petty patent'), in deciding an application for an extension of the term of a petty patent, the Commissioner must consider:(a) any notice under subsection 28 (1) of the Act (`notice of matters affecting validity of petty patents') in relation to the petty patent; and
(b) any matter of which the Commissioner has informed the patentee under subsection 28 (3) of the Act.
(2) If the Commissioner is satisfied that a ground mentioned in subsection 28 (1) of the Act is made out, the Commissioner may refuse to grant an extension of the term of the petty patent.
(3) If the Commissioner is satisfied that no ground mentioned in subsection 28 (1) of the Act is made out, the Commissioner must grant the extension of the term of the petty patent."
47 The circumstance specified in s 28(1)(a) is a ground of invalidity which, if made out, may lead to the refusal of the application for extension.
48 Therefore in the proceedings before the Deputy Commissioner for an extension of the petty patent, the entitlement of Stack to be granted the petty patent at the time of original grant was a ground of invalidity, and, was in issue.
49 The consequence of invalidity in terms of s 28 is that the extension of the petty patent beyond its original term of twelve months may not be granted.
50 Section 138 of the Act, in the circumstances specified in sub-clauses 3(a) to 3(f) inclusive, provides for revocation of letters patent which have been granted under the Act in respect of the invention claimed in the patent. Revocation involves cancellation of the letters patent (the document conferring the rights given by s 13 of the Act) and to annulment of the rights given by the letters patent: In re Rainsfords Patent; Ex parte Fielding & Co Ltd which is reported as a note in (1936) 57 CLR at 422. Revocation under s 138 involves the annulment of patent rights where those rights ought not to have been granted for one of the reasons contained in subsections 3(a), (b), (d), (e) or (f). The section also provides for annulment where the patent rights were granted subject to a condition contained in the patent and the condition has not been fulfilled or has been subsequently breached: s 138(3)(c).
51 When s 138(3)(a) speaks of the "patentee" it is referring to the then registered patentee. The entitlement of the patentee to the patent depends upon whether or not the patentee is the original grantee or a successor in title from the original grantee. In the case of the original grantee remaining the registered holder at the time of the revocation proceedings, the entitlement of the grantee will depend upon the eligibility of the grantee under s 15 of the Act to receive a grant of letters patent in respect of the claimed invention.
52 The position of a later registered patentee is different, although the question of entitlement to the patent remains to be determined by reference to the eligibility of the original grantee under s 15 of the Act. This is because any subsequent holder of the title to the patent stands in the shoes of the person from whom title was acquired by assignment or by devolution by law. No holder in the chain of title obtains a better entitlement to the patent than the immediate predecessor in the chain and ultimately of the original grantee. An original grantee who was not entitled to a grant under s 15 of the Act cannot make good an improper grant by assigning the patent to another person. Therefore although assignment or devolution by law of the patent prior to revocation carries an entitlement to registration as the proprietor of the patent, registration does not cure a defect in the title which renders it liable to revocation because it should never have been granted originally.
53 In the present case the issue in the revocation proceedings under s 138 is whether GST is entitled to the petty patent. The evidence establishes, and I find, that GST became patentee by registered assignment from Stack. The evidence establishes, and I find, that Stack was the original grantee of the patent. The question then is whether Stack was entitled to the grant of the patent by virtue of being an eligible person under s 15 of the Act?
54 From the above it follows that the question of entitlement for the purpose of the notice under s 28 of the Act, for the extension proceedings under s 69, and the revocation proceedings under s 138 ultimately involves the question of the eligibility of Stack under s 15 to the grant of the petty patent.
55 The evidence tendered on behalf of GST and Stack as to Stack's entitlement to the original grant of the petty patent consists of the statutory documents, paragraphs 1 to 5 inclusive of a witness statement of Stack dated 8 September 1997 (Exhibit 25), paragraphs 5 to 8 and 24 to 30 inclusive of a witness statement of Grieves dated 11 September 1997 (Exhibit 30), documents contained in Exhibit 24 (other than documents 8 and 9), together with documents relating to the dealings between Russell Plastics and RMC to negative the contention that certain employees of RMC were co-inventors of the invention claimed in the petty patent, and finally, drawings of GST passing to RMC to establish that the original invention as contained in the application for standard patent PK2036 was further developed by GST and not RMC.
56 The application for the second petty patent was filed on 17 February 1994. The request was filed by Pizzey & Company, Patent Attorneys on behalf of the applicant Stack. The nominated person was specified as Stack. The actual inventors were stated as Stack and Grieves. The application therefore was for the grant of a petty patent for an invention entitled "WATER METER ASSEMBLIES" the co-inventors of which were Stack and Grieves.
57 The notice of entitlement filed on 9 June 1995 by the patent attorney on behalf of Stack again states that the actual inventors were Stack and Grieves. It states that "[t]he person nominated [Stack] is entitled to the grant of the patent".
58 On 22 June 1995 the patent attorney filed another notice of entitlement. The notice stated that the "persons nominated for the grant of the patent are the applicants of the original application." The original application as disclosed in the request for the second petty patent, was number 85236/91 the application for a standard patent. The applicant in 85236/91 was Stack alone. Further, Grieves was not nominated for the grant of the second petty patent in the request filed 17 February 1994. The notice of entitlement for the second petty patent filed 22 June 1995 was incorrect.
59 On 28 June 1995 the patent attorney, on behalf of Stack, filed a further notice of entitlement. It stated :
"1. George Stack and Alan Grieves are the actual inventors.2. The person nominated for the grant of the patent is the applicant of the original application.
3. The person nominated is entitled to the grant of the patent."
60 The Act does not permit one of two or more co-inventors to obtain a patent to the invention to the exclusion of the other co-inventors. Co-invention gives a right under s 15(1)(a) as co-inventor to the joint grant of letters patent. Disputes as to entitlement and as to rights of co-inventors inter se are dealt with by other sections of the Act eg s 32, and where a patent issues jointly, s 16 and s 17.
61 Although the basis of Stack's entitlement as disclosed in the notice is far from clear, I do not read it as a claim to entitlement as the inventor under s 15(1). Rather, I construe the final notice as claiming an entitlement to the grant which supersedes the rights of the original co-inventors or an entitlement to the rights of Grieves as co-inventor which Stack holds in addition to his own rights as original co-inventor. That is the way that Stack and GST argued the entitlement issue before the Deputy Commissioner on the extension hearing and that is the substance of paragraphs 4 and 5 of Stack's statement.
62 Stack, in his statement, said :
"4. On 30 August 1990 a provisional patent application was filed for an invention entitled `Water Meter Assemblies'. Alan Grieves and I were the inventors of the inventions contained therein.5. It was our common intention that rights in respect of the inventions and other intellectual property rights would be held by a Company in which we would each hold an interest. This was the subject of discussions and agreements between us in August and September 1990. At that time we did not have a suitable company and by agreement, the patent applications were made in my name with the intention that when a Company was established, and a patent issued those patents would be transferred to the Company. The applications for patents were made in my name with the knowledge and consent of Alan Grieves."
63 Stack did not give evidence and was not cross-examined on these statements. The statements were relied upon by DS, DSQ and GSA as admissions that :
(a) Stack was a co-inventor and not the sole inventor of the invention claimed in the provisional patent application PK2036 filed on 30 August 1990;
(b) Grieves did not give up or assign his interest in the invention claimed in PK2036 to Stack or his entitlement to a grant of patent as co-inventor;
(c) the authority of Stack, if any, from Grieves was to make the application filed on 30 August 1990 because Grieves and Stack did not then hold interests in a company which could apply for the grant of the patent the subject of PK2036;
(d) the inventions and other intellectual property contained in the application filed on 30 August 1990 would be held by a company in which Grieves and Stack held interests when such a company was obtained.
64 Grieves in his statement says that he joined the "HM Russell Group" in February 1990 and was a director of Russell Plastics until 16 December 1992. He states that from February 1990 "George Stack and I continued the development of a non return valve and a water meter manifold which was in plastic and contained a ball isolating valve and a single non return valve." Grieves, in paragraphs 24 to 30 of his statement, states his and Stack's involvement in the development work is shown in Figure 1 to the application PK2036 and in the delivery to the BCC on 27 July 1990 of a prototype in gun metal of the water meter assembly shown in Figure 1.
65 Grieves was not called as a witness and was not cross-examined on so much of his statement as remained in evidence. There was, in the result, no evidence that Grieves assigned his interest to the invention in PK2036 to Stack. The only evidence that Grieves knew or consented to any dealings by Stack in respect of the application PK2036 or in respect of the petty patent filed on 25 August 1993 comes from the statement of Stack which is untested by cross-examination.
66 It was common ground on the pleadings that, at all material times up to and including the filing of application PK2036 on 30 August 1990, Stack and Grieves were employees of Russell Plastics. I am satisfied that at the time Grieves and Stack made the invention claimed in PK2036, they were performing their duties as employees of Russell Plastics and the invention made by them was made in their capacity as such employees. The whole of the evidence points to the invention claimed in PK2036 resulting from work done by Stack and Grieves for the purpose of Russell Plastics tendering for the supply of water meter assemblies to the BCC which it did consequent upon the release of tender documents WS34/90/91 by the BCC on 8 August 1990.
67 GST was acquired as a shelf company in September 1990. It was not a tenderer to the BCC for the supply of water meters under BCC contract WS34/90/91. Grieves and Stack were appointed directors on 6 September 1990. Grieves resigned as a director on 16 December 1992. The statutory records tendered by Stack and GST show other persons holding directorships at different times. They also show that the share allocation in September 1990 was 45,000 ordinary shares to a company HM Russell & Co Pty Limited, 36,000 ordinary shares to Stack and 9,000 shares to Grieves. Although Stack and GST admit that Stack and Grieves were employees of GST, there is no evidence as to what duties were performed by them for GST after September 1990 and whether Grieves performed any duties as an employee of GST after his resignation as a director on 16 December 1992.
68 The case of Stack and GST is that Stack and Grieves were the co-inventors of the invention claimed in the petty patent. They are shown in the Register in respect of the petty patent as the actual inventors. Such an entry is prima facie evidence of that fact: s 195(1). They submit that there is no other evidence to displace this evidence.
69 Even if this submission is correct, it does not assist Stack or GST.
70 As the co-inventors, Stack and Grieves were entitled under s 15(1)(a) to the grant of a patent jointly. Stack, as the nominated person, was not entitled to the grant of a patent to the exclusion of Grieves simply on the ground that he was a co-inventor.
71 On 25 August 1993 Stack was not entitled, on the evidence, to apply for the petty patent in his own name to the exclusion of Grieves. There is no evidence as to what the relationship was between Stack and Grieves in August 1993. Nor is there evidence which would enable a finding to be made that GST was, at the time of its acquisition or in January 1994, the corporate vehicle that was to be the assignee of any patent arising from PK2036. If in fact GST was the contemplated company, then such authority, if any, as Stack had, was limited to making an application in his name wherein GST was nominated as the eligible person. The entitlement of GST would in that case have had to be made out under s 15(1)(b) of the Act or s 15(1)(c).
72 There is a further difficulty for Stack and GST. It lies in the fact that Stack applied for the petty patent as a divisional application under s 39 of the Act. It was also the basis of entitlement set out in paragraph 2 of the notice of entitlement filed on 28 June 1995. Section 38 and s 39 contemplate that the entitlement to the petty patent will be the same as the entitlement claimed in respect of the provisional application: s 38(1) and s 39(3). This is subject to any intermediate dealing with the invention or interests in it or in respect of the provisional application as provided for in s 113: see s 38(2) and s 113.
73 The prima facie evidence of entitlement of Stack and Grieves which flows from the entry in the Register will be displaced if the entitlement to the invention claimed in PK2036 is with Russell Plastics, their then employer.
74 So far as the evidence goes, Stack and Grieves were employed by Russell Plastics to develop the invention claimed in PK2036, which they did. The evidence of Grieves is that the prototype water meter assembly delivered to the BCC in July 1990 was the embodiment of Figure 1 to PK2036. The invention claimed in PK2036 was, I find, made by Stack and Grieves in the ordinary course of their duties as employees of Russell Plastics. Both were required to act in the interest of Russell Plastics while so employed and were not to do anything inconsistent with the duty of good faith which they owed as employees of Russell Plastics. The circumstances of their employment with Russell Plastics, and in the case of Stack, his position as a director of that company, were inconsistent with their retaining for their personal benefit the invention claimed in PK2036: Worthington Pumping Engine Company v Moore (1902) 20 RPC 41 at 46; Fine Industrial Commodities Limited v Powling (1954) 71 RPC 253 at 257. Further, the right of Russell Plastics to the invention, in the circumstances of the employment and the making of the invention for the purposes of the employer's business, was an incident of the employment of Stack and Grieves by the company: Sterling Engineering Co Ld v Patchet [1955] AC 534 at 543-4; 547, 548, 549. There is no evidence of any special contract or term of the employment which would have entitled Stack and Grieves to retain the invention to the exclusion of their employer.
75 It follows, in my view, that Stack was not entitled under s 15(1) of the Act to the grant of a patent for the invention claimed in PK2036. The consequence is that he was not entitled, nor were he and Grieves jointly entitled, to make any divisional application and to have granted a patent, including the petty patent, on the basis of an entitlement to Stack or Stack and Grieves under s 15(1) of the Act.
76 As the entitlement of GST to the petty patent is sourced solely in the assignment from Stack which entitled it to registration in the Register of patents, it follows that GST as the patentee is not entitled to the patent within the meaning of s 138(3)(a) of the Act. Nor was Stack, as patentee, entitled to be granted the petty patent within the meaning of s 28(1) of the Act.
77 It was submitted by Stack and GST that it was not open to DS, DSQ and GSA to make out an entitlement in Russell Plastics, when Russell Plastics did not itself challenge the validity of Stack's entitlement to the petty patent, and through him GST's entitlement to it. It was further submitted that, in the absence of a "just claim" by another, including DS, DSQ or GSA, of which it was submitted there was none, it was not open to DS, DSQ or GSA to challenge the entitlement of Stack or GST to the petty patent, or to the original grant of it. In my view the submissions are misconceived.
78 The policy of the Act is to ensure that the monopoly rights given by s 13 are only available to persons who are properly entitled to them. Thus, where the patentee seeks to exclude others from the patent area or take action for infringement of the claims of the patent, the Act allows persons interested in challenging the entitlement of the patentee to the patent to do so by a notice under s 28 or by revocation proceedings under s 138. It is sufficient that, for the purposes of s 28, 69 or 138 the person alleging no entitlement make out such a case on the balance of probabilities. This it may do by proving up to the requisite standard the existence of the entitlement in a person who, for whatever reasons, does not wish to come forward and assert that entitlement in proceedings against the patentee.
79 Finally, I turn to the question of contribution of others to the invention claimed in the petty patent.
80 If the employees of RMC made any inventive contribution to the inventions claimed in the petty patent, the entitlement to claim a patent, whether alone or jointly, was in either Russell Plastics, the employees personally, or RMC. It is unnecessary to decide between these possibilities; it is sufficient to find that the entitlement was not in Stack.
81 In my view the work of the employees of RMC made no inventive contribution to the invention claimed in Claim 1 of the petty patent.
82 Russell Plastics, I find, contracted with RMC to manufacture water meter assemblies to the design submitted by Russell Plastics to the BCC with its successful tender for contract WS34/90/91. Russell Plastics was awarded contract WS34/90/91 and was notified by letter dated 29 November 1990 to that effect. Stack thereafter sought prices from DS and RMC to manufacture and supply the water meter assemblies for the contract. For this purpose Stack, on behalf of Russell Plastics, supplied to DS and to RMC a set of drawings. So far as is presently relevant, the drawings were supplied to RMC on or before 12 December 1990. Stack obtained written undertakings that RMC would not infringe Patent No PK2036. The undertaking and drawings are Exhibit 146 in the proceedings. They disclose the use of a backflow protection assembly being two valves tandemly encased in a single sleeve which slides into the flow path in the manifold to be supported co-axially with the access port through which it has been slid. The tops of the valves are conical in shape. The valves were designed to be used in a water meter assembly which included an Andrae Leonberg water meter. On 13 December 1990 RMC quoted in writing a price for the work of manufacturing and assembling the item shown in the drawings.
83 In the result Russell Plastics could not obtain Andrae Leonberg measuring elements. It sought and obtained from the BCC a variation to the contract to allow for the supply of assemblies with a Zenner meter fitted.
84 On 29 January 1991 Russell Plastics placed a written order with RMC for 60,000 gun metal manifolds to be delivered in accordance with a specified schedule. The price was "as per the RMC quotation of 13.12.90". The work was to include assembly and testing and delivery to the BCC or nominated contractor.
85 The change to a Zenner meter required that an adaptor be used. Russell Plastics supplied to RMC a drawing for an adaptor. It was for a part number ZN2AP and in a revised form (as to the material from which it was to be constructed) it is Exhibit 137 in the proceedings. In order to achieve the test results required by the BCC specification, workshop variations were made to the original adaptor. The results of the workshop variations were carried over into a drawing of RMC WN95 dated 23 May 1991, a copy of which with highlighting of the reworking is Exhibit 122. Similarly, work was performed with respect to the sleeve encasing the non-return valves and the heads of the valves themselves to overcome head loss which was beyond the BCC requirement. The work of RMC was done pursuant to its contract with Russell Plastics to construct a product which complied with the BCC requirements and to do the necessary testing to confirm that it did so. The evidence establishes that there is no scientific method to calculate head loss and the effect of turbulence on it in a particular water meter assembly. Accordingly, it is a matter of trial and error and continual testing to modify the parts that may effect the degree of head loss until the required pressure is achieved. That is what the employees of RMC did and while it went to producing a working water meter assembly which satisfied the requirements of the BCC, it did not touch or contribute to the invention claimed in Claim 1 of the petty patent.
86 Claims 2 and 3 are dependent claims and relate to water meter assemblies with non-return valves having particular defined characteristics. To the extent that the shape of the non-return valve in claim 3 was the result of the work of Mr Cornish, which I find that it was, the flattening of the head was not an inventive step and Mr Cornish did not claim that it was. He described his work as normal trial and error to eliminate the head loss problem.
87 Neither RMC nor its named employees are co-inventors of the invention claimed in the petty patent.
Section 40 Invalidity
88 Section 40 of the Act provides :
"40 Specifications(1) A provisional specification must describe the invention.
(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and
(c) where it relates to an application for a petty patent - end with a single claim, or a single independent claim and not more than 2 dependent claims, defining the invention.
(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
(4) The claim or claims must relate to one invention only."
89 DS, DSQ and GSA submit that the claims of the petty patent are not fairly based on the complete specification contrary to the requirements of s 40(3). They also submit the claims lack clarity, in that the monopoly claimed is uncertain and does not define the invention claimed contrary to the requirement of s 40(3). Finally, they submit that the complete specification does not fully describe the best method known to the applicant for the petty patent for performing the invention contrary to the provision of s 40(2)(a) of the Act.
90 I turn first to the complete specification to determine what exactly is the invention which it describes, and for which a monopoly is claimed: Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588 at 609.
91 The specification begins with a reference to the subject matter to which the invention relates. It says :
"This invention relates to water meter assemblies.This invention is particularly adapted to water meter assemblies for connecting water services to mains supplies, however the present invention is not limited to such application and can be utilized in other applications as required."
92 The specification goes on to describe the disadvantages of "traditional water meter assemblies" as follows :
"Water meter assemblies are traditionally installed below the ground in covered housings in order to record usage of mains water through branch lines supplied by the mains. Because such meter assemblies are often located at or adjacent property boundaries, such meter assemblies must be extremely reliable in use and require only infrequent servicing. Traditionally water meter assemblies include separate components for performing the desired functions required by local authorities for protecting the water mains from contamination due to back flow through branch lines. Typically the separate components include a stop cock at the upstream end of the meter assembly such that the branch line may be isolated from the mains, a non-return valve means downstream from the stop cock and a measuring element for monitoring flow through the branch line.While such assemblies operate efficiently they are often cumbersome, difficult to service and expensive to install. For example it may be necessary to freeze the water in the branch line upstream of the stop cock in order that the separate components of the assembly may be serviced. Of course this is an expensive procedure."
93 The object of the invention is "to alleviate at least one of the abovementioned disadvantages and to provide water meter assemblies which will be reliable and efficient in use."
94 The specification next contains a consistory clause in the following terms :
"With the foregoing in view, this invention in one aspect resides broadly in a water meter assembly of the type including a unitary manifold forming a flow passage having an inlet, an outlet and two upwardly opening access ports intermediate said inlet and outlet and comprising a stop valve access port adjacent said inlet and a threaded meter access port adjacent said outlet, a removable flow-through measuring element assembly threadedly engaged in said meter access port, a manually operable on/off stop valve assembly engaged in said stop valve access port for closing the flow passage upstream of the access port and a removable back-flow prevention assembly whereby water may flow through the water meter assembly only from the inlet through the measuring element assembly and thence through the back-flow prevention assembly to the outlet, characterised in that :-said manually operable on/off valve assembly is a stop valve which co-operates with a valve seat formed in said manifold upstream of said threaded meter access port;
said removable back-flow prevention assembly includes a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein;
said sleeve-like housing is sealably and slidably supported in a cylindrical portion of the flow passage disposed substantially co-axially with said threaded access port and downstream thereof whereby water must flow through said sleeve-like housing to said outlet;
said sleeve-like housing has stop means limiting its movement into said cylindrical portion and an upper end which forms an annular land against which said measuring element assembly sealably engages so as to restrict water flow from said measuring element assembly to flow into said sleeve-like housing, and
said removable back-flow prevention assembly is retained in its operative position in said cylindrical portion of the flow passage only by said removable flow-through measuring element assembly whereby said removable back-flow prevention assembly may be removed from said manifold through said threaded meter access port after unscrewing said removable flow-through measuring element assembly from said threaded meter access port."
95 The specification then goes on to identify the mechanical means, which operating together, produce the result claimed, ie overcoming the perceived disadvantages of traditional water meters, and identifying how they operate to do so.
96 The specification states generally :
"Suitably the upper end of the sleeve-like housing is in the form of a broad annular face whereby the face may engage sealably about measuring element outlets of different sizes. The manifold is a unitary manifold which may be permanently installed in-line in a below ground covered housing requiring only the addition of the stop valve, the back-flow prevention assembly and the measuring element assembly to form the complete water meter assembly. The stop valve, the back-flow prevention assembly and the measuring element assembly can be readily fitted and/or removed for routine maintenance......
The back-flow prevention assembly may be adjustably supported by the support means whereby the position of its upper annular face may engage sealably with the outlet from the measuring element assembly. In this respect measuring element assemblies are generally available or adapted to a common configuration without conforming to any standard relating to position and size of inlet and outlet openings and have a central outlet in the base thereof and a side inlet spaced from the central outlet. To accommodate such variations, the back-flow prevention assembly may be adjustably mounted within the connector body whereby its position relative to the body may be selectively varied. This may be achieved by providing selectively adjustable stop means such as an adjustable nut or spaced circlip grooves for positioning the upper annular face of the back-flow prevention assembly, which is slidably received in the outlet passage, at the desired position relative to the access opening/measuring element.
Alternatively a series of non-return valve assemblies may be provided, each adapted to co-operate with a specific measuring element."
97 The specification then goes on to describe in detail different embodiments of the invention as depicted in Figures 1, 2, 5 and 6. It identifies Figure 5 as a sectional view of a preferred embodiment of the invention.
98 The decisive characteristics of the combination described in the specification as the invention seem to be four in number.
99 The first is the use of a unitary manifold forming a flow passage to be inserted in a water line to provide a platform for a removable stop valve adjacent to the inlet, a removable flow-through measuring element assembly which engages threadedly to the manifold at an access port downstream of the stop valve, and a removable backflow prevention assembly downstream of the removable measuring element assembly.
100 The second is the position of the measuring element assembly and the backflow prevention assembly both co-axially with the threaded access port in the unitary manifold.
101 The third is the use of a backflow prevention assembly which is cylindrical in shape and which slides into the cylindrical section of the flow passage of the unitary manifold until it reaches its operative position in the flow passage as determined by the engagement of the device's stop means.
102 The fourth is the use of the base of the measuring element assembly, when placed in its operative position by being threadedly engaged in the meter access port in the manifold, to engage sealably with the upper end of the backflow prevention assembly. The purpose of the engagement is twofold: to hold the backflow prevention assembly in its operative position as determined by the engagement of the stop means of the device when it is slid into its position in the flow passage, and, to force the water to flow from the measuring element directly, or via an adaptor, into and through the backflow prevention assembly.
103 The components of the combination are the unitary manifold, the removable stop means, the removable measuring element assembly, and the removable backflow prevention assembly. To operate as a water meter assembly water must be able to pass through the inlet, through the measuring element assembly where it is measured, and through the backflow prevention assembly which prevents backflow to the measurement assembly, to and through the outlet.
104 The invention described lies in the relationship between the removable components when placed in the unitary manifold which co-operates with those elements to provide both the flow passage in which the elements will perform a function of the combination, and the support means in which all the removable elements are to be placed, and in the sequence and manner in which the water meter assembly is assembled or disassembled when installed as a working piece of equipment. One advantage sought to be achieved over the traditional water meter was the ease of assembly and maintenance of the water meter assembly in situ. In the specification this has been achieved by providing for a permanent or long term manifold with a backflow prevention assembly which is slid into position in the manifold and held there by a measuring element assembly. The measuring element assembly is screwed into position. The measuring element assembly is easily serviced by reversing the procedure and repairing or replacing the measuring element as required. So far as the backflow prevention assembly is concerned, ease of maintenance is to be achieved by allowing the cylindrical sleeve to be slid into or slid out of its operative position via the threaded access port once the measuring element assembly is removed.
105 Do the claims as expressed travel beyond the matter disclosed in the specification? : Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1977) 180 CLR 236 at 240.
106 Claim 1 of the petty patent states :
"1. A water meter assembly of the type including a unitary manifold forming a flow passage having an inlet, an outlet and two upwardly opening access ports intermediate said inlet and outlet and comprising a stop valve access port adjacent said inlet and a threaded meter access port adjacent said outlet, a removable flow-through measuring element assembly threadedly engaged in said meter access port, a manually operable on/off stop valve assembly engaged in said stop valve access port for closing the flow passage upstream of the access port and a removable back-flow prevention assembly whereby water may flow through the water meter assembly only from the inlet through the measuring element assembly and thence through the back-flow prevention assembly to the outlet, characterised in that :-said manually operable on/off valve assembly is a stop valve which co-operates with a valve seat formed in said manifold upstream of said threaded meter access port;
said removable back-flow prevention assembly includes a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein;
said sleeve-like housing is sealably and slidably supported in a cylindrical portion of the flow passage disposed substantially co-axially with said threaded access port and downstream thereof whereby water must flow through said sleeve-like housing to said outlet;
said sleeve-like housing has stop means limiting its movement into said cylindrical portion and an upper end which forms an annular land against which said measuring element assembly sealably engages so as to restrict water flow from said measuring element assembly to flow into said sleeve-like housing, and
said removable back-flow prevention assembly is retained in its operative position in said cylindrical portion of the flow passage only by said removable flow-through measuring element assembly whereby said removable back-flow prevention assembly may be removed from said manifold through said threaded meter access port after unscrewing said removable flow-through measuring element assembly from said threaded meter access port."
107 Claim 1 repeats the consistory clause of the complete specification.
108 Claim 1 is a claim to an item of equipment, being a water meter assembly of the type described in the claim. It is an item of equipment consisting of a combination of integers assembled or dissembled in a particular sequence, and operating in relation to each other so as to achieve the desired results.
109 The integers of the combination described in Claim 1 are :
(a) a unitary manifold forming a flow passage having an inlet and an outlet and two upwardly opening access ports intermediate the inlet and outlet;
(b) the access port adjacent to the inlet is a stop valve access port;
(c) the access port adjacent to the outlet is a threaded meter access port;
(d) a removable flow through measuring element assembly threadedly engaged in the meter access port;
(e) a manually operable on/off stop valve assembly engaged in the stop valve access port for closing the flow passage upstream of the access port;
(f) a removable backflow prevention assembly.
110 Those integers are assembled in such a way that water may flow through the water meter assembly only from the inlet, through the measuring element, and thence through the backflow prevention assembly to the outlet.
111 The claim then specifies those matters that characterise the particular combination of integers claimed and how each interacts with the other in combination. These are that :
(a) the manually operable on/off valve assembly is a stop valve which co-operates with a valve seat formed in the manifold upstream from the threaded meter access port;
(b) the removable backflow prevention assembly includes a cylindrical sleeve-like housing having tandemly non-return valve assemblies within it;
(c) the sleeve-like housing is sealably and slidably supported in a cylindrical portion of the flow passage substantially co-axially with the threaded access port and downstream of that access port whereby water must flow through the sleeve-like housing to the outlet;
(d) the sleeve-like housing is limited in its movement into the cylindrical portion by a stop means and has an upper end which forms an annular land against which the measuring element assembly sealably engages so as to restrict water flow from the measuring element assembly to flow into the sleeve-like housing;
(e) the removable backflow prevention assembly is retained in its operative position in the cylindrical portion of the flow passage only by the removable flow through measuring element assembly;
(f) the removable backflow prevention assembly may be removed from the manifold through the threaded meter access after unscrewing the removable flow through measuring element assembly from the threaded meter access port.
112 The claim requires that the removable backflow prevention assembly be slid in the cylindrical part of the flow passage substantially co-axial with, and downstream from, the threaded meter access port to a position determined by engagement of the stop means. That is the position where the upper end of the backflow prevention assembly will sealably engage with the measuring element assembly when it is placed in its operative position. The measuring element assembly and the backflow prevention assembly co-operate so as to restrict the flow of water from the measuring element assembly and cause it to flow through the backflow prevention assembly to the outlet. The claim next requires that the removable measuring element assembly be screwed into its operative position in the meter access port so that water may pass from the inlet through the flow passage, through the measuring element assembly, into and through the backflow prevention assembly and out the outlet. When the measuring element assembly is in its operative position, the backflow prevention assembly is retained in its operative position only by the engagement of the measuring element assembly from above preventing movement of the backflow prevention assembly within the cylindrical part of the flow path into which it had been slid. One of the objects sought to be achieved was that when the water meter assembly is removed, it disengages from the upper end of the backflow prevention assembly removing all restraint to the backflow prevention assembly, thereby allowing it to be slid upward and out of the cylindrical section of the flow passage and to be removed from the unitary manifold through the threaded meter access port with which the backflow prevention assembly is co-axially aligned.
113 In my view the invention claimed in Claim 1 does not travel beyond the invention described in the specification. It is therefore fairly based on the matter described in the specification as required by s 40(3) of the Act. Whether or not the claim departs from earlier specifications is irrelevant for the purposes of s 40(3). Whether that is the case will be considered when the priority date of the claim is to be determined.
114 The objections taken by DS, DSQ and GSA to the meaning or lack of meaning of the term "measuring element assembly" do not alter my view as to satisfaction of the requirements of s 40(3). Stack and GST do not claim any invention or monopoly in a measuring element assembly. In the context of the specification and the claims, the measuring element assembly was the component which engaged threadedly with the manifold at the threaded access port, which component itself measured, or in which was the measuring element which measured, the flow of water through the component. How that unit was constructed, and what elements were used to construct it, were not part of the invention described in the specification. Thus, those matters were not required to be disclosed in, or form part of, the invention claimed in Claim 1. What is not claimed is disclaimed: Electric & Musical Industries Ld v Lissen Ld and Boonton Research Corporation Ld (1939) 56 RPC 23 at 39. The essential features of the measuring element assembly, however constructed, are that it screws into its operative position so that the outlet of the measuring element assembly sealably engages with the upper end of the backflow prevention assembly to require the water to pass through the outlet of the measuring element assembly into and through the backflow prevention assembly, and, by such engagement alone to provide the means of retaining the backflow prevention assembly in its operative position. Those features were clearly and succinctly disclosed in both the specification and the claim, and all the witnesses who claimed to be skilled addressees understood that from their reading of the complete specification and the claims in the petty patent. It is irrelevant that some of the witnesses were cross-examined on the basis that the drawings showed an assembly which was calibrated off-site, when calibration off-site was not part of the invention described or claimed. Likewise, their evidence that there was no definition of what constituted a "measuring element assembly" within the specification or claim and that it was not a term of art in the trade, was also irrelevant when there was no separate claim in the petty patent for a measuring element assembly or for a measuring element assembly having characteristics greater than those claimed as part of the claimed combination.
115 I also reject the contention that the claim is ambiguous or fails to disclose how the measuring element assembly and the backflow prevention assembly are removed.
116 In my view the claim and complete specification, as a matter of construction, require that the component, being the measuring element assembly, is engaged and disengaged from its operative position by itself being screwed or unscrewed into or from the threaded meter access port, and thereby engaging or disengaging the end of the backflow prevention assembly. The backflow prevention assembly, once released from its operative position by disengagement of the measuring element assembly, is slid out through the threaded access port when the measuring element assembly is wholly unscrewed and withdrawn from the access port.
117 The complaints of some of the witnesses as to alleged deficiencies in the drawings in Figures 1, 2, 4 and 5 to the complete specification are in my view disingenuous. To the extent that they are complaints as to the contents and operation of the measuring element assembly, they are also irrelevant.
118 The patentee is not required to describe in detail how the invention is performed. He or she is entitled to assume that the addressee is a person normally skilled in the art and possessed of the common general knowledge pertaining to that art. In Henriksen v Tallon Limited [1965] RPC 434 (HL), Lord Reid said (at 441) :
"The patentee is representing to the Crown in seeking the patent and telling the skilled addressee after its publication that if the skilled addressee follows his directions he will produce an instrument that is useful at least in the sense that it will work. He is entitled within fairly wide limits to leave it to the addressee to choose appropriate material from a class which he specifies if he makes it plain that the choice is left to the addressee. ..."
119 Further, errors or omissions will not automatically render a patent void for insufficiency. In No-Fume Ld v Frank Pitchford & Co Ld (1935) 52 RPC 231 (CA), Romer LJ said (at 243) :
"... The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
120 The effect of the authorities was summarised by the English Court of Appeal in Valensi v British Radio Corporation [1973] RPC 337 at 377 in a joint judgment of the Court :
"We think that the effect of these cases as a whole is to show that the hypothetical addressee is not a person of exceptional skill and knowledge, that he is not to be expected to exercise any invention nor any prolonged research, inquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification if a means of correcting them can readily be found."
121 All of the witnesses of DS, DSQ and GSA put forward as skilled addressees under cross-examination expressed an understanding of what was a measuring element assembly as described in the petty patent and how it screwed into the unitary manifold and thereby retained the backflow prevention assembly in place. None of these witnesses gave evidence that they could not construct a water meter assembly by following the specification, the drawings and the claims. Such evidence as there was as to whether a water meter assembly could be constructed by reference to the petty patent was all the other way.
122 Similarly, those put forward as skilled addressees express no lack of understanding as to what constituted a backflow prevention assembly or a non-return valve assembly as those terms are used in the complete specification.
Priority Date of the Petty Patent
123 Section 43 of the Act provides :
"43 Priority dates(1) Each claim of a specification must have a priority date.
(2) The priority date of a claim is :
(a) the date of filing of the specification; or
(b) where the regulations provide for the determination of a different date as the priority date - the date determined under the regulations.
(3) Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.
(4) The priority date of a claim of a specification may be different from the priority date of any other claim of the specification."
124 Regulation 3.12 of the Patents Regulations provides :
"3.12 Priority dates generally(1) Subject to regulations 3.13 (`priority dates: certain persons and applications') and 3.14 (`priority dates: certain amended claims') and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:
(a) the date of filing of the specification;
(b) if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority document in which the matter was first disclosed;
(c) if:
(i) the specification is a complete specification filed in respect of a divisional application; and
(ii) the claim is fairly based on matter disclosed in the specification referred to in paragraph 39(1)(a) or subsection 39(2) of the Act (`divisional applications');
the date that would have been the priority date of the claim if it had been included in the last-mentioned specification.
(2) For the purposes of paragraph (1) (b):
(a) if the application that relates to the specification containing the claim is a complete application - a provisional application that is associated with that complete application in accordance with section 38 of the Act (`time for making complete application') is a priority document; and
(b) if the application that relates to the specification containing the claim is a Convention application, a document of any of the following kinds is a priority document:
(i) a basic application that is related to the Convention application;
(ii) a specification, or another document filed in respect of, and at the same time as, a basic application that is related to that Convention application; or
(iii) a specification in respect of a basic application that is related to that Convention application, being a specification that was filed after the basic application was made;
(c) if:
(i) the application that relates to the specification containing the claim is a PCT application that, under Article 8 of the PCT, claims the priority of an earlier application; and
(ii) that earlier application is:
(A) an application made in Australia not more than 12 months before the international filing date of the PCT application; or
(B) a basic application, made not more than 12 months before the international filing date of the PCT application, that is the first application made in a Convention country in respect of the invention; or
(C) a basic application made after a basic application referred to in sub-subparagraph (B);
that earlier application, and a specification filed in relation to that earlier application after it was made, are priority documents.
(2A) For the purposes of paragraph (1) (b) and subregulation (2), `filed' includes filed with the Patent Office and filed with a corresponding Office of another country.
(2B) A reference in subregulation (2) to a basic application does not include a basic application that has been disregarded by the Commissioner under section 96 of the Act (`withdrawn, abandoned or refused applications').
(3) For the purposes of paragraph (1) (c) (ii), a claim is not fairly based on the specification referred to in paragraph 39 (1) (a) or subsection 39 (2) of the Act if, in order to comply with paragraph 40 (2) (a) of the Act (`specifications'), the deposit requirements must be satisfied and on the date of making the divisional application:
(a) the requirement specified in paragraph 6 (a) of the Act (`deposit requirements') is not satisfied; or
(b) the period prescribed in subregulation 1.5 (1) (`prescribed periods: deposit requirements') has ended and the requirements of paragraph 6 (c) of the Act are not satisfied;
in relation to the specification referred to in paragraph 39 (1) (a) or subsection 39 (2) of the Act.
(4) If a PCT application claims priority from a basic application, a specification or other document filed in respect of, and at the same time as, a basic application, section 96 of the Act (`withdrawn, abandoned or refused applications') is taken to apply to the PCT application as if it were a Convention application."
125 Section 38(1) of the Act provides :
"38 Time for making complete application(1) If an applicant makes a provisional application, the applicant may make one or more complete applications associated with the provisional application at any time within the prescribed period."
126 Section 39 of the Act provides :
"39 Divisional applications(1) Where a complete patent application is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a standard patent or a petty patent for an invention:
(a) disclosed in the specification filed in respect of the first-mentioned application; and
(b) where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal - falling within the scope of the claims of the accepted specification.
(2) A patentee of a petty patent may, in accordance with the regulations, make a further complete application for a petty patent or a standard patent in respect of an invention disclosed in the complete specification filed in respect of the application on which the first-mentioned petty patent was sealed."
127 Section 5 of the Act provides :
"5 Associated applicationsFor the purposes of this Act, a complete application is to be taken to be associated with a provisional application if, and only if, the patent request filed in respect of the complete application identifies the provisional application and contains a statement to the effect that the applications are associated."
128 DS, DSQ and GSA submit that the earliest priority date for the petty patent is 10 November 1993. They submit that Claim 1 of the petty patent is not fairly based on matters disclosed in the earlier specifications. They submit that an essential integer in Claim 1 is a measuring element assembly which is threadedly engaged in the meter access port, which is sealably engaged against the upper end of the backflow prevention assembly housing, and which is the sole means of retaining the backflow prevention assembly in its operative position. The term "measuring element assembly" was first introduced by amendment to the specification on 10 November 1993, and DS, DSQ and GSA submit that no prior specification disclosed an assembly which included as one component a measuring element assembly and which had the features specified in Claim 1 of the petty patent.
129 The question of whether Claim 1 of the petty patent is fairly based on matter disclosed in a prior specification is a narrow one. It involves a question of whether the claim as expressed travels beyond matter disclosed in the prior specification: Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1977) 180 CLR 236 at 240; CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168; (1994) 51 FCR 260 (FC) at 279. The task is not one which involves an overly meticulous verbal analysis of the documents. It is sufficient if a new feature was a development along the same line of thought which constitutes or underlies the invention described in the earlier document, provided the additional feature does not involve a new inventive step or bring something new into the combination which represents a departure from the idea of the invention described in the earlier document: Stauffer Chemical Company's Application [1977] RPC 33 at 52; Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 FC at 385, 389, 401; CCOM Pty Ltd v Jiejing Pty Ltd at 281. A claim may be fairly based on matter in the specification which is not verbal description, but accompanying drawings, and upon matter disclosed in a portion of the specification which does not include the description of the preferred embodiment: CCOM Pty Ltd v Jiejing Pty Ltd at 280, 283.
130 In CCOM Pty Ltd v Jiejing Pty Ltd, the Court (Spender, Gummow and Heerey JJ) concluded, after a review of the history of the relevant statutory provisions and the cases (at 281 - 282) :
"In Rhone-Poulenc (supra) at 11 Fullagar J emphasised that disclosure without claim is enough. Hence, it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the complete specification, or in the provisional specification, `essential integers' or `essential features' of an invention disclosed therein and to ask whether they correspond with the essential integers in the claim in question: cf Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1986) 6 IPR 545 at 560-561, the decision at first instance. Nor would it be applying the statute to ask whether the earlier specifications fairly described the essential features of the invention disclosed in the later specification: cf Yamazaki (supra) at 93, 97. Fullagar J also pointed out that the requirement of `fair basing' on matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification; rather, there must be `a real and reasonably clear disclosure'. This passage was adopted and applied by Gibbs J in Hoffman-La Roche at 537 - 539, ...."
131 DS, DSQ and GSA submit that Claim 1 in respect of a measuring element assembly, as a unit which screws into the water meter assembly in the manner and to the effect claimed, is not fairly based on any prior specification. Further they submit that, properly construed, the claim requires that the only means by which the removable backflow prevention assembly be retained in its operative position in the cylindrical portion of the flow passage, is by the measuring element assembly. This, they submit is not fairly based on matter disclosed in the prior specifications because they disclosed retention by means other than the measuring meter assembly. Specifically, they submit, by means of the measuring element in conjunction with other integers, but not by a measuring element assembly alone.
132 In my view the construction of the claim contended for by DS, DSQ and GSA is in error. It ignores the sequence in which the claim requires that the components be assembled and the part played by the stop means in defining the extent to which the backflow prevention assembly is to be inserted into the cylindrical passage and restrained, so that when the measuring element assembly is screwed into its operative position the upper end will sealably engage with the measuring element assembly to direct the flow of all of the water from the measuring element assembly into and through the backflow prevention assembly. Once the backflow prevention assembly is placed in its operative position, as defined by the engagement of the stop means by being slid into the cylindrical section of the flow passage, it is retained in that position, in contradistinction to sliding out of that position, by the operation of the engagement of the measuring element assembly alone. In this sense, it is only the measuring element assembly which is retaining the removable backflow prevention assembly in its operative position.
133 Is Claim 1, on its proper construction, fairly based on any and which of the earlier specifications?
134 For the purposes of Reg 3.12 of the Patent Regulations, to obtain a date earlier than 10 November 1993 the claims in the petty patent must be fairly based on the specification 85236/91 as filed (Reg 3.12(1)(c)). If fairly based on the specification accompanying the application on which the divisional application was made (s 39(1)(a)), the claims would have the same priority date had they been included in that specification. That specification was 85236/91. To obtain an earlier priority date based on the provisional specification PK2036 (Reg 3.12(1)(b) and Reg 3.2), it is necessary that the claims are fairly based on matters first disclosed in PK2036.
135 In my opinion, Claim 1 is fairly based on matters disclosed in the specification filed on 30 August 1991, which became Australian Patent Application No 85236/91. The specification stated :
"With the foregoing and other objects in view, this invention in one aspect resides broadly in a connector assembly including:- a connector body having an inlet, an outlet and a flow passage extending between the inlet and the outlet; an access opening to said flow passage and remote from said inlet and outlet; support means for supporting a selected non-return valve assembly in the flow passage whereby the selected non-return valve assembly may isolate opposite end portions of the flow passage, and the access opening being so arranged that the non-return valve assembly may be inserted for support in the support means or removed from said support means through said access opening.The access opening may be closed by standard closure means but preferably the closure means is adapted to operatively retain the non-return valve assembly in the support means. The closure means may direct the flow through the flow passage through a flow measuring element and if desired a selectively operable valve assembly may be arranged in the flow passage upstream of the access opening. The closure means may be adapted to support the flow measuring element. Suitably the selectively operable valve assembly is arranged to be operable adjacent the access opening, preferably on the same side of the connector assembly.
In one form of the invention the closure means supports a measuring element whereby a outlet from the measuring element communicates sealably with the inlet of the non-return valve and the inlet to the measuring element communicates with the flow passage upstream of the access opening. In a preferred form the support means for supporting the non-return valve assembly is an annular shoulder disposed co-axially with the access opening. Of course if desired the measuring element could be arranged downstream of the non-return valve and adapted to communicate with the outlet of the non-return valve. The non-return valve assembly may be retained by being mechanically interlocked with the support means such as by screwed into the support means or it may be retained by the measuring element or the closure means for the access opening such that the non-return valve assembly may be removed for servicing upon removal of the measuring element or the closure means.
The closure means may include adaptor means whereby the inflow to the measuring element is directed to a central base opening of the measuring element and flow from side outlets in the measuring element is directed towards the central inlet to the non-return valve assembly. The adaptor may include a baffle assembly in the inlet thereto to provide a suitable flow regime for the fluid entering the measuring element, and may also include by-pass means for selective by-pass of the measuring element. Preferably, the adaptor is so formed as to minimise head loss in the flow therethrough.
The non-return valve assembly may be adjustably supported by said support means whereby the position of its upstream face may engage sealably with the outlet from the measuring element or an adaptor therefore. In this respect measuring elements are generally available in a common configuration without conforming to any standard relating to position and size of inlet and outlet openings and have a central outlet in the base thereof and a side inlet spaced from said central outlet. To accommodate such variations, the non-return valve assembly may be adjustably mounted within the connector body whereby its position relative to the body may be selectively varied. This may be achieved by mounting the non-return valve assembly reciprocally within a suitable guide within the body and providing selectively adjustable stop means such as an adjustable nut or spaced circlip grooves for positioning the upstream end face of the non-return valve assembly at the desired position relative to the access opening. Furthermore it is preferred that the upstream end of the insert is in the form of a broad annular face whereby the face may engage sealably with measuring element outlets of different sizes. Alternatively a series of non-return valve assemblies may be provided, each adapted to co-operate with a specific measuring element. ..."
(Emphasis added)
136 The use of a single unit described as a "measuring element assembly" which contains the measuring element, which screws into the threaded access port described in Claim 1, and which engages with the upper surface of a backflow prevention assembly in the manner described in Claim 1, is fairly based on the matters disclosed in the above extract from the specification, as appears from the highlighted portions of it. Additionally, in respect of Figure 1, the specification states :
"The arrangement is such that water supplied from a mains distribution line may flow through a branch line to the inlet 13 through the ball valve in the flow passage 30 to the annular inlet extending around the base of the measuring element 17 as indicated by the arrows 29. Water returns from the measuring element 17 through a central outlet 20 through the non-return valve assembly 27 for discharge through the outlet 28 to a supply line. The flow metering assembly 10 has the advantage that the non-return valve assembly 27 is retained sealably in position by the outlet 20 of the measuring element 17 such that when the latter is removed subsequent to withdrawing the collar 19, the non-return valve may be lifted from its operative position and replaced or serviced as desired.As such flow metering assemblies are normally located below ground this facility enables quick and simply servicing of the metering element and non-return valve. Of course for this purpose the ball valve assembly 12 is turned to the off position prior to release of the collar 19."
(Emphasis added)
137 In respect of figure 5, the specification states :
"Fig 5 illustrates an embodiment in which the body portion is in the form of a brass connector assembly 45 adapted for forming an sub-surface branch connection to a water mains whereby the branch flow may be metered, shut off if desired and whereby the mains may be protected from backflow. For this purpose the connector assembly 45 supports a metering part 24 through an adaptor 26, a non-return valve assembly 46 downstream of the metering part 24 and a diaphragm valve 38 upstream of the metering part 24. The connector assembly 45 has a complementary threaded inlet and outlet connections for fitting in conventional manner.The adaptor 26 is adapted for receiving annular flow from the annular chamber 18 in the direction of arrows 29 and delivering liquid with substantially axial flow to the measuring element 17. The inlet port 34 to the adaptor 26 has a baffle assembly 31 inserted therein to minimize turbulence in liquid flowing into the measuring element 17. The adaptor 26 is provided with a by-pass aperture 32 which is plugged with a by-pass plug 33. For security, the by-pass plug 33 is covered by a security plug 35. Flow from the adaptor 26 is through the outlet port 36 in the direction of arrows 37."
138 The written material and the drawings disclose a combination wherein the backflow prevention assembly is placed in its operative position by sliding it into the flow passage downstream of an access port adjacent to the outlet of the flow passage through a manifold, and which is then retained in that position by a single unit which contains a measuring element and through which water flows when it is threadedly engaged in the access port. The backflow prevention assembly is only retained in its operative position by the base of the unit engaging with the upper surface of the backflow prevention assembly.
139 Are the contentions of DS, DSQ and GSA of no fair basing in respect of Claim 1 made good in respect of the provisional specification PK2036? In my view they are not. The matter disclosed in specification 85236/91 is substantially the same as that disclosed in PK2036.
140 The idea of the measuring element and the backflow prevention assembly being removable through a common access port in a manifold was disclosed. As was the idea that the outlet of the measuring element engaged with the upper end of the backflow prevention assembly to direct the outflow from the measuring element through the backflow prevention assembly and out the outlet of the manifold. The difference between the two specifications is that in PK2036, the idea was that the outlet of the measuring element and the element itself would be held in their operative position by a separate collar which threadedly engaged to the access port. However, I am satisfied on the evidence that to combine the collar and the measuring element into one unit merely simplified the arrangement and involved no new inventive step. It merely provided for one unit to do the work provisionally undertaken by two. The outlet of the measuring element continued to engage the upper surface of the backflow prevention assembly. The other change is the inclusion of an adaptor in certain cases to allow different types of measuring elements to be used in the combination and to support the measuring element as adapted in the one unit. Again I am satisfied that the use of an adaptor in itself involved no inventive step and that the one consequence of the use of an adaptor would be that if the adaptor was downstream of the measuring element, the outlet of the measuring element as adapted would engage with the upper end of the backflow prevention assembly if the underlying idea was continued to be applied.
141 It follows that I am of the view that Claim 1 was fairly based on material disclosed in PK2036, and I so find. The consequence is that the petty patent Claim 1 has a priority date of 30 August 1990.
142 Claims 2 and 3 are dependent claims. It was not contended by DS, DSQ and GSA that if Claim 1 was fairly based on the earlier specifications, Claim 2 was not in respect of the additional element also fairly based. Claim 3 involves a qualification to the shape of the top of the valve in the backflow prevention assembly. It was first made in the specification 85236/91. It is not fairly disclosed in PK2036. Claim 3 therefore has a priority date of 30 August 1991.
Manner of Manufacture: s 18(1)(a) of the Act
143 DS, DSQ and GSA submit that the invention claimed in Claim 1 and the dependent claims is not a manner of manufacture within s 18(1)(a) of the Act. They submit that having regard to what was commonly known and what was published prior to the priority date, the alleged invention involved no new combination but was a mere collocation of well-known integers and was therefore not a "manner of manufacture within the meaning of s 6 of the Statute of Monopolies". It was in consequence not a patentable invention as defined and on this basis revocation under s 138(3)(b) was established.
144 The question posed by s 18(1)(a) of the Act is, "Is this a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies?": NV Phillips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15; (1995) 183 CLR 655 at 667.
145 The formulation of the question comes from National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 at 269. The provisions in s 18(1)(a) continue in force the notion of manner of new manufacture present in s 100(1)(d) of the Patents Act 1952 (Cth): Phillips at 668. Further, the effect of the opening words of s 18(1) is to incorporate a primary or threshold requirement that a patentable invention, for the purposes of the section, is one which is an alleged manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies, and that should appear on the face of the specification: Phillips at 663 - 664; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171 at 192 - 193.
146 In the present case DS, DSQ and GSA must demonstrate that the specification fails to disclose such an invention or that the specification contains an admission of the lack of an inventive step. For the purposes of this exercise it is not permissible to look beyond the terms of the specification, as there is, in my view, no difference in approach to be taken whether revocation is sought under s 138(3)(b) of the Act or was sought under s 100(1)(d) of the Patents Act 1952 (Cth). That one is so confined for the purposes of an inquiry into the issues arising under s 100(1)(d) of the Patents Act 1952 (Cth) follows from the decision of the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd at paragraphs 22 and 35.
147 DS, DSQ and GSA submit the subject matter of the petty patent is a water meter assembly which is a mere collocation of three well-known integers. Those integers, they submit, are a measuring device, a backflow prevention assembly, and an isolating valve. The combination, they submit, is not new and each integer works independently of the other integers performing a separate function. As the subject matter of the petty patent is the placing side by side of old integers functioning independently, DS, DSQ and GSA submit it is not a patentable invention: British Celanese Ltd v Courtaulds (1935) 52 RPC 171 at 193; Palmer v Dunlop Perdriau Rubber Co Ltd [1937] HCA 43; (1937) 59 CLR 30 at 62, 64, 73 - 75.
148 In my view the specification and claims do not relate to three known integers placed side by side and functioning independently. The approach taken by DS, DSQ and GSA to the construction of the specification and claims is to engage in an ex post facto analysis of the petty patent by taking the patent to pieces and then ascribing to each piece a function which is known and separate from the other pieces, and to attempt thereby to characterise the combination as a mere collocation. Such an approach is not a satisfactory method of determining whether the combination involves an inventive step so as to make the subject matter patentable: Palmer at 60 - 62; British Westinghouse Electric and Manufacturing Company Ltd v Braulik (1910) 27 RPC 209 at 230.
149 The specification of the petty patent recognised that traditionally water meter assemblies include separate components for performing desired functions for local authorities. It recorded that "typically the separate components include a stop cock at the upstream end of the meter assembly such that the branch line may be isolated from the mains, a non-return valve downstream from the stop cock and a measuring element for monitoring flow through". The problem with such an arrangement was not the operating efficiency of each of the components, but the fact that such assemblies "are often cumbersome, difficult to service and expensive to install." The subject matter of the petty patent is for an item of equipment which aims to alleviate at least one of the identified disadvantages of the traditional water meter assembly and at the same time to provide water meter assemblies which will be reliable and efficient in use.
150 The petty patent is for a combination, the inventive merit of which can lie only in the exact association of features which lead to the achievement of its purpose as identified in the specification of the petty patent. The utility of the water meter assembly requires that it is capable of performing each of the functions performed by each of the components in a traditional water meter. However, as I stated in paragraphs 98 - 104 inclusive of these reasons, when construing the specification the decisive characteristics of the combination are the four listed, and the invention lies in the relationship between the removable components when placed in the unitary manifold and the sequence and manner in which the water meter assembly is assembled or disassembled when installed as a working piece of equipment.
151 In Kauzal v Lee [1936] HCA 39; (1936) 58 CLR 670, Dixon and McTiernan JJ said of the combination of the patent in suit (at 687) :
"... Although the principles relied upon are old and simple and the features, separately considered, are used in daily practice for all sorts of purposes, the production of a new implement by their judicious use may involve an inventive step or display inventive ingenuity, if the integers are so combined and related that they work in co-operation to effect a purpose or provide an appliance which is new".
152 The same may be said of the water meter assembly the subject of the petty patent.
153 The specification of the petty patent discloses a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies. The challenge of DS, DSQ and GSA to the validity of the petty patent under this head fails.
Obviousness
154 DS, DSQ and GSA submit that the invention claimed in the petty patent is not a patentable invention because it does not involve an inventive step when compared with the prior art base as it existed before the priority date of the claims as required by s 18(1)(b)(ii) of the Act.
155 The term "prior art base" is a defined term in Schedule 1 to the Act. It means :
"(a) in relation to deciding whether an invention does or does not involve an inventive step:(i) information in a document, being a document publicly available anywhere in the patent area; and
(ii) information made publicly available through doing an act anywhere in the patent area; and
(iii) where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area;"
156 Section 7(2) of the Act provides :
"7(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately."
157 Section 7(3) of the Act provides :
"7(3) For the purposes of subsection (2), the kinds of information are:(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."
158 The decision in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253 was in respect of obviousness under s 100(1)(e) of the Patents Act 1952 (Cth). Subject to a qualification I will refer to shortly, the statement of Aickin J, agreed in by the other members of the court as to the approach to be taken in determining obviousness, remains valid. His Honour said (at 293 - 295) :
"In the case of alleged lack of an inventive step the question of making a mosaic must operate (if at all) in a very different matter. An allegation of want of inventive step is not made out by saying you may take one or two, or twenty-one or twenty-two, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so, there could never be a valid patent for a new combination of old integers. The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious.It is in relation to this process that the misuse of hindsight is most common. When once an idea or an object or a process or a combination, admittedly novel, has been published, it is very easy to say after perhaps months of search and study in the Patent Office and the public libraries that the integers into which the patent might be dissected could be found scattered amongst the prior documents by a person who already knew the solution to the problem and therefore knew what to look for and what to discard. But that process does not demonstrate lack of an inventive step. The opening of a safe is easy when the combination has been already provided.
.....
It may be observed that in the cases where obviousness is in issue very often the larger the number of prior publications which are relied upon as together establishing absence of an inventive step, the more likely it is that the alleged invention was not obvious for the wider one has to look to find all the integers the less likely it is that it would have been obvious to put them together in the particular manner in which the inventor did.
It may be noted that even in England where the process of making a mosaic out of prior publications is regarded as permissible under the Patents Act 1949 it is still necessary that the mosaic must be one which `can be put together by an unimaginative man with no inventive capacity' - see per Lord Reid in Technograph Printed Circuits Ltd v Mills and Rockley (Electronics) Ltd [1972] RPC 346, at p 355.
There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd (1912) 29 RPC 245, at pp 279-280 and British Celanese Ltd v Courtaulds Ltd (1933) 50 RPC 259, at p 280. Indeed in the present case it appears that the first appellant in its establishment in the United States at one time had employees who did just this in the field of adhesives. But this is not so in all fields or in all countries. There was no evidence in the present case that those working in Australia in the field of adhesives or of surgical tapes followed such a practice or that any of the specifications relied upon was part of the common general knowledge of those working in these fields in Australia.
The respondent relied upon a number of prior specifications which had been available in Australia for public inspection before the priority date as providing a basis for the argument that the invention claimed was obvious. For the reasons which I have set out above I do not regard such specifications as capable of sustaining that argument without evidence that they were part of common general knowledge at that time . ..."
159 When Aickin J speaks of the selection of integers in a combination patent, he is not speaking merely of the individual items or components which together constitute the combination. It is the choice of those integers having the particular characteristics claimed which interact with one another in the manner and sequence claimed to produce the final desired product or result.
160 The observations of Aickin J must now be read subject to the statutory provisions in s 7(2) and s 7(3) of the Act. As to this, Burchett J said in Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 414 :
"These provisions in s 7 seem to be designed to overcome the rejection in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 295; [1980] HCA 9; 29 ALR 29 of the availability, when obviousness is being considered, of specifications of prior patents not actually proved to be part of common general knowledge at the relevant time. But it is one thing to say that the rule forbidding the use of such a specification is relaxed; it would be another to say that in all circumstances such a specification may be used to some relevant effect. 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 specification passes those tests, it must still be able to be said that, if that specification had been considered by the hypothetical skilled person together with the common general knowledge at the relevant time, `the invention would have been obvious'. In Minnesota Mining & Manufacturing Co at CLR 294; ALR 59 Aickin J said :`It may be noted that even in England where the process of making a mosaic out of prior publications is regarded as permissible under the Patents Act 1949 it is still necessary that the mosaic must be one which `can be put together by an unimaginative man with no inventive capacity': see per Lord Reid in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 at 355.'
I do not think s 7 avoids this. If there be any doubt about it, reference may be made to the explanatory memorandum circulated when the Patents Bill 1990 was before the Senate, in which the following statement appears (p 3):
`In assessing whether an invention involves an inventive step, publicly available information from a prior document or prior use may be considered together with the common general knowledge, provided that the information would have been ascertainable, understandable and seen as relevant by a person skilled in the relevant art.'"
I agree with the observations of Burchett J in Tidy Tea.
161 DS, DSQ and GSA, by their "Further Corrected Amended Further Particulars of Objections" filed 26 February 1998, pleaded the following objection :
"3. The alleged invention, so far as claimed in each and every claim of the said complete specification, is not a patentable invention in that it was obvious and did not involve an inventive step when compared with the prior art base as it existed before the priority date of each such claim.
PARTICULARS
(a) Hereunder the respondents will rely upon common general knowledge in Australia at or before 10 November 1993 which is the earliest priority date of each claim of Australian Petty Patent No 645740 and also upon each and all of the instances of prior publication, prior user and/or prior art information set out in the particulars provided under paragraph 2 above.
(b) Further to paragraph (a) above, the prior art base consists of information used or made publicly available by reason of the publication in Australia of the following:
(i) The Philmac water meter assembly. The Philmac water meter assembly which is depicted in drawing No D1107 dated 15 February 1990 and which is exhibit `WAH2' to the witness statement of Wayne Albert Harris dated 26 November 1996, was disclosed to the Power and Water Authority Northern Territory shortly before 19 September as described in paragraph 8 of the said witness statement of Wayne Albert Harris by a photograph of a three dimensional version of that drawing being disclosed to the Authority. The Philmac water meter assembly or a photograph or a drawing thereof in accordance with drawing D1107 was also disclosed to Mr Terry Barnes and Mr Ian Montgomery of Schlumberger Industries during February 1992 as described in paragraph 10 of the said witness statement of Wayne Albert Harris. The Philmac water meter assembly was also offered for sale to the persons set out in exhibits `GRB3' and `GRB7' to the witness statement of Garth Bellingham dated 27 November 1996 (and as set out in the schedule which is marked `A' and annexed hereto).
(ii) The Watts dual check valves model Nos 7, 7C, 9D, 709, 909, 909RPZ and NLF9 as described in paragraphs 8 to 12 (both inclusive) of the witness statement of Rodney Walter Sengstock dated 27 November 1996. The said Watts dual check valves were sold in Australia during the period January 1990 to August 1990 inclusive as described in paragraph 13 of the said witness statement of Rodney Walter Sengstock and as described in exhibit `RWS7' to the said witness statement.
(iii) RMC double non-return valves Nos NRD50, BDNR50, DN15, BDNR-75-DN22, DNR-75H and BDNR 100-DB28. Each of the said RMC double non-return valves is depicted in the bundle of drawings which is exhibit `RWS8' to the witness statement of Rodney Walter Sengstock dated 27 November 1996. Each of the said valves was manufactured by RMC and sold and supplied in Australia prior to 30 August 1990 on the dates set out in exhibit `RWS7' to the said witness statement of Rodney Walter Sengstock (and as set out in the schedule which is marked `A' and annexed hereto).
(iv) The Febco dual check valve No 810 which is depicted at page 18 of exhibit `RWS9' to the witness statement of Rodney Walter Sengstock dated 27 November 1996. The Febco dual check valve was sold and supplied by GM Unman (Aust) Pty Ltd in Australia prior to 1989 as described in paragraph 15 of the said witness statement of Rodney Walter Sengstock.
(v) The KGG water meter which is described in paragraph 1.10 of the witness statement of John Harold Hubbard dated 27 November 1996. The KGG water meter was sold by Davies Shephard Pty Ltd in Australia prior to 10 November 1993 on the dates and to the persons set out in exhibit `GRB3' to the witness statement of Garth Bellingham dated 27 November 1996 (and as set out in the schedule which is marked `A' and annexed hereto).
(vi) The Ebco manifold and meter assembly which is depicted in exhibit `JHH4' to the witness statement of John Harold Hubbard dated 27 November 1996 and described in paragraph 4.6(a) of the said witness statement of John Harold Hubbard. A sample of the Ebco manifold and meter assembly was disclosed to the Brisbane City Council in 1989 as described in paragraph 4.3(a) of the said witness statement of John Harold Hubbard.
(vii) The Neptune T 10 water meter which is described in paragraph 4.4 of the witness statement of John Harold Hubbard dated 27 November 1996. The Neptune T 10 water meter was sold, supplied and installed in Australia in or about 1987 as described in paragraph 4.4(a) of the witness statement of John Harold Hubbard dated 27 November 1996.
(viii) The Sentinel meter assembly and the modified Sentinel meter assembly which are described in paragraph 4.5 of the witness statement of John Harold Hubbard dated 27 November 1996. The Sentinel meter assembly and a modified version of the Sentinel meter assembly has been sold by Davies Shephard Pty Ltd to the Brisbane City Council on the dates set out in exhibit `GRB7' to the witness statement of Garth Bellingham dated 27 November 1996 (and as set out in the schedule which is marked `A' and annexed hereto).
(ix) The MSM meter which is depicted in exhibit `JHH9' to the witness statement of John Harold Hubbard dated 27 November 1996. The MSM meter has been offered for sale, sold and supplied in Australia by Davies Shephard Pty Ltd prior to 1989 on the dates and to the persons set out in exhibit `GRB7' to the witness statement of Garth Bellingham dated 27 November 1996 (and as set out in the schedule which is marked `A' and annexed hereto).
(x) EP0125010 (Hudson Patent) published 14 November 1984.
(xi) AU PK0921 (Philmac Patent) dated 29 June 1990.
(xii) The tender options delivered to the Brisbane city Council in response to invitations to tender for contracts WS 104/89/90 and WS34/90/91 as listed in the schedule `A' hereto."
Schedule A Part 1 to the Further Corrected Amended Further Particulars of Objections lists by name the tenderers by reference to the tender option of each tenderer and the date upon which the tender was lodged for contract WS104/89/90. Schedule A Part 2 lists the name of each tenderer together with the number of options of each tenderer together with the date of submitting the tender for contract WS34/90/91.
162 The priority date for Claims 1 and 2 of the petty patent was 30 August 1990.
163 In their final submissions DS, DSQ and GSA abandoned reliance upon paragraph 3(b)(i) - the Philmac meter assembly as an item of prior art.
164 There was evidence from Rodney Sengstock, who was at the relevant time the business development manager of RMC employed by GSA, of the sale of Watts dual check valves models 7, 7C and 9D in Australia since 1985. Each of these model valves have two non-return valves arranged in tandem within a common tubular housing. The exhibit "RWS7" does not record model 709 and 909 valves and discloses that no model 7C valves were sold in Australia in the period January to August 1990 inclusive. It shows that 203 model 7 valves, 40 model 9D valves, 144 model 909RPZ valves and 129 model NLF9 valves were sold within Australia during the same period. However, in cross-examination Mr Sengstock admitted that the Watts dual check valves sold by GSA were not arranged in the same manner as the check valves in Exhibit 41, which valves were identified as dual check valves of GST manufacture, being the valves disclosed in the petty patent. Further, Peter Flynn, the then design engineer at RMC Brisbane gave the following evidence as to the Watts 9D valve :
"What product do you call that? --- It is what we refer to as a Watts 9D.And what is it used for? --- Different levels of backflow prevention. The dual check values we have been discussing are the lowest level, used for low-risk domestic applications up through - this is a higher risk, if you like, for use in higher risk applications.
Is this the one for use in laboratories or at the dairy farm? --- I would have to read the instructions to tell you. I haven't had a lot to do with the product. It would suggest from the application that it is for use in heating systems and higher risk areas where there is greater risk of contamination.
Could you look at this catalogue, page 14. Does that assist you with what the 9D valve does? --- It is used, once again, in areas such as livestock - well, examples listed are livestock, drinking fountains, residential boiler applications, those sort of areas, to prevent contamination through the drinking water supply.
Does that have any application to water meters supplied to Brisbane City Council? --- Other than very, very - drawing the long bow, I suppose. It has got moving values inside it, but, no, it is not a typical domestic back-flow prevention device."
165 As to the use of tandemly arranged dual valve backflow prevention assemblies, John Hubbard, the then managing director of and now consultant to DS, said :
"Feature 8 is a removable back-flow prevention assembly which includes a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein. Can you comment on that as to whether that was known or common in Australia before 30 August 1990? --- No, that was not common.Not common? --- No.
Now, can you comment on whether there were, prior to that date, back-flow prevention assemblies which were in a cylindrical sleeve-like housing? --- They certainly were. They certainly were.
Can you comment on whether it was known that they might contain two valves rather than one? --- It was known, yes, it certainly was.
And what about whether they were tandemly arranged? --- They were tandemly arranged, yes.
So in terms of feature 8, was it known, prior to 30 August 1990, that there were such assemblies? --- Yes. Yes, it was known.
But they were not common? --- They weren't common."
166 The knowledge of Mr Sengstock and Mr Flynn as to the range of Watts valves available in August 1990 comes, I find, from their employment with RMC, which has been since 1 January 1989 the Australian agent for the sale of Watts valves. In the case of Mr Sengstock, his employment was from November 1988. In the case of Mr Flynn his employment commenced in March 1990. It is clear from the cross-examination of both witnesses that the valves are intended for a wide range of applications which, in August 1990, did not commonly include domestic water meter assemblies. I am satisfied that the valves specified in paragraph 3(b)(i) were, on 30 August 1990, not reasonably regarded by an objective person reasonably skilled in the art of designing and building water meter assemblies as information relevant to work in the relevant art in the patent area.
167 The irrelevance of the information specified in paragraph 3(b)(ii) of the objections to the skilled addressee is demonstrable from the evidence of Mr Hubbard. Mr Hubbard was put forward as a skilled addressee. In August 1990 he was also the managing director of DS, a large designer, manufacturer and supplier of water meter assemblies. In evidence he said :
"Now, at (ii) on the document I am showing you there, you referred yesterday to the Watts number 7 valve, which was known to you? --- The 7 series, yes.And as I understand the Watts number 7 valve it is an inline valve which has the availability of screw thread arrangements at each end to be attached to existing pipework; that correct? --- That's correct, yes.
Do you have any knowledge at all of the number 7C which is next referred to? --- Not specifically, no. I remember the 7 series.
That would be just perhaps a different sort of model, would it, to the - - -? --- Well, in that the same number 7 is used you would expect that to be the case, yes.
And the 9D; are you able to? --- No, I can't remember specifically what that was, no.
Any of those other numbers there; 709 through to the NLF9. Do they mean something to you in the use of water meter assemblies? --- Well, other than
they are obviously some form of protection device for flow protection - backflow prevention of some form. I don't specifically know which model each one is. We didn't sell those products other than as part of assemblies when required.
Do you have any recollection of perhaps referring to RMC of some other company who might be the supplier to Watts? Did you perhaps contact Watts in preparing for your tender contract? --- No.
WS34? --- No.
They would have been done in house more or less because Tita fittings is available to you? --- Yes, partly, yes. We did also tender for the series 7 valve at one stage.
I see? --- Yes.
And but there are other companies in the Davies Shephard group, are there not? --- Yes, yes.
Who have specialities in valve manufacturing? --- Yes, Tita fittings as you said. Tita fittings.
Now, what about the next one, (iii). Do you have any knowledge of those NDR50s? --- No.
NR75H? --- Not specific knowledge, no. Our only involvement with those sort of products is where we were selling them in conjunction with our water meters.
And what about the Febco water meter assembly? Do you know of such an assembly by Febco as might be referred to in (iv)? --- Water meter assembly? No, I'm not aware of a Febco water meter assembly.
It is likely, is it not, that the number 810, the Febco 810 is in fact a valve and not an assembly at all? --- It says here a dual check valve. I will accept that as being perhaps what it is."
168 The evidence as to dual backflow valves goes no further than establishing that the idea of a dual valve backflow device with the valves tandemly arranged in the device was known to engineers and persons skilled in fluid management in August 1990.
169 The same conclusion arises in respect of the valves specified in paragraph 3(b)(iii) because the evidence leaves the valves in no different position to those specified in paragraph 3(b)(ii). Similarly with the Febco dual check valve model number 810 particularised in paragraph 3(b)(iv). It is a separate component designed to be attached to a water line by the use of union connectors, and the drawing referred to as "RWS9" to Mr Sengstock's affidavit shows it as being a component independent of other components in the water line and performing its particular function independent of any other component attached to the line.
170 The KGG water meter referred to in paragraph 3(b)(v) of the objections is alleged to have been disclosed after 30 August 1990. It is therefore irrelevant for present purposes.
171 There is no evidence that the Ebco manifold and meter assembly referred to in paragraph 3(b)(vi) of the objections was disclosed to the BCC in 1989, or that if it was, its disclosure was publicly known. Nor is there any evidence that inquiry by a skilled addressee to the BCC in August 1990 generally, or in respect of tender WS34/90/91, would have resulted in the material being disclosed by the BCC. The manifold and meter assembly was not part of the prior art base in the patent area at the priority date.
172 Mr Hubbard gave evidence that the Neptune T10 and the promotional material relating to it had been available in Australia since at least 1987. I am prepared to treat that material as part of the prior art base having regard to his evidence that the assemblies and the material were widely used throughout Australia.
173 In respect of paragraph 3(b)(viii) of the particulars of objection, Mr Hubbard gave the following evidence :
"Now, the Sentinel similarly exhibited to your material? --- Yes.Could you look at that paragraph (viii). Did you ever sell those to the Brisbane City Council? --- No, no. We did not.
Did you sell a modified version of that Sentinel to the Brisbane City Council? --- We never used the term Sentinel for our final version which was sold to the BCC.
And the MSM, of course, was that separate unit you would have sold to the Brisbane City Council; is that correct? --- No. We didn't sell MSMs to the BCC.
All right? --- That is the metering unit."
174 Exhibit "GRB7", which is pleaded in paragraph 3(b)(viii) of the objections, contains details of the tenders to the BCC for contract WS34/90/91 in respect of which DS was an unsuccessful tenderer.
175 On the evidence of Mr Bellingham, the Director Water Services Branch of the BCC, and on the basis of Exhibit 1, the tender did not close until 31 August 1990. All tenders remained in a locked box until closure of the tender. The details of tenders were not disclosed by the BCC to competing tenderers. Accordingly, the information contained in the tenders was not publicly available on the priority date and could not have been obtained on that date. This paragraph of the objection is not made out.
176 Mr Hubbard gave further evidence as to paragraph 3(b)(ix). This evidence follows immediately upon the evidence set out in respect of paragraph (viii). He said :
"If you could just look at - have you got (ix) on your sheet? --- Yes.It seems to assert that you did. It seems to assert that Davies Shephard sold and supplied to the Brisbane City Council. Are you saying that is wrong? --- We supplied - we supplied them samples. Samples.
But not by way of a sale? --- Not a large sale, no."
177 There is no direct evidence of sales of the Kent MSM to any persons in Australia prior to 30 August 1990. Mr Hubbard gave evidence that he saw the brochure for the meter in Australia in early 1989. He gave no evidence as to the circumstances in which he came to see the brochure and the nature and extent of its distribution at that time and subsequently. He was not cross-examined on this evidence. The brochure (Exhibit 106) in terms relates to one component of a water meter assembly and I find it was part of the prior art base at the priority date.
178 Paragraph 3(b)(x) of the objections relates to the Hudson Patent EP0125010 published on 14 November 1984. The patent had not been read by Mr Hubbard in or before 1990. Nor had it been read by Mr Sengstock. If they are to be treated by the Court as persons skilled in the art in August 1990 as DS, DSQ and GSA submit should be the case, their failure to search the patent out is some evidence that the patent was not reasonably regarded as relevant to those skilled in the art in the patent area on the priority date. Nor is there any evidence that in the art of water meter assembly design and manufacture, those skilled in the art ordinarily engaged in patent searches as part of acquiring common general knowledge. Neither person gave evidence that this patent was relevant to a skilled addressee on 30 August 1990.
179 A perusal of the Hudson patent reveals a different problem which the patentee sought to overcome from the problem with which the hypothetical skilled addressee is confronted with by the petty patent on 30 August 1990. The Hudson patent states :
"Pipes have to be led into and out of such a box, but one standard Water Board requirement is that there should be adequate insulation down to a depth of at least 750 mm. To avoid insulating the entire pipe, therefore, it is convenient to lay it at a greater depth, and to bring it up near the surface only locally, as for example to the assemblies referred to above. Only short lengths then require insulation.Another requirement is that the connection between the pipes and the assembly should allow for slight ground movement and settling.
A further problem is that the lid of the box should be flush with the surface of the ground, particularly if the box is set into a pavement or roadway. If the lid seats firmly, as it should, it will have a fixed position relative to the box, which will therefore have to be sunk to a very precise depth in order to make the lid flush with the ground surface. That is not always easy to achieve, and in any event when re-surfacing of a pavement, for example, takes place, the levels change leaving the lid proud or sunk.
It is therefore the aim of this invention to provide an assembly which can accommodate to ground movement and differing surface levels, and which can provide the necessary insulation above the critical depth."
180 The document does not of itself indicate a relevance to the problems sought to be addressed in the petty patent. I am therefore of the view that a skilled addressee would not treat the patent as relevant. There is no evidence in support of the contrary view.
181 So far as paragraph 3(b)(xi) is concerned, there is no evidence that the Philmac Patent AU PK0921 was available for public inspection on or before 30 August 1990. Nor is there any evidence that the contents of it were generally available to the public. Further, neither Mr Sengstock nor Mr Hubbard had had recourse to AU PK0921 in 1990. Nor do either of them express the opinion that it would have been relevant to a skilled addressee on 30 August 1990 to have recourse to AU PK0921.
182 The final assertion of material in the prior art base is that contained in paragraph 3(b)(xii) of the objections. It involves tenders for water meter assemblies to the BCC under tenders WS104/89/90 and WS34/90/91.
183 Tenders to the BCC are conducted under a Council policy recorded in a document "Principles of Contracting and Tendering". That document provides that the evaluation of tenders will be conducted in commercial confidentiality. Evidence was given that the tenders were conducted on a confidential basis and the contents of the tenders were not and would not be released publicly. Tender WS104/89/90 closed on 20 December 1989. It included eleven tenders providing for one hundred and nineteen options of fourteen different makes of water meters. The contents of the tenders were never made publicly available. Tender WS34/90/91 closed on 31 August 1990. It included tenders from twelve companies and covered at least one hundred and thirty-seven options. The contents of these tenders were never made public by the BCC. The procedure of the BCC in receiving and evaluating tenders is set out in a document Exhibit 1 which was admitted into evidence without objection. The procedure revealed in Exhibit 1 excludes access to the information in the tenders, to evidence of information solicited by the BCC by interview, or, to the tender samples. There is no evidence that the content of these two contract tenders was publicly available on 30 August 1990. The evidence does not show how the hypothetical skilled addressee acting reasonably would have got access to the material. Accordingly, it was not part of the prior art base. However, the material is relevant as demonstrating the type of water meter assemblies that were being designed and manufactured by those engaged in the art of water meter assembly design and manufacture in 1989 and 1990; a matter to which I will refer later.
184 DS, DSQ and GSA contend that the invention claimed in Claim 1 was obvious, because :
(a) Claim 1 was properly reduced to thirteen elements, the content of which was known generally within the water meter assembly industry prior to August 1990;
(b) the terms of the specification WS34/90/91, and in particular a drawing WM8 entitled "TYPE OF METER MANIFOLD", by themselves or in conjunction with the common general knowledge of the industry required or inevitably led to production of the piece of equipment claimed in Claim 1;
(c) the product which results from the combination claimed is, upon analysis, nothing more than a collocation of integers, each operating independently of the others.
185 To prove that each of the thirteen elements which make up Claim 1 is known to the water meter industry generally does not address the statutory question. Nor does it answer the statutory question that particular persons who are engaged in different facets of the water meter assembly industry have particular knowledge of certain elements of the combination because of service on specialist bodies such as the sub-committees of the Australian Standards Association of Australia. In the present case, for example, part of the knowledge of Mr Hubbard, Mr Lancaster of Email Ltd and Mr Manthey, the former officer of the South Australian Engineering and Water Supply Department, was acquired through their membership of the committee which was attempting to write an Australian Standard for water meters. Without evidence that such knowledge as was acquired by them as members of the committee was also part of the prior art base of a person skilled in the art in the circumstances provided in s 7(2) and s 7(3) of the Act, their knowledge so acquired does not satisfy the statutory test. Even assuming against Stack and GST that the concepts underlying each element of Claim 1 was part of the common general knowledge of a skilled addressee prior to August 1990, an assumption I would not lightly make based as it is on only the evidence of Mr Hubbard and Mr Manthey, I am not satisfied that such a skilled addressee would have chosen the integers with the defining characteristics which make up Claim 1 of the petty patent.
186 The circumstances which lead me to this conclusion are several. The evidence of Mr Sengstock, Mr Flynn, Mr Lancaster and Mr Hubbard satisfies me that in 1989 and 1990 the use of a unitary water meter manifold was rare in Australia, although it was becoming common in the United Kingdom and the United States of America. Indeed, the evidence of Mr Sengstock was that in February 1989 there was nothing in Australia other than arrangements similar to the in-line water meter assemblies then used. The preference in Australia was for in-line water meter assemblies where three separate components, the stop cock, the water meter and the non-return valve were co-linear with the outlet of the pipes to which they were attached. The water meters in the United Kingdom and the United States of America also tended to be inground meters because of the lack of space to mount the meter above ground in many developed city locations in the United Kingdom and/or because of climatic conditions eg to prevent freezing. That was generally not the situation in Australia. Further, some parts of the industry, at least Email, were actively attempting to dissuade the BCC from introducing manifold assemblies. It follows, in my view, that a skilled addressee would be unlikely, in August 1990 if free to do so, to choose a unitary manifold forming a flow passage having an inlet, an outlet and two outwardly access ports intermediate the inlet and the outlet. If the skilled addressee chose a traditional in-line arrangement or something similar, that choice would exclude certain other elements of Claim 1 of the petty patent, especially in relation to the backflow prevention assembly and the means of access to it.
187 Accepting the evidence of Mr Hubbard that dual backflow prevention assemblies were not a common feature of water meter assemblies in August 1990, and the evidence of Mr Manthey that there was a controversy within Australia in the 1980's as to whether backflow prevention assemblies were necessary in domestic water supply situations, the likelihood is against a skilled addressee choosing a removable backflow prevention assembly which has all of the characteristics of features 6, 8, 9, 10, 11, 12 and 13 of the elements of Claim 1. That the skilled addressee was aware that there existed dual valve backflow prevention assemblies where the valves were retained in a single sleeve and were used in other situations of fluid management, being valves or pieces of plumbing of the type revealed in the exhibits to the statements of Mr Sengstock and Mr Gaskell, and that they may in a functional sense be used in a water meter assembly, does not incline me to the view that the choice of such a component would be made by that addressee in August 1990.
188 In the present case it is important that the question of obviousness place before the hypothetical skilled addressee the problem which the invention claimed in the petty patent sought to solve. That problem related to maintenance and replacement of the components of a water meter assembly placed in the ground.
189 No witness cast any serious doubt on the contention in the petty patent that there were problems associated with servicing and maintaining traditional in-line water meters in the ground. Mr Sengstock in his evidence identified the problems which existed in 1990 as :
(a) the ability to service or replace the non-return valve;
(b) the siting of the water meters;
(c) how the workman can best execute a repair;
(d) backflow prevention to prevent contaminants from entering the public water supply;
(e) maintenance, testing and replacement of the measuring assembly if it is broken or is alleged to be reading incorrectly.
190 Mr Flynn also spoke of the problems and different solutions or choices taken to attempt to solve them. He said :
"I would just like to show you Coughlin as part of exhibit 35, item number 11. Have you seen this particular patent, Coughlin and Others? --- No, I haven't.Looking at it, it seems to involve three separate shells? --- No, it would appear to be three chambers for some purpose.
Three chambers, yes? --- Yes.
And nothing like the water meter assembly which is the subject of Stack patent 745740, would you agree, just by looking at it briefly? --- It's very difficult to say but I believe it is another approach to the same problem but it's essentially different.
What are the sort of problems that spring to your mind in water meter assemblies? --- Basically packaging of a meter feature with backflow prevention and some form of shut off in such a format that will achieve maintainability common - maintainability, ease of servicing, all those sort of things within a meter environment buried at the bottom of your front garden type situation.
And having read the Stack patent 645740, would you agree that that provides one solution to those sorts of problems? --- Yes, it does."
191 These were the problems which the BCC tender raised for solution in tender WS34/90/91 in addition to providing a water meter assembly which had a stop cock, a meter assembly and a backflow prevention assembly and which achieved certain stated performance criteria. The BCC attracted tenders from Australia and overseas. Each of the tenderers were faced with the same problems which faced Russell Plastics, Stack and Grieves. It is a fair inference to draw that the 137 different options tendered by twelve companies included work of persons in the position of the hypothetical skilled addressee as contemplated by s 7(2) and s 7(3) of the Act. No tenderer and no tender option other than that of Russell Plastics is shown as making the choice of integers with the characterising features which appear in Claim 1 of the petty patent. That no other tenderer is shown as making the same selection of integers is strongly against the choice of integers in Claim 1 being obvious.
192 The result of the tender process also goes a long way to refuting the second argument advanced by DS, DSQ and GSA. Although the witness statements of Mr Hubbard, Mr Sengstock, Mr Bellingham from the BCC and Mr Lancaster to varying degrees assert that the tender specification for contract WS34/90/91 and drawing WM8 would lead by direction to choosing some or all of the elements of Claim 1 of the petty patent, their oral evidence, particularly under cross-examination, retreated from that position. The specification and drawing, I find, gave to each tenderer a wide choice of integers with a range of characteristics which would satisfy the tender. The drawing WM8 was diagrammatic only, it was not to scale and it did not necessarily represent the way one should make the manifold. So much appears from the evidence of Mr Lancaster, Mr Sengstock and Mr Hubbard. The meter depicted could not be constructed because it would not allow for the flow of water through the measuring element. It would be necessary to design a transition piece and an adaptor to allow the arrangement depicted in WM8 to work.
193 In addition to the engineers, who conceded that WM8 required choices to be made from a number of options available, evidence was also given by Mr David Connor, an engineering draftsman employed by RMC at the relevant time. Mr Connor was not a skilled addressee. He was, however, familiar with reading and drawing plans in respect of equipment made in the industry. He saw at least three choices available in the choice of isolating valves. He also saw options as to the use of union end connectors to separate the isolating valve from the body of the manifold.
194 There was no consistency in what the engineers called by DS, DSQ and GSA saw in WM8. In particular, there was dispute as to whether the manifold was a unitary manifold, there was disagreement as to whether the valves were shown as two valves in a single sleeve or whether there were two separate valves each in its own casing. There was disagreement as to whether the drawing showed any particular and, if what, mode of securing the backflow prevention assembly in place.
195 That manifold meters of the type claimed in the petty patent had advantages over traditional in-line arrangements was acknowledged by an internal memorandum circulated within DS in May 1992. The occasion for the memorandum was the decision to design a manifold meter for the BCC and add it to the range of available meter assemblies. The document, in part, said :
"ScopeThis document specifies preliminary requirements for development of a 20mm Manifold Meter suitable for the Brisbane City Council (BCC).
Introduction
Manifold meters are seen to have certain advantages over traditional water meters. These advantages are outlined below.
1. The manifold forms an integral and permanent part of the pipework between the water supply mains and the user's property.
2. The manifold incorporates a valve which alleviates the need for a separate meter stop cock in the pipework.
3. The pipework remains below ground at all times, unlike traditional `above ground' meter installations. This alleviates the need for additional bends and riser pieces to bring the pipework above ground.
4. To replace the meter, it is a simple matter to unscrew the old meter insert and screw in a new one. There is no need to `break' pipework as the case with traditional meters. The manifold remains fixed in its position.
5. Replacement meter inserts cost less than traditional meters.
Manifold meters are attractive even though initial package cost is higher than for traditional meters. Generally the higher initial package cost is offset by lower installation and life-cycle costs compared to traditional meters.
Applicable Documents
Australian Standard AS3565
BCC Tender Specification W.S. 34/90/91
Meter Construction
The manifold meter consists of the following major items:
Andrae Leonberg MO-D MODULMETER
Closing Ring
Adaptor Ring
NRV-Adaptor Tube Assembly
Manifold
Ball Valve"
196 Mr Flynn from GSA, in evidence, agreed with the five stated advantages.
197 There was, in my view, sufficient choices to be made to satisfy the test articulated by Aickin J in Minnesota Mining and Manufacturing Co at 293 that the invention was not obvious.
198 Finally, I turn again to the question of the claim being a mere collocation. In support of this contention DS, DSQ and GSA principally rely upon the evidence of Mr Peter Kleins, an engineer employed by RMC as a production engineer in December 1992. Mr Kleins had had no previous experience in the water meter assembly industry. On his own evidence "I don't design water meter assemblies." His first major task upon employment with RMC was to co-ordinate the different departments to produce product. Mr Kleins had never seen a manifold meter other than as shown in Exhibit 169 which was a RMC drawing of a water meter assembly dated 2 June 1993. Mr Kleins was not, and I do not accept him as, a skilled addressee in the art in the patent area.
199 Mr Kleins was not addressing the problem which the petty patent sought to address and did not address the choice of elements assembled in the order and sequence specified in Claim 1 and the way that they interacted to overcome the problem addressed. The invention claimed in Claim 1 is not a mere collocation of integers involving no inventive step.
200 The allegation of want of inventive step and obviousness fails.
Novelty
201 DS, DSQ and GSA submit that the invention claimed in the petty patent is not a patentable invention because it was not novel when compared to the prior art base as it existed before the priority date of the claim as required by s 18(1)(b)(i) of the Act. Section 7(1) of the Act is relevant to the issue of novelty. The subsection provides :
"7(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) 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;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1."
202 The definition of "prior art base" in Schedule 1 to the Act, so far as is presently relevant, provided :
"prior art base means:.....
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where :
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published."
203 The basic test for anticipation or want of novelty is the "reverse infringement" test whereby one asks oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228 at 235; Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 (FC) at 517, 528. Where the patent in suit is a claim to a combination the anticipation must incorporate all of the integers of the claim otherwise the objection to novelty will fail: Meyers Taylor at 235; Nicaro Holdings at 517, 528; Winner v Ammar Holdings Pty Ltd [1993] FCA 93; (1993) 41 FCR 205 (FC) at 218 - 219.
204 In C Van der Lely NV v Bamfords Ltd [1963] RPC 61 at 71 - 72, Lord Reid said :
"The law regarding anticipation derives from Lord Westbury's statement of it in Hills v Evans [1862] EngR 365; (1862) 4 DeG, F & J 288. There are two branches of this statement. The first is that `a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments'. The appellants maintain that even if the skilled man could perceive in the photograph all the integers in claim 1 he could not apply the discovery without making further experiments. But Lord Westbury must have meant experiments with a view to discovering something not disclosed. He cannot have meant to refer to the ordinary methods of trial and error which involve no inventive step and are generally necessary in applying any discovery to produce a practical result. That view appears to have been generally accepted, and I need only refer to the speech of Lord Maugham in No-Fume Limited v Pitchford (1935) 52 RPC 231. The other requirement is that `the information given by the prior publication must for the purposes of practical utility be equal to that given by the subsequent patent'. There may be cases where the skilled man has to have the language of the prior publication translated for him or where he must get from a scientist the meaning of technical terms or ideas with which he is not familiar, but once he has got this he must be able to make the machine from what is disclosed by the prior publication. This part of Lord Westbury's statement appears to have been universally accepted, and I need only refer to the latest authority in this House, Martin v Millwood [1956] RPC 125."
205 The treatment of Lord Reid's statement of the law in this area was reviewed by Gummow J with whom Jenkinson J agreed, in Nicaro Holdings. His Honour concluded (at 531 - 532) :
"It follows from the English authorities as they have been applied in Australia that, whilst Hill v Evans does not require a literal disclosure and something less may suffice, and whilst an alleged paper anticipation is to be treated as read by a skilled addressee, a disclosure will fall short of an anticipation by description of an effective means by which the combination claimed in the patent in suit might be produced, if what is required of the skilled addressee is the exercise of any inventive ingenuity and the taking of any inventive step.Any references in this context to workshop improvements or variations should not be understood as importing into this field of novelty concepts of obviousness. There may be room for disagreement upon the English authorities as to what degree of activity by the skilled addressee may be called for in respect of an alleged anticipation for it still to suffice to destroy novelty. In my view, the way in which the English authorities have been treated by the High Court supports the position as stated by Lord Reid in Van der Lely's case, supra. It is also to be borne in mind that the notional addressee of the alleged anticipation is a skilled addressee with common general knowledge of the art. But his Lordship was not saying that an alleged anticipation of a combination claim, which did not include an integer thereof, nevertheless would constitute an effective disclosure if what was required of a skilled addressee to produce that claimed combination was the taking of an obvious and non-inventive step by way of workshop improvement."
206 In Nicaro Holdings, Lockhart J summarised the Australian position in revocation of proceedings under s 100(1)(g) of the Patents Act 1952 (Cth). His Honour said (at 517) :
"It is well established that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication: see Hill v Evans [1862] EngR 365; (1862) 31 LJ Ch 457 at 466; General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, supra, at 486; Washex Machinery Corp v Roy Burton & Co Pty Ltd (1974) 49 ALJR 12 at 18; and Van der Lely NV v Bamfords Ltd [1963] RPC 61 at 72-3.In revocation proceedings the prior publication must disclose all of the integers with the possible exception of the substitution of `mechanical equivalents to perform analogous purposes': Sunbeam Corp v Morphy-Richards (Aust) Pty Ltd (1961) 35 ALJR 212 per Windeyer at 220; R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd, supra; Dennison Manufacturing Co v Monarch Marking Systems Inc [1983] FCA 159; (1983) 66 ALR 265 at 273, 274, 276 and 286. ..."
207 In Winner at 218 - 219, the observations of Lockhart J were held to be correct with respect to the issue of novelty under the Act. The statement must of course be read as subject to s 7(1) of the Act as to the content of the prior art base.
208 The priority date of Claims 1 and 2 of the petty patent is 30 August 1990. The objection of DS, DSQ and GSA as to novelty relevant to that date is contained in paragraph 2 of the Further Corrected Amended Further Particulars of Objection. Paragraph 2, so far as is relevant, pleaded :
"2. The alleged invention so far as claimed in each and every claim of the said complete specification is not a patentable invention in that it is not novel when compared with the prior art base as it existed before the priority date of each such claim.
PARTICULARS
Hereunder the respondents Davies Shephard Pty Ltd, Davies Shephard (Queensland) Pty Limited and GSA Industries (Aust) Pty Ltd will rely upon common general knowledge in Australia at or before 10 November 1993 which is the earliest priority date of each claim of Australian Petty Patent No 645740 and also upon each and all of the following instances of prior publication and prior user and/or prior art information.
A Matters occurring before 30 August 1990
(a) The publication in the Patents Office Canberra of each of the following Patent Specifications on the dates set out:
Patent Publication Date
(i) AU29701/89 (Glyndwed) 10 August 1989
(ii) GB2210465 (Evans) 16 August 1989
(iii) EP061908 (Hudson) 6 October 1982
(iv) US4614113 (Daghe) 20 November 1986
(v) US3894432 (Coughlan) 6 May 1976
(b) The publication in Australia on or about 8 August 1990 of tender documents WS34/90/91 by the Brisbane City Council. Copies of the said tender documents are in the possession of the respondent's solicitors and may be inspected during ordinary office hours upon reasonable notice.
(c) The publication in the Patents Office Canberra of Provisional Specification PK0921 filed in the Patents Office on 29 June 1990."
209 I turn to the patent specifications in paragraph 2A(a) of the objections.
210 The first is the Glyndwed Patent AU 29701/89. I am satisfied on the evidence that the patent operates as described in the decision of the Deputy Commissioner of Patents (Exhibit 23) dated 6 January 1996. That description was agreed in by Mr Lancaster. Mr Manthey agreed that Figure 5 showed that the valve seat was held in place by a central member of a threaded boss with the measuring element being screwed into the threaded boss. I am also satisfied that the invention claimed in AU29701/89 does not have as one of its integers a removable backflow prevention assembly which includes a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein with the defining characteristics specified in Claim 1 of the petty patent and did not disclose such a backflow prevention assembly with those characteristics. Accordingly the invention claimed in AU29701/89 would not infringe the claims of the petty patent upon the application of the reverse infringement test.
211 The next patent is the Evans patent GB2210465. This patent was held by the Deputy Commissioner of Patents not to deprive the claims of the petty patent of novelty because it differed by having a single non-return valve, which was retained in place by a threaded collar separate from the measuring element. Mr Lancaster and Mr Manthey agreed with that description also. Patent GB2210465 does not contain as one of its integers a removable backflow prevention assembly as described in the petty patent together with the defining characteristics claimed in it. Nor does the Evans patent disclose such a removable backflow prevention assembly with such defining characteristics. Accordingly, the invention claimed in GB2210465 would not infringe the claims of the petty patent upon the application of the reverse infringement test.
212 The next patent is the Hudson patent EP061908. The Deputy Commissioner described the Hudson patent as disclosing a water meter with a non-return valve. The valve he described as being retained by a member which was held in place by a number of screws. He observed that a measuring element was explicitly an optional feature of the device. The non-return valve assembly was not in his view retained by the measuring element only. Mr Lancaster and Mr Manthey also agreed with this description. As I have stated earlier in these reasons, the problem which this patent seeks to address is different to those sought to be overcome by the petty patent. It is not an integer of the invention claimed in patent EP061908 that there be a removable backflow prevention assembly as described in the petty patent together with the defining characteristics claimed in it. Nor does the patent disclose such a removable backflow prevention assembly with such defining characteristics. The invention claimed in EP061908 does not therefore infringe the claims of the petty patent.
213 The next patent relied upon by DS, DSQ and GSA is the Daghe patent US4614113. This patent, on the evidence and as is evident from Figure 1, while disclosing the use of a removable backflow prevention valve, does not disclose a unitary manifold having the defining characteristics of the unitary manifold of the petty patent; a water meter box does not satisfy such an integer. Nor does the Daghe patent have as integers a backflow prevention assembly as described in the petty patent including the defining characteristics. In particular, the backflow prevention assembly is not supported in the flow passage disposed substantially co-axially with a threaded access port and is not held in its operative position by the removable flow through measuring assembly only. Nor are such features disclosed in the patent. Accordingly, it would not infringe the claims of the petty patent.
214 The next patent is the Coughlin patent US3894432. This patent was described in a witness statement of Mr Arthur Chaseling. So much of the witness statement as dealt with this patent was put to Mr Lancaster for comment. Mr Chaseling made the following observations :
"12 Coughlin drawings show two flow control plugs containing an inlet strainer on the inlet side of a first vertical shell, in the middle a housing for a meter in a second vertical shell, and on the outlet side two check valves in a third vertical shell.12.1 The three shells are shown connected together along vertical joints.
12.2 The control plugs in the first shell channel the water to direct flow through the meter to the outlet, to backflushing the inner strainer, or draining the unit to prevent freezing.
12.3 The manifold has seven openings.
12.4 One type of a meter 21 from commercial sources referenced at page 2, lines 43, to 46, line 53 to 54 is contained in the central shell.
12.5 The valve plug (75) is not removable from the top of the assembly. It must be removed by first removing cap (70) which is a cap covering the lower opening of the first shell.
12.6 The shut-off plug check valve 25 is retained by ring 106 ref. Page 4, lines 31 to 32, lines 34 to 35.
12.7 The meter 21 is housed separately in the centre shell.
12.8 Two check valves 110, 111 of different diameters are housed in valve plug 105 and retained by plug 107, referenced at page 4, line 37, lines 44 to 45, lines 49 to 50, line 60; Fig 1.
12.9 The drawings of Coughlin do not show:
`A removable back-flow prevention assembly' including `a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein', or
`A threaded meter access port'
`Complementary frusto-conical surfaces'
as described and claimed in Patent 645740 (Annexure 8)."
215 Mr Lancaster said with respect to these observations :
"THE WITNESS: I've read section 12.MR ABAZA All right. And you have had a look at the Coughlin specification? --- Yes, I have.
And worked your way through it. Is there anything with which you wish to disagree as recorded in paragraph 12, or wish to add to the matter relative to Mr Coughlin? --- Some of the points at 12.9 there is removable backflow prevention assemblies, but not necessarily contained in a cylindrical sleeve like housing. They are tandemly arranged, and I think there is a threaded meter access port. Apart from that I don't think I want to contest anything else.
So that to the extent that paragraph 12 has subparagraphs 12.1 through to 12.8 there is nothing there that you would wish to challenge? --- That seems to - seems to described it, without reading the whole document. It seems to describe the diagram."
216 Mr Flynn was of the opinion that the invention disclosed in the Coughlin patent was essentially different to the petty patent. He also specifically agreed with paragraphs 12, 12.1, 12.3, 12.4, 12.5, 12.6, 12.7, 12.8 and 12.9 of Mr Chaseling's statement. Mr Kleins declined to make any comment on the Coughlin patent as he "wouldn't be confident making comment" due to his unfamiliarity with it. Nothing was said by any other witness to cast doubt on the conclusion in paragraph 12.9. Although the Chaseling statement was ultimately struck out in circumstances referred to earlier in these reasons, it was adopted by experts called by DS, DSQ and GSA as a correct statement and there was no contrary evidence which I accept.
217 It follows that the Coughlin patent does not have as integers of the invention it claims those integers described in paragraph 12.9 and does not disclose such features. It would not infringe the claims of the petty patent.
218 Mr Lancaster, whose evidence on this point I accept, was asked to review the patents in the context of the suggestion that the patents taught away from the integer of retention of a non-return valve by the measuring unit assembly item 67 in the petty patent only. He gave the following evidence :
"Can I direct it in this way. I think you agreed, did you not, Mr Lancaster, that a measuring element assembly is something understood from the patent as the unit 67, which has been separately constructed and calibrated and is available to be installed in the manifold as part of a water meter assembly? --- In the terms of this document TAL1, I think that is correct.Right. Now this difficult question which I am asking you now in a very broad way, perhaps too broad. If we want to take them individually, Glynwed, perhaps? --- In the case of Glynwed, there is a separate component that appears to be holding the check valve.
And the Evans was the one with the - oh, it has a number of things, but I do not wish, by my short questions, to - - -? --- Yes, Evans is a little bit difficult to follow. There does appear to be another component there.
And Mr Hudson, which is perhaps the easiest? --- Yes, in the case of Hudson, there is a separate component that holds the check valve in place.
And Dargie also pretty clear that we have that sequence of bolts? --- Yes.
You will recall, for example, page 3 line 19? --- Yes, - - -
Dual check valves in the passage of the cartridge insert member? --- Yes, Dargie is a different sort of arrangement.
I have picked up some references. At line 33, the valve is removed axially that is at page 3 line 33? --- Yes.
And the valves are in an elongated extension member 58, which is referred to on page 5 line 27? --- Yes.
Bolted on by bolts, 86, which is referred to on page 6 at line 19? --- Yes.
And there is some nuts referred to, item 88? --- Yes.
With slots, 104? --- Yes.
And lugs, 102? --- Yes.
And indeed, further nuts, 106? --- Yes.
And an alternate arrangement is shown at page 6 line 38, where the bolt 86 is inserted inside the meter box? --- Yes.
So that - remember we were worried about whether we would pull the valve toward the meter or the other way; there is an alternate arrangement there? --- Yes.
Now, again, that is a specification which appears to teach away from the retention of the non-return valves by the measuring element assembly? --- Well, they don't - they don't show that. And the Coughlin - I cannot put a good copy of Coughlin in front of you, but you will remember it from exhibit 35, which is to your right - left, I am sorry - that was the one with the - virtually three cavities and the non-return valve cavity was quite separate from the other two? --- That is correct."
219 In my judgment none of the patents cited in paragraph 2A(a) of the objections deprives the claims of novelty.
220 I turn to the BCC tender WS34/90/91 and to drawing WM8.
221 My earlier remarks with respect to WM8 should be borne in mind without the need to repeat them. There is however some necessary overlap in the treatment of the tender specification and the drawing under this ground of objection.
222 The evidence given as to the disclosures in the specification and drawing has to be treated with extreme caution. I have formed the clear impression that many of the witnesses with the integers of the petty patent before them are looking at the specification and the drawing with the purpose of seeing whether they can find in the documents the integers of the claims of the petty patent. Further, I reject the evidence of Phillips and Bellingham as to what they sought to achieve or represent by the wording of the specification or by the depiction in the diagrammatic drawing WM8.
223 The decision of the Deputy Commissioner of Patents (Exhibit 23) included the following analysis of what was shown by the drawing WM8 in the context of the requirements of the tender specification. The Deputy Commissioner wrote :
"Drawing WM8 of the tender documents shows a water meter with two non-return valves. The valves are not in a common housing. The depicted dimensions of the measuring element and its supporting `meter transition piece' are such that the measuring element could not engage the non-return valves. The drawing shows no means of retaining the non-return valves in position, other than an abutment at the bottom end, and the tender clearly envisages the particular arrangement for retention will be specified by the tenderer."
224 Mr Lancaster agreed with this analysis. Mr Hubbard was also of the opinion that WM8, in diagrammatic form, showed two mushroom-shaped valves each in a separate container. He continued :
"And the top mushroom-shaped valve seems to be retained by a member which is embedded into the side of the manifold because it extends beyond the edge of the container; would you agree with that? --- It does seem to go beyond, yes.And that the references that one finds to the options which might be available in respect of such backflow prevention is in clause 27 of the contract? --- 27 - yes, I - - -
That is to the best of your recollection? --- Yes - yes, I do remember that, yes."
225 Notwithstanding his original contentions as to what was depicted in WM8, Mr Bellingham from the BCC proffered the opinion that the drawing could be read as showing either one or two cylinders housing the non-return valves and that it was not clear which was the case.
226 As to fixing the non-return valves, Mr Bellingham said :
"And the method of fixing the non-return valve or valves was not intended to be shown by that drawing? --- That's correct.And that method of fixing was an option which was left open to tenderers to see what would be available? --- Yes.
And that what you thought of easily as four options to stop the backflow prevention device from travelling up in the manifold and turned into, when read with the specification particularly clauses 19 and 27, a total of 137 tenders; is that right? That is shown in your - - - ? --- I believe there were 137.
- - - GRB7? --- Yes. From memory, it is a number like 137. I think that is right.
Yes. I think you refer to that in your witness statement? --- Yes.
And those tenders came from 12 companies, I think you said in your declaration? --- 12 and 137, that is correct.
So that what might have appeared to you yesterday as obvious - namely, that the cylinder piece of the meter would bear down onto the top of the backflow prevention device was not in fact obvious to at least 11 companies and 134 tenderers? --- I can't recall without trying to look at the summary of tenders again whether any of the others put in anything similar to that."
227 I was referred to no competing tender wherein the method of retention described by the claims of the petty patent was adopted in the context of a manifold meter as depicted in WM8 when read with the specification.
228 One further observation can usefully be made as to the prior art base in August 1990. As Mr Hubbard observed, the use of dual non-return valves tandemly retained in a single sleeve in the water meter assembly industry was not common, and as Mr Flynn put it, "Backflow was in its infancy in that period".
229 The tender documents and WM8 do not disclose in clear, unequivocal and unmistakable terms, an arrangement wherein a backflow prevention assembly as described in Claim 1 of the petty patent, including all the defining characteristics, is retained in its operative position by the measuring element or measuring element assembly only. In these circumstances Claim 1 of the petty patent is not deprived of its novelty by the content of the tender specification WS34/90/91 or the drawing WM8.
230 Finally, I turn to paragraph 2A(c) of the objections.
231 The provisional specification PK0921 was filed in the Patents Office Canberra on 29 June 1990. So much is proved from that part of the statement of Mr Pizzy tendered into evidence by Stack and GST which was not struck out in the circumstances recorded at the beginning of these reasons. The provisional specification was for a water meter assembly. It was for a combination patent.
232 The requirement of the petty patent that the claimed combination contain a backflow prevention assembly that includes a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein is an essential integer of the claim. It is not an integer of the invention disclosed in PK0921 which has a single non-return valve only. It does not overcome the failure of PK0921 to satisfy the reverse infringement test to submit that a single non-return valve is not an essential integer of PK0921 or that a dual valve backflow prevention assembly is but a mechanical equivalent of a single valve non-return prevention assembly. The absence of an essential integer cannot be overcome in this way: Nicaro Holdings at 532.
233 Claims 2 and 3 are dependent claims. There was no submission that any of the material relied upon would deprive claims 2 and 3 of novelty if Claim 1 was itself found to be novel.
234 The pleaded objections in respect of lack of novelty as at 30 August 1990 are not made out.
235 The priority date of claim 3 is 30 August 1991. There was no submission that any of the material pleaded as occurring after 30 August 1990 was such as to deprive claim 3 of novelty at that date.
236 The objections as to novelty fail.
237 Orders to be made on the determination of the separate questions:
The court finds and declares that:
1. George Stack is not, and was not at any material time, entitled under s 15 of the Patents Act 1990 (Cth) to the grant to him of a patent in consequence of the filing of the provisional specification PK2036.
2. George Stack is not, and was not at any material time, entitled under s 15 of the Patents Act 1990 (Cth) to a grant to him of a standard patent in consequence of the filing of application 85236/91.
3. George Stack was not entitled under s 15 of the Patents Act 1990 (Cth) to the grant to him of Australian Petty Patent Number 645740.
4. GST Technology Pty Ltd was not entitled under s 15 of the Patents Act 1990 (Cth) to a grant to it of Australian Petty Patent Number 645740.
5. GS Technology Pty Ltd is not entitled to Australian Petty Patent Number 645740 within the meaning of s 138(3)(a) of the Patents Act 1990 (Cth).
6. The invention claimed in each of the claims of Australian Petty Patent Number 645740 is a patentable invention within the meaning of s 18 of the Patents Act 1990 (Cth).
7. The specification of Australian Petty Patent Number 645740 complies with the requirements of s 40(2) and s 40(3) of the Patents Act 1990 (Cth).
I certify that the preceding two hundred and thirty-seven (237) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Cooper. |
Associate:
Dated: 15 September 1999
Solicitor for the Applicant: |
A Abaza |
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Counsel for the Respondent: |
P D McMurdo QC and G A Thompson SC |
Solicitor for the Respondent: |
Minter Ellison |
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Dates of Hearing: |
1, 2, 3, 4, 5, 8, 9, 10, 11, 12, 15, 16, 17, 18 & 19 December 1997 27, 28 & 29 January 1998 2, 3, 4, 5, 9, 10, 11, 16, 17, 18, 19, 20 & 26 February 1998 2, 3 & 4 March 1998 1, 2 & 3 June 1998 |
Date of Judgment: |
15 September 1999 |
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URL: http://www.austlii.edu.au/au/cases/cth/FCA/1999/1279.html