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Federal Court of Australia |
Last Updated: 4 April 2003
Cook Incorporated v World Medical Manufacturing Corporation
INTELLECTUAL PROPERTY - patents - cross-claim seeking revocation on grounds of invalidity - motion to strike out parts of cross-claim on grounds of insufficient expert evidence-in-chief - whether cross-claimant may rely on anticipation of evidence to be obtained in cross-examination - prejudice - whether expert evidence required
PRACTICE AND PROCEDURE - summary judgment - case management - orders given for the preparation, filing and service of evidence-in-chief - incomplete evidence produced - whether it is permitted to mount a case in anticipation of producing evidence during the cross-examination of witnesses - whether claim or cause of action should be dismissed
Patents Act 1990 (Cth): s 18(1), 138(3)(d)
Federal Court Rules: O 11 r 16, O 20 r 2
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513, considered
Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315; 2002 AIPC 91-823, considered
Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388, considered
Caterpillar Inc v Sun Forward Pty Ltd (1996) 36 IPR 411, referred to
Firebelt Pty Ltd v Brambles Australia Limited [2002] HCA 21; (2002) 188 ALR 280, referred to
The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457, referred to
Minnesota Mining & Manufacturing Co & 3M Australia Pty Ltd v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253, referred to
COOK INCORPORATED v WORLD MEDICAL MANUFACTURING CORPORATION
V 56 of 1999
GOLDBERG J
28 FEBRUARY 2003
MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA |
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VICTORIA DISTRICT REGISTRY |
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1 The principal proceeding has been brought by the applicant as the registered proprietor of Australian Letters Patent No 581,464 for an invention entitled "Percutaneous Endovascular Stent and method for insertion thereof" ("the Patent"). The complete specification was published on 10 April 1986 and the Patent was sealed on 18 July 1989. The applicant alleges that each of the respondents has infringed a number of the claims of the Patent. The respondents have filed a defence in which they deny that they have infringed any of those claims and contend that the Patent is invalid and liable to be revoked on the grounds set out in their cross-claim.
2 The applicant claims that the claims of the Patent have a priority date of 1 October 1984 as the Patent was granted on a Convention Application based on the specification of the applicant's United States of America basic application No 656,261 filed on 1 October 1984. The abstract describes the invention in the following terms:
"An endovascular stent formed of stainless steel wire of 0.018 inches diameter and arranged in a closed zig-zag pattern. The stent is compressed into a reduced size shape of an outer diameter which is many times smaller than its expanded shape. The stent is positioned in a passageway in the vascular system by means of a sheath while the stent is retained in the compressed reduced size shape. A flat-ended catheter is used through the sheath to hold the stent in place in the passageway while the sheath is withdrawn from the passageway allowing the stent to expand in the passageway into its expanded shape to hold the passageway open and enlarged. Other possible applications of the stent are in the respiratory, biliary and urinary tracts to reinforce collapsing structures."
3 In their cross-claim the respondents have raised the following grounds for revocation:
* none of the claims 1 to 7 in the Patent is entitled to a priority date earlier than 7 November 1988, that being the date of filing of an amendment to the specification;
* the invention as claimed is not a patentable invention within s 18(1)(b)(i) of the Patents Act 1990 (Cth) ("the Act") on the ground of lack of novelty;
* the invention as claimed is not a patentable invention within s 18(1)(b)(ii) of the Act on the ground that it does not involve an inventive step. This allegation raises the issue of obviousness.
* the invention as claimed is not a patentable invention within s 18(1)(a) of the Act on the ground that it is not a manner of manufacture;
* the invention as claimed is not a patentable invention within s 18(1)(c) of the Act in that it is not useful. This allegation raises the issue of lack of utility.
* a number of expressions in the claims are not clear contrary to s 40(3) of the Act;
* a number of claims are not fairly based on the specification contrary to s 40(3) of the Act;
* the specification does not describe the invention fully, contrary to s 40(2)(a) of the Act;
* the claims do not define the invention as required by s 40(2)(b) of the Act;
* the Patent was obtained by false suggestion or misrepresentation contrary to s 138(3)(d) of the Act.
4 Directions were given as to the filing of evidence in relation to the allegations of infringement and invalidity and the applicant in due course filed its evidence on infringement. On 21 November 2002 I ordered that the respondents/cross-claimants file and serve all their evidence in answer on infringement and in chief on validity by 10 December 2002.
5 The respondents filed six affidavits by 10 December 2002, including four by Professor James May. In response to a request by the applicant's solicitors, the respondents' solicitors confirmed that these affidavits, together with documents disclosed in the specification in the Patent, constituted their evidence in answer on infringement and in chief on validity. They added that the court book would include a copy of any documents that the respondents would seek to tender at the hearing.
6 On 23 January 2003 the applicant filed a motion for orders that certain paragraphs in the cross-claim be struck out pursuant to O 11 r 16 and/or O 20 r 2 of the Federal Court Rules and/or the incidental power of the Court as follows:
"(a) paragraphs 3, 4 and 5 in relation to priority date;(b) paragraph 6, except in relation to Particular (a)(i) and/or (b)(i) in respect of US Patent No. 4,214,587 in the name of Chester Y Sakura, Jr in relation to lack of novelty;
(c) paragraph 10 in its entirety in relation to lack of inventive step; and
(d) paragraph 12 in its entirety in relation to lack of utility."
7 On the same day the respondents filed a motion seeking leave to amend the cross-claim by:
(a) deleting certain paragraphs in response to the applicant's complaints;
(b) adding two further particulars of the allegation that the invention was not a manner of manufacture.
8 The applicant's motion is based on a number of complaints. The applicant's fundamental complaint is that in a number of respects the respondents have not filed expert evidence that supports or verifies their grounds of invalidity.
9 The first complaint arises out of the respondents' allegations in relation to the priority date of the claims. The respondents plead the following in the cross-claim under the heading "Priority date":
"3. The onus is on the patentee to establish that any of the claims of the Patent is entitled to a priority date earlier than 30 September 1985. The respondents deny that any of the claims is so entitled.4. Claim 1 and the claims dependent on it, namely claims 2, 3, 4, 5, 6 and 7:
(a) are not fairly based on matter disclosed in US patent application no. 656,261; and
(b) claim matter that was in substance disclosed as a result of amending the specification for the Patent.
5. By reason of the matters set out in paragraph 4, none of claims 1 to 7 is entitled to a priority date earlier than 7 November 1988."
The applicant complained that there is no material in the respondents' evidence that addresses the issues raised in par 4(a) and (b) and that the respondents' evidence only deals with novelty and inventive step by reference to the state of knowledge in 1984, there being no evidence led as to the state of knowledge in 1988. The applicant submitted that there was no expert evidence of any comparison between the basic United States application, the complete specification of the Patent as filed or any amended version and that there was no evidence of why the priority date should be no earlier than 7 November 1988. The applicant submitted further that insofar as the respondents' evidence dealt with lack of novelty or lack of inventive step it was directed to the state of knowledge in 1984 and did not address the state of knowledge in 1988.
10 The respondents' response was that no further evidence is needed to establish the later priority date and that the Court can simply look at the relevant documents and reach a conclusion by comparing the contents of the documents. The respondents said further that although they may have not led sufficient evidence to establish their allegation of lack of inventive step and obviousness they wish to preserve the opportunity to make such a case through cross-examination of the applicant's witnesses.
11 The second complaint arises out of the pleading in the cross-claim under the heading "Lack of Novelty":
"6. The invention as claimed in each claim is not a patentable invention within the meaning of section 18(1)(b)(i) of the Patents Act 1990 (`1990 Act') in that it is not novel when compared with the prior art base as it existed before 1 October 1984 or such date as is determined by the Court (`Priority Date').
Particulars (a) Documents published in Australia before 1 October 1984:
(i) US Patent no. 4,214,587 in the name of Chester Y Sakura, Jr either taken on its own or together with US patent no. 2,293,450 in the name of Frederick W Wilkening
(ii) in the alternative to paragraph 6(a)(i), US patent no. 4,214,587 in the name of Chester Y Sakura, Jr either taken on its own or together with US patent no. 1,672,591 in the name of Walter A Wells
..."
The respondents wish to delete subpars (a)(iii) and (b) of the particulars under par 6 so it is not necessary to address the documents in those subparagraphs.
12 The applicant complained that the respondents need expert evidence in relation to the construction of the US patent in the name of Chester Y Sakura, Jr ("the Sakura patent") and that the US patents in the names of Frederick W Wilkening and Walter A Wells cannot be relied upon by the respondents as they are not incorporated by reference in the specification of the Sakura patent. The applicant submitted that the technology of any prior art documents must be elucidated for the Court by a person skilled in the relevant art at the priority date so that the Court may be able to understand the documents and how things actually work. The applicant submitted that reliance on the Wilkening and Wells patents was contrary to the "mosaic" principle, which was considered in some detail by the Full Court of the Federal Court in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513.
13 The respondents' response was that the construction of these documents is a matter for the Court and that expert evidence is not required in relation to the construction of these patents.
14 The third complaint arises out of the pleading in the cross-claim, after the proposed amendments, under the heading of "Lack of Inventive Step":
"10. The invention as claimed in each claim is not a patentable invention within the meaning of section 18(1)(b)(ii) of the 1990 Act in that it does not involve an inventive step when compared with the prior art base as it existed before the Priority Date.
Particulars (a) The cross claimants rely on common general knowledge in Australia, including knowledge of the following matters:
(i) That it was desirable to develop devices, including stents, for maintaining open passageways.
... [further matters are then set out]
(b) The following documents formed part of the relevant common general knowledge or were able to be ascertained, understood or regarded as relevant by persons skilled in the relevant art:
(i) CT Dotter, `Transluminally-placed Coilspring Endarterial Tube Grafts: Long-term Patency in Canine Popliteal Artery', Investigative Radiology 4(5): 329-332, Sept/Oct 1969
(c) The following documents are admitted by the patentee in the specification to have formed part of the relevant common general knowledge:
[ten patents are then listed]."
15 The applicant complained that the respondents have not filed any evidence to support these claims of common general knowledge and obviousness. The applicant noted that at a directions hearing on 21 November 2002, counsel for the respondents had said that there was one link in the respondents' chain of evidence of obviousness that they wished to complete and that the chain remained incomplete. The respondents contended that they should have the opportunity to cross-examine the applicant's witnesses on this issue so as to establish the relevant evidence.
16 The fourth complaint arises out of the pleading in the cross-claim under the heading "Lack of Utility":
"12. The invention as claimed in each claim is not a patentable invention within the meaning of section 18(1)(c) of the 1990 Act in that it is not useful when compared with the prior art base as it existed before the Priority Date.
Particulars (a) If, which is denied, the cross claimant's device comes within any of the claims of the Patent, it is insufficiently resiliently expandable to maintain open the walls of a passageway through a vessel portion."
The applicant complained that no evidence has been filed by the respondents in relation to this allegation and that it is confusing and difficult to comprehend.
17 The applicant submitted that as a result of these issues being raised in the cross-claim and the lack of evidence in support filed by the respondents it is prejudiced. If the cross-claim remains in its present proposed form the applicant will be required to address in evidence issues such as the priority date, lack of novelty, lack of inventive step and lack of utility without knowing what evidence it has to meet or to which it has to respond.
18 The amendments which the respondents seek to make to the cross-claim by way of addition are to add the following particulars to the plea in par 11 that the invention is not a manner of manufacture within the meaning of s 6 of the Statute of Monopolies or is not an invention as defined in the 1990 Act:
"(c) It is apparent on the face of the specification, including the documents incorporated by reference in the specification set out below, that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent from each of the claims.[Ten documents are then listed as incorporated by reference].
(d) It is apparent on the face of the specification, including the documents incorporated by reference in the specification set out below, that the products and methods claimed in each of the claims are each merely a new use of an old substance, device or method.
[The same ten documents are then listed as incorporated by reference]."
19 The applicant's complaints about the proposed amendments are that:
* the ten documents are not incorporated by reference in the specification even though they are mentioned in it;
* the respondents have not filed any evidence as to why the documents mean that the quality of inventiveness is absent from the claims in the patent or mean that the claims are merely a new use of an old substance, device or method.
The respondents responded to these complaints by saying that they can supply particulars and that otherwise the documents speak for themselves.
20 There was little controversy between the parties as to the relevant principles applicable to the jurisdiction to be exercised under O 11 r16 and O 20 r2 of the Federal Court Rules. A number of authorities were cited by both sides, which accepted the proposition that the jurisdiction to grant summary judgment is to be exercised with great care and should only be exercised in a clear case. Put shortly, a cause of action or claim should only be struck out or dismissed in a clear cut case, which establishes that a cause of action or claim is clearly bound to fail: Dey v Victorian Railways Commissioners [1949] HCA 1; (1949) 78 CLR 62; General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69; (1964) 112 CLR 125; Fancourt v Mercantile Credits Limited [1983] HCA 25; (1983) 154 CLR 87; Webster v Lampard [1993] HCA 57; (1993) 177 CLR 598; Munnings v Australian Government Solicitor [1993] HCA 66; (1994) 118 ALR 385; upheld on appeal [1994] HCA 12; (1994) 68 ALJR 429. The principles applicable to the application for summary judgment under O 20 r2 were restated more recently in Australian Building Industries Pty Ltd v Stramit Corporation Limited [1997] FCA 1318.
21 However, two further factors must also be taken into account in the equation for summary judgment. One factor is the case management procedures now adopted by the Federal Court. The other is the fact that directions have been given for the preparation, filing and service of the evidence-in-chief upon which each party wishes to rely. The first factor was recognised in Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388 by a majority of the Full Court (Wilcox and Gummow JJ). Their Honours were considering the power of the court to dismiss a proceeding for want of prosecution. Their Honours said at 394-395:
"This Court has its own rules relating to the summary dismissal of proceedings. It is to them that we must look. Moreover, this Court has a system of case management which is different from the procedures adopted in any of the Divisions of the High Court of Judicature. The critical significance of a case management system was pointed out by Lord Griffiths, with whom the other four members of the House of Lords agreed, in Department of Transport v Chris Smaller (Transport) Ltd [[1989] 1 AC 1197] (at 1207)."
Wilcox and Gummow JJ then referred to Lord Griffiths' recommendation for a radical overhaul of the civil procedure process and the introduction of Court controlled case management techniques and continued at 395:
"In this Court, there is just such a system. From that circumstance we extract two propositions. First, the fundamental differences in procedure render inapplicable most, if not all, of the principles evolved by the English courts in relation to their own procedures. Secondly, the existence of a case management system within this Court is the backdrop against which the relevant rules must be considered and applied. That the Court follows the case management approach is well known to the legal profession."
22 In Caterpillar Inc v Sun Forward Pty Ltd (1996) 36 IPR 411, Drummond J referred to the latter part of this passage in Lenijamar and continued at 413:
"Their Honours went on to observe that O 10 was the foundation of the court's case management system. That order makes it clear that it is an essential feature of the procedures of this court that the conduct of an action is not left to the parties, but is very much subject to the detailed control of the court. As part of this approach, reflected in provisions such as O 10, r 1(2)(h) and (i), the court will endeavour to identify and limit judicial determination to the real issues in dispute, with a view to ensuring the most expeditious and economic disposition of the case."
23 Although the applicant relies upon O 11 r16(b) and (c) of the Federal Court Rules, I consider that the matter ought to be determined by reference to the principles applicable to O 20 r 2 as the cross-claim on its face does disclose reasonable causes of action and, subject to the provision of further particulars in its terms, does not cause prejudice, embarrassment or delay in the proceeding and is not an abuse of the process of the Court.
24 There was a clear issue between the parties as to the manner in which the principles applicable to O20 r 2 were to be applied in the present case. The applicant's case in substance was that if the respondents could not produce evidence to support their claim of invalidity on the grounds of lack of novelty and lack of inventive step, subsequent to an order requiring them to file and serve their evidence-in-chief on invalidity, then they should not be allowed to go to trial on those grounds. Conversely, the respondents' case was that, having acknowledged the incompleteness of their evidence, they may be able to make out a case after cross-examination of the applicant's witnesses, as occurred, for example, in Firebelt Pty Ltd v Brambles Australia Limited [2002] HCA 21; (2002) 188 ALR 280 at 291-292 albeit in the cross-examination by the applicant of the respondent's witness. The respondents submitted that they should be given the opportunity to take this course.
25 I turn to the particular paragraphs in the cross-claim, which the applicant seeks to strike out.
26 Paragraphs 3 to 5 in relation to priority date: I do not consider that I should strike these paragraphs out on the basis that there is no expert evidence of any comparison between the basic United States application, the complete specification as filed and any amended specification. The respondents have made it clear that they will be tendering the relevant documents and they contend that this issue of the priority date can be determined by a textual comparison between the claims of the specification as amended and the text of the complete specification of the United States priority document No 656, 261 and the Australian application as lodged. There is no impediment to such tender and, consistently with the authorities to which I have referred, I am not satisfied that the matters alleged in par 4(a) and (b) of the cross-claim clearly cannot be made out without expert evidence. Much depends on the nature of the textual comparison to be made out. It may well be that the Court is able to make that comparison and reach a conclusion without the aid of expert evidence. The issue which the respondents propose to raise is that neither the United States priority document nor the Australian application as lodged discloses an essential integer of claims 1 to 7, namely "for intraluminal delivery along a passageway". At the present stage, I cannot exclude the possibility that that matter can be resolved without expert evidence. However I consider that the respondents should make their case in these paragraphs quite clear by the provision of further particulars under pars 4(a) and 4(b).
27 These paragraphs must also be considered in the context of how they fit in with the overall cross-claim. The claim of a priority date, different from the priority date relied upon by the applicant, is not of significance on its own. The establishment of a priority date different from that relied upon by the applicant is not of itself a ground for revoking a patent. Rather it provides a basis for a further allegation that a ground exists as at that date for revocation such as lack of inventive step or obviousness. Counsel for the respondents acknowledged that, having regard to the proposed amendments to the cross-claim, the issue of the priority date was no longer relevant to the ground of lack of novelty as the respondents were deleting the reference to documents published in Australia between 1 October 1984 and 7 November 1988. Counsel acknowledged that the issue of the priority date was only relevant to the ground of obviousness.
28 However, as accepted by the respondents, no expert evidence has been led by the respondents as to common general knowledge as at November 1988. Professor James May only provides expert evidence of the state of knowledge in 1984. Further, and relevantly to the issue of obviousness, Professor May says that if he is asked the hypothetical question:
"What would you have done if you had been asked in 1984 to improve on the available means for the treatment of arterial narrowings and occlusions?",
he would have taken a number of steps, including discussing the matter with his colleagues and, importantly, he would have sought the assistance of a biomedical engineer as he was aware at that time that biomedical engineers assisted in the development of medical devices.
29 No evidence from any biomedical engineer has been filed by the respondents. The respondents accepted that such evidence is a link in the chain of evidence they need to file to establish the ground of invalidity of obviousness or lack of inventive step.
30 In summary, the respondents have not filed any evidence-in-chief on the state of knowledge as at November 1988 and its evidence as to obviousness as at October 1984 is insufficient to establish lack of inventive step or obviousness as a ground of invalidity. The respondents' response to this situation is that they have established common general knowledge in 1984 and, a fortiori, in 1988 on the basis that there would be more knowledge in 1988 but what they had established in 1984 would still apply. They further wish to preserve the opportunity to obtain admissions in cross-examination that advance the state of common general knowledge as at 1 November 1988.
31 I am not satisfied that on the material presently before the Court that the respondents will not be able to make out a case of obviousness as at 1 November 1988 at trial. Although they have only filed evidence of knowledge as at 1984 I cannot exclude the possibility that at trial they will be able, in cross-examination of the applicant's witnesses, to obtain answers or admissions as to the state of knowledge as at 1 November 1988 or as to the fact that evidence given by Professor May as to the state of knowledge as at 1984 applied as at 1 November 1988.
32 I do not accept without qualification the respondents' submission that establishing common general knowledge as at 1984 means, a fortiori, that they have established common general knowledge as at 1988 or, indeed, as at any other later year. Knowledge changes from day to day, month to month and year to year. The applicant used knowledge about thalidomide as an example of how common general knowledge about the uses and effects of a substance can change from year to year.
33 Nevertheless a matter of common general knowledge in, say, 1984 does not disappear from the arena of common general knowledge in subsequent years. It may become subject to further elucidation, amplification or qualification but otherwise it remains a matter of common general knowledge. I cannot, therefore, at this preliminary stage rule out the possibility that at trial I may be able to reach the conclusion that the respondents, by leading evidence of a particular matter of common general knowledge as at 1984, or by cross-examination have established the existence of such matter as a matter of common general knowledge as at 1988.
34 Although counsel for the respondents acknowledged a gap in the links of the claim of knowledge warranting a conclusion of obviousness, counsel for the applicant accepted, quite properly, that there was some evidence of common general knowledge in Professor May's first affidavit. This evidence picks up aspects of the particulars of common general knowledge particularised in subpar (a) of the Particulars under par 10 of the cross-claim so that it could not be said that there was no evidence whatsoever of the matters particularised in subpar (a) under par 10 of the cross-claim.
35 I cannot exclude the possibility that at trial the gap in the links of the claim of obviousness may not be filled as a result of cross-examination of witnesses such as occurred in Firebelt Pty Ltd v Brambles Australia Limited (supra). Notwithstanding the direction for the filing of all the respondents' evidence-in-chief on invalidity and the relevant principles of case management to which I have referred, I do not consider it appropriate in a patent infringement and revocation proceeding to strike out from a cross-claim a ground of invalidity where there is a possibility that the ground may be supported by evidence given in cross-examination. It would be an unfortunate situation, leading to possible injustice, if a ground of invalidity based on lack of inventive step or obviousness was struck out because the evidence was incomplete, yet that evidence was completed as a result of answers obtained in cross-examination. The nature of patent infringement and revocation proceedings are such, having regard to the extensive and often complex evidence that needs to be filed, that I consider them ill-suited to applications for summary judgment predicated upon inadequate or incomplete evidence.
36 At the present time I am not prepared to conclude that the respondents are unable to make out their grounds of invalidity without the need for them to file further expert evidence, which will assist the Court in construing the Patent, the claims in it and other relevant documents.
37 In Nicaro Holdings Pty Ltd v Martin Engineering Co (supra), Gummow J (with whom Jenkinson J agreed) said, at 253, that the task of a court when construing claims in a patent and interpreting documents said to amount to prior publication in a situation of a claim of lack of novelty was explained in The General Tire Company & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 485 in the following terms:
"The earlier publication and the patentee's claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of knowledge in such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date ...`When the prior inventor's publication and the patentee's claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters, the meaning of words and expressions used in the art and so forth, the question whether the patentee's claim is new ... falls to be decided as a question of fact.
It is not for the court by its own efforts to put itself in the position of a person skilled in the relevant art at the priority date of the patent on 10 January 1977...'"
These observations are relevant in considering the extent to which evidence needs to be led to support the ground of invalidity based on lack of inventive step or obviousness.
38 The relevant principles for the test of obviousness were recently re-stated by the Full Court of the Federal Court in Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315; (2002) AIPC 91-823 in the following terms:
"39. The uninventive but skilled worker is likely to have a practical interest in the subject matter of the claimed invention. The worker may also be a trained engineer or other scientist or other highly qualified person in a research department, reflecting the changes that have occurred in industry and technology - see Catnic Components Ltd v Hill & Smith Limited (1981) FSR 60 at 242 and Allsop Inc v Bintang Ltd (1989) AIPC ¶90-615 at 39,330-39,331; 15 IPR 686, at 700.40. The construction of the documents involved in a revocation proceeding is a function of the Court, being a matter of law but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date. If the art is one having a highly developed technology, the notional skilled reader to whom the document is addressed may not be a single person but a team, whose combined skills would normally be employed in that art in interpreting and carrying into effect instructions such as those which are contained in the document to be construed - see The General Tire and Rubber Company v The Firestone Tyre and Rubber Company Ltd [1972] RPC 457, at 485 and Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) AIPC ¶90-848 at 38,104-38,105; (1991) 32 FCR 491 at 507.
41. Whether or not an invention involves an inventive step is to be ascertained by reference to the state of common general knowledge in the relevant field at the priority date. The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience that is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual - see Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253, at 293 and Graham Hart (1971) Pty Ltd v SW Hart & Co Pty Ltd [1977] HCA 5; (1978) 141 CLR 305, at 329."
39 Although the Full Court was critical of the nature of the evidence led in that case in a number of respects (see for example, par 44, 45, 49 and 50), I do not consider that the Full Court disavowed the need for expert evidence on issues from which the Court could draw a conclusion on the issues of obviousness and lack of inventive step.
40 It is almost certain that such evidence will be required in relation to many factual areas in issue in this proceeding. Further, it is not for me by my own efforts to put myself in the position of a person skilled in the relevant art at the relevant priority date. It is a matter for the respondents as to the extent of the expert evidence they wish to file. If they file inadequate or incomplete evidence they run the risk that they will not be able to support their grounds of revocation. However, as I noted earlier, I do not consider it appropriate in a complex patent infringement and revocation proceeding to strike out a ground of invalidity in a summary proceeding on the basis that the evidence of a person skilled in the relevant art at the relevant date is insufficient to enable the Court to be put in the position of a person skilled in the relevant art at the relevant time. Such an approach would pre-empt the Court's task in construing the relevant documents.
The reference in par 6 to the patents in the names of Frederick W Wilkening and Walter A Wells
41 The applicant does not complain about the respondents' reliance on the patent in the name of Chester Y Sakura Jr taken on its own but rather objects to the reliance on the Wilkening and Wells patents, which are referred to in the Sakura patent. Those references are found in these terms:
"Some non-analogous prior art shows the existence of `s'-shaped metal wire, cylindrical tension devices (see, e.g., Wilkening U.S. Pat. No 2,293,450). Such devices would not be suitable for use as anastomosis devices even if they had been considered for a number of reasons: (1) They generally are not made of a material which is suitable for implantation into the body. (2) They generally are much too large, not only in diameter, but also in some instances, in the number of `s'-shaped loops. (3) They generally have an undesirable height to diameter ratio. (4) They generally do not have associated barbs which could serve to retain either a snare loop or blood vessels.Wells U.S. Pat. No. 1,672,591 is a nostril dilator that is essentially a lateral spring mechanism comprising a series of loops. Although it is a spring-like device, this patent is considerably different in structure from the preferred embodiment of the present invention in that it is not radially resilient and is comprised of loops instead of `s'-shaped elements. In use of the Wells device, the outward pressure supplied is only in two directions and the Wells device itself would be much too large to be used with a blood vessel. The Wells device also does not have associated barbs which could serve to retain either a snare loop or blood vessels."
42 For the reasons to which I have referred above, I do not consider it appropriate at this preliminary stage to strike out these references on the ground that there is no expert evidence filed by the respondents that explains the construction of the Sakura patent and its references to the Wilkening and Wells patents.
43 The applicant submitted that the Wilkening and Wells patents teach away from the Sakura patent and that the Sakura patent does not incorporate by reference the subject matter of the Wilkening and Wells patent to which it refers. It is true that the reference to the Wilkening patent sets out and explains why "s" shaped metal wire cylindrical tension devices would not be suitable as anastomosis devices and that the reference to the Wells patent sets out and explains why a lateral spring mechanism comprising a series of loops, which is a spring-like device, is not suitable for the preferred embodiment of the invention described in the Sakura patent. Nevertheless, each of these references does refer to tension and spring-like devices.
44 I cannot exclude at this preliminary stage that at trial relevant evidence will emerge in cross-examination, which will enable the Court to construe relevant parts of the Sakura patent and the references to the Wilkening and Wells patents without the assistance of further expert evidence. In this respect, I note the respondents' counsel's observations that the respondents wish to demonstrate that the Wilkening patent discloses a circular spring and that the Wells patent discloses springs. If the Court is unable to construe these patents without the benefit of expert evidence then the respondents run the risk that they will not make out their case of lack of novelty insofar as it based on the existence and publication of the Sakura patent.
45 I am also not satisfied at this stage that the Sakura patent does not incorporate by reference the matters set out and described by reference to the Wilkening and Wells patents, thereby infringing the "mosaic" principle, which was explained by Aickin J (with whom the other members of the High Court agreed) in Minnesota Mining & Manufacturing Co & 3M Australia Pty Ltd v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 293:
"The making of a mosaic prohibited in the case of an allegation of want of novelty is the picking out of individual items of information from prior publications or prior objects and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed. That is an understandable, though not a permissible, process."
46 The manner in which disclosures in prior art were to be considered and used when the ground of invalidity of lack of novelty was raised was considered by the Full Court of the Federal Court in Nicaro Holdings Pty Ltd v Martin Engineering Co (supra). Lockhart J explained the scope of the ground in the following terms 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 unmistakeable 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: [citations omitted]....
The invention must appear in a single disclosure, so it is not permissible to make a pattern or mosaic of or to read together various pieces of prior art in different patents. It is, however, permissible to refer not only to the patent relied on as the source of disclosure but to another patent or other patents incorporated by reference provided that it is plain that the incorporation by reference unequivocally and plainly demonstrates that the draftsman has adopted the cross-referencing system solely as a shorthand means of incorporating a writing disclosing the invention: [citations omitted]."
The applicant placed particular emphasis on Lockhart J's observations at 522. Lockhart J at 522 referred to the following passage from the reasons of the primary judge:
"`If some only of the integers are disclosed in one specification, a reference of the kind in question here to another specification, which contains the remaining integer or integers, no more discloses the combination than does the knowledge possessed by the expert in the area of each of the old integers. Such a reference contains no suggestion whatever that the different integers should be brought together. Indeed, the reference in the specification of the earlier Matson patent to the still earlier patents of Reiter and Sinden is simply dismissive. The logic which forbids the assembly of previously known specifications into a mosaic of the invention, in order to deny its novelty, is not less offended when those specifications are linked only as antitheses. At the least, a real link is requisite: Minnesota Mining & Manufacturing case at 292-3, 298.'"
and then continued:
"I respectfully agree with these statements by his Honour.There is a fundamental problem in the path of the appellant in relying on these earlier patents as disclosing prior art because the cross-referencing is, to in my opinion, impermissible. The reference in the later Matson patent the earlier Matson patent does not disclose a cross-reference merely as a shorthand means of incorporating disclosure of any of the essential integers in the invention disclosed in the Martin patent. Nor by referring to the earlier Matson patent (with its cross-references to the earlier Sinden patent and the Reiter patent) is there disclosure of any essential integers of the invention of the Martin patent."
47 The applicant, adopting the language of Lockhart J, submitted that the reference in the Sakura patent to the Wilkening and Wells patents was dismissive of them. However much turns on the nature and extent of the reference in the Sakura patent to those two patents and the reliance sought to be placed on those references. Gummow J adverted to this factor in Nicaro at 538-539:
"In my view, it will not necessarily be making a forbidden mosaic merely to rely upon two or more documents, none of which by itself discloses material sufficient for an anticipation of the invention in suit. What degree of lack of connection between two or more documents will make them "independent" and so forbid the making of a mosaic to destroy novelty, will be very much a question in the particular case. Much will depend upon the nature of the art in which the skilled addressee is to be treated as versed at the priority date; this appears to have been important in the Sharpe & Dohme case. Plainly, the degree of connection which is stated to exist in the documents themselves will be important. It is difficult to see how mere identification of prior patents as related or prior art would bring them sufficiently closely together for the purpose under consideration here. Again, even where there is a further description of the prior publication, it may nevertheless be that the purpose of the reference is to direct the reader away from it, as disclosing something outmoded or defective."
48 These observations support my conclusion that it is not appropriate in a summary proceeding to disentitle the applicant to contend that it can rely upon the Sakura patent taken together with the Wilkening and Wells patents.
49 Paragraph 10 in relation to lack of inventive step: I have already referred to the fact that there is some evidence of common general knowledge in Professor May's first affidavit, which picks up aspects of the particulars in sub-par (a) under par 10 of the cross-claim. As there is some evidence of those matters it is not appropriate, consistently with the principles to which I have referred, to consider striking out the particulars in sub-par (a) on a summary application.
50 The reference to the paper of CT Dotter in sub-par (b)(i) falls for separate consideration. Professor May refers to his knowledge of the existence of this paper as at 1978. He recalls that in the course of his research and review of interventional techniques in 1978 he identified the Dotter paper by reference to its title but says he did not obtain a copy of it or read it until 1992. As the respondents have not led any evidence to the effect of what it meant to, or taught the skilled addressee in 1984, the applicant submitted that the respondents should not be permitted to rely on this paper and that par (b)(i) of the Particulars under par 10 of the cross-claim should be struck out.
51 Although Professor May had not read the CT Dotter paper in 1984 he was aware of the existence of the paper by reference to its title at that time so that he was aware that an article had been written, which dealt with a coil spring placed transluminally that had a relationship with or effect on long term patency in an artery. Professor May said that in identifying the article, and as a result of the subject-matter disclosed in its title, he came to the conclusion at the time he identified the article that Dotter had developed or was using a technique involving the remote insertion of a coil spring device into an artery of a laboratory animal for the purposes of maintaining patency. The respondents submitted that they had led evidence that the title was common general knowledge as at 1984 and that they would have the opportunity to cross-examine witnesses called by the applicant in relation to the subject-matter of the title.
52 Although there is no evidence of knowledge of the detail of the contents of the paper as at 1984, the nature and content of the title is sufficiently particularised as to identify some aspects of the contents of the paper. That provides a sufficient basis for the conclusion that it is not appropriate to strike out the particular on the ground that it has no evidentiary significance at all in relation to the state of relevant common general knowledge as at 1984.
53 Subparagraph (c) of the Particulars under par 10 particularises ten patents, which are said to be admitted by the applicant to have formed part of the relevant common general knowledge. The applicant's complaint is that there is no expert evidence filed by the respondents in relation to these patents. The respondents propose to tender the patents with any necessary translations at trial and wish to contend that they can be understood by the Court without recourse to expert evidence. They may be able to make this submission good and they should be given the opportunity to do so. If the respondents tender the patents and any necessary translations, I am not satisfied that they cannot make out a case that relevant parts of the patents formed part of the relevant common knowledge. Put another way, consistently with authority, I am not satisfied that the applicant has made out a clear case that the respondents are bound to fail in their reliance on these patents as forming part of the relevant common general knowledge.
54 The applicant submitted that it was prejudiced by the lack of evidence filed by the respondents as it does not know the case it has to meet or what evidence it needs to file in the absence of relevant evidence from the respondents on particular issues. The applicant may face a dilemma in this respect, namely whether to file any evidence, but it knows the case it has to meet from the particulars in the cross-claim. It is the particulars that define the scope of the inquiry into the allegations of material fact.
55 Any prejudice caused by the lack of detail as to what are the relevant parts of the patents in sub-par (c) of the Particulars under par 10 of the cross-claim upon which the respondents will be placing particular reliance can be cured by the respondents supplying particulars of those parts of the patents upon which they will rely as demonstrating particular relevant common general knowledge.
56 Paragraph 12 in relation to lack of utility: The applicant submitted that there was no evidence filed as to this ground and that the particulars were curious and inappropriate as they were directed to the respondents' device and not to the working of the invention disclosed in the patent. This paragraph bases the claim of lack of utility on the proposition that the respondents' device is not useful as it is insufficiently resiliently expandable to maintain open the walls of a passageway through a vessel. It is apparent that it is an alternative plea to the plea of non-infringement as it assumes that the respondents' device comes within one or more of the claims of the patent. If the respondents' device infringes the applicant's patent then it follows that one or more of the claims of the applicant's patent fairly comprehends and covers the respondents' device. Such a finding would resolve the issue of infringement but would leave open the issue whether the respondents' device complied with or fulfilled the promise of the specification, namely, that a device constructed in accordance with the applicant's patent will keep a "passageway" that is an artery open. That is a factual issue to be resolved and on the present state of the evidence is contentious. Professor Thomson, an expert witness called by the applicant says that the respondents' device in situ would hold an artery open (a feature of claim 1 of the applicant's patent). Professor May, called by the respondents says that when the respondents' device is in place the artery does not require holding open and is not held open and there is no risk that it will not remain open of its own accord.
57 The ground of lack of utility is available as a ground for invalidity by virtue of s 18(1)(c) of the Act and it is therefore open to the respondents to argue that the claim which comprehends and covers the respondents' device includes a form of the invention which is not useful. This proposition is recognised in Norton and Gregory Ld v Jacobs (1937) 54 RPC 271 where Lord Greene MR said at 275:
"A claim made in language which upon its true construction would be wide enough to cover the use of reducing agents which are not effective to produce the desired result would be bad for inutility."
The proposition was reiterated by the Privy Council in Minerals Separation North American Corporation v Noranda Mines Ld (1952) 69 RPC 81 at 95:
"It is well settled that, where the scope of a claim includes some method which is useless, the claim cannot be saved by showing that no skilled person would ever try to use that method."
58 I am therefore satisfied that there is no basis at the present time for striking out par 12 of the cross-claim.
59 The respondents' application to amend par 11 of the cross-claim. The amendments proposed raise further particulars of the ground of invalidity that the invention as claimed is not a patentable invention within s 18(1)(a) of the Act, that is to say, it is not a manner of manufacture within the meaning of s 6 of the State of Monopolies. The respondents, in support of this ground, relied upon Commissioner of Patents v Microcell Limited [1958] HCA 58; (1959) 102 CLR 232, 246-251; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15; (1995) 183 CLR 655; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171 at 192-193. In Philips, Brennan, Deane and Toohey JJ said at 664:
"... if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further."
60 I am satisfied that it is open to the respondents to advance the grounds of invalidity raised in the amendments. The applicant does not challenge the existence of the ground but rather objects on the basis that the respondents, in order to establish the grounds, are required to lead evidence in relation to the construction of the documents referred to. Whether that is so, depends on the nature and extent of the references and passages in the documents relied upon by the respondents.
61 As with the earlier construction issues discussed, the matter of the construction of the specification of the patent and the other documents is ultimately a matter for the Court, although the Court may need to be assisted in this respect by the evidence of a skilled addressee. It is a matter for the respondents as to whether they wish to lead such evidence but I consider that at the present time the proposed amendments to the cross-claim should be allowed.
62 However the applicant is entitled to know how or why it is said that the specification and each of the documents incorporated by reference bear upon the issue of the absence of the quality of inventiveness and the issue of new use of an old substance device or method. The respondents should supply further particulars of the amendments so that the applicant knows the case it has to meet. In particular, the respondents should identify the relevant passages in the specification and the documents said to be incorporated by reference upon which they propose to rely.
63 I therefore consider that the respondents/cross-claimants should be given leave to amend their cross-claim in the terms sought, that the relief sought by the applicant in its notice of motion filed on 23 January 2003 should be refused but that the respondents/cross-claimants should provide further particulars of pars 4(a) and (b), 10(c) and 11(c) and (d) of the cross-claim as amended. I will hear the parties as to the costs of the motions.
I certify that the preceding sixty-three (63) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Goldberg J. |
Associate:
Dated: 28 February 2003
Counsel for the Applicant: |
Ms E Strong |
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Solicitor for the Applicant: |
Phillips Ormond & Fitzpatrick Lawyers |
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Counsel for the Respondent: |
Mr D K Catterns QC and Mr A J Maryniak |
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Solicitor for the Respondent: |
Baker & McKenzie |
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Date of Hearing: |
31 January 2003 |
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Date of Judgment: |
28 February 2003 |
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URL: http://www.austlii.edu.au/au/cases/cth/FCA/2003/127.html