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Natural Fibre Pty Ltd v Natra-Cel Insulation Pty Ltd

 

[2002] QSC 18

 

SUPREME COURT OF QUEENSLAND

 

CITATION:

PARTIES:

ROLF KARL HARTELT

ANN JEAN HARTELT

ENVIROFLEX PTY LTD (ACN 092 931 676)

(Second Plaintiffs)

v

NATRA-CEL INSULATION PTY LTD

(ACN 051 607 400)

(First Defendant)

IAN STIRLING

(Second Defendant)

FILE NO:

DIVISION:

Trial Division

PROCEEDING:

Determination of separate question

DELIVERED ON:

7 February 2002

DELIVERED AT:

Brisbane

HEARING DATES:

18, 19 October 2001

JUDGE:

Wilson J

ORDER:

The separate question be answered as follows:

(a)Neither the first defendant nor the second defendant has infringed patent no 526490;

(b)The patent should be revoked for want of novelty.

CATCHWORDS:

INTELLECTUAL PROPERTY – PATENTS – INFRINGEMENT – WHAT CONSTITUTES INFRINGEMENT – where plaintiff the patentee of process for installing cellulose fibre insulation – where defendant was business competitor of plaintiff – whether defendant infringed plaintiff’s patent

INTELLECTUAL PROPERTY – PATENTS – GRANT, EFFECT AND REVOCATION OF LETTERS PATENT – REVOCATION – where plaintiff alleged defendant infringed plaintiff’s patent – where defendant counter-claimed for revocation - whether plaintiff’s patent should be revoked for lack of novelty or lack of inventive step

CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 275, applied.

Clark v Adie (1875) LR 10 Ch App 667 at 675, applied.

Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400, applied.

Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 507, applied.

Gillette Safety Razor Company v Anglo-American Trading Company Ltd (1913) 30 RPC 465 at 480, applied.

Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 286, 293 and 295, applied.

N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 253-254, applied.

Nicaro Holdings Pty Ltd & Others v Martin Engineering Co and Another (1990) 16 IPR 545 at 549, applied.

Populin v HB Nominees Pty Ltd (1982) 41 ALR 471, applied.

R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 537, applied.

Radiation Ltd v Galliers & Klaerr Pty Ltd (1938) 60 CLR 36 at 51, applied.

Sydney Cellulose Pty Ltd v Ceil Comfort Home Insulation Pty Ltd [2001] FCA 1350, N 513 of 2000, 20 September 2001, followed.

Patents Act 1952 (Cth) s 44, s 45

Patents Act 1990 (Cth) s 43, s 233

Patents (World Trade Organization Amendments) Act 1994 (Cth), s 3(1)

Trade Practices Act 1974 (Cth)

COUNSEL:

FG Forde for the plaintiffs

SCG Burley for the defendants

SOLICITORS:

Stephens & Tozer for the plaintiffs

Bennett & Philp for the defendants

[1]  WILSON J: The second plaintiffs are the patentees (pursuant to assignment from the original patentee) for standard patent no 526490 and the first plaintiff is the sole and exclusive licensee for Queensland for the patent. They allege that the defendants have infringed the patent and that they have engaged in misleading and deceptive conduct in contravention of the Trade Practices Act 1974. The defendants deny that they have infringed the patent and counterclaim that the patent should be revoked for invalidity.

 

[2] On 6 April 2001 Muir J ordered that the issue of infringement as raised in paragraphs 6 and 7 of the statement of claim should be determined as a separate question prior to determination of any other matter, and that the separate question might include any issue relating to the revocation and validity of the patent. The separate question came before me on 18 and 19 October 2001.

 

[3] On the hearing the following material was placed before me:

 Pleadings

Amended statement of claim filed 25 July 2000

Amended defence and counterclaim filed 20 June 2001

Reply and Answer filed 4 May 2001

Affidavits

The plaintiffs elected not to call evidence or to cross-examine, but to rely on the defendants’ material, which consisted of the following affidavits -

 

Ian James Stirling sworn 6 November 2000 and filed 29 March 2001

 

Ian James Stirling sworn 27 March 2001 and filed 28 March 2001

 

Ian James Stirling sworn 10 May 2001 and filed 11 May 2001

 

Anthony James Bennett sworn 27 March 2001 and filed by leave 18 October 2001

 

Anthony James Bennett sworn 11 May 2001 and filed 11 May 2001.

 

Exhibits

 

Certified copies of six US patents (copies of which had already been exhibited to affidavits), a certificate as to the dates when they became available for public inspection in the Australian Patents Office in Canberra, and a coloured picture of the defendants’ equipment were admitted into evidence and marked as exhibits.

 

[4] The invention is a process, briefly summarised in the consistory clause of the patent in these terms:

 

“... the invention consists in a method of insulating the ceiling of a building having ceiling lining material, comprising the steps of placing loose fill insulating material directly above the ceiling lining material to a desired thickness, applying a coating of liquid glue or adhesive to the surface of the insulating material remote from the lining material and allowing the glue or adhesive to dry or set forming a cohesive skin on the surface of the insulating material.”

 

[5] The patent application was made by the original patentee filing a provisional specification on 24 April 1981 (the priority date of the claims - Patents Act 1990 (“the 1990 Act”) ss 43, 233; Patents Act 1952 (“the 1952 Act”) ss 44, 45), and subsequently the patent was granted under the Patents Act 1952 for 16 years from 30 March 1982. The term was extended to 20 years (expiring on 30 March 2002) by the Patents (World Trade Organization Amendments) Act 1994 (Cth), ss 3(1) and 4 (which amend s 67 of the Patents Act 1990 (Cth)).

 

[6] The allegations in paragraphs 6 and 7 of the amended statement of claim are as follows:

 

“6.The First Defendant and/or Second Defendant:-

 

(a)have since in or about 1998 used the process the subject of the patent without the express authorisation of the First Plaintiff and/or Second Plaintiff;

PARTICULARS

(i)The First Defendant has used or otherwise exploited the subject process in the conduct of its business and in particular in respect of cellulose installed in buildings and houses by applying a coating of liquid glue or adhesive to the surface of insulating material remote from the lining materials so as to allow the glue or adhesive to dry or set forming a cohesive skin;

 

(ii)Further, the First Defendant and or Second Defendant has applied the liquid glue or adhesive by spraying to the exposed surface of the insulating material.  The liquid glue or adhesive comprises PVA glue diluted with water.

 

(iii)The First Defendant and or Second Defendant has engaged in such conduct on a widespread and continual basis in respect of buildings and houses in which it has installed cellulose throughout Queensland.

 

(iv)the Plaintiffs are unable to further particularise the circumstances of infringement until after the completion of all interlocutory steps herein;

 

  1. In the premises the conduct of the First Defendant as particularised in paragraph 6 aforesaid constitutes an infringement of the patent of the First Plaintiff and the Second Plaintiffs within the meaning of that term as used in the Patents Act.”

 

[7] The defendants allege in their pleading -

 

(a)that they have not infringed the patent (amended defence and counterclaim paragraphs 4 and 5);

 

(b)that the patent is invalid for lack of novelty and lack of inventive step (amended defence and counterclaim paragraphs 2 and 3);

 

(c)that the first defendant’s process was publicly known and available at the priority date – “the Gillette defence”  (amended defence and counterclaim paragraph 5A).

Infringement

[8] A patent may be infringed by direct imitation (textual or literal infringement) or by taking the essential features of it but having differences in inessential features (the pith and marrow doctrine).  See Clark v Adie (1875) LR 10 Ch App 667 at 675; Radiation Ltd v Galliers & Klaerr Pty Ltd (1938) 60 CLR 36 at 51. It is the latter which is alleged in the present case.

 

[9] The plaintiffs’ action is against Natra-cel Insulation Pty Ltd (the first defendant) and its managing director and secretary, Ian Stirling (the second defendant). It is tolerably clear from the amended statement of claim that the plaintiffs allege that both defendants have infringed the patent: see paragraph 6 and the prayer for relief, although paragraphs 7, 8 and 9 refer to infringement by the first defendant. Despite counsel for the plaintiffs’ submissions to the contrary, I am satisfied that the issue of which of the defendants has infringed the patent (if there has been an infringement) is for determination pursuant to the order of Muir J. The first defendant is a competitor of the first plaintiff, both companies being engaged in the manufacture, supply and installation of cellulose insulation. There is no evidence that either process is used by the second defendant. The dispute is as to whether the process used by the first defendant infringes the plaintiffs’ patent.

 

[10]  The specification of the plaintiffs’ patent contains ten claims - one independent claim and nine dependent claims. The Court must construe the claims in order to determine whether there has been infringement. The principles it should apply were summarised by Sheppard J in Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400 as follows -

 

“(1)The claims define the invention which is the subject of the patent.  These must be construed according to their terms upon ordinary principles.  Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.

 

(2)It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves.  To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.

 

(3)Nevertheless, in approaching the task of construction, one must read the specification as a whole.

 

(4)In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.

 

(5)If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document.  But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.

 

(6)A patent specification should be given a purposive construction rather than a purely literal one.

 

(7)In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.

 

(8)The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.

 

(9)Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.

 

(10)If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid.  But the specification must be construed in the light of the common knowledge in the art before the priority date.”

[11] It was mutually accepted by both counsel that the integers of the first claim (ie the independent claim) are -

Insulating the ceiling of a building having ceiling lining, comprising the steps of:

(i)placing loose fill insulating material directly above the ceiling lining material to a desired thickness;

(ii)applying a coat of liquid glue or adhesive to the surface of the insulating material remote from the lining material;

(iii)allowing the glue or adhesive to dry or set forming a cohesive skin on the surface of the insulating material.

 

For the plaintiffs’ infringement action to succeed, each of those integers must be present in the first defendant’s process. See Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 286. The pith and marrow doctrine is applicable only within the text of the claims: Populin v HB Nominees Pty Ltd (1982) 41 ALR 471. Further, if the integers of the independent claim are not all present, then there cannot be an infringement of any of the dependent claims. In any event, there is no evidence from which the Court could find that any of the dependent claims has been infringed.

[12] The plaintiffs admit (in paragraph 5 of the reply and answer) that the first defendant’s process is as described in paragraph 5 of the amended defence, viz -

“(a)the installation of cellulose insulation by spraying or blowing the cellulose insulation into the ceiling beneath a roof of a house or building or directly onto vertical surfaces such as walls or under roofs;

 

(b)one step only whereby the glue and cellulose fibre are mixed together before being applied to a surface as cellulose insulation;

 

(c)the cellulose fibre:

 

(i)being totally impregnated with glue;

(ii)setting as a complete block.”

 

[13]  Thus the defendants contend that the plaintiffs’ patent involves at least two stages - the laying of the insulating material and the placing of adhesive on top of it, while the first defendant’s process involves only one stage in which the insulating material and the adhesive are mixed before being installed. The plaintiffs contend that in each process the glue is then allowed to dry or set, the difference being that under their patent the result is a cohesive skin on the surface of the insulating material whereas under the first defendant’s process the result is a cohesive skin the full thickness of the insulating material.  They contend that the differences in timing and the degree of saturation are immaterial alterations to the patented methodology, and that the first defendant’s conduct infringes the “substance” and or the “pith and marrow” of their patent. The defendants contend that integers (ii), (iii) and (iv) of the independent claim are absent from the first defendant’s process, and so there is no infringement.

 

[14]  The second integer is “placing loose fill insulating material directly above the ceiling lining material to a desired thickness”. What is meant by “loose fill insulating material” in the claim? The plaintiffs contend that both processes involve the placing of loose material. Under the patented process the material is dry when poured and is subsequently wet with the glue which saturates the material only to a certain level, so forming a coat. Under the first defendant’s process the material is already wet with the glue, which sets after it is poured, saturating the material down to the full thickness of the level poured. The defendants contend that “loose fill insulating material” in the claim refers to material with no wetting or adhesive qualities added to it. Because the expression is ambiguous, it is permissible to resort to the body of the specification to ascertain its meaning. In the description (on page 2 of the specification) of the deficiency in the prior art which this invention was supposed to remedy, the following appears -

 

“The loose fill insulating material which is commonly a cellulose fibre material has the disadvantage that when it is used as ceiling insulation it can be disturbed either by maintenance people working in the attic space of the building or by air flow through the attic space, causing dust problems and in some severe situations even causing displacement of the insulating material.”

 

I conclude that the loose fill material referred to is dry material liable to be disturbed or displaced. The first defendant’s process does not involve the placing of such material; its process is materially different from the patent. The degree of saturation is really a characteristic of the end product, rather than the process by which it is attained, and so is strictly irrelevant to the question of infringement of a process patent.

 

[15]  The third integer is “applying a coating of liquid glue or adhesive to the surface of the insulating material remote from the lining material”. The plaintiffs contend that this is involved in both processes, the only differences being insubstantial differences in the timing and degree of saturation of the insulating material. They contend that penetration of the glue into the fibre is foreshadowed in the patent. The defendants contend that there is no application of a coating employed in the first defendant’s process at all. The dispute comes down to what is meant by the application of a coating to the surface of the insulating material. In my view the claim relates not to the penetration of some of the glue into the insulating material (whether or not that occurs in fact) but rather to the application of a stabilising skin over material which has been laid in loose, dry form. That is not a step in the first defendant’s process.

 

[16]  The fourth integer is “allowing the glue or adhesive to dry or set forming a cohesive skin on the surface of the insulating material”. The plaintiffs contend that in both processes the glue is set and allowed to dry, and that the formation of a cohesive skin is just a question of degree. The defendants contend that in the first defendant’s process the insulating material sets like a solid block with no skin on top of it. I consider that the defendants’ contention is the correct one.

 

[17]  The same patent was considered by Conti J in Sydney Cellulose Pty Ltd v Ceil Comfort Home Insulation Pty Ltd [2001] FCA 1350, N 513 of 2000, 20 September 2001, where there was an issue whether the application of a cellulose fire retardant spray in connection with the process of installation of cellulose insulating material in buildings infringed the patent. Having regard to the public nature of a patent, this Court will accord particular respect to an earlier interpretation of it by a court of co-ordinate jurisdiction, but of course it is not bound to follow such an earlier interpretation if satisfied that it is erroneous.

 

[18]  His Honour said at [50] -

 

“Furthermore an essential characteristic of the ‘glue or adhesive’ (see pages 3 and 3a of the specification) is that it must be allowed ‘to dry or set forming a cohesive skin on the surface of the insulating material’. I draw specific attention to the word ‘on’ in such context as this indicates the location where the skin is formed. This suggests that the ‘glue or adhesive’ must possess intrinsic properties that enables [sic] it to bind itself and then form a cohesive skin ‘on’ as distinct from ‘in’ the surface of the insulating material. Accordingly it cannot be rightly maintained upon the true construction of the claim and specification that the word ‘adhesive’ includes any liquid which, in fact, when applied to the insulating material causes both substances to adhere to one another. The claim and specification in no way require that there be some sort of interaction between the ‘liquid glue or adhesive’ and the surface of the insulating material. Furthermore, the claim and specification require that the liquid glue or adhesive dry or set as distinct from any of the insulating material drying or setting.”

His construction of the patent was criticised by counsel for the plaintiffs, who submitted -

(a)that he should have adopted a purposive rather than a purely literal interpretation; and

(b)that he overlooked the fact that fact some of the glue does penetrate the insulating material - see page 4 of the specification.

 

However, in my respectful opinion the construction adopted by His Honour was not unduly literal. He correctly contrasted spray applied to insulating material which sunk into the cellulose fibre causing it to shrink and create a little crust with a glue or adhesive sprayed on top of the fibre which binds to itself thereby forming a cohesive skin. The first claim refers to the application of a coating of liquid glue or adhesive to the surface of the insulating material and to the glue or adhesive being allowed to dry or set forming a cohesive skin on the surface of the insulating material. (Underlining added by me.) In other words, it is referring to an adhesive which fixes itself to the exterior of the loose insulating material, rather than being absorbed into it. There is no relevant ambiguity warranting resort to the body of the specification to ascertain its meaning. In any event, I do not think that the reference to “penetration” on page 4 of the specification, in the context of a discussion of the comparative advantages of different glues, has the capacity to change that interpretation. In short, I respectfully agree with Conti J’s interpretation.

 

[19]  In summary, I have concluded that the second, third and fourth integers of the independent claim are not present in the first defendant’s process.

 

[20]  It will be apparent from my discussion below of the Tufts and Wenzel patents (both of which were published in Australia prior to the invention of the process in the plaintiffs’ patent) that processes for the simultaneous application of insulating material and glue or adhesive had been disclosed before the priority date of the plaintiffs’ patent. In other words, the first defendant has made out its further defence to the infringement claim -  that its process was in the public domain prior to the alleged invention: Gillette Safety Razor Company v Anglo-American Trading Company Ltd (1913) 30 RPC 465 at 480; R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 537.

[21] The infringement claim has not been made out against the first defendant.

Invalidity

 

[22]  The defendants allege that the patent is invalid for lack of novelty and lack of inventive step. In their counterclaim they seek its revocation pursuant to s 138(3)(b) of the 1990 Act - ie on the ground that it is not a patentable invention.

 

[23]  “Patentable invention” is defined in s 18 of the 1990 Act which, so far as presently relevant, provides that a patentable invention is one which -

 

“(b)when compared with the prior art base as it existed before the priority date of that claim:

 

(i)is novel; and

(ii)involves an inventive step ...”

 

[24]  This patent was granted under the 1952 Act. Lack of novelty and lack of inventive step (having regard to what was known or used in Australia on or before the priority date) were grounds of revocation under that Act: see s 100(1)(g) and (e).

 

Pursuant to s 233(4) of the 1990 Act a patent granted under the 1952 Act is not invalid “on any ground that would not have been available against the patent under the 1952 Act”.  In N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 Lockhart J considered the overlap between the 1952 Act and an invalidity suit under the 1990 Act. At 253-254 he said -

“..if a ground of revocation under the 1990 Act omits an element which was a necessary part of a ground under the 1952 Act, the patentee has the benefit of it. On the other hand, if a ground under the 1990 Act contains an element not previously present under the 1952 Act, it cannot apply in aid of revocation of the 1952 Act patent. In short, a 1952 Act patentee is not to be worse off than he would have been if the 1952 Act had continued to operate, but he may be better off if the 1990 Act treats a former element of a ground of revocation as being no longer necessary.”

 

In the present case, the same grounds were provided for in both Acts, and prima facie there is no apparent inconsistency to be resolved by reference to the transitional provisions of the 1990 Act. The only potential problem in this area relates to the publication in Australia of a US patent, which I shall refer to as “the Wenzel patent”, more than 50 years before the priority date. I shall return to this below.

 

Lack of novelty

 

[25]  The defendants rely on documents published in Australia before 24 April 1981 (the priority date) to establish lack of novelty. These consist of six prior patents, which were publicly available, namely -

 

AffidavitOpen for inspection

referencein Australia

 

Ex 1Tufts3606154AJB 1631 August 1972

 

Ex 2Wenzel1718507AJB 116 December 1929

 

Ex 3Thomson3957209AJB 152 March 1977

 

Ex 4Waggoner3861599AJB 1418 September 1975

 

Ex 5 Bennett1978125AJB 1229 March 1935

 

Ex 6Mello4236654AJB 1020 January 1981.

 

The issue is whether these prior documents disclosed to the skilled reader (ie one skilled in the relevant art) each of the essential features of the claim. There need not be literal disclosure to establish lack of novelty, but it would be insufficient if the skilled reader were required to exercise any inventive ingenuity or to take any inventive step in order to progress from the process disclosed by a prior document to that in the patent: Nicaro Holdings Pty Ltd & Others v Martin Engineering Co and Another (1990) 16 IPR 545.

 

[26]  The only evidence in this regard is that of Mr Stirling, whom I accept as a reader skilled in the relevant art.

 

[27]  Counsel for the plaintiffs stressed that the Wenzel and Bennett patents are for processes, while the others are for products. That is so, but as counsel for the defendants submitted, the point of looking at each of the earlier patents is not to see what was claimed as an invention, but rather to see what was disclosed to the skilled reader which might rob the process in the plaintiffs’ patent of novelty.

 

[28]  I have already determined that the construction of the patent contended for by the defendants is correct - that is, a two stage process involving the laying of dry insulating material and then the application of an adhesive skin on top of it. The novelty of the patented process will be defeated if the publication of any of the earlier patents involved the disclosure of such a two stage process. The defendants submitted that on that construction the novelty of the patented process was defeated by the prior publication of the Wenzel and Tufts patents. (They made the alternative submission that even if I accepted the construction advanced by the plaintiffs, with the result that the first defendant’s process amounts to an infringement, the patent was nevertheless invalid because the process used by the first defendant was disclosed by the publication of each of the six  US patents. Having regard to my determination on the construction point, it is not necessary to consider this alternative submission or the US patents other than Wenzel and Tufts.)

 

[29]  The Tufts patent was for a gun or nozzle for spraying a mixture of dry particulate material and adhesive on to a surface. It was described as particularly useful in applying thermal insulating material to building walls, but as not being limited to such use. I accept the evidence of Mr Stirling that the Tufts patent disclosed (to the skilled reader) two methods of operation: (i) spraying the liquid glue or adhesive mix into the stream of insulating material as it left the main nozzle; and (ii) spraying a glue mixture out of a nozzle so that it wet the surface to be covered, then blowing the insulating material through the main nozzle on to the surface to be covered (which had been coated with glue), then spraying a coating of glue out of the first nozzle on to the surface of the cellulose.

 

[30]  The first of these methods is outside the process in the plaintiffs’ patent. Prima facie the second method involves three stages, while that in the plaintiffs’ patent is a two staged process. However, according to Mr Stirling, the first step of coating the surface to be insulated with glue or adhesive would not be necessary if the surface to be insulated were horizontal (such as a ceiling) and if the insulation were placed on the upper side of that surface. In a case of infringement, the presence of some additional feature would not save something from being an infringement: CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 275. The issue of novelty being the reverse of infringement, for a process to be deprived of novelty it is sufficient that all of the steps in it had previously been disclosed, and it does not matter that a further step had also been disclosed. In short, I am satisfied that the patented process was not novel because it had previously been disclosed in the Tufts patent.

 

[31]  The Wenzel patent related to “improvements in the art of heat insulation of walls and the like”. I accept the evidence of Mr Stirling that it disclosed (to the skilled reader) two methods of operation: (i) blowing macerated paper towards the surface to be covered, with two glue injectors spraying glue through the stream of material prior to the material reaching the surface to be covered; and (ii) applying glue and paper successively in alternate coatings to build up an insulating mat - a process which could be repeated as required.

 

[32]  The first method is outside the process in the plaintiffs’ patent, but, like the second method in the Tufts process, the second is prima facie within it.

 

[33]  The Wenzel patent was published in Australia on 6 December 1929, more than 50 years before the priority date of the plaintiffs’ patent. Under s 158(1) of the 1952 Act, the plaintiffs’ patent would not be invalid by reason of prior publication in Australia if that publication occurred more than 50 years before the priority date. It is not necessary to rule on the difficult question of whether the effect of the transitional provisions in the 1990 Act is such that a process disclosed by the Wenzel patent could still form part of the prior art base for the purpose of determining the novelty of the plaintiffs’ process, as it is incorporated by reference into the Bennett patent, which had particular reference to the incorporation of a fire resistant material into a mat produced in accordance with the Wenzel patent, and which was published in Australia within the 50 year period: Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Pty Ltd (1980) 144 CLR 253 at 295; Nicaro Holdings Pty Ltd & Others v Martin Engineering Co and Another (1990) 16 IPR 545 at 549.

 

[34]  In summary, then, I have concluded that the patented process lacks novelty by reason of the prior publication of the integers of the independent claim.

 

Lack of inventive step

 

[35]  In paragraph 2 of their amended defence and counterclaim the defendants pleaded that the invention defined in the patent does not involve an inventive step when compared with the prior art base (as defined in the 1990 Act) as it existed before the priority date. They gave the following particulars -

 

“The invention, the subject of the patent would have been obvious to a person skilled in the relevant art in the light of common general knowledge in Australia before the priority date in combination with information made public in Australia before the priority date in a single document or in related documents:

 

a.The prior art information being United States Patents 1,718,507 (Wenzel and Janisch), 1,978,125 (Bennett), 4,236,654 (Mello), 3,606,154 (Tufts), 3861599 (Waggoner), 3957209 (Thompson) had become common general knowledge in Australia before the priority date of the patent.

 

b.Each integer of the claims has been previously published on no less than 6 occasions in the following United States Patents 1,718,507 (Wenzel and Janisch), 1,978,125 (Bennett), 4,236,654 (Mello), 3,606,154 (Tufts), 3861599 (Waggoner), 3957209 (Thompson) and was a matter of common general knowledge.”

 

In their reply and answer, the plaintiffs responded as follows -

 

“2.As to paragraph 2 of the Defence, the Plaintiffs deny that the invention defined in Patent 526490 is not a Patentable invention within the mention of subsection 138(3) of the Patent Act 1990 (‘the Act’):

 

(a)........

 

(b)The information contained within Patent number 526490 does involve an inventive step when compared with the prior art base as defined in the Act) [sic] as it existed before the priority date of those claims:

  

(i)The invention the subject of the Patent 526490 would not have been obvious to a person skilled in the relevant art in the light of common general knowledge in Australia before the priority date as it was a novel and inventive method of building insulation devised particularly though not solely as ceiling  insulation. This can consist of a method of insulating the ceiling of a building having ceiling lining material, comprising steps of placing loose-fill insulating material directly above the ceiling lining material to a desired thickness, applying a coating of liquid glue or adhesive to the surface of the insulating material remote from the lining material and allowing the glue or adhesive to dry or set forming a cohesive skin on the surface of the insulating material.

 

(ii)The prior art information as alleged by the Defendants as being comprised within the US Patents had not become common general knowledge in Australia prior to 30 March 1982 (‘the priority date of the Patent’)* with those Patents not disclosing the method of insulating the ceiling of a building having ceiling lining material and comprising the steps as outlined in the complete specification for patent 526490.

 

(iii)Each integer of the claims has not been previously published when closely scrutinising the US Patents listed and was therefore not a matter of common general knowledge.”

 

* It was mutually accepted that the priority date was in fact 24 April 1981.

 

[36]  The plaintiffs have taken three points -

 

(a)that the invention would not have been obvious to a person skilled in the relevant art in the light of common general knowledge in Australia before the priority date;

 

(b)that the prior art information contained in the US patents had not become common general knowledge in Australia before the priority date; and

 

(c)that each integer of the claims had not been previously published in the US patents.

 

[37]  I have already found that each integer of the independent claim had previously been published in the Tufts and Wenzel patents.

 

[38]  The expression “common general knowledge” is used in s 7(b) of the 1990 Act, although the 1952 Act referred simply to “what was known or used in Australia on or before the priority date”. Neither counsel submitted that, in the context of this case, there is any significant difference between the requirements of the two Acts in this regard.  (On this point, see the discussion in Lahore Patents, Trade Marks & Related Rights at para [12,825].) Under both it is necessary to consider whether the allegedly inventive step would have been obvious to someone skilled in the relevant field having regard to material which such a person would have had as part of his or her background knowledge. Mere prior publication is not enough to bring something within the common general knowledge, although under s 7 of the 1990 Act common general knowledge can be considered separately or together with information made publicly available in a document or documents if a skilled person could reasonably have ascertained and understood it and regarded it as relevant to work in the field. The Tufts and Wenzel patents each involved two (alternative) processes, and I have found that the process in the plaintiffs’ patent was not novel because it had been disclosed in one of the processes in each of those US patents. However, there is no evidence from which I could determine whether those processes disclosed in the US patents were within the common general knowledge of skilled persons before the priority date.

 

[39]  The remaining point is whether the process in the patent would have been obvious to a non-inventive person skilled in the field: Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Pty Ltd (1980) 144 CLR 253 at 293 per Aickin J. As Burchett J observed in Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 507 -

 

“Even a small inventive element is sufficient to sustain a patent. However, there is a great difference between the simple idea which really breaks new ground and an unimaginative extension of well known techniques into a closely similar area. Of course, if the area is not closely similar, so that an imaginative leap (even perhaps a small one) is required to perceive that the techniques are applicable to it, there will be invention.”

 

I cannot begin to resolve this because it necessarily involves (inter alia) testing the allegedly inventive step against the common general knowledge, and the extent of the common general knowledge has not been proved.

 

[40]  In short, want of inventive step has not been established.

 

Conclusion

 

[41]  The separate question be answered as follows:

 

(a)Neither the first defendant nor the second defendant has infringed patent no 526490;

 

(b)The patent should be revoked for want of novelty.

 
Close

Editorial Notes

  • Published Case Name:

    Natural Fibre P/L & others v Natra-Cel Insulation P/L & another

  • Shortened Case Name:

    Natural Fibre Pty Ltd v Natra-Cel Insulation Pty Ltd

  • MNC:

    [2002] QSC 18

  • Court:

    QSC

  • Judge(s):

    Wilson J

  • Date:

    07 Feb 2002

Litigation History

No Litigation History

Appeal Status

No Status