American opti cat Corp. v Allergan Pharmaceuticals Pty. Ltd.

Federal Court of Australia|1988-04-22|Before: Gummow J

These proceedings were commenced in 1986, that is to

say, before the passage of the Jurisdiction of Courts

(Miscellaneous Amendments) Act 1987. The significance of that

The applicant is the registered proprietor of standard patent No. 537136 which was granted pursuant to the Patents Act 1952 ("the Patents Act") for an invention entitled "Improvements in Security Means" ("the patent"). The provisional specification was lodged on 15 February 1980, and the complete specification was lodged on 5 February 1981. The term of the patent is a period of 16 years commencing on 5

February 1981. The patent was sealed on 27 September 1984.

The applicant alleges that the first respondent has imported into Australia from the United States the two Hirsch security systems which I have mentioned; the importation of those products together with the advertising for sale, offering

for sale and selling of those products are alleged to be

infringements of the patent by the first respondent. It is further alleged that the advertising for sale, offering for sale and marketing of those products by the second and third

The applicant also complains of alleged contraventions

of s. 52 of the Trade Practices Act 1974 ("the TP Act")

together with contraventions of sub-ss. 53 (c) and (g) of that Act; the jurisdiction of this Court thus initially was attracted by s. 86 of the TP Act. The complaint arises from the circulation of various brochures and other written material by the first, second and third respondents. It is then said that the fourth, fifth and sixth respondents have aided, abetted, counselled or procured the contraventions by the corporate respondents and further that they have been directly or indirectly knowingly concerned in or parties to

such contravention, within the meaning of s. 75B of the TP Act.

Little time was spent at the trial in dealing with the trade practices allegations, and their fate was seen by both parties as following the outcome of the patent dispute. This was because the complaints made of the advertising material, in essence, are directed at assertions made therein which would be accurate if the respondents were successful in the patent dispute; if the applicant were successful in the patent dispute, then the parties indicated to the Court that the future dissemination of these advertising materials probably would be dealt with by consent orders or other means not

requiring further resolution of any dispute by the Court.

Accordingly, I turn to the patent matter. The patent contains seven claims and attention has been directed principally to claim 1, on the footing that 1f the products in question infringe claim 1, there is no need to deal with claims 2-6 inclusive. However, the applicant pressed an allegation of infringement of claim 7 as not necessarily following the fate

In addition to resisting the allegations as to infringement, the respondents, by cross-claim, put in question the validity of claim 1 (and the other claims, so far as 1t 158 necessary for the purposes of the case to do so). Section 115 of the Patents Act enables revocation to be sought in this way

By the cross-claim, allegations were made as to want of novelty and as to obviousness. A considerable proportion of the material in the affidavits which were filed was devoted to those topics. But at the commencement of the hearing the Court was informed that the respondents no longer pressed lack of novelty and obviousness. The respondents still pressed an allegation of want of fair basing (within the meaning of sub-s. 40 (2) and sub-para. 100 (1) (c) of the Patents Act), together with a further and fresh allegation of lack of utility (within

the meaning of sub-para. 100 (1) (h) of the Patents Act).

The trial proceeded on the basis that it was only with these two grounds that the attack on validity was concerned. I

should also note that Counsel were agreed that if the applicant

was successful in its allegation of infringement and in resisting the attack on validity, then questions of the form of injunctive and ancillary relief and of the conduct of any inquiry as to damages or for an account of profits, should

Allegations also are made in the cross-claim that the applicant has made to the second respondent unjustifiable threats within the meaning of s. 121 of the Patents Act and by those threats also contravened s. 52 and sub-s. 53 (g) of the TP Act. This aspect of the case may also be left until

resolution of the patent infringement and validity issues.

The cross-claim also denies jurisdiction in the Court to entertain the proceedings for patent infringement, presumably on the basis that there is no associated matter within the meaning of s. 32 of the Federal Court of Australia Act 1976. No submissions were made in support of that allegation. I have treated it as a pleader's conceit (albeit an embarrassing one in the technical sense) in the light of

American Optical Corp. v Allergan Pharmaceuticals Pty. Ltd. {1985] ATPR 40-539.

The Body of the Patent Specification As I have indicated, the invention is entitled

"Improvements in Security Means". The complete specification opens with a general description of the invention and a

statement of the problem to which it was directed. It does so

This invention relates generally to security systems. More particularly, it relates to access control systems which may be used for controlling access to, for example, safes, strong rooms, buildings, security areas in buildings, computer terminals and electronically stored information such as credit records, just to mention a few of the applications where security is required.

Many types of access control systems have been devised over the years, from the earliest forms of key operated locks, to the sophistication of combination locks and the relatively recent advent of electronically coded card key systems and readers. None of these systems has been' particularly satisfactory, however, since more and more sophisticated procedures have been developed to defeat them. Keys can be duplicated, combinations can be broken by trial and error or detected by observation of an authorized person opening the combination controlled lock and electronically coded card keys can be forged.

It has previously been proposed to provide an access control system incorporating a manually actuable keyboard, the keys of which are selectively actuable to generate a code which, if correct, will provide the necessary access. This system has the advantage that there is no key or card which can be lost, stolen or forged, but conventional keyboard systems suffer a similar disadvantage to combination locks in that it is possible for an observer to note the combination of keys actuated by an authorized person. The present invention provides an improved keyboard security apparatus by which this problem is overcome.

According to the invention there 1s provided security apparatus comprising:

a keyboard having an array of selectively actuable keys;

key value designation means with a random number generator for generating random digits and a memory storage for storing the random digits in successive locations of a digit storage array corresponding to the array of the keys;

display means comprising an array of display units, each corresponding to a respective key and associated to a respective location of the digit storage array and register means to register for each key actuation the value designated to the actuated key;

characterised in that a multiplexing circuit is provided for successively transferring the random digits from the locations of the digit storage array to the respective associated display units and that the register means comprises a microprocessor detecting the location of a key in the keyboard array as the key is actuated and interrogating the multiplexing circuit to register the current value of said key by determining that location of the digit storage array, which is associated to the display unit corresponding to the actuated key, and entering the digit stored in the said location of the digit storage array into a number store.

The keys may be in the form of push-buttons and the display units may comprise light-emitting diode or liquid crystal displays located adjacent the respective buttons or carried by the buttons so as to display the indicia through the outer ends of the buttons.

The complete specification goes on to describe in the following

apparatus the random scrambling of the designated key values prevents an observer from detecting a correct code merely by

noting the or m which particular are actuated since the position of the keys for the correct code will be changed.

In a simple access control system, access May be obtained solely by operation of the keyboard. In more sophisticated systems, however, additional security equipment may be included. For example, the system may also include a magnetic code reader which must receive a correctly coded instrument such as a key or card to enable [sic} the keyboard. The passage I have italicised indicates the promise of the invention concerns a specific and limited aspect of insecurity; this will be of importance in dealing with the allegation of

The complete specification then describes. one pacticular embodiment of the invention by reference to the accompanying drawings and goes on to detail the best modes for carrying out the invention by reference to those drawings. This is in compliance with the requirement of sub-s. 40 (1) of the Patents Act that the full description of the invention shall include "the best method of performing the invention which is known to the applicant". In the course of submissions on issues both of validity and of infringement, reference was made to this portion of the specification, but it is appropriate that I defer any treatment of it until I deal with those submissions. However, I should at this stage set out the final paragraph of the treatment of the preferred embodiment, as an indication of the significance to be attached to the embodiment:

invention is in no way limited to the details of the illustrated embodiment and that many modifications and variations will fall within the scope of the appended claims. The body of the specification concludes with the following:

Apparatus according to the invention may be incorporated in any security system for controlling physical access to a security area or for controlling access to data

storage equipment and/or information stored in such equipment.

It will be apparent from what I have said that the problem to which the invention 1s directed concerns conventional security devices using a keyboard or keypad, the keys of which are selectively actuable to generate a code which provides access to a particular facility. An example, to which reference was made in the evidence, is provided by the type of keyboard used in banks as part of a system permitting access by customers to "automatic tellers", such keyboards containing a configuration of ten keys in fixed physical relation each to the others, each key bearing fixed on its face a number between "oO" and "9", there being no duplication of numbers. In such cases the selection by a person using the facility of a particular sequence of keys representing a code for that person may be observed by other persons who, if sufficiently

The invention addresses the problem by providing for a keyboard, each of the keys of each does not bear on its face a

fixed consecutive number; rather, a random number between "0"

and "9" is assigned to each key on each activation of the device. The code of the operator remains constant, but on each activation of the device each number 1s assigned to a key by a process of selection that is not deterministic but random, and the device causes these changes to appear in the numbers displayed on the keys in each activation of the device. The location of each key that is pressed by a particular operator may still be apparent to an observer but no key will display a fixed number. Hence, security will be improved, because the observer will not be able to detect the code of the operator merely by noting the order in which the particular keys are

The invention is the subject of seven claims. Each is for a "security apparatus", not for a method of achieving security. The last claim is for a security apparatus "substantially as hereinbefore described with reference to the accompanying drawings". I turn now to the text of the remaining claims, numbered 1 to 6 inclusive, and in doing so indicate that the debate before me turned in large measure upon the construction of the portion of claim 1 set out below which is italicised. The claims proceed in familiar fashion with a progressive narrowing of the invention claimed, "the patentee hoping that somewhere along the line he may find a claim sufficiently narrow to be valid and sufficiently wide to catch an infringer": Sir Arthur Dean, "Claiming Clauses" (1949) 4 Res

Judicatae 144 at 148. The text of claims 1-6 is as follows:

a keyboard having an array of selectively actuable keys;

enerator for generating random digits and a memory storage tor storing the random digits in successive locations of a digit storage array corresponding to the array of the keys;

characterized in that a multiplexing circuit is provided for successively transferring the random digits from the locations of the digit storage array to the respective associated display units and that the register means comprises a microprocessor detecting the location of a key in the keyboard array as the key is actuated and interrogating the multiplexing circuit to register the current value of said key by determining that location of the digit storage array, which is associated to the display unit corresponding to the actuated key, and entering the digit stored in said location of the digit storage array into a number store.

Security apparatus according to claim 1, characterized in that the multiplexing circuit provides a key actuation signal to the microprocessor at the time the display unit corresponding to the actuated key is switched by the multiplexing circuit and the microprocessor registers the current value of the actuated key as being that digit in the digit sotrage [sic] array which is displayed by the display means at the time of the key actuation signal.

Security apparatus as claimed in claim 1 or claim 2, characterized in that the display units comprise light emitting diode or liquid crystal displays.

Security apparatus as claimed in any of the claims 1 to 3, characterized in that the display units are located adjacent the respective keys.

Security apparatus as claimed in any of the claims 1 to 4, characterized in that the key value designation means is inoperative until an additional key is actuated.

(6) Security apparatus as claimed in any one of the preceding claims, characterized in that there 1s further provided comparator means to compare a sequence of values entered into the number store upon sequential operation of a number of said keys with a sequence of values representing the preselected code and output means conditioned by the outcome of that comparison.

Expert evidence was presented primarily on affidavit, and this was supplemented by oral evidence from Dr. A.K. Burston and Professor J.R. Seberry (for the applicant) and Mr. D.J. Morgan (for the respondents). There were differences in emphasis between the opinions expressed by the experts on various topics, but there were no conflicts of substance on the meaning of the technical terms, the state of the prior art, or

the elements in the preferred embodiment of the invention.

Infringement I deal first with the two Hirsch products. For the

purposes of this case, there is no relevant distinction or

The essential issue is whether, within the meaning of claim 1, the Hirsch products contain a key value designation means with a random number generator for generating random digits, and a memory storage for storing the random digits in successive locations of a digit storage array corresponding to the array of the keys. It is agreed between the parties that the Hirsch products have (i) a random number generator, (11)

for generating random digits, (iii) a memory storage, and that

the memory storage stores random digits in locations corresponding to the array of the keys. Nevertheless, the respondents submit there 1s no infringement of claim i. That submission is only to be understood by further consideration of the nature and method of operation of the Hirsch products. There was, I should indicate, no substantial difference between the parties as to the description of the Hirsch products, the debate being whether once their nature and operation is understood, the Hirsch products are security apparatus comprising the integers claimed in the crucial passage in claim

Mr. Morgan, who gave evidence in a clear and concise manner, described the nature and operation of the Hirsch

The device is switched on by the operation of a key marked "start" and there is established an initial configuration in the digit storage array consisting of digits 1 to 9 and 0, in the order corresponding to their consecutive positions on

Mr Morgan described each of these positions in the initial configuration as a "pigeon hole" or "location"; the initial configuration was visually represented (in a sense metaphorically,

T es lst location 2nd location 3rd Location 1 2 3 r "| | 4th location Sth location 6th location

"seeding" random digits by operation of a Programme in a microprocessor.

By this means there is generated a random number being 0 or a number between 1 and 9; there follows a process described as "swapping", commencing with the Oth location, and following with the lst and 2nd locations and so on.

If the first random number generated or "seeded" was the digit 5, that digit would be placed in Oth location and the zero would be "swapped" for the number in the Sth location. A second digit would then be generated by the random number generator. On the assumption that this was 7, 7 would be placed in the ist location and the

In this sense, there has been a "swap". Likewise, if the next random number was 9, the digit 9 would be swapped for the number in the 2nd location and the digit "2" would be placed in the 9th location. This procedure is followed until the configuration has been, as it were, completely swapped. The process of 10 swaps was described as Mr. Morgan as one shuffle.

This process is then repeated 7 times by what was described as 7 shuffles.

At the end of each shuffle sequence, there 1s always a digit storage array containing the numbers 0 to 9 without duplication of any number. What happens is that the order of the numbers is changed by each shuffle.

It may happen in the course of a shuffle that the random number generator produces a digit which is the same digit as it has already produced in the course of the same shuffle. For example, the random number generator might produce for the lst location, containing the digit 1, the digit 7, which is in the 7th location. The digit 7 1n the 7th location is then swapped for the digit 1 in the 1st location. Suppose the random number generator then generates the number 7 for the 2nd location, which contains the digit 2. There is no difficulty. The number in the 7th location (i.e. 1) is swapped for the digit in the 2nd

Mr. Morgan explained, no special step needed to deal with "duplication" in the way there is with a device containing the preferred embodiment of the Rehm invention. I shall deal further with this question of duplication later in _ these reasons.

If the process of swapping is on the 5th location and the random number generator picks the digit 5, there is no problem. The digit can be swapped with itself, in effect leaving it where it is. Alternatively, it may be ignored and another digit picked to make an actual swap for this location; the process of swapping continues so as to deal with the next location until each location has been swapped and the _ shuffle

In his evidence, Mr. Morgan said under cross- examination that "a random number generator is measured more by its output than by the precise internal works. If it is uniform on a domain, then it is a random number generator". He was then asked "By 'uniform on a domain' you mean having equal probability of generating any number within that domain?" He responded "Yes - equal frequency, equal likelihood". The domain, in the example I have been considering, is zero and the

manner, then it might be fairly suggested that random numbers

were not being generated by operation of the Hirsch device. But I think that in the end Mr. Morgan agreed with senior counsel for the applicant that the circumstance that the numbers in the pigeon holes were arranged in the initial configuration in a certain pattern before the first random Mumber was generated and the swapping commenced did not, of itself, mean that the operation of the system failed to satisfy the description of:random number generation. As Professor Seberry pointed out, whilst the initial configuration with the Hirsch product is fixed, each location is filled at random by each swap because the seed number used for the swap is randomly

The submissions for the respondents, in effect, if not in form, fasten upon the phrases "for generating random digits" and "for storing the random digits" in claim 1 as indicating a claim to no more than the generation of random digits that 1s immediate and direct so that that which is generated is that which is stored, with the result that there is no claim to the generation of random digits involving (as is the case with the Hirsch device) a series of steps in the course of which random numbers are generated but each is not transferred directly to

The respondents pray in aid for this construction of the claim two considerations flowing from material outside the body of claim 1. The first concerns the description of the preferred embodiment in the body of the complete specification.

That embodiment describes a device in which the digit storage

array which (unlike the Hirsch device) contains no digits at the start of operations; rather, the microprocessor generates random digits or "seeds" between "0" and "9". In the words of the preferred embodiment (with reference to drawings): The random number generator generates a first random digit which is transferred toa digit store within the working member 25. Successive digits are then taken from the random number generator and, after rejection of any duplicated digits, these are stored at successive locations in the digit store

to build up a random sequence of the 10 digits 0 to 9.

The respondents submit that this assists their suggested construction of claiml1. This treats the expression "for generating random digits" and the expression "for storing the random digits" as limited to the generation of the first random digit and its direct transfer to a digit store, followed by the generation of the second random digit with its transfer directly to the digit store, and so on, subject only to the rejection of duplicated digits and avoidance of an end result whereby the configuration contained 10 locations but, for example, the digit 3 appeared in two of them, and the digit 7 did not appear at all. (The passages in the preferred embodiment dealing with rejection of duplicated digits are of importance also in considering the attack on the validity of claim 1 for want of fair basing; I deal with that aspect

The settled rule is that in ascertaining the width of a particular claim, it is not permissible to vary or qualify

the plain and unambiguous meaning of the claim by reference to

the body of the specification; provided that if an expression in the claim is not clear, then it is permissible to resort to the body of the specification to define or clarify the meaning

of the words used in the claim: Interlego AG v Toltoys Pty. Ltd. (1973) 130 CLR 461 at 478-479. The use of the word "for"

in patent claims to introduce expressions such as "for generating" and "for storing" has been deprecated: Blanco White, "Patents for Inventions", 4th Ed., s 2-213. However, the present is not a case which illustrates the concerns expressed by the learned author. Further, whilst resort may be had in the circumstances I have indicated to the body of the specification, it also must be remembered that it usually is not legitimate, in the absence of an express reference in the claim itself, to import into a claim features of the preferred embodiment. The preferred embodiment cannot properly be used to introduce into the definite words of a claim an additional definition or qualification of the patentee's invention: Erickson's Patent (1923) 40 RPC 477 at 491. This (with some justification) the applicant complains, is what is attempted by the respondents' submission as to the significance of the

preferred embodiment in the construction of claim 1.

The second matter to which the respondents refer as an aid to construction requires attention to claim 1 in its original form, before it was amended in the course of examination before grant in the Patent Office. Section 157A of the Patents Act (formerly sub-s. 88 (3) of that statute) makes this reference permissible, by providing that in construing a

complete specification as amended, the Court may refer to the

In its unamended form, the second paragraph of claim l

read: Key value designation means to designate values to the keys and including designation scrambling means operative randomly to scramble the designation of key values. That paragraph was sufficiently widely expressed apparently to catch the Hirsch device, because it encompassed any means of scrambling the designation of key values. Then, the respondents submit, it is clear that the amendment was made to exclude all means of scrambling the designation of key values,

other than that means which is described in the preferred

Reference was made in the evidence to two Japanese patent applications (No. 54-102844 and No. 54-102845, both dated 13 August 1979) which were cited in the course of the examination of the application which led to the grant of the patent presently in suit. The Japanese prior art was described and analysed in the evidence, particularly that of Dr. Burston and Mr. Morgan. It differed markedly from the random generation and selection found both in the preferred embodiment in the patent, and in the Hirsch device, because it involved a set of fixed ten value displays, one of which was selected by the user; there was no device that generated a random pattern

However, as the respondents agree, on one view of it

in its unamended form, claim 1 would encompass the Japanese prior art as well as the other means of scrambling the designation of key values found in the Hirsch device and in the preferred embodiment of the patent. In that setting, there is much substance in the submission of the applicant that the recasting of claim 1 may have been in response to the citation of the Japanese material and that this, to put it broadly, was achieved by introducing a computer based mechanism in contrast to the unintelligent mechanism presented by the citations of

For these reasons, I place no significant weight upon the two special factors referred to by the respondents as

I turn now as to the submissions as to construction by the applicant. The applicant submitted that there was infringement on the proper reading of the claim, without resort to any body of special learning by which there may be liability without "textual" infringement in a direct or immediate sense. The applicant's argument proceeded by the following steps:

method of achieving or improving security, but for a security apparatus;

(b) that apparatus comprises, inter alia, a key value

designation means with (i) a random number generator for generating random digits and with (ii) a memory storage for storing the random

in successive locations of a digit storage array corresponding to the array of the keys;

there will be a random number generator for generating random digits if the product 1s random digits and the precise algorithm for generating the random digits that are stored in the memory storage is not a matter of concern;

this is so even if the generation of the digits stored in the digit storage array comprises more than one stage or step (as is the case with the swapping and shuffling in the operation of the Hirsch device) such that each step itself might be described as generating random numbers;

the word successive describes the relation of the locations each to the others, the locations taken as a configuration corresponding to the array of the keys;

it is not to the point that the procedure for generating and storing digits does not operate so that all steps are gone through to produce and store one such digit, and then repeated to produce the next digit, and so on; it is enough that all such digits are produced and stored, without the temporal limitation or sequence I have described;

accordingly, it is not of concern that in the course of random number generation, one puts random numbers in "locations" and then overrides

still has a random number generator' that generates those random digits which are the digits stored in the memory storage, within the

I accept those submissions. It follows, in my view,

that the claim for infringement of claim 1 is made out.

The applicant also urged there was infringement of claim 7. This, as I have indicated, claims "security apparatus substantially as hereinbefore described with reference to the accompanying drawings". The operational sequence is illustrated by the flow sheet in figure 7, and I have set out that passage from the body of the specification dealing with the preferred embodiment which details the method of generation of random numbers and the transfer to the digit store. It is apparent from what I have there said that there is absent from any security apparatus described by reference to _ the accompanying drawings, the features of swapping and shuffling which I have described when dealing with the Hirsch device. The question is whether the Hirsch device is nevertheless a security apparatus substantially as described in the body of

the specification with reference to the accompanying drawings.

drawings into the claim: Raleigh Cycle Co. Ltd. v Miller & Co.

Ltd. (1948) 65 RPC 141; Utilux Pty. Ltd. v AMP Incorporated (1974) 48 ALJR 17 at 20. The preferred embodiment, read with

the drawings (particularly figure 7), makes 1t quite plain

that, as an essential feature, the claimed device takes successive digits seeded by the random number generator and after rejection of any duplicated digits (in the sense I have earlier described) each digit is stored at successive locations in the digit store. This is not what takes place with the

swapping and shuffling procedures in the Hirsch products.

The applicant submitted that, nevertheless, the two devices, the Hirsch and that described in the preferred embodiment, operate in the same way in the sense that the user enters a code and a microprocessor works out the numbers to be associated with the keys; what was involved in the working out of the numbers was, it was said, so closely similar as not to be substantially different. In my view, to approach the matter in this fashion is to do so at too general a level of of abstraction and comparison. I say this bearing in mind the force of the term "substantially" as appearing in claim 7: Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59; Blanco White, "Patents For Inventions", 4th Ed., s 2-209; Fox,

"Canadian Patent Law and Practice", 4th Ed., p. 359.

Nor, in my view, is this a case where the differences presented by the swapping and shuffling procedures in the Hirsch device may be characterised as a subterfuge and an attempt to take full advantage of the invention while avoiding trespass upon the literal meaning of the claim by a modification so small as to be insignificant and to have no material effect upon the way the invention as claimed in claim

7 works: Commonwealth Industrial Gases Ltd. v M.W.A. Holdings

Pty. Ltd. (1970) 44 ALJR 385 at 388 per Menzies J. As senior counsel for the respondents pointed out, the facts in Catnic

Components Ltd. v Hill and Smith Ltd. [1982] RpPc 183, are

illustrative of the type of situation with which Menzies J. had been dealing in the Australian case. The remarks of Lord Diplock ([{1982] RPC at 242-243) as to "purposive" rather than "purely literal" construction, may be understood in that light. It may be for this reason that in Populin v H.B. Nominees Pty. Ltd. (1982) 59 FLR 37 at 42-43, the Full Court of this Court in essence treated the House of Lords as having confirmed that what is called for in construing claims 1s a common sense assessment of what the words used convey, in the context of the then-existing published knowledge, and did not treat their Lordships as having propounded any novel principle or new category of "non-textual" infringement; cf. Rhone-Poulenc

Agrochimie SA v UIM Chemical Services Pty. Ltd. (1986) 12 FCR 477 at 496-497.

There being no "textual" infringement, the question remains whether the substance of the invention as claimed in claim 7 has been taken. In my view, the essential integers of claim 7 include the generation of random digits as described in the passage I set out earlier, detailing the preferred embodiment, with the rejection of duplicate digits as therein indicated. This conclusion is enforced by the flow-sheet drawings in Figure 7 showing the operational sequence of the microprocessor based circuit of the preferred embodiment. This may be contrasted with the integers of the Hirsch

products. The current state of the law in Australia as to the

"pith and marrow" doctrine is discussed in Populin v H.B.

Nominees Pty. Ltd. (1982) 59 FLR 37 at 41-43. The effect of the structure and sequence of the claims in the subject patent is progressively to narrow the area of monopoly claimed. The form of claim 7 is to leave open and unclaimed what has been done with security apparatus which includes the swapping and shuffling integers of the Hirsch products. The "pith and marrow" doctrine, therefore, does not bring the respondents

Fair Basing The respondents submit that claim 1 of the patent is

not fairly based on the matter described in the body of the complete specification.

Section 40 of the Patents Act, so far as is material, provides:

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

(b) shall end with a claim or claims defining the invention.

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

The phrase "fairly based" appears in other provisions of the Patents Act. In s. 45, 1t appears in a context concerned with the priority dates of claims in a complete specification allegedly fairly based on matter disclosed ina

provisional specification. It was with s. 45 in an earlier form, and with analogous British legislation, that Fullagar J. and Lloyd-Jacob J., respectively, were concerned in Societe des

Usines Chimiques Rhone-Poulenc v Commissioner of Patents (1958)

100 CLR 5, Re Mond Nickel Company Ltd.'s Application [1956] RPC

189 at 194, and Imperial Chemical Industries Ltd.'s Application

[1960] RPC 223 at 228. In sub-s. 45A (2), the phrase "fairly based" is directed to the fixing of the priority date of the claim in certain petty patent specifications by reference to earlier applications. This Court was concerned with s. 45A in

Coopers Anima) Health Australia Ltd. v Western Stock Distributors Pty. Ltd. (1986) 67 ALR 390; affd. (1987) 76 ALR

In 8s. 141 of the Patents Act, the expression "fairly based" is used to describe the necessary relationship between a claim made in an Australian complete specification or petty patent specification and matter disclosed in a _ basic application which has been made in a "Convention country" within the meaning of Part XVI. It was with the term in this latter setting that Gibbs J. dealt in F. Hoffman La Roche & Co.

AG v Commissioner of Patents (1971) 123 CLR 529 at 538-539.

It has been pointed out that the question of "fair basing" of a claim upon the body of a complete specification {involving a comparison within the one document) is not

altogether analogous to questions of "fair basing" of claims

upon earlier documents, such as a provisional specification or basic application: Blanco White, "Patents For Inventions", 4th Ed., s 2-115. Nevertheless, it was accepted by the parties before me that what was said in the cases I have mentioned gave a guide to the approach that should be taken in dealing with sub-s. 40 (1), although the comparison is not between documents

I should add that s. 35 of the Patents Act 1903 stipulated that the provisional specification must "fairly describe the nature of the invention", and s. 36 stated that the complete specification must "fully describe and ascertain the invention and the manner in which it is to be performed, and must end with a distinct statement of the invention claimed". The requirement of "fair basing" of claims upon matter disclosed in the body of the specification or in some other document was introduced into the present Patents Act from British law, though its origins in that country are by no means clear: Blanco White, "Patents for Inventions", 4th Ed., s

Commissioner of Patents (supra) Fullagar J. (at 11) spoke of the necessity for "a real and reasonably clear disclosure". In my view, it is this characteristic which makes the claim

"fairly" based on that disclosure: cf. Coopers Animal Health

Australia Ltd. v Western Stock Distributors Pty. Ltd. (1987) 76 ALR 429 at 447-448. As will become apparent, whilst accepting

what Fullagar J. had said, the present respondents in effect

pitched the standard rather higher in their submissions.

The criteria propounded by Lloyd-Jacob J. and approved and adapted by Gibbs J., in the authorities to which I have earlier referred, express in more detail the general approach indicated by Fullagar J. Adapting those criteria to s. 40 of the Patents Act, one asks the following:

(1) Is the alleged invention as claimed in claim 1 broadly (i.e. in a general sense) described in the body of the specification?

(2) Is there anything in the body of the specification which is inconsistent with the alleged invention as claimed in claim 1?

(3) Does claim 1 include as a characteristic of the invention a feature as to which the body of the specification is wholly silent?

More succinctly, Mr. Blanco White QC would ask whether "the idea" of the invention claimed in the claim in question was to be found in the body of the specification: "Patents For

In the present case, the respondents submitted that

First, they submitted that if in the body of the specification it is stated as a requirement that there be a means of avoiding duplication of digits, and that if claim 1 on its proper construction contains no such requirement, it

follows claim 1 is not fairly based because a device with or

without any means of avoiding the duplication of digits would be within claim 1 and this meant claim 1 was for an invention more widely delimited than the invention described in the body of the specification. I have earlier in these reasons described how the Hirsch products deal with the possibility of

Secondly, they submitted that if there is in the body of the specification a requirement for a viewing restriction and if no such requirement is contained in claim 1, on its proper construction, it follows that claim 1 1s not fairly based. This is said to be because what 1s claimed, viz. a device with or without any viewing restriction to prevent the display being read by persons other than those directly in front of the display, is "wider" than the invention described

The preferred embodiment, in referring to the drawings figure 1 and figure 2, states that a person operating the keyboard "must look straight down the tubes 22 to read the characters displayed". This is an importation of a viewing restriction and it may be correct that this is an essential integer in claim 7. That, however, does not necessarily mean that claim 1 is not fairly based on matter disclosed in the body of the specification. The respondents referred to

passages in Coopers Animal Health Australia Ltd. v Western Stock Distributors Pty. Ltd. (1986) 67 ALR 390 at 406. There,

the question concerned the claim in a petty patent and the

issue was one of fair basing of that claim upon matter

disclosed in the provisional specification for a standard patent: sub-s. 45A (2) and s. 51. The question was approached by asking whether an essential integer of the claim was an essential integer of the invention described in the

I accept the submission of counsel for the applicant that when the question is one of fair basing of a claim upon matter disclosed either in the body of the specification or in a provisional specification, it is not appropriate and is, indeed, misleading to seek to isolate in the body of the specification or in the provisional specification "essential integers" which correspond with the essential integers in the claim in question. I should add that the applicant directed no such criticism to the treatment of "fair basing" in the Full

It is important when dealing with "fair basing" to bear in mind the different functions served by the body of a specification and the claims. As s. 40 itself indicates, the task of the body of the specification is fully to describe the invention including the best method of performing it known to the applicant. The description primarily is addressed to "all and sundry who may wish to construct the device after the patent has expired": Ludlow Jute Co. v Low (1953) 70 RPC 69 at 76. #='The function of the claims is to define the invention and mark out the ambit of the patentee's monopoly, and primarily is addressed to potential rivals: see generally Fox, "Canadian

Patent Law and Practice", 4th Ed., pp., 165-166, 193-196. The

circumstance that something is a requirement for the best method of performing an invention does not make 1t necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the

In his final address on this issue, senior counsel for the respondents gave the impression somewhat of resiling from

reliance upon what had been said in Coopers Animal Health

Australia Ltd. v Western Stock Distributors Pty. Ltd. (supra)

at first instance, in favour of a somewhat different proposition. This was that whilst 1t does not have to be specific, the inventor has to tell the reader "what 1s involved essentially" in his invention, so that one then asks whether the alleged invention as claimed is broadly described in the body of the specification, having regard to the essential character of the invention as described therein. Even that proposition, in my view, distorts the first of the propositions propounded in the judgments of Lloyd-Jacob J. and Gibbs J. to which I have referred. The inquiry in the present case is as I have expressed it in the immediately preceding

I have earlier in this judgment set out the provisions

of much of the body of the specification, including the consistory clause. That clause is reflected in claim 7. However, in my judgment, on its proper construction, claim 1 does not claim a viewing restriction means. I have set out earlier in these reasons the concluding paragraph of the passage which contains the preferred embodiment, with the statement therein that the invention is in no way limited to the details of the preferred embodiment. One of those details in the preferred embodiment concerns the restriction of viewing, as described in figures 1 and 2. Applying the principles I have described, it 1s not correct to deny for this reason that claim 1 is fairly based on the material disclosed

I return now to the first ground urged by the respondents as disclosing a want of fair basing. The passage from the preferred embodiment, which I have set out when dealing with infringement makes it plain that the particular means of rejecting duplication of digits is an essential integer in claim 7. However, in my view, there 1s lacking in claim 1 any essential integer directed to the prevention of configurations with duplication of digits. This follows from what I said earlier in these reasons when dealing with infringement of claim 1. Bearing in mind the principles I have earlier discussed, in my view it is not correct that the invention as claimed in claim 1, without specification therein of a means of rejecting duplicated digits, is not "fairly

based" on matter described in the body of the specification.

The respondents do not suggest that claim 1 may lack utility simply for want of commercial practicality in results achieved by the invention so claimed: Bannon, "Australian Patent Law", s 156. The respondents rely for inutility of

First, it: is submitted that a device according to claim 1 does not contain any viewing restriction as I have earlier discussed, and that a device according to claim 1 containing scrambled digits will still not be useful for the purpose claimed if the values of the keys in use can be read by an observer other than the operator of the device. It is submitted that what must be considered is the usefulness of the device as claimed for the purpose claimed, viz. for the purpose of ensuring that it cannot be used by an observer not being the operator. The device as claimed was contrasted with the Hirsch products which contain a sophisticated viewing restriction means which greatly limits the angles from which

the display may be observed by persons other than the operator.

The basic principle has been formulated as follows in Fawcett v Homan (1896) 13 RPC 398 at 405 per Lindley LJ: If an invention does what it 1s intended by the Patentee to do, and the end attained is

itself useful, the invention is a useful invention.

What the invention is intended to do is a matter to be

gathered from the title and the whole of the specification:

Blanco White, "Patents for Inventions", s 4-403. A distinction may be drawn between a case where a patentee claims a result and bases his claim on the production of that result and the case where a patentee merely points to certain advantages that will accrue from the use of his invention: Fox, "Canadian

The title of the patent is "improvements in security means". The body of the specification commences with a statement of the problem, viz. that none of the existing types of access control systems have been particularly satisfactory and in particular a previous proposal to provide an access control system incorporating a manually actuable keyboard the keys of which were selectively actuable to generate a code which, if correct, would provide the necessary access, suffered a disadvantage in that it would still be possible for an observer to note the combination of keys actuated by the

It is then said that the present invention provides *an improved keyboard security apparatus by which this problem is overcome". I take the reference to "this problem" being "overcome"to be a reference to the possibility for an observer to note the combination of keys actuated by an authorised person. However, this passage has to be read by a passage, after the intervening consistory clause, as follows: In the operation of the above described apparatus the random scrambling of the designated key values prevents an observer from detecting a correct code merely by

noting the order in which the particular keys are actuated since the position of the

In a simple access control system, access may be obtained solely by operation of the keyboard. In more sophisticated systems however additional security equipment may be included .

The phrase "from detecting a correct code merely by

At a glance

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Judgment (253 paragraphs)

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Cases Cited (18)

Cited By (3)