Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [2015] FCA 651 | Case summary | Zoe

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Britax Childcare Pty Ltd v Infa-Secure Pty Ltd

[2015] FCA 651

Federal Court of Australia|2015-06-30|Before: Middleton J

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Source facts

Court

Federal Court of Australia

Decision date

2015-06-30

Before

Middleton J

Source

Original judgment source is linked above.

Judgment (106 paragraphs)

[1]

INTRODUCTION 1 This is the fourth judgment in this proceeding. The various claims and cross-claims that have been made in this proceeding are set out in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (2012) 290 ALR 47 ('Construction Judgment'). I adopt the same terms and abbreviations in these reasons for judgment. I assume a familiarity by the reader of these reasons with the earlier judgments in this proceeding, particularly the Construction Judgment. 2 This judgment concerns the validity of certain claims of the Patents in suit, and an issue relating to infringement, namely whether the allegedly infringing Infa products are within the scope of certain integers of the claims of the relevant patents in suit. The parties agreed that upon delivery of these reasons, they would consider appropriate orders, including timetabling (if necessary) for the consideration and determination of any outstanding issues. 3 Between the date of the first judgment in this proceeding and the last hearing in February 2013, there was a great deal of procedural disputation between the parties. This disputation was mainly concerned with the reception of expert evidence in relation to infringement, although some aspects impacted on the validity dispute. 4 I make this preliminary observation. The parties and the expert witnesses now have had the opportunity to address the Construction Judgment, and to apply the Court's construction of the principal terms in the context of the claims in suit. Since the Construction Judgment the Court and the parties have moved on from the specific terms and phrases chosen by the parties for interpretation by the Court at the time of the Construction Judgment. It was hoped that by delivery of the Construction Judgment the parties could resolve their dispute, but this has not occurred. Therefore, it has become necessary to revisit the construction of each patent in context, in dealing with the allegations of infringement and invalidity. 5 As I said at [280] of the Construction Judgment: Before construing each term or phrase in issue, the following consistencies claimed by the expert witnesses should be noted. The expert witnesses assert in the joint expert report that Issues 1, 2, 3, 4, 5, 6, 8, 9, 10, 11 and 12 represent universal points of difference between Mr Newman and Mr Hunter, which are common across the patents where these terms are used. This does not necessarily mean, however, that once a decision as to the construction of one of these "Issues" is reached, it will apply globally to each claim in suit. Each must be assessed in the context of the claim in which it appears using, if necessary, the specification of the patent to aid construction. The context must not be forgotten even though we are focussing on particular words or phrases. 6 I have already referred to some relevant principles of construction in the Construction Judgment. I stress that in further construing the claims in each patent, I have made no reference to the alleged infringing products. It is clearly impermissible to do so. 7 I make the observation that in this proceeding, Infa has taken an overly literalistic view of the terms of the claims in each patent, where such an approach is inappropriate in the context of each claim in each Patent. Whilst Britax suggested that the Court took such an approach in one instance in the Construction Judgment (in relation to the terms "ends" and "carried by"), that approach was conducted in context. I arrived at that interpretation because of the plain meaning to be given to those terms - I was not persuaded that any surprising or absurd result would arise by adopting the natural meaning of the terms "ends" or "carried by" in the context of the patents I was considering. That view stands despite an invitation by Britax to re-consider those terms. 8 Britax further submitted that Mr Hunter's opinion as to the construction of the terms "ends" and "carried by" was correct and therefore my findings in relation to those terms in the Construction Judgment were incorrect. 9 There is no reason in principle for the Court not to correct an error made in interlocutory reasons. That said, I am not persuaded by Britax's submissions or Mr Hunters' evidence in relation to the construction of those terms, and I do not depart from my reasons and findings in relation to construction of those (or any other) terms in the Construction Judgment. 10 Now that the parties have had the opportunity to place before the Court submissions and evidence to deal with the principal terms referred to in the Construction Judgment in context, the most appropriate way to deal with the current dispute between the parties is to consider the various topics raised by the parties for my determination, and proceed accordingly. 11 This was what was anticipated following upon my orders and reasons in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 2) [2012] FCA 1018, delivered on 17 September 2012. I will not repeat the background to those orders and reasons, which background is set out in those reasons. 12 In that decision, the Court gave reasons in support of its orders and in furtherance of the Court's preference to receive a Further Joint Expert Report from the two experts, Mr Hunter (for Britax) and Mr Newman (for Infa). In addition, the Court made certain statements and observations (at [26-30]) about the task then envisaged for the two expert witnesses. 13 By orders dated 17 September 2012, in summary, the Court ordered that the Construction Judgment should be provided to the expert witnesses, and that those witnesses should be asked to provide further evidence by way of a Further Joint Expert Report as to the presence or absence of the claimed patent integers in the allegedly infringing Infa products. Further, the Court specifically confined the materials to be provided to the two experts and made allowance for either expert to seek additional time, materials, information or advice if that was required. 14 In furtherance of the Court's orders, on 20 and 21 November 2012, the expert witnesses conferred in a supervised conference in the presence of Registrar Sia Lagos and the solicitors for the parties. Thereafter, the expert witnesses provided the Court with the Further Joint Expert Report. 15 As required by the Court, the Further Joint Expert Report both applied the Court's Construction Judgment to each of the allegedly infringing Infa products and patents in suit, and provided the Court with the experts' position as to the presence or absence of the relevant patent integers in those Infa products. In large part, the two experts were in agreement as to the presence or absence of the relevant integers in the relevant Infa products. 16 Accordingly, the position was that after provision of the Further Joint Expert Report, the only matters relating to infringement which remained for determination by the Court were those limited matters where the persons skilled in the art (the two expert witnesses in this proceeding, Messrs Hunter and Newman) were in disagreement or had some other basis for failing to arrive at an agreed position as to the presence or absence of particular patent integers in the Infa products. 17 Following the provision of the Further Joint Expert Report, a further hearing relating to the Further Joint Expert Report was to commence on 10 December 2012. It was envisaged that the two expert witnesses would be in attendance and would provide the Court with further explanation on the limited number of infringement issues upon which there was remaining disagreement as relevant to the specific Infa products. 18 On 10 December 2012, Infa handed up to the Court and to Britax documentation by way of four new tables which were contended by Infa to contain conclusions on construction and infringement that arose from the Construction Judgment. These tables contained material which put into contest some of the experts' agreed views and conclusions relevant to infringement as set out in the Further Joint Expert Report. Infa's Counsel advised the Court that Infa wished to cross-examine the two experts as to the matters in the four tables, including an application to treat Mr Newman as an "unfavourable witness" under s 38 of the Evidence Act 1995 (Cth) ('Evidence Act'). 19 Britax submitted that the Court reject this new material. It submitted that Infa was seeking to make a new case under the guise of applying the Construction Judgment. Britax also contended that it had had no time to consider the extensive material set out in the four new tables and was in no position to proceed with the hearing on that day. The Court ultimately decided that Infa should be permitted to explore the issues raised by the four tables with the two experts. 20 As a consequence, on Britax's application, the hearing was adjourned to 13 August 2013 to enable Britax to further consider the material advanced by Infa in the four tables, and on Infa's explanation to the Court that those four tables represented its "non-infringement" position. 21 On 5 August 2013, Infa filed and served another affidavit from Mr Newman, ('Fifth Affidavit'). It raised a number of matters of significance in the content of the Further Joint Expert Report, including matters upon which Mr Newman had changed his mind. 22 Despite the lateness of the filing and serving of the Fifth Affidavit of Mr Newman, the hearing set down for 13 August 2013 proceeded. It was ultimately adjourned to 17 February 2014 but not before Mr Newman was cross-examined by Britax on the circumstances surrounding the coming into existence of the Fifth Affidavit of Mr Newman. Mr Newman confirmed that he had no problems with the process that led to the preparation of the Further Joint Expert Report in November 2012, nor any issues with the content of the document at the time of its preparation. Nevertheless, Mr Newman did not now adopt his position as expressed in the Further Joint Expert Report. 23 Mr Newman's problems with the Further Joint Expert Report appeared to arise following a discussion with the lawyers for the Infa on 11 December 2012, shortly after the December 2012 adjourned hearing. In his Fifth Affidavit, Mr Newman stated that on 11 December 2012 he was asked by Chrysiliou Lawyers (the lawyers representing Infa) to explain a particular statement contained in the Supplemental Report to the Further Joint Expert Report, and that as a result he re-examined all the integer tables of the Further Joint Expert Report. 24 Mr Newman's evidence was that he had reflected upon the process of his giving of evidence in the proceeding, including his participation in the Further Joint Expert Report, and had decided that he could not maintain his position as set out in that Report. He gave various reasons for this. 25 Mr Newman had found the whole process in participating in the Further Joint Expert Report "incredibly complicated" and "confusing". He found it difficult in determining how to interpret the Patents on their own, but also in light of the Construction Judgment. He felt confused at the time of the November 2012 conference with Mr Hunter, and had been influenced by Mr Hunter's superior mental agility, when at a time his own mind was "in a spin". 26 A great deal of time has been undertaken by the Court and the parties on the production and receipt of the expert evidence, including the Further Joint Expert Report in November 2012. However, the reliance on the Fifth Affidavit of Mr Newman by Infa caused further delay. The August 2012 hearing needed to be adjourned until 17 February 2014 to allow sufficient time for the parties to consider their position and file further material. 27 On 31 October 2013, Infa (not wholly accepting Mr Newman's new approach) filed and served tables raising points of construction and disputing the presence of the patent integers in the Infa products. 28 When the matter came on for hearing on 17 February 2014, Britax contended that the matters and issues raised by those tables should be rejected by the Court for a number of reasons. One reason was that such matters and issues had not been considered earlier, particularly in the Further Joint Expert Report. Another reason was that to the extent the matters and issues were raised by Mr Newman in his Fifth Affidavit, these should be rejected either because they were raised by him only due to influence brought to bear upon him following the adjourned hearing in December 2012, and because in any event, Mr Hunter (whose evidence was to be preferred) did not accept Mr Newman's position. 29 I am sympathetic with some of the observations made by Britax on the way the proceedings progressed after the introduction of the Fifth Affidavit of Mr Newman. Mr Newman clearly changed his mind upon reflection after the Further Joint Expert Report, and this has significantly disrupted the flow of the proceedings. It has been a substantial cause for the extensive material now before the Court. 30 However, Mr Newman (as an expert witness) was under an obligation to inform the Court of his changed position. After all, the Court should receive such expert evidence so that the Court may be fully assisted in its task. This is not to say that Mr Newman's position must be accepted; only that it should be considered. Further, Britax and Mr Hunter were given adequate opportunity, of which they availed themselves, to address Mr Newman's changed position as well as Infa's subsequently filed tables. 31 I have therefore accepted the Fifth Affidavit of Mr Newman into evidence, to consider it along with all the other expert evidence, including significantly the Further Joint Expert Report. 32 I have also (over the objection of Infa) accepted the eighth affidavit of Mr Hunter. This affidavit was in response to the earlier material of Infa and Mr Wainohu, and is in my view responsive to that material. Infa had ample opportunity to address that affidavit, and the issues raised by the experts have been adequately ventilated between them in the presence of the Court. In the way the proceeding has progressed, it would be unfair to Britax (and Mr Hunter) not to consider his response to matters raised by Infa's evidence in his eighth affidavit. 33 Both parties proceeded in the February 2014 hearing on the basis of the terms as construed in my Construction Judgment, as is apparent from the approach of the experts in dealing with the issues formulated for and considered by them at that hearing, and the submissions themselves. No party was disadvantaged by this approach. Each had an opportunity through their experts and legal representatives to address the construction of the integers in the context of each claim and each patent in suit and issues of invalidity. 34 Nevertheless, the above process and Mr Newman's own self-confessed confusion, does impact on the confidence the Court can repose in Mr Newman's evidence. I do not find that Infa's legal representatives did anything improper. I also do not accept Britax's submission that Mr Newman can no longer be regarded as an independent expert. Mr Newman remained independent, but was simply out of his depth in the task he was asked to perform. Mr Newman's experience was primarily as a fitter of child safety seat products. Whilst he was a qualified motor vehicle mechanic, he was not an engineer. He has not been involved in the design, testing or manufacture of child restraint products. During the course of this proceeding, Mr Newman has had general difficulty in dealing with specific issues and has changed his views or admitted error. In contrast, Mr Hunter's evidence involved a practical, common sense approach to the working of the relevant claims of the patents in suit, and, in the main, I have found it persuasive. 35 These reasons have taken some time to be delivered, and despite the passage the time, I have not deviated from the initial view I took as to the correct approach to adopt in this proceeding. That approach was to consider the evidence of Mr Newman including his Fifth Affidavit, but to take into account the various matters that I raise in these reasons for treating his evidence with caution. Much of the evidence and submissions before me has been in written form, and transcript has been available. In formulating these reasons I have re-visited that documentation. Neither party suggested that Mr Hunter or Mr Newman were not trying to assist the Court to the best of their ability. The principal issue with Mr Newman relates to his capacity to properly understand the patents in suit, or articulate, his position. It was in this sense that Britax submitted Mr Newman's evidence was not credible, putting aside the issue of independence. I now have the competing expert views as to construction, infringement and validity. I must make an assessment based upon analysis of the evidence (both expert and lay), the documentary material in evidence and the submissions. 36 The position that the Court now needs to consider is as follows. 37 Subject to the two substantive reservations (as to meaning of "ends" and "carried by"), Britax otherwise accepts the agreed position relating to infringement that Mr Newman and Mr Hunter arrived at in the Further Joint Expert Report. 38 Noting that Mr Hunter has reservations with some of the findings of the Court in the Construction Judgment in relation to the interpretation of certain terms (to which I will return), and insofar as the Court may now review its earlier construction of such terms, Britax adopts the position of Mr Hunter but accepts that Mr Hunter is disagreeing with certain of the Court's findings in the Construction Judgment (namely as to the meaning of "ends" and "carried by"). 39 As I have indicated, shortly before the August 2013 hearing, Mr Newman in his Fifth Affidavit resiled from many of the opinions he expressed in the Further Joint Expert Report. Further, Infa did not accept all the views of Mr Newman. 40 In light of this position of the parties, and in preparation for the hearing adjourned to February 2014, by orders of the Court dated 16 August 2013 the parties were required to prepare "Green and Red" tables specifying, by reference to the "Newman Tables" annexed to the Fifth Affidavit of Mr Newman and in relation to construction and infringement, what matters in the Newman Tables Infa adopted and what additional matters it relied upon (each marked green), and what matters relied upon by Infa were agreed by Britax, and if not why not, (such marked in red). Infa provided its tables, and Britax provided its response. 41 Britax adopted the report of the expert Mr Hunter who set out his views on the Infa Green Tables by his own Red Table analysis supported by his supporting narrative set out in three Addendums, each of which are annexed to the affidavit of Mr Gregory R Tye sworn 17 December 2013 and marked respectively "GRT-4", "GRT-5", and "GRT-6", and each of which were referred to respectively as "Hunter Addendum-1", "Hunter Addendum -2", and "Hunter Addendum -3". 42 I have not reproduced the tables referred to above, as they were of more assistance to the parties and the Court in focussing attention upon the context of the issues raised. 43 The matters canvassed by Britax and Mr Hunter insofar as they relate to infringement can be considered against the diagrammatic depictions of the various Infa product versions illustrated in Exhibit A7 (which is 'Annexure A' to these reasons). Some of the actual Infa products were in evidence.

[3]

Topic 1 - "carried by" or "with respect to" 45 In my Construction Judgment, I distinguished between the terms "carried by", which I found refers to a direct carrying, and "with respect to", which may include indirect carrying: see Construction Judgment at [314] and [377]. In the context of the relevant claims, those terms refer to the tether strap which transports, moves, bears or carries the "connection strap" or "means", and suggest an interaction between the two. 46 I construed the term "connection means" in my Construction Judgment to be a broad term not limited to a buckle (eg at [318]) and which could therefore include other components, such as a latching hook. 47 Infa submitted that the word "by" in "carried by" required the tether strap to be an "active" carrier, and the carried connection strap to be a "passive" component. It submitted that this was not so in the Infa Products, by reference to the fact that if the tether strap were to be severed, the connection strap would remain attached to (or "carried by") the anchorage point, which would demonstrate that the tether strap was a passive component which was in fact "carried by" the connection strap. 48 However, the term "carried by" must be understood in the context of the relevant patent. For example, claim 1 of the First Patent describes "a connection strap carried by the tether strap and secured at a first end with respect to the anchorage point and having a connection means at the other end". The object is clearly the (carried) connection strap, which is then secured. Whether the outcome of that anchoring or "securing" shifts or reverses the load bearing dynamics, so that the connection strap bears the load of the tether strap, is not relevant for the purposes of the patent. 49 This view accords with the views of both skilled addressees, Messers Hunter and Newman. As Mr Hunter opined, the unsecured connection strap is clearly carried, in the sense that its load is borne, by the tether strap. In the Further Joint Expert Report, the experts agreed (and I accept) that all Infa Products which have the Anchorage-Connection Arrangement versions 1, 4 and 5, contain this feature, and therefore fell within the scope of the relevant "carried by" integers in claim 1 of the First, Third, Fifth and Sixth Patents, and claim 5 of the First, Third and Sixth Patents.

[5]

Topic 3 - connection strap (or means) "attached" to the tether strap (or strap) "adjacent the intermediate point" 53 In my Construction Judgment at [319] I held that that term "attached" did not require "fixation", and in its context could refer to the connection strap being slidably attached to the relevant strap. I also construed the "intermediate point" by reference to my construction of the term "ends": at [302]. As I mentioned earlier, Mr Hunter and Britax took issue with my construction of the term "ends", which I did not accept. 54 In the Further Joint Expert Report, Messrs Newman and Hunter agreed that the connection strap or means in all Infa Products was "slidably attached". Nevertheless, they both concluded that integers 1.2.2 and 3.2.2 were not present in any of the Infa Products. This conclusion was drawn solely on the basis that the connection strap (or means) was not attached to the tether strap adjacent the intermediate point, as a consequence of their construction of the term "ends", which was at odds with my finding in the Construction Judgment. 55 Infa submitted that a slidable attachment takes it out of the scope of the relevant claim, since in the unanchored child safety seat, the slidable connection could result in the connection strap sliding away from the intermediate point. 56 However, the reference to "intermediate point" in claim 2 in each of the First and Third Patents is dependent on the respective claim 1 in those patents, and relates to the term "point intermediate its ends" in that claim. In claim 1 of both patents, the attachment adjacent the intermediate point is described as occurring when the tether strap is in its anchored state: "secured with respect to the anchorage point at a point intermediate its ends" (emphasis added). 57 I agree with Mr Hunter's observation that "[o]nce these seats are installed, the connection strap is attached adjacent the intermediate point notwithstanding the slidable connection of the connection strap with respect to the tether strap". 58 I therefore find in applying the terms as construed in the Construction Judgment and the evidence of the experts that all Infa Products fall within the scope of those integers in claim 2 of the First and Third Patents.

[7]

Topic 5 - "secured" (with respect) to a "head end of the back rest portion" 63 In my Construction Judgment I determined that the term "secured" does not require fixation, and allows for any fastening, whether slidable or not as long as "the fastening is firm, so that it will not tear or break when used for the purpose for which it was developed": at [299]. I adopted this construction for the Second Patent (at [333]), Third Patent (at [340]), Fourth Patent (at [356]), Fifth Patent (at [361]) and Seventh Patent (at [383]). 64 At [328] of the Construction Judgment, I found that the meaning of the term "head end of the backrest potion" depended on whether the headrest was adjustable or not. In the former, the term referred to the upper part of the back rest underneath the headrest, and in the latter, it referred to the upper part of the back rest. 65 In the Further Joint Expert Report, Messrs Newman and Hunter agreed that in all Infa Products the tether strap or tethering means was "secured to", or "secured with respect to", the head end of the back rest portion as claimed. Mr Newman's position in this respect did not change in his Fifth Affidavit. 66 Infa submitted that the experts' views in this regard narrowly considered the "secured" feature in the context of an installed seat experiencing sudden deceleration (such as a collision scenario) in which the tether straps would tighten. It submitted that this context represented a "momentary and transitory state", and that in normal use the tether straps would not be "secured". 67 However, I do not understand the experts to consider the term so narrowly. Once installed, the pressure of the taut tether straps on the safety seat satisfies the "secured" requirement. Considering this integer in the context of an uninstalled safety seat with the tether straps falling loosely, as Infa contended, is to fail to take a common sense approach to the patent claims, or to understand its terms in the context of the relevant integers. It is important to focus upon the word "secured" which connotes an installed state in this context. 68 I therefore do not accept that the tether strap or tethering means is not "secured" to the head end of the back rest portion, with the consequence that all Infa Products fall within the scope of the relevant integers of the following claims: (a) claim 1 of the Second, Fourth and Fifth Patents; (b) claim 2 of the Seventh Patent; and (c) claim 5 of the First and Third Patents.

[13]

Topic 11 - "harness extends from the backrest portion" 87 Claim 1 of the Fourth and Seventh Patents contains the words "wherein said harness [or 'child safety harness'] extends from the backrest portion": integers 4.1.11 and 7.1.11. 88 Infa contended that some Infa Products require the harness to pass over or around the headrest, not the backrest, and therefore would not fall within the scope of those integers. 89 In relation to backrests and headrests, the Infa Products contain two broad types: those without a headrest (such as CS53, CS55 and CS57) and those with a headrest (CS54 and CS56). 90 I pause to note that consistent with my findings in my Construction Judgment (at [328]), CS53, which does not have an adjustable headrest section, is not considered, for the purposes of construction of the patents, to have a separate headrest. Rather, on my construction, its non-adjustable headrest would constitute the "head end of the back rest". 91 On all Infa Products without a headrest, the harness necessarily "extends from the backrest portion". On those Infa Products which contain a headrest, the tethering arrangements in Annexure A clearly depict the harness extending from the backrest portion and not from the adjustable headrest. 92 Infa also submitted that integers 4.1.11 and 7.1.11 require a "positional" arrangement wherein the harness extends from the physical backrest (via, for example, apertures in the backrest itself). This was contrasted with a "directional" arrangement, whereby the harness straps simply pass the back rest (via, for example, grooves in the perimeter of the seat). 93 Although figures 3, 4 and 5 of the patents depict the harness passing through apertures in the backrest, the specification of the Fourth Patent, in relation to figures 3-5 states (at 6.21-4) that: Although multiple pairs of apertures are shown in this preferred embodiment, it would also be possible to have the harness passed through a single aperture in the head end of the backrest portion or around grooves in the perimeter of the backrest portion. (Emphasis added.) 94 Almost identical wording to the above paragraph is contained in the specification of the Seventh Patent: at 7.19-22. It is therefore clear from the context of those integers that the relevant patents contemplate either a "positional" or "directional" arrangement of the harness in relation to the backrest. 95 The experts agreed in the Further Joint Expert Report that all Infa Products fell within the scope of integers 4.1.11 and 7.1.11 of claim 1 of the Fourth and Seventh Patents respectively. 96 All of the relevant Infa Products are within the scope of the relevant integers for the relevant claims.

[14]

Topic 12 - "slidably locate" 97 Claim 3 of the Third Patent refers to "a latching hook connector...attached with respect to the [tether] strap by a strap opening in the latching hook connector that allows the latching hook connector to slidably locate on the strap". Claim 2 of the Fifth Patent refers to a "child safety seat…wherein the connection means slidably locates on the tether strap". 98 Infa submitted that Infa Products which have the Anchorage-Connection Arrangement versions 1, 4 and 5 are not within integer 3.3.3. Infa focussed on the directness of the latching hook connector being slidably located on the tether strap. However, there is no requirement in the Third Patent that the latching hook connector must directly slidably locate on the tether strap. In those Versions, the latching hook connector is indirectly slidably located on the tether strap via the loop or aperture in the connection strap or plate. Versions 1, 4 and 5 therefore fall within the terms of integer 3.3.3, as observed by Mr Hunter. 99 Infa also contended that Infa Products which have the Anchorage-Connection Arrangement versions 1b and 3 are not within integer 5.2.2, since they do not include the incorporated antecedent integer 5.1.7 - "a connection means carried by the tether strap". I have already addressed the issue of "carried by". 100 Further, as I mentioned in topic 1, the term "connection means" is not the same as "connection strap". The former is a broader term - "any item or thing which would perform the function of connection" and includes the latching hooks in the Fifth Patent: see Construction Judgment at [316-8] and [366]. The specification of the Fifth Patent (at 6.21-3) describes the "connection means" as "comprising a connection strap 44, an aperture in buckle 45 and latching hook connector 43". 101 Both Infa's Anchorage-Connection Arrangement versions 1b and 3 have the above described "connection means". Both include a tether strap which is slidably located through an aperture in the latching hook connector. Conversely, the latching hook connector (and thereby the "connection means") is slidably located on the tether strap. That arrangement falls within integer 5.2.2. 102 In the Further Joint Expert Report, Messrs Newman and Hunter agreed that the latching hook connector is slidably located on the tether strap for Infa Anchorage-Connection Arrangement versions 1, 4 and 5, and that the connection means is slidably located on the tether strap for Infa's Anchorage-Connection Arrangement versions 1b and 3. 103 For the above reasons, all of the relevant Infa Products fall within the scope of the relevant integers of claims 3 and 2 of the Third and Fifth Patents respectively.

[23]

Topic 18 - "substantially as illustrated" (the "flat plate" as a "major improvement") 133 Claims 2 and 3 of the Eighth Patent refer to an apparatus or child safety seat and harness "substantially as…illustrated in…figures [4 to 9]". Claims 4 and 5 of that Patent similarly refer to "substantially as…illustrated in the accompanying drawings". 134 Infa submitted that figures 6 and 7 of the Eighth Patent are substantially different to the others, in that they do not contain the flexible strap (44) and buckle (45) arrangement. Rather, figures 6 and 7 depict a "flat plate" (48) which contains its own latching hook and an aperture for the tether strap, and to which a harness latching hook is or can be connected. Mr Newman viewed the use of the "flat plate" as a "major improvement" in that the more rigid connection prevents the connection aperture for the harness from falling away or becoming difficult to locate. This was not accepted by Mr Hunter. However, as Britax correctly submitted, a difference in the figures is irrelevant for the purposes of determining whether or not a particular article infringes one or other of the figures referred to in the omnibus claim 135 Infa further contended that figures 4 and 5 depict connection points (41) and (42) which are not present in those Infa Products in which the tether strap is connected to the seat through intermediary webbing loops. 136 Both of these issues concern the omnibus claims of the Eighth Patent, and are relevant to the omnibus claims issue in topic 23, to which I will return. However, I will consider the specific issue raised in relation to this topic here. 137 Britax contended that in any event, the Infa approach as to the infringement of the Eighth Patent is flawed as it ignores the embodiment depicted in figure 6 as described in the Eighth Patent. I accept this submission. Figure 6 of the Eighth Patent contemplates a metal connecting component that connects the harness and tether strap to the vehicle anchorage point. Therefore, as contended by Britax, such a single metal plate is included within the scope of figure 6 of the Eighth Patent. 138 I add that Infa Product Anchorage-Connection Arrangement versions 3 to 5 contain such a flat plate which is "substantially as illustrated" in figures 6 and 7, whilst Versions 1 and 1b contain an arrangement "substantially as illustrated" in figures 4, 5, 8 and 9. All Infa Products therefore fall within the omnibus claims of the Eighth Patent. 139 In relation to the connection points, in my view, the purpose of the embodiment of the connection points in figures 4 and 5, is to depict the securing of the backrest via two mutually spaced connection points. I agree with Mr Hunter that all Infa Products involve "substantially" the same arrangement, regardless of whether they utilise loops or grooves on the head end of the back rest. Mr Hunter was of the view, as a person skilled in the art, that any variation in the Infa Products was minor. 140 All Infa Products therefore fall within the omnibus claims of the Eighth Patent.

[24]

Topic 19 - "anchorage locations" (Tenth Patent) 141 Claims 1 and 19 of the Tenth Patent refer to the "first and second mutually spaced anchorage locations on said head end of said backrest" and describe a tether strap "with one end extending from said first anchorage location…to said second anchorage location". 142 Infa submitted that there are more than two "anchorage locations" on many of the Infa Products, and therefore those products do not fall within this claim. 143 Infa's submission is at odds with my Construction Judgment where I found that the meaning of "anchorage locations" did not preclude circumstances where there were more than two anchorage locations: at [402]. A product having more than two anchorage locations does not escape the scope of these claims. 144 In the words of the Construction Judgment at [401] the term "anchorage location" only requires "a location or position at which there is a contrivance (that is, a design feature) which holds fast, or gives security to, the seat and occupant in the event of sudden movement or deceleration". Such a "contrivance" need not be an aperture, as depicted in figures 4 and 5. It can, for example, include a feature in which the tether strap "sits" in grooves in the perimeter of the seat (as in Version 5 on CS53 and CS54), or a feature wherein the tether strap passes through "loops" (as in the other Versions of CS53 and CS54). 145 In each of the Infa Products, there are at least two such "contrivances" located on the head end of the backrest "which holds fast, or gives security to, the seat and occupant in the event of sudden movement or deceleration": Construction Judgment at [401]. The requirement that contrivance "holds fast, or gives security" does not necessarily mean that it bears any load "in the event of sudden movement or deceleration". It simply means that the anchorage location plays a role in ensuring that the seat remains connected to the anchorage point on the vehicle. Mr Newman failed to appreciate this construction in his oral evidence before the Court on 18 February 2014, when he argued that the entire back portion of CS53v4 (for example) provided a single anchorage location, or bore the relevant load, since if the "loops" were to be cut, those "contrivances" could be rendered useless for anchorage. 146 Infa also contended that the "mutually spaced anchorage locations" are not on "said head end of said backrest" on the basis of the issues raised in topic 11. I reiterate my comments in relation to that topic, and note the Construction Judgment at [399]. Even in an uninstalled state, as Mr Hunter demonstrated with CS53v4, the relevant loops "revert to a fairly well defined point" or location on the head end of the backrest. 147 All Infa Products contain (at least) two mutually spaced anchorage locations on the "head end of said backrest" described by claims 1 and 19 of the Tenth Patent, as agreed by both experts in the Further Joint Expert Report. 148 All of the relevant Infa Products are therefore within the scope of the relevant integers for the relevant claims.

[25]

Topic 20 - "end" (Tenth Patent) 149 In relation to the same claims as detailed in topic 19 above, Infa contended that the Infa Products do not have such a feature, because in those products the physical end of the tether strap (ie where it terminates) does not "extend from" any anchorage location. Rather, it submitted, the tether straps of the Infa Products either travel in a circuit (having an adjuster in that circuit), or through other loops. 150 Infa's submission is based on my finding of the meaning of the term "ends" in the Construction Judgment: see, eg, at [300-1]. However, that finding was in relation to the First Patent, and specifically adopted (at [340]) in relation to the Third Patent. The construction determination for any term cannot simply be transposed or applied to an asserted equivalent term outside of the context in which it was specifically contested and construed. 151 The context of claims 1 and 19 of the Tenth Patent is different to that of the First and Third Patents. The term "end" in this context is not used in the sense of the physical termination points. Rather it means the part of the tether strap which "commences" at the first anchorage location, and which tether strap then extends in a loop from that first anchorage location (through the strap opening) to a second anchorage location. The embodiments in the Tenth Patent reinforce this interpretation - neither of them depict an arrangement as contended by Infa. 152 I note that in construing the terms of a patent claim, clear language is not to be changed, and the Court must take a common sense approach so as to avoid a surprising or absurd result. Care must also be taken not to take into account the alleged infringing product in construing the claim. In arriving at the above construction of the word "end" in the Tenth Patent, I have adopted the same process of construction as with the First and Third Patents, and have applied the ordinary meaning of the word to a specific context. 153 Infa submitted that the construction of the term "end" in the context of claims 1 and 19 of the Tenth Patent, should be informed by the deliberate introduction (after the Tenth Patent was laid open for inspection on 15 February 1996) of the phrases "with one end" and "with the other end extending" and the reordering of the text of the claims. Infa submitted that in order to obtain the grant of the patent, Britax amended the claims to make express the requirement that the ends of the tether strap be its physical ends. However, in my view, that amendment does not impact upon the proper construction I have given to the Tenth Patent. 154 All of the relevant Infa Products are within the scope of the relevant integers for the relevant claims of the Tenth Patent.

[29]

Sixth Patent - Omnibus claim 4 171 The Sixth Patent is concerned with various tether strap arrangements enabling connection of a harness and child safety seat to a single anchorage point on a motor vehicle. The claims describe and the figures depict various tethering means and connection arrangements. Although omnibus claim 4 is directed to a tether strap, the reference made to the drawings relates to the connection means. 172 Specifically, the claimed tether strap of claim 4 is described as: (a) incorporating "means for connecting both the tether strap and a child safety harness used with the safety seat to an anchorage point of the vehicle"; and (b) in a manner which is "substantially as herein described and with reference to the accompanying drawings" (that is, figures 1 to 9). 173 To establish infringement, the infringing product must contain all the essential features described and claimed. However, there is no escaping infringement by either or both of the substitution of "mechanical equivalents" which make no essential difference to the way that the invention performs; or the presence of immaterial variations to the essential features of the described and claimed invention, or as illustrated in the drawings: see, eg, Populin v HB Nominees Pty Ltd (1982) 41 ALR 471, 475-6. 174 As Britax contended, context is important. In the context of omnibus claim 4 of the Sixth Patent, the following aspects are all relevant: (a) the Background of the Invention (page 2); (b) the Summary of the Invention including the consistory clauses describing "aspects" of the invention (pages 2 - 4); (c) the description of the embodiments of the invention depicted in the accompanying drawings (pages 4-5); (d) the embodiments illustrated in the accompanying drawings (figures 4-9) which make clear that there are separate drawings (and embodiments) each of which must be individually considered; (e) the descriptions of the preferred embodiment (pages 5-8); and (f) the statement that "the invention is not limited to the embodiments disclosed" (page 8).

[31]

Eighth Patent - Omnibus claims 2, 3, 4 and 5 180 Like the Sixth Patent, the Eighth Patent is concerned with various arrangements for connecting a child safety seat and a child safety harness to a single anchorage point on a motor vehicle. The claims describe and the figures depict various tethering means and connection arrangements. I have described these claims in topic 18 above and in the Omnibus Judgment at [34]. 181 Specifically, the omnibus claims are directed either to: (a) an "[a]pparatus to secure a child safety seat and child safety harness to a single anchorage point on a motor vehicle" (claims 2 and 5); or (b) a "child safety seat and child safety harness adapted to be secured to a single anchorage point on a motor vehicle ..." (claims 3 and 4); in a manner which is substantially as hereinbefore described and illustrated in: (a) any one of figures 4 and 5, 6, 7, 8, and 9 (claims 2 and 3); or (b) the accompanying drawings (claims 4 and 5). 182 In context of omnibus claims 2, 3 4 and 5 of the Eighth Patent, the following aspects are all relevant: (a) the Background of the Invention (page 2); (b) the Summary of the Invention including the consistory clauses describing "aspects" of the invention (pages 2- 4); (c) the descriptions of the embodiments of the invention depicted in the accompanying drawings (pages 4-5); (d) the embodiments illustrated in the accompanying drawings (figures 4-9) which make clear that there are separate drawings (and embodiments), each of which must be individually considered; (e) the description of the preferred embodiment (pages 5-8); and (f) the specific statement (on pages 7-8) that the description in relation to the preferred embodiments: …is not limited to the above described embodiments disclosed, but is capable of numerous rearrangements, modifications and substitutions without departing from the scope of the invention. For instance, it is not necessary that the latching hook connector and connection means be a single component but may include two or more connected components to achieve the same result. Other modifications and variations such as would be apparent to a skilled addressee are deemed within the scope of the present invention. 183 As with the Sixth Patent, I consider Mr Newman was basing his position upon too restrictive an approach to the drawings. Mr Newman failed to bring into consideration the entirety of the description in his perception of the drawings, and also failed also to see them in the context of the various aspects of the invention (pages 2-4) and the preferred embodiments. 184 Similar comments to those made in relation to the Sixth Patent apply to the features of the Eighth Patent.

[34]

Tenth Patent - Omnibus claim 20 190 The Tenth Patent is concerned with various split tether strap arrangements. Necessarily, the patent drawings depict a "means" to connect the tether strap and safety seat to a vehicle. No particular orientation (ie forward-facing or rearward-facing) of the safety seat is required. The patent neither describes nor depicts a harness or connections for a harness. Although the patent refers to a "connector", that aspect is not the focus of the invention. 191 Importantly, and by contrast to the later dated Innovation Patents, the Tenth Patent is not concerned with the connection arrangements for securing both the safety seat and a child harness to a vehicle or vehicle anchorage point. The inventive concept of the Tenth Patent is primarily about the split tether strap arrangement. 192 In the context of omnibus claim 20 of the Tenth Patent, the following aspects are all relevant: (a) the described problems with the tethering arrangements of the prior art (pages 1a-2); (b) the stated object of the invention (page 2); (c) the broad statement of invention, or "consistory clause" (page 2); (d) the various statements about the tether strap and adjustment arrangements (page 2); (e) the specific statement that "it should be realised that the invention is not to be confined or restricted to the precise details of the described embodiments" (page 3); (f) the embodiments illustrated in the accompanying drawings (figures 3-11); (g) the description and drawings relevant to the separate embodiments (pages 3-7); and (h) the forward facing seat orientation of figures 4-11. 193 Prior to Mr Newman's change of view in his Fifth Affidavit, Mr Newman accepted that in relation to omnibus claim 20, there was a correlation between the Infa Products and the figures (save for CS53v4 and 5, and CS54v4 and 5). Mr Newman and Infa now contended there to be no infringement of any omnibus claim 20 of the Tenth Patent. 194 However it is to be recalled that Mr Newman still appears to accept (save for the issue of the construction of the term "end") that the Infa Products have all the features of claims 1 and 19 of the Tenth Patent.

[36]

VALIDITY - General 197 By the transitional provisions contained in s 55 of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), the relevant provisions of the Patents Act 1990 (Cth) ('the Act') relating to the validity of the patents in suit remain as they were prior to the passage of that legislation and its coming into full effect on 15 April 2013. All references to the Act are therefore references to that Act prior to the amendments. 198 By its Amended Third Substituted Defence dated 18 December 2012 and Fourth Substituted Particulars of Invalidity dated 25 March 2011 ('Fourth POI'), Infa denied infringement of the patents and cross-claimed for revocation of the following claims of the patents in suit: (a) First Patent - claims 1, 2, and 5; (b) Second Patent - claims 1, 2, 3 and 4; (c) Third Patent - claims 1, 2, 3, 4 and 5; (d) Fourth Patent - claims 1, 2, 3 and 4; (e) Fifth Patent - claims 1, 2 and 3; (f) Sixth Patent - claims 1, 2, 3, 4, and 5; (g) Seventh Patent - claims 1, 2, 3, 4, and 5; (h) Eighth Patent - claims 1, 2, 3, 4, and 5; (i) Ninth Patent - claims 1, 2 and 5; and (j) Tenth Patent - claims 1, 19 and 20. 199 Although Britax opposed leave being granted to Infa to amend its Particulars of Invalidity in accordance with the (then proposed) Fourth POI, Britax addressed the issues raised therein. It is appropriate to grant leave for Infa to amend its Particulars. By the effluxion of time and bifurcation of the proceeding, Britax had (as shown by the submissions and evidence it put before the Court) ample opportunity to consider and respond to the (then proposed) amended Particulars of Invalidity. However, in relation to the new ground of invalidity in relation to the Tenth Patent (lack of utility) I do not give leave, as in my view (for the reasons I later give), Infa's attack on this basis is without merit, and any amendment would be futile. 200 I have already set out the general basis of the invalidity claims in the Construction Judgment: at [7]. I note that the following grounds of invalidity were withdrawn in the course of the proceeding: (a) lack of entitlement, on the basis of recent changes to the law; (b) external fair basis, (only in relation to certain aspects as a consequence of the construction of the terms "tether strap" and "head end" in the Construction Judgment), although Infa reserved its rights on appeal and on any reconsideration of those terms; and (c) clarity (only in relation to certain aspects); although Infa reserved its rights on appeal and on any reconsideration of the terms "tether strap" and "head end". 201 Before proceeding to address the various grounds of invalidity asserted by Infa, I turn to the principal evidence relied upon by the parties on the various issues of invalidity. 202 On some aspects of invalidity in this proceeding, Infa sought to rely upon the evidence of Mr Hunter, the expert witness called by Britax. There is no obstacle to such an approach - if in cross-examination Mr Hunter gave evidence on invalidity issues which was favourable to Infa, then Infa could rely upon such evidence, provided that Britax is accorded procedural fairness. 203 However, I must consider Mr Hunter's evidence in the context in which it was given and be satisfied that it in fact supports Infa's submissions. In a proceeding such as this, involving many issues agitated by the parties, an expert being cross-examined must be directed to the appropriate context or issue, so that he or she can focus his or her mind and answer accordingly. For example, whilst Infa (as cross-examiner) was entitled to canvass various matters going to infringement, I do not consider it fair to Britax or Mr Hunter to take various answers made solely in that context and rely on those answers for invalidity purposes where Mr Hunter was not directed to the relevant issue. 204 Further, Mr Newman was not called upon to give evidence by Infa on many aspects of invalidity. The fact that a party chooses not to lead evidence from an expert conversant with a relevant issue would indicate that the party has deliberately chosen such a course, and that the witness would not have been of assistance to that party. 205 Having made these observations, I outline the focus of the evidence of Mr Newman and Mr Hunter. 206 Mr Newman gave evidence in chief on invalidity for Infa on matters relating to external fair basis and novelty (in relation to certain prior art). 207 There was no evidence in chief from Mr Newman in support of Infa's pleaded invalidity challenges of: (a) internal fair basis; (b) novelty (prior art patent specifications); (c) innovative step; (d) inventive step (in relation to the Tenth Patent); and (e) inutility. 208 Mr Hunter gave evidence in chief in relation to novelty and innovative step (in relation to certain prior art), and external and internal fair basis. 209 In cross-examination, Mr Hunter gave evidence in relation to prior art patent specifications and the Century 2500 prior art seat (as described below) for the purpose of novelty. This evidence was summarised by Mr Hunter in Exhibit A15. There was objection made by Infa to receiving Exhibit A15 as evidence. It was submitted that it should be treated only as a submission. In my view, Exhibit A15 stands as evidence of Mr Hunter's opinion. In any event, even if Exhibit A15 was to be treated as a submission, Mr Hunter has effectively otherwise provided the evidence which is summarised in Exhibit A15 in affidavit evidence or in cross-examination. 210 There was not sufficient evidence in chief from Infa in support of its allegations that the asserted pigtail prior art anticipated the claims of the patents in suit. Some evidence has been led relating to these matters, but no expert has put this evidence in context to support Infa's contentions and to assist the Court in seeing the evidence through the eyes of the relevant skilled addressee. 211 In the circumstances in which this proceeding has been run, the approach I take is as follows. I do not accept the submission of Britax that all of the Infa submissions on novelty and fair basis should be dismissed on the basis that they are "unfair and prejudicial to both Mr Hunter and Britax". As I have said, the parties and their experts have had ample opportunity (of which they have availed themselves) to consider the issues I am considering in this part of the proceeding. It will be necessary to consider the specific claims of each patent and the validity challenges. In doing so, I will view the expert opinion evidence of Mr Hunter and Mr Newman in the context in which it was given, and will take account of Infa's failure to call evidence from Mr Newman (or any other witness) on certain invalidity issues. 212 I dealt with the specific objections to evidence during the course of the trial. It is convenient now to consider Infa's objections to the totality of the evidence of Mr Hunter, which raised a number of issues.

[37]

Skilled Addressee 213 Infa submitted that Mr Hunter was not a person skilled in the art able to give relevant and admissible evidence on issues of validity. I have already discussed the nature of a skilled addressee in relation to Mr Hunter (and Mr Newman) in the context of construction and infringement in the Construction Judgment. In relation to expert evidence on the validity of the impugned patents, only Mr Hunter's position was challenged on the basis he was not a skilled addressee. I now focus on the position of Mr Hunter in relation to his evidence on validity. Undoubtedly this consideration of Mr Hunter's evidence overlaps with my other observations in these reasons and in the Construction Judgment. 214 If Mr Hunter is not in the appropriate skilled addressee then his evidence would be irrelevant, even if the evidence otherwise conformed with s 79 of the Evidence Act. I will return to this aspect of the admissibility of Mr Hunter's evidence later after I deal with the question of whether Mr Hunter's evidence is relevant. 215 Each of the impugned patents relates the manufacture (including mechanical engineering) and use of child safety seats, and to various tethering arrangements of the child safety seat and harness to an anchorage point in a motor vehicle. 216 The Innovation Patents are concerned with ensuring that the harness of the child safety seat is connected to the anchorage location in a way in which the harness remains independent of the (integrity) of the seat shell in the event of an accident. The Tenth Patent is concerned with using the same split tether strap for a child safety seat in both rearward and forward facing mode, and ensuring that when tightened and installed, the seat is closer to the anchorage location than previously available arrangements. 217 The skilled addressee must have had the relevant experience at the relevant priority date. I have found that the priority date for the Tenth Patent is 1 August 1994 and the priority date for all the Innovation Patents is 9 June 2004. The skilled addressee therefore requires an understanding or experience of the installation and operation of child safety seats and their tethering systems as at those dates. That said, the skilled addressee does not need to have expertise and experience specifically in the child restraint industry, if his or her expertise and experience are sufficient to give reliable evidence on the state of the common general knowledge of a skilled addressee in the relevant art as at the priority dates. 218 As I have already observed in the Construction Judgment, at the relevant priority dates, Mr Hunter was a well-qualified professional engineer and consultant. His engineering qualifications and experience made him capable of addressing design, manufacture and testing issues concerning child safety seats. Mr Hunter has had a practical interest in the subject matter of the inventions. For a short period in 1993, he was also involved in the design, assessment for manufacture and testing of a child safety seat for Britax in its "Galaxy" project, which gave him some specific industry knowledge and experience in the design, manufacture and testing of child safety seats and associated components. It cannot be said that he is simply an engineer with a basic knowledge of manufacturing techniques or mechanics, although this is relevant knowledge. 219 The span of 10 years between the priority dates of the Tenth Patent and the Innovation Patents does not of itself disqualify Mr Hunter as a skilled addressee. During that time he continued to have consultancy experience as a skilled engineer, which required him to retain and develop his knowledge in order to be able to give competent advice. Further, both parties accepted (as I observed in the Construction Judgment at [254]) that the field of child safety seats and related technology had undergone a number of incremental developments over the 10 years between 1994 and 2004, but was not one of rapid fundamental technological advancement. I should say, however, that this does not mean that I should assume in the context of the invalidity claims, that there is not the possibility of some technological advancement in that period. 220 Mr Hunter did not have experience with the relevant Australian standards concerning child restraints (nor, for that matter, did Mr Newman). Infa made a number of submissions concerning Mr Hunter's misunderstanding of the relevant Australian Standards 1754 and 3629, which I accept. However, I do not regard this as significant. It does not detract from the other qualities that qualify Mr Hunter as a skilled addressee. 221 Further, whilst Mr Newman relies upon Australian Standards to assist him in understanding and applying his task relevant to the issues of construction and infringement, the Australian Standards are not relevant to this exercise (at least for this part of the proceedings). In my view, the Australian Standards neither impact on construction nor the assessment of whether an Infa Product is within the scope of a claim. 222 Apart from contending that Mr Hunter lacks the necessary expertise and experience, Infa also contended that Mr Hunter's evidence should be rejected because he is impermissibly "inventive", and thereby disqualified as a relevant "person skilled in the art". 223 In Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411 ('Alphapharm') Gleeson CJ, Gaudron, Gummow and Hayne JJ noted that there are conceptual difficulties in applying what is said in some of the older authorities respecting "workmen" and the like to modern conditions in the pharmaceutical and other industries: see [30] and [55]. Whilst this proceeding does not concern complex pharmaceutical patents, highly qualified experts, even if they have a capacity for original research, should not on that basis be disqualified from assisting the Court. 224 The courts have accepted evidence, at least on matters of construction and infringement, from witnesses who are highly qualified and skilled as well as being inventive: see eg JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 ('JMVB') and Australian Mud Company Pty Ltd v Coretell Pty Ltd (2010) 88 IPR 270. 225 In considering the evidence of Mr Hunter in the context of invalidity, I adopt the approach of Crennan J in JMVB at [91-5] and [98]: [91] Lahore's Patents, Trade Marks and Related Rights, vol 1, Butterworths, Australia, 2001 at 12,892 contains the following commentary on the Fina decision: The importance of evidence on the state of knowledge of a skilled addressee at the priority date and his understanding of the available evidence cannot be over-emphasised. It is equally important that the evidence should be directed to showing what the "notional skilled worker" would have known, not what a leading expert in the field would have known. There are numerous decisions in which evidence has been discounted because the expert witness knew too much. An expert witness should have no "excess of any peculiar or special knowledge", he should not be over-qualified and, most importantly, he should be able to depose to the state of the common general knowledge in Australia at the priority date. [92] The applicant submitted that the respondent's witness, Associate Professor Field, was not a 'notional skilled worker' because he was over-qualified and too inventive. Associate Professor Field is an Associate Professor in the Department of Mechanical Engineering at Monash University who teaches and researches machine design and industrial innovation, creativity and invention. He was named as an inventor in respect of some twelve patents. [93] The applicant submitted that there was no evidence that persons in the caravan industry in May 1994 were skilled engineers with the qualifications of Associate Professor Field. Associate Professor Field himself admitted that he had no involvement in the caravan industry in May 1994. The evidence of the applicant's witness, Mr Funder, was that persons in the caravan industry prior to May 1994 were largely businessmen/entrepreneurs, who worked with a team of tradesmen. Mr Funder gave further evidence during cross-examination that persons designing and manufacturing caravans in May 1994 were generally 'blacksmiths and carpenters'. He also said that he could not recall having contact within the caravan manufacturing industry with a professional engineer until 5 or 6 years ago. The applicant also refers to the fact that Mr Page asserted that some caravan manufacturers consulted engineers in their design process in 1994 but, in cross-examination, he admitted that he was never present at any such consultations. [94] The relevant skilled worker against which to judge the inventiveness or not of the invention as claimed is the person or persons designing and improving caravans as at the priority date. [95] Further, the applicant submitted that Associate Professor Field's evidence was largely inadmissible, or, if admissible, should be qualified or given little weight because Associate Professor Field avoided the issue of the inventiveness of claim 1 until cross-examined in this respect. This interpretation of Associate Professor Field's evidence is incorrect as he clearly dealt with the issue of the inventiveness of claim 1 in his affidavit evidence. … [98] After careful consideration it seems to me that Associate Professor Field's evidence is strictly admissible on the issue of obviousness and I overrule the objection to the admissibility of the whole of his evidence on the basis of his competence as an expert. I deal with other specific reserved objections to his evidence in Annex E. Obviousness always involves issues of fact and degree. Whilst Associate Professor Field was a professional engineer with a special interest in design, rather than a specific caravan designer or manufacturer, there is no reason to doubt Mr Page's evidence that sometimes such persons were consulted in the design process in 1994. Mr Page' long experience in the industry provided a proper factual substratum for the giving of this evidence. I bear in mind that the hypothetical skilled worker can be a team and an individual can be a part of such a team. Further, despite being named as an inventor in respect of some patents, Associate Professor Field's evidence did not proceed from any 'excess of any peculiar or special knowledge'; rather he was a design consultant who could have formed part of a team as at the relevant date. It could not reasonably be contended, and it was not contended, that he was overqualified as a 'leading expert' in the field. The field is caravan design which is a simpler field than a complex scientific area of expertise in which 'leading experts' are far removed from skilled workers. There was no such problem on the facts here. Finally, I have taken the objections to admissibility into account when determining what weight to give evidence to which objections have been raised. (Citations omitted.) 226 This approach is supported by the comments of the High Court decision in Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280. At paragraph [44], the High Court noted that Dowsett J at first instance had made the correct observation as follows: [44] Mr Ahrens stated that he considered himself to be an inventor. Firebelt contends that this diminishes the force of his evidence because he was not speaking as the uninventive notional addressee referred to in the authorities. However, when a similar complaint was made to the trial judge, his Honour correctly observed: It is true that Mr Ahrens considers himself to be an inventor, but that of itself cannot disqualify him from giving evidence as to obviousness. To describe oneself as an inventor is merely to say something about one's capacity to identify and solve a problem. The line between a competent technician, able to solve problems on the basis of an established state of knowledge in his or her industry and an inventor will not always be easily discerned. Further, a person who is an inventor may well also perform non-inventive work. 227 In cross-examination, Mr Hunter accepted that he was the named inventor of a number of inventions put to him by the cross examiner, but he stated that he did not consider himself to be inventive in the field of child restraints. There is nothing in the evidence that shows him to be inventive in the field of child restraints. All inventions put to him concern unrelated fields of mechanical engineering. 228 The fact that Mr Hunter may be inventive or an inventor in other unrelated technological fields does not mean he is inventive for current purposes. The evidence of Mr Hunter can and should be given weight because he is not an inventor, nor inventive, in the field of child safety seats. 229 It may well be, and this applies to Mr Newman as well, that a particular skilled addressee may have a more practical approach or a more theoretical approach in considering the operation of the patent. 230 As the Full Court stated in Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155 ('Jupiters') at [154]: …Section 7(2) of the Act refers to the hypothetical person 'skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim'. That person is wholly hypothetical. Much evidence is admissible from persons none of whom would precisely answer the statutory description. Some may be more skilled in the relevant art than others. Some may be skilled and inventive; some may be brilliant; some may be plodders; some may be aware of particular pieces of art claimed to be part of the common general knowledge and others not. It is for the court, having admitted relevant evidence, to come to a conclusion as to the application of the section. It appears that the view was taken that Gregory and Krimmer were not skilled or knowledgeable enough. That would not be a ground for rejecting the relevance of their evidence. Indeed, it may make their evidence very powerful if it were accepted that they did or would have come across the invention. The usual problem in cases of this sort is the over-qualified expert. 231 For the foregoing reasons, I see no basis to disqualify Mr Hunter as a relevant person skilled in the art for the purposes of his evidence on patent validity, or indeed any aspect of this proceeding.

[38]

Evidence Act 232 I now turn to the objection to Mr Hunter's evidence as not complying with s 79 of the Evidence Act and Infa's objection to the reception of some of his evidence on the basis it should be excluded or limited pursuant to ss 135 and 136 of the Evidence Act. It is true, as is the case with Mr Newman's evidence, that much of the evidence states opinions about the terms of the patents and is in many aspects argumentative. I referred to this in the Construction Judgment at [205-6]. The Court must be astute to only use the expert evidence to the extent that it assists the Court in its task. The form in which the evidence is given, involving evaluative opinion, does not detract from its purpose in assisting the Court. As with all the evidence, I rely upon it to inform the Court as to the relevant art, common general knowledge and to inform the Court as to how the inventions are intended to work. 233 As to the operation of s 79 of the Evidence Act, in addition to the observations I made in the Construction Judgment, I regard the comments of Crennan J in JMVB, who admitted the expert evidence in dispute, at [96-7] as apposite: [96] The applicant also argued that Associate Professor Field's evidence should be deemed inadmissible or given little weight because he continually referred to various dependent claims as being 'obvious'. Section 76 of the Evidence Act provides that evidence of an opinion is not admissible to prove the existence of a fact about which the existence of the opinion is expressed. This is qualified by s 79, which provides that this does not apply to opinion evidence of a person where the person has specialised knowledge based on the person's training, study or experience and the opinion is wholly or substantially based on that specialised knowledge. Under s 80, evidence of an opinion is not inadmissible only because it is about a fact in issue or an ultimate issue. [97] In Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 at 259 (3M v Tyco) the Full Court held that even if it is assumed that an opinion as to obviousness is within s 80 of the Evidence Act, s 79 must still be satisfied. An opinion on obviousness will often not only be based on specialised knowledge, but also upon patent law. This was the basis of reiterated objections that Associate Professor Field drew conclusions of law. Experts would not necessarily have a detailed understanding of patent law and the Full Court in 3M v Tyco at 259 found that 'such evidence, even if it is strictly admissible, is unlikely to be helpful and it is preferable to exclude it': see also Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280; 54 IPR 449; 76 ALJR 816; [2002] HCA 21 at [46] (Firebelt). 234 The nature of evidence of a skilled addressee can readily satisfy the requirements of s 79 of the Evidence Act without explicit articulation or amplification, once the skilled addressee has described his qualifications and experience, and identifies the process of reasoning by reference to the terms, figures and drawings in the documents under consideration. In my view, the evidence of Mr Hunter is admissible. 235 In relation to ss 135 and 136 of the Evidence Act, and the issues of validity, I conclude as follows. I do not consider there was any danger that the evidence of Mr Hunter was unfairly prejudicial to Infa, or misleading or confusing. Mr Hunter's evidence was of significant probative value, and resulted in the saving of time by bringing his various views (as with Mr Newman) before the Court. Infa had ample opportunity to consider and address (in cross-examination or by way of submission) Mr Hunter's evidence. I do not exclude or limit the evidence of Mr Hunter (which is otherwise admissible) by exercising my discretion under either s 135 or s 136 of the Evidence Act.

[41]

Use of expert evidence 241 Finally, I turn to consider the need for expert evidence in determining the validity issues raised in this proceeding. 242 Infa submitted that in relation to each aspect of Infa's invalidity case, the Court need not refer to expert opinion evidence. Rather, it submitted, it is a question for the Court whether, or the extent to which, it requires assistance. 243 In this proceeding, the Court must consider various drawings and descriptions in patent specifications and technical documents. The comments made in Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 137-8 are apposite: Having regard to these authorities, it would not be right to hold that a drawing alone could not provide fair basis for a particular integer of a claim. It is a matter of interpretation of the drawing. In principle, the problem for the court is not different from the problem arising when words are examined in order to determine whether they provide fair basis for a particular integer of a claim. But, just as technical words or scientific concepts may require the assistance of experts to enlighten the understanding of the court so as to put it in a position to determine such a question, so, in the case of the interpretation of a drawing, the court may need assistance. There is no rigid rule, since whether guidance is required must always depend upon the particular issue and the particular drawing. But where a close analysis of drawings, or indeed of descriptions, in patent documents is called for, the court may need the assistance of those with the appropriate technical expertise. (Emphasis added.) 244 Similarly, the Full Court in ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214 ('ICI Chemicals') said at [43]: [43] It is, on the other hand, equally clear that, though construction is a matter for the court, a prior publication is to be assessed by reference to what it would disclose to the skilled addressee. The question then is whether the skilled addressee is taken to consider the publication at its date or (as the Full Court assumed, but without needing to decide the point, in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 at 248; 44 IPR 481 at the priority date of the patent the claims of which are under challenge. 245 The Full Court in ICI Chemicals added at [47]: [47] That leads to another significant matter to which we must refer before turning to the alleged anticipation. It is that expert evidence as to what will be inferred by the skilled addressee is important. In the course of discussing Vander Lely, Gummow J said in Nicaro (at ALR 542; IPR 574-5): Lord Reid was at pains to point out the importance of evidence in resolving such an issue. The question was what the eye of the man with appropriate engineering skill and experience would see in the photograph ... [Lord Reid's] words are to be borne in mind where, as in the present case, the appellants' submissions invited a close analysis of the drawings and descriptions constituting the alleged anticipations ... The evidence in this respect was strikingly deficient. In substance, what the appellants were seeking to have this court do on appeal was substitute its view, unaided by evidence of the category I have described, for the construction placed upon [an alleged anticipation] by the learned trial judge. 246 Aside from the admission into evidence of the relevant patents in suit, and each prior art document, specification or evidence of use, the court must determine whether, and the extent to which, factual or opinion evidence is required to establish any aspect of invalidity in each case. That determination depends upon the particular ground of invalidity and the relevant prior art. 247 Infa submitted that its witnesses, who at the relevant times have worked in the field of child safety seats and are familiar with their tethering arrangements, have ably demonstrated that the art with which this proceeding is concerned is one of practical and common sense, and is therefore readily intelligible to the Court. 248 Infa also submitted that in the present proceeding the issues of internal and external fair basis can be readily determined by a comparison between the claims of the Innovation Patents and the text and figures of their parent application (in the case of external fair basis), or the body of the respective Innovation Patent specifications (in the case of internal fair basis). Likewise, it submitted that the issue of novelty can be determined by a comparison of the claims of the Innovation Patents against each item of the prior art, whether documentary or as evidenced by prior use. On the basis of those submissions, Infa contended that the Court is able to make the necessary determinations without the assistance of expert opinion evidence, and that there was therefore no need for either party to adduce expert opinion in relation to the prior art, nor the claimed priority document. 249 In my view expert opinion is needed in relation to various aspects of the invalidity challenge. This is particularly so, not just to assist the Court's understanding of the drawings and specifications, but also in relation to the combination of features that are said to exist in the prior art, and in their comparison to the various patents. Importantly, the Court must consider the arguments challenging patent validity from the point of view of the skilled addressee. 250 In addition to the general matters raised above, I emphasise two matters as to why a court requires the evidence of a skilled addressee. 251 First, prior art must be viewed through the eyes of a person skilled in the art to examine what is disclosed to such skilled addressee by the asserted prior art with regard to matters of common general knowledge. A court cannot do this itself. 252 In Eli Lilly and Co Ltd v Apotex Pty Ltd (2013) IPR 451 at [293] I put the position as follows in relation to prior art disclosure: Therefore, evidence will establish whether there is sufficient disclosure to the skilled reader of olanzapine in prior art documents. Whilst one does not talk so much of "teaching away" in the context of novelty, such is permissible to the extent one has to look at the disclosures in context: see SNF (Australia) (2012) 204 FCR 325 at 401 [313] per Bennett J. Thus, it becomes necessary to investigate the prior documents said to give rise to the anticipation, and to take into account the expert evidence as to what those prior documents disclose. 253 I do not consider that this observation only applies to complex sciences; it applies in other contexts such as this proceeding dealing with child safety seats and tethering arrangements. 254 Secondly, drawings, descriptions and technical terms are matters for a person skilled in the art. The court may often be unable to determine whether a term has a technical meaning or what the meaning is, if no evidence is led as to how the person skilled in the art would read the prior art. A word that might appear to have an ordinary meaning to the court might have a technical meaning to the skilled addressee. A court could make no findings about these matters without evidence. Equally, even if no technical terms are involved, a court could readily misunderstand even the simplest of inventions or specification descriptions, by not being made aware of "hidden" or subtle aspects of such inventions or descriptions only discernible to the eye of a skilled addressee.

[43]

Legal principles 260 The issue of external fair basis concerns the priority date on which the impugned patents can rely. A claim of an Australian complete patent application is entitled to an earlier priority date than that of the filing date of the complete application if, for example, the complete application is associated with an earlier provisional application, or is a divisional application divided from an earlier complete application. 261 Priority dates are governed by s 43 of the Act and the Patents Regulations 1991 (Cth). Each claim must have a priority date (s 43(1)) which is the date of filing of the specification or the date determined by the Regulations: s 43(2). 262 The principal relevant regulation determining priority dates is reg 3.12, and particularly sub-regs (1)(c) and (2C) in respect of divisional applications. The effect of reg 3.12 is to accord a priority date to a claim earlier than the date of filing the complete specification if the claim is fairly based on "matter disclosed" in the specification from which priority is sought. In such circumstances, the claim's priority date would be the date of filing the document in which the matter was first disclosed. Section 79B(1)(a) of the Act also refers to making an application for an invention disclosed in the earlier application. 263 In Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd (2009) 176 FCR 575 at [23-4] Bennett J stated: [23] Each claim of a specification must have a priority date (s 43(1) of the Act). Different claims of a specification may have different priority dates (s 43(4)). Generally speaking, the priority date of a claim is the date of filing of the specification (s 43(2)(a)). Section 43(2)(b) provides that the Regulations may provide for the determination of a different date as the priority date. Regulation 3.12(1) relevantly provides that the priority date of a claim of a specification is the earliest of the following dates: (a) the date of filing of the specification; (b) if the claim is fairly based on matter disclosed in one or more priority documents, the date of filing the priority document in which the matter was first disclosed; (c) if the specification is a complete specification filed in respect of a divisional application under s 79B of the Act and the claim is fairly based on matter disclosed in the specification referred to ins 79B(l)(a) of the Act- the date mentioned in reg 3.12(2C). [24] Regulation 3.12(2C) provides that the date for a specification to which reg 3.12(1)(c) applies is the date that would have been the priority date of the claim if it had been included in the parent specification. That is, the claims in the divisional which are fairly based on matter disclosed in the parent specification take the same priority date as the claims in the parent. 264 The purpose of a priority document is only to describe the general nature of the invention, its field of application and the anticipated result. More particularly, the purpose of a priority document is to: describe the general nature of the invention, its field of application, and the anticipated result. Some generality and uncertainty in the provisional specification is permitted and it is not necessary to give all the details as to the manner in which the invention is to be carried out. (See Lahore's Patents, Trade Marks and Related Rights, vol 1, Butterworths, Australia, 2001 at 15,020). 265 There may be differences between the claims of the Innovation Patents and the disclosure in the Parent Application: see, eg, Stena Rederi Aktiebolag v Austal Ships Sales Pty Ltd (2007) 73 IPR 257 at [66], [105] (Tamberlin J); Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (2008) 78 IPR 463 ('Delnorth') at [20-21] (Gyles J); and The Sunnyfield Association v Cronk (2009) 80 IPR 300 at [16-22], [53] and[56] (Tamberlin J); Aspirating IP Limited v Vision Systems Limited (2010) 88 IPR 52 ('Aspirating IP') at [93], [98], and [100]. 266 This point was also made in Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 at 20, where Lockhart J said: The relevant principles are stated by Mr Blanco White QC in the fifth edition of his Patents for Inventions, 1983, at para 2-209 in these terms: It should be noted that the question of 'fair basing' upon a provisional specification is not altogether analogous to that of 'fair basing" upon a complete specification ... It has always been considered legitimate to develop an invention to some extent after filing a provisional specification, and the expression 'fairly based" in the present context allows for such development. See also Terrell on the Law of Patents (13th ed, 1982), op cit, pp 63-4, where the learned authors state that the primary object of the provisional specification is to enable the inventor to improve and perfect the invention during the period of "provisional protection". See also Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 11 IPR 20 at 436 and Rehm Pty Ltd v Websters Security System (International) Pty Ltd (1988) 11 IPR 289; Interact Machine Tools (NSW) Pty Ltd v Yamazaki Mazak Corp (1993) 27 IPR 83. All that the provisional specification needs to do is to describe generally and fairly the nature of the invention, and not to enter into all the minute details as to the manner in which the invention is to be carried out. It is a mode of protecting an inventor until the time of filing the final specification. It is not intended to be a complete description of the invention, but simply to disclose the invention fairly, though in its rough state. The interval of time between the provisional and the final is intended to provide an opportunity for the development and precise expression of the invention foreshadowed in the provisional. 267 Justice Yates in Vehicle Monitoring Systems Pty Ltd v Sarb Management Group Pty Ltd (No 2) (2013) 101 IPR 496 ('Vehicle Monitoring Systems') comprehensively set out the approach to take. Despite contrary suggestions by Infa in this proceeding in relation to that judgment, his Honour was well aware of, and did not overlook, the interplay between reg 3.12(1)(c) and reg 3.12(2C). As Yates J said at [120-6]: The nature of the required comparison [120] Regulations 3.12(1)(b) and (c) each require, relevantly, that the claim be "fairly based on matter disclosed" in the specification from which priority is claimed. [121] The parties accepted that the expression "fairly based" has the same meaning in this context as it has in s 40(3) of the Act dealing with internal fair basing, namely that there be "a real and reasonably clear disclosure" in the compared specification of that which is claimed: Lockwood Security Products Pty Limited v Doric Products Pty Limited (2004) 217 CLR 274 at [69]. However, the test of fair basis for determining the priority date of a claim is not the same as the test under s 40(3). Under s 40(3), the invention as claimed must be "fairly based on the matter described in the specification". This comparison alludes to the coordinate requirement of s 40(2)(a) that the complete specification - of which the claims form part - must describe the invention fully. There is no corresponding requirement in relation to a priority document. [122] Section 40(3) of the Act deals with the question of claim width: Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1 at [15]. Section 40(3) of the Act is directed, in a general sense, to ensuring internal consistency between that which is described as the invention, and that which is claimed as the invention. Even so, the requirement is only that the claim be "fairly based". The provision does not mandate a more stringent requirement. Thus, when considering the circumstances under which the prescription of s 40(3) will have been obeyed, the High Court in Lockwood (at [68]) said: The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ "an over meticulous verbal analysis". It is wrong to seek to isolate in the body of the specification "essential integers" or "essential features" of an alleged invention and to ask whether they correspond with the essential integers of the claim in question. [Footnotes omitted] [123] It was in this context that the High Court addressed and affirmed the requirement for "a real and reasonably clear disclosure" and noted that, even in the context of s 40(3), those words do not limit the relevant disclosure to the description of preferred embodiments. The High Court (at [69]) quoted with approval the following observations in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95: The circumstance that something is a requirement for the best method of performing an invention does not make it 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 body of the specification. [124] It was in this context that the High Court in Lockwood drew attention to the need to look to the specification as a whole, "putting aside particular parts which, although in isolation they might appear to point against the 'real' disclosure, are in truth only loose or stray remarks": at [69]. [125] In Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 the Full Court specifically drew attention to the different language used for the purposes of regs 3.12(1)(b) and (c). The Full Court (at 139) said: The expression "the claim is fairly based on matter disclosed in 1 or more priority documents", in reg 3.12(1)(b), corresponds with the expression used in reg 3.12(1)(c), concerned with divisional applications, "the claim is fairly based on matter disclosed in the specification". Both provisions are to be contrasted with s 40(3) of the Act, referring to "the matter described in the specification". Whatever the precise effect of the definite article in s 40(3), in the regulation, its absence plainly suggests that the fair basis in question need not relate to all the matters disclosed in the respective documents referred to in pars (b) and (c). Paragraph (b), as is made clear by subreg (2)(a), relates to s 38 of the Act, subs (1) of which provides: "If an applicant makes a provisional application, the applicant may make one or more complete applications associated with the provisional application at any time within the prescribed period." This indicates that the provisional application may provide fair basis for several complete applications, and the absence of a definite article which might require one claim to be fairly based on all the matter disclosed in a provisional application seems deliberate and appropriate. That the draftsman's choice of words was deliberate is also suggested by the final words of reg 3.12(1)(b), in which the expression "the matter" is used to refer to the particular matter that provides the fair basis. Just as the nature of a provisional application, having regard to s 38, may explain the reference to "matter" in par (b), so the nature of a divisional application may explain the use of the same word, again without any article, in par (c). [126] These observations make clear that some part or parts of the overall disclosure made in the prior specification can provide "matter" on which a claim can be fairly based for the purpose of assigning a priority date to that claim. 268 Therefore, one must look to the claimed priority specification as a whole when determining whether there is a real and reasonably clear disclosure to found fair basis, focussing on the matter disclosed therein. The task is not limited to isolating only the essential features of the priority disclosure and asking whether they correspond to the integers of the later claim. The "real and reasonably clear disclosure" is not limited to a "bare bones" form of the invention disclosed in the alleged priority document. Some part or parts of the prior specification may sufficiently provide a "real and reasonably clear disclosure" for the purpose of assigning a priority date for a later claim.

[44]

Consideration 269 Infa submitted that external fair basis determinations (and for that matter internal fair basis determinations) must be made without reference to Mr Hunter's (or any expert's) evidence, for two main reasons. 270 It first argued that fair basis issues are to be determined by the Court alone, on a textual comparison between the relevant claims and the text of the Parent Application (for external fair basis), or the body of the specification and drawings (for internal fair basis). 271 I agree that fair basis is a matter for the Court to determine, upon a consideration of the relevant documents. However, as I have already explained, expert evidence will play a role in assisting the Court in understanding drawings, specifications, combinations of features and the operation of the invention itself. I re-iterate that expert evidence is needed where the Court is required to make an assessment from the perspective of a skilled addressee, as is the case here in considering external fair basis. 272 Infa then submitted that in any event, Mr Hunter's evidence in his Fifth Affidavit is fatally flawed. It pointed to the fact that in Britax's instructing letter, Mr Hunter was asked to: 4. Examine the claims of each of the Innovation Patents, with particular attention to the features highlighted in yellow in the table. In doing so, have regard to the integer construction table at Tab 14 of your previous affidavit. 5. For each innovation patent, you are asked to provide an opinion whether the invention as so claimed has a basis by way of disclosure, in a general sense, in the body of the Parent Patent. In answering this question, have regard to both the written description and the drawings in the Parent Application. 273 Infa contended that Mr Hunter was not asked to first read the Parent Application and to give his opinion as to what were the inventions disclosed in the Parent Application, as required by s 79B of the Act, nor was he asked to identify the extent of any correspondence between the breadth of the integers or features of the Innovation Patents and the disclosure in the Parent Application. It argued that it was apparent from Mr Hunter's evidence that he did not have regard to the extent of the disclosure in the Parent Application or whether any of the claims of the Innovation Patents were within or travelled beyond that disclosure. 274 Thus, Infa contended that Mr Hunter took an impermissibly broad approach in finding supporting disclosures, in particular for the "connection means" and "means for connecting" features, as well as connections which were not "direct". Relevantly, Infa put its submission (as one example) as follows: Impermissible breadth of 'connection means' • It must be kept in mind that there is no reference to 'connection means' in the Parent Application. • Nonetheless, at CB D-9, page D-2786, for integer 1.1.6, Mr Hunter says he finds a connection means at the other end of the connection strap in Figure 4 of the Parent Application. If Mr Hunter is referring to buckle 45 in Figure 4, there is nothing in the Parent Application which supports a conclusion that buckle 45 discloses (in the relevant sense) the broader range of components encompassed by 'connection means'. • So too, at CB D-9, page D-2794, in relation to integer 3.1.5 'a connection means carried by or with respect to the tether strap', Mr Hunter finds this feature at page 8, lines 6-7 and in Figures 5 and 8. The text says: 'The harness 20 is secured with respect to the vehicle through latching hook connector 26, connection strap 44, buckle 45 and latching hook connector 43.' This passage does not support the proposition that any connection means whatsoever is carried by or with respect to the tether strap. Figures 5 and 8 illustrate only a connection strap 44 connected to a latching hook. There is no disclosure in the Parent Application which supports a conclusion that connection strap 44 (or connection strap 44 and buckle 45) discloses (in the relevant sense) the broader range of components encompassed by 'connection means'. The same comments apply to CB D-9, page D-2805, in relation to integer 6.2.4. • And similarly at CB D-9, page D-2802, in relation to integer 5.1.7 'a connection means carried by the tether strap', Mr Hunter again says he finds this feature at page 8, lines 6-7 and in Figures 5 and 8, but there is no disclosure in the Parent Application which supports the broader grasp of 'connection means'. • Again, at CB-9, page D-2809, in relation to integer 7.1.12 'to be secured with respect to said anchorage point by a connection means carried by or with respect to the tethering means', Mr Hunter says he finds this feature in Figure 8, but there is no disclosure in the Parent Application which supports a conclusion that any item in Figure 8 discloses (in the relevant sense) the broader range of components encompassed by 'connection means'. Impermissible reliance on direct to support indirect connection • At CB D-9, page D-2788, in relation to integer 1.5.6, Mr Hunter finds the feature of the tether strap being secured with respect to a head end of the backrest portion (of the child safety seat) in Figure 4. But Figure 4 shows only a direct connection between tether strap 40 and the head end of seat shell 30, no indirect or other connection is disclosed: refer Parent Application specification at page 7, lines 18-19: 'A tether strap 40 is connected at one end to the seat shell 30 at connection points 41 and 42,'. 'With respect to' however means 'directly or indirectly': see Construction Decision at [296] re 1.1.2. Impermissible breadth of 'means for connecting' • At CB D-9, page D-2906, in relation to integers 6.3.2 and 6.4.2 'the tether strap incorporates means for connecting both the tether strap and a child safely harness to an anchorage point', Mr Hunter finds this feature in Figure 8, but there is no disclosure in the Parent Application which supports a conclusion that any item in Figure 8 discloses the breadth of the claim to all 'means for connecting'. 275 In my view, the evidence of Mr Hunter is of assistance and enables the Court to consider the extent of disclosure in the Parent Application and the claims in the Innovation Patents. Although Mr Hunter was directed to specific aspects of the Parent Application, he provided an opinion on the disclosure "in a general sense" of the Parent Application and then considered the claims in the Innovative Patents. Mr Hunter appropriately referred to specific individual references in the Parent Application in considering, as a skilled addressee, the nature and extent of the disclosure in that Application. Infa led no conflicting evidence that it relies upon. Infa does not rely upon any evidence of the way in which a skilled addressee would read the relevant terms in the Parent Application, or how a skilled addressee would understand any apparent discrepancy between the matter disclosed and the terms of the Innovation Patents. 276 I consider that Infa, as the above submission demonstrates, takes an unduly narrow approach. The fact that there is no specific reference to say "connection means" does not lead to the conclusion Infa contended. Mr Hunter, viewing the Parent Application, indicates where the inventions later claimed are sufficiently described and disclosed. There may be differences between the disclosure in the priority document and the later invention. I do not consider it necessary for external fair basis that what is claimed in the Innovation Patents must be described in the same terms as the Parent Application. In addition, the Innovation Patents may permissibly contain a further development or refinement of the idea of the invention in the Parent Application, as has occurred here. This is to be contrasted with circumstances in which an entirely new feature is introduced to the extent that it constitutes a departure from the "idea of the invention" disclosed in the relevant priority document. It is also to be contrasted with the position where the Parent Application contains something which is inconsistent with the alleged later invention claimed. 277 Infa, in many circumstances, relied upon specific terms not being carried through to the Innovative Patents. As I have indicated, it is immaterial to an assessment of fair basis whether the precise words (such as "connection means") are present in the Patent Application specification, as long as those terms of the Innovation Patents (relevantly here, as construed in the Construction Judgment) are included in the "idea of the invention" disclosed in the Parent Application. 278 The question is whether any modifications or refinements to the features claimed in the Innovation Patents add "something new into the combination which represents a departure from the idea of the invention described in the earlier document": Delnorth at [20-1] (Gyles J). This aspect of his Honour's reasons was not disturbed on appeal. 279 In my view, each of the Innovation Patents align sufficiently with the Parent Application as being refinements of aspects of the "child safety seats" which was the subject of the Parent Application. 280 I make one other observation. Infa's contention is contradicted by its own submission in relation to novelty, namely that the claims of the Innovation Patents are anticipated by the Parent Application. Such a submission necessarily implies Infa's acceptance that the Parent Application contains a "real and reasonably clear disclosure" of the relevant essential features of the claims of the Innovation Patents. Consequently, the corollary of Infa's submission on novelty is its implied submission that the Innovation Patents are fairly based on the Parent Application. As Yates J said in Vehicle Monitoring Systems at [201]: Secondly, the respondent specifically advanced the parent specification as an anticipatory disclosure of the invention as claimed in all claims. Had I found the priority date of the claims to be the deferred date, I would also have found that none of the claims of the patent would have been novel over the prior art information disclosed in the parent specification. Thus, on that basis, the claims would have been invalid and could not have been infringed. But if the disclosures in the parent specification anticipate the invention as claimed (as the respondent contended), the claims must at least pass the threshold of being fairly based on matter disclosed in the parent specification, in the sense that there must be a real and reasonably clear disclosure of the invention as claimed. I reject the respondent's contrary submission. It can be seen, therefore, that the respondent's challenge to validity, based on the prior publication of the parent specification, is self-defeating because that challenge provides an undeniable foundation for finding that the priority date of the claims is not the deferred date. (Emphasis added.) 281 Having made those general conclusions which dispose of Infa's challenge on the basis of external fair basis, I now proceed to address some of the specific matters raised in Infa's submissions in relation external fair basis.

[46]

Harness not secured independently of seat shell 285 Infa submitted that the Parent Application requires that the harness be secured independently of the seat shell, and that the claims of the relevant Innovation Patents are not so limited. As a related argument, it submitted that all of those patents describe an indirect relationship between the harness and the seat shell which contravenes the independence requirement. 286 The relevant "independence" referred to in the Parent Application is to be understood in the context of the "disadvantage" which the patent seeks to overcome, namely reliance "on the mechanical integrity of the seat shell to secure the child with respect to the vehicle": Parent Application at 2.7-12. As long as the connection of the harness to the vehicle is not reliant on the integrity of the seat shell, the requisite "independence" is achieved. In applying this contextual reading, there is no requirement that the harness may not be indirectly connected to the seat shell. There is likewise no requirement that the mounting arrangements for the harness and the tether strap be completely independent of each other. In fact, the Parent Application (at 2.29-3.11) contemplates shared mounting arrangements: Although the first and second mounting arrangements may be independent of each other, they may also include shared components. Indeed, as vehicle anchorage points often provide only one aperture or fitting to receive a latching hook connector, it may be preferable for the first and second mounting arrangements to include shared components. Accordingly, in some embodiments, one of the mounting arrangements may include a connecting component to connect to the vehicle anchorage, which is further provided with an aperture to receive a connecting component which is part of the other mounting arrangement. The connecting component which is connected to the vehicle anchorage could then be shared by both the first and second mounting arrangements. There are, of course, other ways in which a component may be shared.

[49]

Precise wording not used 292 Infa pointed to a number of words (such as "carried by", "head end", "adapted" and "body") which are present in various claims of the Innovation Patents, but which do not appear in the Parent Application. It contended that such claims were therefore not fairly based. 293 In doing so, Infa is employing an "over meticulous verbal analysis", as cautioned against in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 1) (2004) 217 CLR 274 ('Lockwood'), in demanding exact matching of terms between claimed features and an associated disclosure being relied on to provide fair basis. 294 There is no requirement that the particular terms of a claim be employed in the relevant prior disclosure. This applies equally to the above terms such as "head end" as to the terms "carried away", "extending away", "connection means", "tethering means" or "means for connecting", "incorporates", "carried by or with respect to", and "extending towards the child safety seat". 295 In relation to "carried by", for instance, Mr Hunter had no difficulty in establishing a basis for this integer, referring to figure 4 and page 9, line 5 of the Parent Application. Mr Hunter approached this integer with the broad understanding that fixing of the connection strap to the tether strap is not necessary. 296 In the context of a tether strap as being "adapted to tether the child safety seat" or a safety seat and harness as being "adapted to be secured to a single anchorage point", Mr Hunter found these features disclosed by reference to figures 4-9 (adapted to tether the child safety seat) and figures 4-5 (child safety seat and child safety harness adapted to be secured to a single anchorage point). 297 Further, Mr Hunter found the term "adapted" or "adapted to cooperate" to relate to a feature disclosed by reference to figures 4-9 of the Parent Application. 298 As another specific example, in relation to "body", Mr Hunter found this feature disclosed by reference to figure 6 of the Parent Application.

[57]

Modifications statement 312 Britax relied on the following statement (which I will call a "modifications statement") appearing in each of the Innovation Patents to argue fair basis in the absence of supporting disclosure (eg in the First Patent at 7.15-21): Although a number of embodiments of the present invention have been described in the foregoing detailed description, it will be understood that the invention is not limited to the embodiments disclosed, but is capable of numerous rearrangements, modifications and substitutions without departing from the scope of the invention. Modifications and variations such as would be apparent to a skilled addressee are deemed within the scope of the present invention. 313 Infa submitted that in each patent where it appears, the statement suffers from the fatal defect that it does not disclose anything. According to Infa, it does not identify what the patentee in each case considers is the "invention" and it does not disclose the nature of any rearrangements, modifications or substitutions which might be made without departing from the scope of the invention. Infa submitted it is an "empty statement, empty of content and meaningless" and "at most, it invites idle speculation". 314 It is not unusual to have statements of a similar import in patent specifications, which have been referred to in some of the authorities. 315 In Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 ('Welch Perrin'), the High Court considered the following statement: Although I have herein shown and described my invention in what I have conceived to be the most practical and preferred embodiments, it is recognized that departures may be made therefrom with the scope of my invention, which is not to be limited to the details disclosed herein, but is to be accorded the full scope of the claims so as to embrace any and all equivalent devices and systems. 316 At 614 the High Court said: This seems to mean no more than that the invention is not to be regarded as restricted to machines made exactly as described, but that any machine covered by the words of the claims is to be considered as within the scope of the invention. This is little more than a cautiously introduced assertion of the doctrine that a mere substitution of known mechanical equivalents will not suffice to avoid infringement. But the appellant put forward a different view of this sentence and based on it an argument that, briefly stated, ran as follows: it is not possible to spell out from the body of the specification what is the invention as distinct from the particular embodiment of it described: an incomplete description of an invention may sometimes be completed by filling in gaps in the body of the specification by reference to the claims: but that can only be done if the gap which has to be filled is filled by some feature appearing in all the claims. For this -proposition the decision of Morton J., as he then was, in United Shoe Machinery Corporation's Application (1), was relied upon. It was said that here the claims are so diverse that they could not be treated as by reference completing an incomplete description. This argument was not accepted by Menzies J. He said that in this case " it is possible upon a consideration of the specification as a whole, including the claims, to find a description of the invention; and that, in so far as any claim does not claim that invention, it is itself invalid, but its inconsistency with the general description of the invention does not totally destroy the specification" (2). His Honour was, we think, perfectly right in this. The words on which the appellant relies do not really operate to incorporate into the description of the invention in the body of the specification matter which appears for the first time in the claims, and Lord Morton's propositions referred to above are therefore not applicable. (Emphasis added.) 317 In Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd (2011) 92 IPR 21 ('Kimberley-Clark') the Full Court considered the following statement described as the "spirit and scope" of the invention: Having thus described the invention in detail, it should be apparent that various modifications and changes can be made without departing from the spirit and scope of the present invention. For example, a wide variety of individual sterilization wraps have been described herein. Thus, a wide variety of combinations of inner and outer wraps are possible including combinations of both disposable and reusable sterile wrap sheets. The inner and outer wraps may be made from the same or different basis weight materials to engineer specific properties into each of the wraps. In addition, a wide variety of bonding techniques were also disclosed which may be used alone or in combination with each other to impart varying bond patterns to the sterilization wrap system of the present invention.. Consequently, these and other modifications are contemplated to be within the spirit and scope of the following claims. 318 As to this statement Greenwood and Nicholas JJ said at [75]: It is convenient to consider the last mentioned argument at the outset. Statements as to the "spirit and scope" of the invention are often found in the bodies of patent specifications. They were characterised by one learned author as devices aimed at overcoming what he perceived at the time of writing to be the judicial tendency towards literal interpretation which instead created uncertainty and added nothing to the true construction of the claims: see Sir Arthur Dean, "The Claiming Clauses of Patent Specifications" (1949) Res Judicatae 144 at 148. In any event, it is now well established that a statement of this kind does not make inessential what would otherwise be an essential requirement of a claim: Welch Perrin & Co Pty Ltd v Worrell (1961) 106 CLR 588 at 614. And while Kimberly-Clark argued against the construction of the relevant claims adopted by the primary judge, it did not advance a case based upon the distinction between essential and inessential integers and the use of known mechanical equivalents as substitutes for the latter. That it did not do so is entirely understandable. As will be seen, the form of the claims appearing in each of the patents in suit, not to mention their sheer multiplicity, does not permit us to hold that any requirement that the sterilization wrap be made from separate sheets is an inessential integer of the relevant claims: see Walker v Alemite Corporation (1933) 49 CLR 643 at 656-657, Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 246. 319 Any statement made in a patent is not to be ignored, but like the consistory clause, is to be read in the context of the claim as a whole. 320 The modifications statement in this proceeding is not the same as in Welch Perrin or Kimberley-Clark. However, it is very similar to the clause considered and applied in Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43 ('Old Digger'). In the appeal from that decision, whilst submissions were made as to the modifications statement, which stated that "[m]odifications and variations such as would be apparent to a skilled addressee are deemed within the scope of the present invention", no further explicit discussion was made relating to the approach of the trial judge on this aspect. 321 I adopt the approach of the trial judge in Old Digger. If a witness gives evidence that a modification would be apparent to a skilled addressee, the Court would be entitled to rely upon such evidence in construing the ambit of the claims, provided the scope of the claims is not impermissibly enlarged. If, for instance, the claim itself indicated that a modification has been deliberately left outside its scope, then the modifications statement would have little or no work to do in that circumstance. 322 If it is apparent to the skilled reader that the claim could not have been intended to exclude minor variations which would have no material effect on the working of the invention, then the exact compliance with the particular descriptive word or phrase in a claim is not to be read into the claim: see eg the analysis of Beaumont J in Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75 at [41]. 323 Infa also criticises that Britax relies on the following statement appearing in each of the Innovation Patents to argue fair basis in the absence of supporting disclosure, namely (eg in the First Patent at 7.4-6): "Of course, the mounting arrangements for securing the harness 20 and safety seat 30 with respect to the vehicle can take other forms". 324 Infa submitted that this modifications statement suffers from the defect that it does not disclose what those "other forms" might be, or when those undisclosed other forms may be employed. Infa submitted that the statement is merely speculative and does not provide any "real and reasonably clear disclosure". 325 Whilst the reference to "other forms" cannot expand the scope of the claims outside what the body of the specification read as a whole discloses to be the invention, it does indicate that the "mounting arrangements" may include some variations in form. Evidence of the skilled addressee would assist the Court in this regard, as it would in relation to any consideration of the modifications statement. 326 It is then to be observed that Infa did not rely upon expert evidence directed to the internal fair basis ground of challenge, contending the Court itself is in the position to simply compare the specification with the claims. No evidence was said to be required, even to interpret the drawings or figures, or to put them in context. 327 On the other hand, Mr Hunter gave evidence that for all claims of each of the patents in suit, there is a general disclosure and drawings supporting the subject matter of each of the claims of each of the patents. There was a criticism of this evidence, apart from the question of whether he was a skilled addressee, on the basis Mr Hunter's evidence was mere assertion. I have not accepted this criticism. The evidence necessarily involves his reading of each Patent, interpreting the figures and drawings as the skilled addressee would view and interpret them. Mr Hunter then makes a conclusion based upon this approach. In many instances, as Infa itself contended, the conclusion is to the Court self-evident, although not in accord with the contentions of Infa. To say that there is no reasoning or detail in the evidence of Mr Hunter is to disregard the nature of the evidence he is giving as the skilled addressee expressing his own opinion upon reading the patent as what the notional skilled addressee would take from the document being considered.

[58]

Consistory clauses 328 Britax relies upon the consistory clauses in each patent. Infa contended that Britax's reliance on the consistency clause is misplaced, and cannot be a basis for each of the impugned claims. 329 Infa identifies that there is no consistory clause for the following claims in suit: First Patent - claims 2 and 5; Second Patent - claims 2 to 4; Third Patent - claims 2 to 5; Fourth Patent - claims 2 to 4; Fifth Patent - claims 2 and 3; Sixth Patent - claim 4; and Tenth Patent - claims 1 and 19. Whether there is a consistory clause or not, the Court must in this proceeding consider the whole of the specification, determining its true scope. 330 As to the purpose and possible significance of a consistory clause, Greenwood and Nicholas JJ in Kimberly-Clark at [46-7] made the following observations: [46] Patent specifications often include a general description or summary of the invention which may include a consistory clause. A consistory clause is in the nature of a general description of an invention which is often expressed in terms which mirror the broadest of the claims: Welch Perrin & Co Pty Ltd v Worrell (1961) 106 CLR 588 at 612. Such clauses are not compulsory but are routinely included by those responsible for drafting patent specifications often with a view to providing fair basis for the broadest claim. Whether or not a consistory clause does so will depend upon whether there are other matters disclosed in the body of the specification which show that the invention is narrower than that described in the consistory clause: Lockwood Security Products Pty Ltd v Doric Products Limited (2004) 217 CLR 274 at para [99]. [47] The part of a patent specification which is put forward by the patentee as a general description or summary of the invention may have a significant role to play in the construction of a claim which is open to different interpretations. This is because the general description or summary of the invention will often describe the invention by reference to features that the skilled addressee would understand to be common to all possible embodiments of the invention. 331 Undoubtedly, circumstances where there might be lack of fair basis are where the consistory clause is inconsistent with the rest of the description in the specification, or the rest of the description in the specification makes it clear that the invention is narrower than the consistory clause. Hence, as I have said, the whole of the specification needs to be considered. 332 The High Court in Lockwood discussed the role of consistory clauses at [91-3] and [99-100]. At [91] the Court stated that: Section 40(3) would only be satisfied if the specification read as a whole corresponded with the consistory clause; it cannot be satisfied by mere assertion in a consistory clause. 333 At [99] the Court said: ... the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. (Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 612-13). An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification. 334 In Apotex Pty Ltd v Les Laboratoires Servier Pty Ltd (No 2) (2009) 83 IPR 42 after referring to the Lockwood decision and the High Court's discussion of the role of the consistory clause, Bennett J stated (at [37-8]) that: coincidence of language, such as in a consistory clause, is insufficient, on its own, to provide fair basis if that is inconsistent with the description of the invention when considering the specification as a whole and that: the inquiry is into what the body of the specification, read as a whole, discloses as the invention. 335 Similarly, in Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132 ('Sigma')at [90], Bennett J said that: it is not simply a matter of matching a consistory clause or other stray phrases with a claim. It is a question of comparing the invention claimed with the invention disclosed. Frequently, indeed most often, there is no real difference; sometimes there is. 336 Bennett J added (at [91]) that if the consistory clause is not consistent with the description of the invention in the body of the specification considered as a whole, or is wider than that invention, the mere insertion of a statement mirroring the claim does not, of itself, provide fair basis for the claim. Justice Nicholas made similar general comments at [169]. At [243] Yates J summed up the position in this way: A consideration of the entirety of the specification of the Amended Patent, with its express incorporation of the entire disclosures of the Grandparent Application and the Parent Application, and the retention of the text concerning the "fruitless" endeavours to produce an ER formulation by hydrogel tablet technology, which was "impossible to achieve", shows that the consistory clauses do not reflect the description of the invention in the light of the specification as a whole: Lockwood at [87]; Atlantis Corporation Pty Ltd v Schindler (1997) 39 IPR 29 at 50. 337 Justice Yates added at [247] that on the facts in Sigma, the method involving ER formulations was a matter that was effectively disclaimed in the specification, and therefore there could be no basis to a claim for such a method. There are no such implicit or explicit disclaimers in the body of the specifications of the patents under challenge. 338 In Vehicle Monitoring Systems, Yates J again considered an internal fair basis challenge, finding at [142-3] that the claims were consistent with the consistory statements and with the general description of the invention as contained in the complete specification when read as a whole. At [143] Yates J described the Court's process of reasoning in establishing internal fair basis as follows: The respondent sought to treat all these disclosures, individually and cumulatively, as mere stray phrases that do not truly describe the invention. I do not accept that contention. It is true that the complete specification refers on many occasions to the use of wake-up signals. However, on a fair reading of the specification, those references are directed principally to embodiments where a portable or mobile data collection apparatus is employed. This is not to say that wake-up signals cannot be used where the data collection apparatus is at a fixed location. But there is no need for wake-up signals when a data collection apparatus is at a fixed location. In my view, this is made clear by the complete specification itself, especially (but not exclusively) in the passages I have quoted in [38] and [39] above. The specification makes plain that the invention it describes is not one limited to embodiments involving a portable or mobile data collection apparatus. It also makes plain that the invention it describes includes embodiments that employ a persistent wide area network. The recognition in the specification that some embodiments of the invention have advantages that others do not- because, advantageously a portable or mobile data collection device can be used - does not mean that the other described embodiments cannot be claimed validly. 339 All the nine innovation patents contain a consistory clause relevant to claim 1 of each patent. Thereafter each patent contains a description of preferred and optional features under the heading of Summary of Invention before dealing with a description of preferred embodiments. Aspects of those preferred or optional features then appear in the subsidiary claims. In my view, there is no inconsistency between the relevant consistory clause and the rest of the description for each patent, nor is there any claimed feature of the subsidiary claims which has no support in the specification description. Even where there is no consistory clause, the ambit of the innovation is disclosed in the specification such as to support the claims. 340 Having made these general conclusions, I now proceed to address some of the specific matters raised in Infa's submissions in relation to internal fair basis by reference to identified terms or topics.

[59]

"Connection means" 341 Infa approaches this term, and others, by seeking to find references to such a term in the specification. This is too narrow an approach. To the extent that the term "connection means" (or other term) appears in the consistory clause or specification, this indicates that the "connection means" is not limited to the only feature which is disclosed in the specification strap (ie a buckle). There is no indication to the contrary that "connection means" cannot be interpreted and encompass a connection means as I have done in the Construction Judgment: see, eg, at [318], [348-9], [357] and [366]. 342 Infa submitted that unlike in Lockwood, there is no explanation in the specification, of what a connection means may be or what form it may take. The term is not used in relation to the drawings. Infa contended that it is only via a process of elimination, and in a deliberate search to give possible content to the term, that one could seek to construe the buckle as a disclosure of something which could possibly fall within the scope of "connection means". 343 It follows according to Infa that "connection means" in each of the relevant claims lack fair basis unless restricted to the only feature which is disclosed in the specification as at the relevant end of the connection strap, namely, a buckle. The term not being so restricted, each of the claims lack fair basis. 344 The essence of Infa's internal fair basis challenge is that the term "connection means" is too broad, and Infa alleges that the disclosure in the drawings is limited to the connection strap having a buckle at the other end. 345 I will look at the First Patent as an example. Claim 1 of the First Patent is directed to a connection strap carried by the tether strap and having a connection means at the other end. Claim 5 is directed to a child safety seat including a seat, a tether strap incorporating a connection strap having a connection means at the other end, and a harness that is secured to the connection means. 346 The term "connection means" may be used to embrace all types of connection arrangements even though only a limited number are described in the body of the specification. Use of "means" type language is allowable in the claims unless there is a specific disclosure in the body of the specification that to a skilled addressee would be taken to limit the form of connection arrangement falling within the scope of the claims. There is no such limitation in the Patent, nor was any limitation seen by Mr Hunter. 347 Then, looking at the Third Patent as an example, Infa agreed that the description at 5.28-30 particularises the single embodiment illustrated in figures 3 to 5. Infa submitted that the reference to the illustrated embodiment does not, however, disclose connection means other than that illustrated and that described at 3.33-4 (comprising a strap adjustable in length or with a separate extension strap). Infa submitted that the text at 2.34-5 does not assist in determining the scope of "connection means", and merely adds a layer of inconsistency to the disclosure. 348 Infa then submitted, by reference to the Third Patent, that the "connection means" in the claims is different from and clashes with the connection means at 2.34-5, 3.33-4 and at 5.28-30. The patent at 2.34-5 describes the connection means as having an active role - that of securing the tether strap - the connection means allows attachment of the harness while also securing the tether strap to the same anchorage point. If the connection means secures the tether strap, it cannot be carried by or with respect to the tether strap. As to 5.28-30, the connection means in this embodiment is all of the connection strap (44), the aperture in the buckle (45) and the latching hook connector (43). Since the tether strap (40) is carried by or with respect to latching hook connector (43) - that is, by part of the connection means - this embodiment of the connection means clashes with the requirements of the connection means in the claims. In addition, the extending away feature of the claim is not disclosed. 349 However, in my view there is no contradiction between the disclosure at 2.34-5 and the disclosure at 5.28-30 as claimed by Infa. The latter refers to "connection means which in this embodiment comprises a connection strap 44, an aperture in buckle 45 and latching hook connector 43", and is of one embodiment only. The former appears in a consistory clause, is consistent with the claims, and is a broader description of the invention than one embodiment only. 350 It is convenient to observe here that Infa has alleged (for example in relation to the Seventh Patent integer 7.4.6) that the inconsistent, contradictory and various uses of "means" (eg "connection means" and "tethering means") shows that there is a lack of fair basis. 351 I do not accept this submission. All of the features of "connection means" and "tethering means" are disclosed in the consistory clause, the body of the specification and the figures. There is nothing in the body of the specification that contradicts or limits the use of the terms in the claim in the way sought to be advanced by Infa. 352 Further, Infa argued that the term "connection means arrangement" in the Eighth Patent (integer 8.4.1) is unsupported, so that none of claims 1, 3 or 4 of the Eighth Patent are fairly based on the disclosure in the specification. 353 There is specific reference in the consistory clause to a "connection means arrangement". There is nothing in the body of the specification that contradicts or limits the use of the terms in the claim in the way sought to be advanced by Infa.

[62]

"Carried by" and independent harness 356 Infa contended that the specification describing a harness which is independent of the seat shell in order to demonstrate, as well as an absence of the concept, that there are disclosures in the specification which are contrary to the "carried by" feature in the claims. Infa contended there is no disclosure of the words "carried", "carry", "carries" or equivalent outside the consistory statement; on the other hand, the drawings, and the description of the drawings, are inconsistent with the feature that the connection strap is carried by the tether strap. 357 Infa seeks to demonstrate its independence point by postulating what would happen if the tether strap was cut. However, the concept of independence described in the specification relates to the occupant of the safety seat remaining secured to the vehicle anchorage point other than by dependence on the seat shell. In any event, a reference to the figures reveals that even if the tether strap was cut the harness would remain connected to the vehicle anchorage point as desired by the series connection arrangement of the Innovation Patents. Finally, failure of the tether strap, by cutting or otherwise, is not part of the problem with which the invention is concerned. 358 In my view there is a real and reasonably clear disclosure of the feature of the connection strap being carried by the tether strap. I also agree with Britax's submissions that Infa's challenge relating to the independence of the harness is based on a misunderstanding of the term "independently" at 3.7-13 of the First Patent. In the context of the specification of the First Patent for example, "independently" means that the harness is not secured to the seat shell but is in fact secured independently of the seat shell to a vehicle anchorage point. Should the integrity of the seat shell fail then the harness will still operate to secure the child. This is stated at 3.7-13: Current arrangements rely on the mechanical integrity of the seat shell to secure the child with respect to the vehicle. In the event of a collision, the collision loads are applied to the seat shell. Therefore, the safety of the infant is dependent on the integrity of the seat shell. However, this disadvantage is alleviated with the present invention, where the upper securement point of the harness is able to be secured independently of the seat shell and with respect to the same anchorage point to which the tether strap is connected. 359 Infa also contended that there is a failure to include the feature that the connection strap is connected or connectable to the harness in the claims. However, it is not necessary that the harness be explicitly included as a feature of the claim. Contrary to Infa's submission, the focus of the invention as described is upon the tether strap aspect of the invention and its interrelationship with the connection strap, and not on the harness and the securing of that harness to a vehicle independently of a child safety seat.

[66]

Tenth Patent 367 Infa alleged that claim 19 lacked internal fair basis because the specification does not contain the term "anchorage point". However, the tether strap (11) as depicted in figures 1 and 2 of the Tenth Patent is extending towards "an anchorage point behind said seat back portion" as recited in claim 19. In my view, claim 19 is fairly based. Claim 19 deals essentially with the safety seat of claim 1 in combination with a vehicle. Figures 1 and 2 depict two configurations of a safety seat in use on a vehicle seat. The Tenth Patent (at 4.4-7) states: Figs 1 and 2 illustrate the use of a safety seat 10 on a motor vehicle seat 8 in either the forward facing position (Fig 1) or a rearward facing mode (Fig 2). The safety seat 10 is held to the vehicle seat 8 by the vehicle seat belts 9. 368 In relation to Infa's challenge with respect to claims 1 and 2, I say the following. Putting aside that the combination of features recited in claims 1 and 2 is disclosed by the consistory clause set out at 2.12- 21 and the description at 3.1-6, (subject to some minor differences in wording), the combination of features recited in claims 1 and 2 is disclosed and described in relation to the various embodiments depicted in figures 1 to 11 and the accompanying description set out in the body of the specification. The option of anchorage locations being located in the side wall is canvassed (see 3.7-8 and 4.8-16). 369 Infa also pleads a fair basis allegation that claim 20 (the omnibus claim) is not fairly based. However, the claim itself imports the description of the invention contained within the body of the specification including the drawings. 370 I briefly mention one other argument raised by Infa in relation to the Tenth Patent. It was submitted that each of claims 1, 2, 19 and 20 covers embodiments where the distance between the rear of the safety seat and the attachment point on the vehicle would be more than a "minimum distance" and therefore none of the claims are fairly based. Reading the claims in the context of the specification, I do not regard the claims as describing a "number of components" which add length to the tether strap. Infa did not elaborate on this argument before the Court, and did not provide any evidence to support its argument. 371 I reject Infa's challenge to the Tenth Patent on the ground of lack of internal fair basis.

[69]

The relevant comparison 375 The law on novelty has been variously stated by the courts over time. In Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496 ('Wake Forest') , Dodds-Streeton J at [480-9] conveniently set out the relevant principles: [480] In determining whether a so-called invention is novel, it is necessary to compare the invention as claimed in the claims of the patent and prior art information, so as to ascertain whether the prior art anticipates what is claimed (H Lundbeck A/S & Anor v Alphapharm Pty Ltd (2009) 177 FCR 151 ("Lundbeck") at 192 per Bennett J). [481] It was common ground that novelty was to be assessed by reference to the "reverse infringement test", which was described by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 ("Meyers Taylor") as follows (at 235): The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement. [482] Thus all the essential integers of the combination claims in suit must be disclosed by the prior art information sufficiently to enable the skilled addressee to perform the invention before the priority date. [483] In Lundbeck, Emmett J stated (at 169): If the prior art information discloses information that enables the so-called invention to be performed, the so-called invention will not be novel. Whether prior art information does so will depend upon the claims made in respect of the so-called information. Thus, it is necessary to identify the so-called invention, so far as claimed in a particular claim. Once the so-called invention has been properly identified, it is a question of whether the prior art information discloses sufficient information to enable the relevant skilled addressee, at or before the priority date for the claim of the so-called invention, to perform the invention. [484] In Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 ("BMS"), Black CJ and Lehane J held (at 548) that: [A] prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. [485] In Hill v Evans (1862) 1A IPR 1 at 6 to 7 ("Hill v Evans"), Lord Westbury LC stated the classic test of the standard of disclosure required for a prior publication to anticipate an alleged invention: I apprehend that the principle is correctly thus expressed: the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent… the question is, what is the nature and extent of the information thus acquired which is necessary to disprove the novelty of the subsequent patent? There is not, I think, any other general answer that can be given to this question than this: that the information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication. Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited and accurate, and gives a specific rule of practical application. The reason is manifest because much further information, and therefore much further discovery, are required before the real truth can be extricated and embodied in a form to serve the use of mankind. It is the difference between the ore and the refined and pure metal which is extracted from it. Again, it is not, in my opinion, true in these cases to say, that knowledge, and the means of obtaining knowledge, are the same. There is a great difference between them. To carry me to the place at which I wish to arrive is very different from merely putting me on the road that leads to it. There maybe a latent truth in the words of a former writer, not known even to the writer himself; and it would be unreasonable to say that there is no merit in discovering and unfolding it to the world. Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a specification, namely, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use. (emphasis added) [486] To similar effect, it was observed in General Tire at 138 that: To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented: Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457, line 34, approved in BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 RPC 1 at 24, line 1. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee. [487] It has been frequently reiterated that the test for anticipation by a prior document or patent is quite rigorous. As Finkelstein J stated in Root Quality Pty Ltd v Root Control Technologies Pty Ltd & Ors (2000) 49 IPR 225 at 243, "[t]he prior publication must give directions which will inevitably result in something within the claim". [488] It was observed in General Tire (at 485-486) that: [I]f carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which… would constitute an infringement… the patentee's claim has in fact been anticipated. [489] The nature of the test has been described in other authorities in the following language: (a) "[a]ny information as to the alleged invention given by any prior publication must be for the purpose of practical utility, equal to that given by the subsequent patent": Canadian General Electric Co Ltd v Fada Radio Ltd (1930) 47 RPC 69 at 90; (b) "clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent": General Tire at 138; and (c) in the case of anticipation by doing an act in public, one can usually ask "what information was given" to a person skilled in the art by the use in question: Insta Image Pty Ltd & Anor v KD Kanopy Australasia Pty Ltd & Ors (2008) 78 IPR 20 at 44-45 ("Insta Image"). 376 Infa's novelty challenge is based on asserted invalidity arising both from prior art documents and from asserted acts of prior use of the claimed inventions before the priority date. Different considerations apply to assessing an invalidity challenge based on an asserted disclosure in a prior art document by contrast to an asserted disclosure by prior public use. 377 It is worth emphasising a number of matters. I will first deal with prior art information contained in a specification or publicly available document, and then with prior public use.

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Prior public use 380 Section 7(1) of the Act relevantly provides that in relation to a prior public use, the relevant "information" must be made publicly available through either "a single act" (s 7(1)(a)) or through multiple acts "if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information": s 7(1)(b). 381 In addition, the relevant act or acts must be strictly proved. In Arrow Pharmaceuticals Ltd v Merck and Co Inc (2004) 60 IPR 548, Conti J at [37] noted the decision of Waddell J in Windsurfing International Inc v Petit (1983) 3 IPR 449 at 484-90, where the Court discussed the extent of the evidentiary task of establishing the existence of prior user. At 489, Waddell J said as follows: ... It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation. 382 More recently, in Aspirating IP Besanko J rejected the uncorroborated evidence of a witness as to a series of alleged prior uses between 1980 and 1983. At [200-2], Besanko J said: [200] The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago. In Commonwealth Industrial Gases Ltd v M WA Holdings Pty Ltd [1970] HCA 38; (1970) 180 CLR 160 (at 165-166) Menzies J said: It is not that I dismiss the evidence as deliberately untruthful- although I am disposed to think that the evidence relating to Ex 8 and Ex 9 - which was a less than accurate representation of Ex 8- was not wholly frank it is rather that I cannot accept as reliable, oral evidence relating to particular pieces of equipment to which some reference has been found in the records of the defendant company, and then, as if by unaided recollection of observations made up to twenty-eight years ago, that equipment has been identified and described by the witnesses. It is apparent that during the long period since the equipment was seen, the witnesses must have looked at hundreds, if not thousands, of unremarkable pieces of similar equipment, and I have no confidence in their stated recollections of particular pieces of equipment among those numbers. [201] In Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at 556-557 Gummow J said that proving an alleged anticipation by the recollection of witnesses and by drawings in catalogues and brochures is to be approached with "some caution". [202] In Windsurfing International Inc v Petit (1983) 3 IPR 449, Waddell J (at 489) referred to the need to scrutinise evidence of an alleged prior public use with great care and said that such a use should be strictly proved. 383 At [230] Besanko J further noted: The critical aspects of Mr Miles' evidence are the conversation concerning Billy Guyatts Moonee Ponds and the precise features of the smoke detection systems he saw at Billy Guyatts Blackburn and Radio Australia. Those aspects are not corroborated by any other witness. There are no contemporaneous records of the conversation he deposed to or records or drawings of the smoke detection systems he described. 384 At [236] Besanko J further said: I have considered Mr Miles' evidence very carefully. I do not think that he was trying to mislead the Court at any stage. Nevertheless, the matters and events about which he deposed took place many years ago and, as I have said, there are no contemporaneous records or drawings. Although I think that he genuinely believed the matters he gave evidence about, there were aspects of his evidence which lead me to think that his recollection about critical matters was not as clear as he considered. 385 At [242-3] Besanko J held: [242] As I have already said, Mr Miles' evidence stands alone on critical matters. He said that he took photographs of the smoke detection system at Radio Australia, but no photographs were produced. He said that Mr Petersen designed the smoke detection system at Billy Guyatts Blackburn, and yet Mr Petersen did not give evidence of the features of that system. [243] In all the circumstances, including the time which has elapsed and the onus on the respondent, I am not prepared to act on the evidence of Mr Miles and find the alleged prior public uses relied on by the respondent. 386 Further, it is fundamental to the statutory mandate of s 7(1) that the asserted prior art information (in the form of the prior use) must make the invention publicly available in the form of the combination as claimed.

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Publicly available 387 Subsections 7(1)(a) and (b) require the prior art information (both documents and use) to be "made publicly available". The Full Court in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20 ('Insta Image') considered the concept of "publicly available" by the doing of an act, summarising the relevant principles at [124] as follows: • The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it. (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887). • It is immaterial whether or not the invention has become known to many people or a few people. As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality. • The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity. • In order to be 'available', information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention. • In order to be 'available', information said to destroy novelty must 'enable' the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point. (Citations omitted.) 388 In the recent Full Court decision of Damorgold Pty Ltd v JAI Products Pty Ltd (2015) 318 ALR 483 ('Damorgold'), the above principles were generally endorsed: see [12]. 389 In Damorgold, Bennett J stressed a number of points at [9] and [11]: [9] … in order to establish lack of novelty through doing a single act, it is necessary to establish that the prior art information was made publicly available through the doing of that act. … [11] This is a matter of evidence. The question is whether an act can be identified that did in fact make the information being the integers of the invention publicly available. This is not the same requirement for anticipation by prior publication, which is satisfied if the information is in a document that is publicly available. Further, the information that is made publicly available does not destroy novelty unless it extends to the invention so far as claimed in a claim. That is, it must extend to each of the essential integers of the claim; a general idea of the mechanism of an invention is not sufficient. 390 Her Honour also observed that it is not possible to combine a single act with a document (at [12]). Finally, Bennett J stated at [57]: In order to destroy novelty, the information must enable the notional person skilled in the art at once to perceive, to understand and to be able practically to apply the discovery without the need to carry out further experiments. Mere observation in the absence of direct evidence of what could be gleaned from such observation does not discharge the onus to establish an enabling disclosure. In Insta Image, the evidence established that people looked in detail at the way the product, a canopy, was structured and put together and that simple visual inspection was an adequate means of giving the person skilled in the art an understanding of the invention, whereas in Jupiters, mere observation would not disclose the necessary features, and in the absence of direct evidence from a person skilled in the art of what could be gleaned from such observation, the Full Court was not prepared to conclude that it was sufficient to constitute an anticipation. (Citations omitted.) 391 Justice Yates, in a similar vein, stated in Damorgold at [96]: It is important to recognise that the relevant question is not whether the RolaShades product was made publicly available. As the cases make clear, neither the mere public availability of a product, nor its use in public, necessarily means that the features of the product have been made publicly available. The facts and findings in Jupiters and Insta Image provide contrasting examples of what does (Insta Image) and what does not (Jupiters) amount to an enabling disclosure. 392 In Jupiters, the Full Court held at [138] that what is required to satisfy anticipation by an act is an "enabling disclosure" of the invention by the prior conduct and, in the course of its reasoning, referred to a number of UK decisions including PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 225 (which was unaffected by the subsequent appeal [1995] RPC 287) and noted (at [141]) that Aldous J held that a skilled addressee may use "available investigation techniques to analyse samples of product and glean the information that could be so gleaned". 393 The Full Court in Jupiters (at [143]) also referred to Lux Traffıc Controls Ltd v Pike Signals Ltd [1993] RPC 107 ('Lux Traffıc') where Aldous J at 133 said: It is settled law that to invalidate a patent a disclosure has to be what has been called an enabling disclosure. That is to say the disclosure has to be such as to enable the public to make or obtain the invention. Further it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public. Thus an anticipating description in a book will invalidate a patent if the book is on a shelf of a library open to the public, whether or not anybody read the book and whether or not it was situated in a dark and dusty corner of the library. If the book is available to the public, then the public have the right to make and use the information in the book without the hindrance from a monopoly granted by the State. 394 In Lux Traffıc at 134, Aldous J observed: In the case of a written description, what is made available to the public is the description and it is irrelevant whether it is read. In the case of a machine it is that machine which is made available and it is irrelevant whether it is operated in public. A machine like a book can be examined and the information gleaned can be written down. Thus what is made available to the public by a machine, such as a light control system, is that which the skilled man would, if asked to describe its construction and operation, write down having carried out an appropriate test or examination. To invalidate the patent, the description that such a man would write down must be a clear and unambiguous description of the invention claimed. 395 However, the "further experiments" referred to in Insta Image do not include those that formed part of standard procedure, common general knowledge or ordinary means of trial and error but rather experiments with a view to discovering something not disclosed: see C Van der Lely NV v Bamfords Ltd (1962) 1A IPR 86 at 90; H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151 at [173-92]. 396 Where the nature of the invention claimed comprises a combination of features (as in this proceeding), in order to properly anticipate the invention, the prior art must disclose all of the essential integers together in that combination. As Lockhart J said in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517: In the case of combination patents cross-references in one specification which has some of the elements of a combination patent to another specification which has other elements do not disclose the combination. The essential point is that it is the combination which must be disclosed in the case of a combination patent.

[73]

Hindsight and common general knowledge 397 The cautions against hindsight often found in the context of resolving claims of obviousness or lack of inventive step are relevant to the skilled addressee's ascertainment and understanding of prior art documents and prior acts. Both are to be assessed at the date of publication of the document or the doing of the act: General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121; Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (2012) 210 FCR 21 at [213]-[214] and Aspirating IP at [168]. 398 I make this observation in relation to common general knowledge. The common general knowledge is not merely knowledge that is available or able to be located by the person skilled in the art; it is knowledge which "is 'generally accepted without question' or 'generally regarded as a good basis for further action' by the bulk of those in the art": Alphapharm Pty Ltd v H Lundbeck A/S (2008) 76 IPR 618 at [221]; Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 ('Minnesota Mining') at [100]). 399 Further, as stated by Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at [39]: In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.

[74]

Use of expert evidence 400 Although Mr Newman gave some confined evidence directed to alleged prior public use before he read the patents in suit, he gave further expanded evidence in relation to novelty after he was familiar with them. Mr Newman's evidence in chief of alleged prior use, particularly in his Third Affidavit, should be treated cautiously. In any event, as mentioned below, his cross-examination evidence rendered much of that written evidence of little weight. 401 Infa sought to adduce evidence as to the disclosures in several prior art specifications and alleged prior uses through cross-examination of Mr Hunter, who at that stage, was also well familiar with the patents in suit. 402 The cross-examination of Mr Hunter on the prior art commenced on Thursday 10 February 2011 when he was cross-examined on the asserted disclosures in AU 781955. Mr Hunter provided reasons why there was no relevant disclosure in that prior art document for any of the claims of the patents put to him on that day. Mr Hunter understood the basis upon which he was being asked to approach the prior art document, namely, that he was being asked to undertake what was known to him as a reverse infringement test and that he was looking for a "clear and unmistakeable direction" to lead to a disclosure of the integers of the claims in question. 403 At re-commencement of his cross-examination on the following morning, Mr Hunter produced some prior art analysis tables setting out the work that he had done overnight on the prior art specifications and the Century 2500 prior use of which he had been given notice. These tables became Exhibit A15. 404 Throughout, Mr Hunter stated that there was no disclosure of relevant integers. Mr Hunter could find no "clear and unmistakeable directions" to the relevant integer then under consideration. 405 The cross-examination on the prior art continued into Monday morning, 14 February 2011, on FR 2548983. During that cross-examination, Mr Hunter advised the Court that he had reviewed the matters in Exhibit A15 over the weekend and that his preliminary views on the non-disclosures had been confirmed. 406 I have accepted the evidence of Mr Hunter, other than where he has premised his approach at odds with the Construction Judgment.

[77]

Prior art documents 411 Infa pleaded in its Fourth POI that all nine Innovation Patents were anticipated by the Pigtail hooks and bolts in Automotive Restraint Fitters Australia 2003 Catalogue which was published before 9 June 2004. 412 In relation to the Tenth Patent (with a priority date of 1 August 1994), Infa pleaded the following anticipatory prior art documents (collectively, the 'Century publications'): (a) Instructions for Century 572 Baby Shuttle (1993); (b) Instructions for Century 575 Baby Shuttle (1993); (c) Instructions for Century 1500C Convertible child safety seat (1993); and (d) Instructions for Century 2500 Convertible child safety seat (1994). 413 The evidence in relation to prior art documents was adduced as follows: (a) Mr Doherty put an Instruction Manual issued by Roads and Traffic Authority of NSW, Issue 1 January 1998 into evidence as his exhibit GD-Fourth-1 to his Fourth Affidavit dated 6 August 2010. (b) Mr Duke put documents asserted to be relevant to the Century 572, Century 575, Century 1500B, Century 1500C, Century 1450 and Century 2500 safety seat products in his affidavit dated 5 August 2010 as exhibits JD-1 to JD-5. (c) Ms Adams put into evidence as exhibit JA-1 to her affidavit dated 1 April 2010 a document asserted to be relevant to the Century 572 and Century 1500B products. (d) Mr Wade put into evidence as exhibit JRW -1 to his affidavit dated 1 April 2010 an extract from an Automotive Restraint Fitters catalogue and a price list of Automotive Restraint Fitters Australia. (e) Ms Brown put into evidence as exhibit JB-4 to her unsworn affidavit an extract from an Automotive Restraint Fitters catalogue. (f) Mr Hall put into evidence as exhibit KH -11 to his affidavit dated 22 December 2010 a price list of Restraint Services. 414 Some of the asserted prior art became the subject of entries in Infa's "K Tables" which came into existence by way of submissions. The parties referred to the specific claims of each patent against each specific piece of prior art, and produced novelty tables K-1 to K-15.

[78]

AU-B-29978/92 415 Infa alleged that Australian Patent Application number 29978/92, an application associated with AU 664576, published on 10 June 1993 and entitled "tether strap assembly" anticipates the Tenth Patent. 416 In Exhibit A15, Mr Hunter provided an integer table in relation to this patent application, but he was not cross-examined about the disclosure in that specification. In that table, Mr Hunter noted that the tether strap location guides depicted as "F" in the figures of that specification, are not "anchorage locations" as described in the relevant claims of the Tenth Patent. 417 Infa submitted that in so finding, Mr Hunter was applying a different construction of the term "anchorage location" in this context to the one he applied in relation to infringement. Infa pointed to Mr Hunter's characterisation of the looped tether strap location guides on Versions 1 to 4 of Infa Products CS53 and CS54 as the relevant "anchorage locations". 418 Infa also pointed to page 5 of the specification which states that "[i]t is also envisaged that the tether strap 10 can be secured to a rearwardly facing seat L by slip-in brackets F that are illustrated in Figure 8" (emphasis added). 419 However, In the Construction Judgment (at [400-1]) I found that, in relation to the Tenth Patent: [400]…An anchorage location is a dedicated place. In this case it is a place on the head end of the back rest, where anchorage occurs or can occur. It is a point where the tether strap, which, via the connection strap and connection means (or whatever other apparatus), is anchored to the vehicle at the vehicle anchorage point. [401]…generally the term "anchorage location" is a location or position at which there is a contrivance (that is, a design feature) which holds fast, or gives security to, the seat and occupant in the event of sudden movement or deceleration. These locations remain anchorage locations even when not in use. 420 In assessing whether the prior art contains the "anchorage locations" present in the Tenth Patent (as defined in the Construction Judgment), the slip-in brackets, or tether strap location guides depicted as "F", would qualify as "anchorage locations". 421 However, it is important to recall that the Tenth Patent is directed to a split tether strap arrangement, where the tether strap extends through both anchorage locations whether in forward or rearward mode. This alleged prior art document however, only includes a split tether strap in rearward facing mode. In contrast, as depicted in figure 5 of the alleged prior art specification, when the seat is in forward facing mode, the tether strap extends from a single anchorage point on the backrest of the seat. 422 Mr Hunter pointed out that the "tether strap location guides…only function in the rearward facing mode". Therefore, on the basis of Mr Hunter's evidence in Exhibit A15, it cannot be said that there were "clear and unmistakeable directions" in relation to each of the relevant integers of the claims 1, 19 and 20 of the Tenth Patent. Infa's challenge to the novelty of claims 1, 19 and 20 of the Tenth Patent based on this patent specification must fail.

[81]

AU 781955 435 Infa alleged that Australian Patent number 781955, published on 3 January 2002 and entitled "attachment of child shoulder harness to a booster seat", anticipates the Second, Fourth, and Sixth to Eighth Patents inclusive. This patent specification was put to Mr Hunter in cross-examination and is the subject of one of his integer tables in Exhibit A15. 436 The above specification describes a booster seat which is connected to an anchorage point via a tether strap. However, as Mr Hunter correctly observed, the harness in the described arrangement is secured to, and dependent on, the (integrity of the) safety seat shell. This arrangement stands in direct contrast to the inventions in the relevant impugned patents and represents precisely the outcome or problem which they intend to solve by describing a harness, or connecting means for a harness, which is independent of the seat shell. It is clear from the prior art specification that if the seat shell were to break or be severed from the tether strap, the child would not remain fastened to the anchorage location, as required. 437 Mr Hunter also notes that the specification does not contain or teach many of the impugned integers. For example, in the specification, the harness does not "extend behind the backrest portion" (integers 2.1.11, 4.1.11 and 7.1.11), nor does it contain a connection strap (integers 2.3.4 and 4.3.4) "to which the upper ends of said shoulder straps are attached" (integers 2.3.5 and 4.3.5). Likewise, the invention in the specification does not disclose a "second strap…having a connection means…to which a harness is…connected" (integers 6.1.4-5), nor "a connection means carried by or with respect to the tethering means…adapted for attachment of the child safety harness" (integers 6.4.2-6), nor a connection means which secures the child safety harness to a single anchorage point (integers 8.1.3 and 8.2.1), nor "substantially as…described and as illustrated" in the relevant figures (see the omnibus claims in the Sixth and Eighth Patents). 438 Infa submitted that the harness in the prior art specification is indirectly secured to the anchorage location via the seat shell itself, and is therefore relevantly secured "with respect to" the anchorage location. That argument cannot support a conclusion that the impugned patents are anticipated. There are many other integers which are not anticipated by the specification, and more fundamentally, the impugned patents are to be understood in their contexts, which are to avoid precisely such an "indirect" connection through the safety seat shell. 439 Infa raised a number of arguments in relation to whether the claims of the impugned patents require the harness to be connected directly to the anchorage point. However, none of those submissions overcome the essential matters I have described above. 440 On the basis of the above evidence, I find that Australian Patent number 781955 lacks many of the essential integers of the relevant impugned patents and it cannot be said to provide "clear and unmistakeable directions" in relation to each of the relevant integers. 441 Consequently, the challenge to the validity of the claims of the Second, Fourth and Sixth to Eighth Patents based on this patent specification must fail.

[83]

Pigtail arrangements 447 The nine Innovation Patents teach different ways of connecting the upper end of the harness to a tether strap, and then connecting the already linked harness and tether strap to a single anchorage location. Mr Hunter described this as a "series" connection of the harness and tether strap to the anchorage location, and different embodiments of a connection means (as taught in each of the innovation patents) show how this series connection is to be achieved. 448 Mr Hunter contrasted this with a "parallel" method of connection (for example, as depicted in figures 10 and 11 of the Parent Application), which involves a tether strap fixed to a single anchorage location and (in parallel) a harness fixed to the same anchorage location, and which generally use a spacer over the anchorage bolt to separate the tether connection from the harness connection. Mr Hunter provided a diagram he prepared to illustrate the difference between these connection methods, which is reproduced below. 449 In its Fourth POI, Infa pleaded that the following public uses occurred prior to the priority date of 9 June 2004 and that they anticipate the nine Innovation Patents: (a) First Patent: (i) The commercial use of 100mm, 300mm, 600mm, 700mm universal pigtail hooks/bolts by unnamed numerous fitters in Australia in 2003 and earlier ('Fitters' use'). (ii) The installation and sale prior to 1987 by Mr Kenneth Hall, on behalf of Traffic Accident Research Unit in New South Wales, of a "Safe-n-Sound" pigtail attachment to achieve dual connection of a tethered child harness and a "Travel Safe" booster seat ('Hall use'). (iii) The installation and sale on three separate occasions during the period between 2000 and 2003, by Mr Robert Newman in Victoria, of a plate or pigtail to achieve dual connection of a tethered child harness and a tethered Britax "Maxi Rider" booster seat ('Newman use'). (b) Second Patent - Fitters' use, Hall use, Newman use, use in Australia of a harness/booster adaptor by Restraint Services at Smithfield New South Wales since 1 December 2002 ('RSS use'); and general practice known to and applied by fitters of child safety restraints in Australia prior to 9 June 2004 ('General Practice'). (c) Third Patent - Fitters' use, Hall use, and Newman use. (d) Fourth Patent - Fitters' use, RSS use, Hall use, Newman use and General Practice. (e) Fifth Patent - Fitters' use, Hall use, and Newman use. (f) Sixth Patent - Fitters' use, RSS use, Hall use, Newman use and General Practice. (g) Seventh Patent - Fitters' use, RSS use, Hall use, Newman use and General Practice. (h) Eighth Patent - Fitters' use, RSS use, Hall use, Newman use and General Practice. (i) Ninth Patent - Fitters' use, RSS use, Hall use, Newman use and General Practice.

[86]

Messrs Hall, Wade and Newman 456 Messrs Hall, Wade and Newman gave evidence about their use of pigtail hook and bolts and other methods of connection. 457 Although there is some similarity in the pigtail methods of connection they describe, neither Mr Hall nor Mr Wade identified any particular persons for whom the asserted prior acts were done, and neither provided contemporaneous evidence of public use. Mr Hall merely referred to sales of "modification and adaptations" being "made to members of the public as well as to fitting service providers". Mr Wade gave no evidence at all about the public use of his arrangements, other than to say that he "rigged up a connection as required by the needs of a parent, as matter of routine", and that some of his "arrangements" were tested and approved. 458 Both Messrs Hall and Wade gave evidence that was it was usual for fitters to keep detailed records of the child seats they fitted. However, I accept that it is no surprise that when Mr Hall and Mr Wade gave their evidence, they were no longer in possession of such documents. I also accept that both witnesses are credible witnesses, and their evidence should be accepted. The question is the extent to which their evidence satisfies the onus upon Infa, to which I will return. 459 It is relevant to look at Mr Newman's evidence in some detail. 460 In his First Affidavit, Mr Newman described his prior use of an arrangement not dissimilar from the pigtail arrangements described by Messrs Hall and Wade. Mr Newman said at paragraphs 38-40 that: I recall three specific examples where I tethered both the Additional Harness [the "H", or "Protecta" harness] and the booster seat tether to the same vehicle anchorage point, during the period commencing 2000, but prior to 2004. On all three occasions, I was dealing with a special needs/disabled child and installing a child restraint system suitable for that child. On each of the three occasions referred to in the preceding paragraph, I designed and used my own piggy-back arrangement to tether both the Additional Harness and the Booster Seat to the same vehicle anchorage point. In my arrangement, I tethered the child safety seat tether to the anchorage location fitting in the normal manner. In order to tether the Additional Harness, I added a second plate to the bolt at the anchorage location. This plate had an aperture at its end with webbing through this aperture. The loop carried a buckle or plate, the loop passing through an aperture in that buckle or plate. The snap hook of the Additional Harness tether was attached to that same aperture. The child safety seat I used on the three occasions referred to in the preceding two paragraphs was the Britax Maxi Rider child safety seat. 461 In his Second Affidavit, Mr Newman referred to figure 10 of the Parent Application and stated that he used that same arrangement when installing safety seats for disabled children as described in his First Affidavit. 462 On each of the "three occasions" described by Mr Newman above, he said that he used the Britax Maxi Rider child safety seat with the "H" harness. This evidence is consistent with the dates when the Britax Maxi Rider seat was available to the public, on the basis of Mr Crossman's evidence, that the first version of the Maxi Rider was first introduced in 1998, and was available between 2000 and 2004. It is to be recalled that Mr Crossman gave evidence on behalf of Britax: see Construction Judgment at [202]. 463 However, a new version of the MaxiRider was released in 2005 which allowed the installation of an "H" Harness in the manner described by Mr Newman. It is unclear on the available evidence whether Mr Newman's recollections relate to installations he did with the 2005 MaxiRider or the earlier version of MaxiRider which was not suitable for use with an additional harness. It is therefore unclear whether the asserted use occurred before the priority date. 464 At paragraph 20 of his Second Affidavit, Mr Newman referred to figure 7 of the Parent Application (which depicts a "series" arrangement) and stated that he had seen other fitters use "snap hook plates" (or "latching hooks") which resembled item 43, but with a single aperture. Some fitters had therefore used the same aperture to receive both the tether strap and the "snap hook" of the tether for the child harness. However, Mr Newman says that such an arrangement was not ideal, as it could cause damage to the webbing of the tether. In cross-examination, Mr Newman added that he had seen some parents do so, and maintained his criticism of such an arrangement. 465 However, Mr Newman did not provide any evidence to support the public use of that arrangement, nor the nature of the child safety seats and associated tethering arrangements used in such instances. 466 In his Third Affidavit, Mr Newman changed his evidence, and made statements which he later agreed in cross-examination were incorrect. He accepted that there were substantial errors in paragraph 31 of his Third Affidavit, in which he gave further evidence about the "three occasions" detailed in his First Affidavit. In his Third Affidavit, he referred to three methods "of ways in which [he] could have achieved anchorage of both the Additional Harness and the child safety seat to the same anchorage point". 467 In the course of cross-examination he accepted that of the examples provided, he had only described the arrangement depicted as "Method three" in his First Affidavit. 468 He also accepted that whilst he stated that he had used those examples "on numerous occasions…and have observed this arrangements used by other fitters" since 1990, he could not recall ever having done "Method Two" (which he had earlier criticised) himself. He also accepted that the MaxiRider was not available before 1998 and such arrangement could therefore not have been used with that safety seat since 1990, and he could not have use any arrangement until 1999, when his business commenced. 469 In relation to his observations of others using such arrangements, he said that any such observations were not specific to any particular safety seat. 470 In cross-examination, Mr Newman accepted Mr Crossman's evidence that there was no use of a latching hook (as depicted in his three "methods") until 1992, and no Maxi Rider seat until 1998. Of the various earlier seats described by Mr Crossman, none contained a booster seat with an external tether strap required for the arrangement depicted by Mr Newman. 471 There is no probative evidence that the asserted prior use of the various pigtail arrangements occurred, and it is unclear from Mr Newman's evidence how the asserted relevant pigtail arrangements could have been used. It is also relevant that the experienced fitters Messrs Wade and Hall did not corroborate Mr Newman as to the use of the arrangements depicted in Mr Newman's Third Affidavit. 472 Mr Newman's varying and inconsistent evidence of what he did before the priority date of the nine Innovation Patents in respect of pigtail or other arrangements renders his evidence unclear and contradictory. The evidence is not corroborated by any other witness, nor by any contemporaneous documents. Infa is not assisted by the cross-examination of Mr Hunter, who made it clear that he was not sufficiently clear about the features of the Travel Safe and MaxiRider seats to be able to carry out any claim comparison between the Travel Safe and MaxiRider and the claims of the Innovation Patents in suit.

[87]

Conclusion on pigtail prior use 473 As I mentioned, Messrs Hall, Wade and Newman gave evidence about their use of pigtail hook and bolts, and other methods of connection. That evidence was largely confined to the detail of the connection arrangement at the anchorage location of the vehicle, and did not provide detail (in the case of Mr Newman, in any probative sense) as to the features of that connection arrangement in combination with the child safety seat. 474 This is relevant, since the claims of the Innovation Patents are directed to the connection of a child safety seat to an anchorage location, and not simply to the arrangement at the anchorage location itself. It follows that the evidence of Messrs Wade, Hall and Newman is insufficient for the Court to determine whether the particular combinations claimed in the Innovation Patents were anticipated. 475 Further, Infa did not provide any evidence at trial to establish how or why the evidence of Messrs Wade, Hall and Newman constituted anticipation of the impugned patents. Infa did provide tables ('K-Tables') in which it attempted to illustrate how the evidence of Messrs Wade, Hall and Newman in relation to those pigtail arrangements anticipated the Innovation Patents. In doing so, it sought to rely on prior art documents referred to in Mr Crossman's evidence, which included product brochures and instruction manuals, in combination with the "use" deposed to by Messrs Wade, Hall and Newman, to establish the required anticipation. 476 However, Infa did not adduce any evidence that those prior art documents and prior public uses would be treated by a person skilled in the relevant art as a single source of prior art information as required by s 7(1)(b) of the Act. 477 However, even if the documents from Mr Crossman's evidence regarding the Travel Safe and Maxi Rider child safety seats were accepted, it is unclear on the evidence whether those versions are the same Travel Safe and Maxi Rider versions asserted to have been used by Messrs Hall, Wade and Newman. This is especially unclear, as Mr Crossman's evidence establishes that various versions of the relevant seats were available at different times. 478 In addition, as I have said, the nine Innovation Patents describe "series" connection arrangements whereas Messrs Hall and Wade have described a "parallel" or "pigtail" method of connection. Both Messrs Wade and Hall agreed in their oral evidence that when they set up their pigtail arrangements, they placed the tether of the booster seat adjacent to the vehicle anchorage point, with the tether of the harness spaced above the tether of the booster seat. Mr Hall agreed that the particular arrangements depicted by him in the K-Tables all showed arrangements of this kind. 479 Infa suggested that the Innovation Patents described both parallel and series arrangements. I do not accept on the basis of Mr Hunter's evidence, that this is correct. Infa also argued that both arrangements were functionally identical. Whether or not this is the case, it is not a relevant consideration in determining the question of novelty. 480 The described "series" connection is therefore not anticipated by the pigtail arrangements of Messrs Hall and Wade's evidence (or in Mr Newman's First Affidavit). Such a "parallel" method of connection cannot be said to contain "clear and unmistakeable directions" to perform the "series" arrangement described in the Innovation Patents. 481 In any event, as noted above, as the claims of the innovation patents all are directed to safety seats and connection arrangements in combination, it must follow that evidence which fails to deal with all the features of the child safety seat and connection arrangement as claimed in each and all of the claims of the impugned Innovation Patents is not sufficient to make out a novelty challenge to any claims of the patents in suit. 482 Consequently, all of the claims of the Innovation Patents in suit are not anticipated by use of the pigtail arrangements asserted by Infa.

[93]

Tether guides as "anchorage locations" 496 Mr Hunter prepared an integers table (Exhibit A15) on the Century 2500 safety seat, and was not cross-examined in relation to it. On the basis of Mr Hunter being the relevant person skilled in the art, I accept his conclusion that the relevant integers in the Tenth Patent were not disclosed by the Century 2500 seat as set out in Exhibit A15 (although for different reasons based upon my Construction Judgment). 497 In relation to the Century 2500 seat, there was debate between Messrs Hunter, Newman, Duke and Wainohu as to whether the tether guides on those seats anticipated the integers which referred to "first and second mutually spaced anchorage locations on said head end of said backrest". This debate is unnecessary to resolve on the basis of my approach to "anchorage location". At [400-1] of the Construction Judgment, I said: [400] First, I accept that "anchorage", in the sense of an "anchorage location", is not dependent on the tether strap being under tension (in an accident). An anchorage location is a dedicated place. In this case it is a place on the head end of the back rest, where anchorage occurs or can occur. It is a point where the tether strap, which, via the connection strap and connection means (or whatever other apparatus), is anchored to the vehicle at the vehicle anchorage point. [401] As accepted by the parties, and as expressed by Mr Hunter, generally the term "anchorage location" is a location or position at which there is a contrivance (that is, a design feature) which holds fast, or gives security to, the seat and occupant in the event of sudden movement or deceleration. These locations remain anchorage locations even when not in use. 498 Just like the prior art specification AU-B-29978/92 mentioned above, the Century 2500 seat does not contain a split tether strap in forward facing mode which is what the tenth patent teaches. Therefore, for the same reasons as I outlined in dealing with prior art specifications, there is no anticipation of the Tenth Patent.

[95]

Legal Principles 500 The relevant ss 7(4)-(6) of the Act provided that: (4) Innovative step For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention. (5) For the purposes of subsection (4), the information is of the following kinds: (a) prior art information made publicly available in a single document or through doing a single act; (b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information. (6) For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately. 501 In SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd (2012) 204 FCR 325 at [376-8] the Full Court set out in summary the applicable legal principles: [376] … s 7(4) of the Act provides that, in determining the issue of innovative step, the court must ascertain: (a) the invention 'so far as claimed in any claim'; (b) the person skilled in the relevant art; (c) the common general knowledge of the person skilled in the art as it existed in Australia before the priority date; and (d) whether, when considered from the perspective of a person skilled in the art, in the light of that common general knowledge, the invention as claimed only varied from the kinds of information in s 7(5) -here the cited prior art information - in ways that make no substantial contribution to the working of the invention as claimed. [377] Her Honour proceeded to consider each of those matters. It is apparent from s 7(4) that the onus is on the person seeking to establish an absence of innovative step and that that is established by the person of skill in the art armed with common general knowledge. It is not established by consideration of whether or not an innovative step is set out in the specification and claims of the patent under examination. [378] The primary judge noted that Professor Farrow's evidence was that the claimed process was different to that of Slatter 4 and that that difference would have an important effect on the process. Her Honour found that SNF failed to discharge its onus of proof to demonstrate that the invention as claimed only varied from Slatter 4 in ways that made no substantial contribution to the working of the invention. 502 In Vehicle Monitoring Systems, Yates J at [217-20] set out in summary the correct approach to take in assessing innovative step as follows: [217] The essential task is to compare the invention as claimed with the relevant prior art information; to identify the difference or differences between that which is claimed in the patent and that which is disclosed in the relevant prior art information; and to determine whether the difference or differences make a substantial contribution to the working of the invention as claimed. [218] This determination is a factual inquiry and involves an assessment from the perspective of the notional person skilled in the art, having regard to the common general knowledge in the relevant art before the priority date. In the present case, there was no extensive discussion in the evidence about the content of the common general knowledge as it existed in Australia before the priority date of the claims, although some evidence was led, principally through Dr Klein, in relation to sensor technology. There was, however, no discussion of methods, apparatuses or systems for parking overstay detection in Australia before the priority date, beyond what was described in the complete specification itself. [219] Although the common general knowledge has a role to play in the required assessment, it is not the role that is played when assessing obviousness in the context of an inquiry about the presence or absence of an inventive step: cf s 7(2) of the Act. In that context, the common general knowledge is the standard against which obviousness is gauged and thus whether the invention as claimed lacks an inventive step. However, the presence or absence of an inventive step has no role to play in the inquiry about the presence or absence of an innovative step. Thus, in the case of an innovation patent, it is of no significance that the feature or features that distinguish the invention as claimed over the prior art represents or represent an obvious deployment of the common general knowledge if that feature or those features nevertheless makes or make a substantial contribution to the working of the invention. As will become apparent, the submissions advanced by the respondent on this aspect of its case did not always observe this important distinction. [220] When s 7(4) talks about a substantial contribution, it is referring to one that is "real" or "of substance", and nothing more. (Citations omitted.) 503 The Full Court in Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239 ('Dura-Post') endorsed the decision of Gyles J in Delnorth, and commented at [79] that s 7(4) requires a narrow comparison between the invention as claimed and the relevant prior disclosure, having regard to the fact that the threshold for an innovation patent is intended to be lower than for a standard patent. The Full Court also stated that: [i]n substance, s 7(4) deems an invention as claimed to involve an innovative step unless the invention does not differ from the relevant prior disclosure in a way that makes a substantial contribution to the working of the invention as claimed - in the sense of the device or process the subject of each claim. This is a factual inquiry. The assessment is, of course, from the perspective of a person skilled in the art, having regard to the relevant common general knowledge. 504 The Full Court added at [80] that if any variation contributes substantially to the way in which the invention functions, then that variation necessarily makes a substantial contribution to the "working of the invention". At [83] the Full Court stated that the comparison requires a functional inquiry between the invention as claimed and the relevant prior art disclosure. On the facts in that case, it was found that the use of a marker hole, a barb, a tapered end, longitudinally extending ribs and particular dimensions as claimed in the patents did make a substantial contribution to the working of the invention. It is to be noted that certain of these features were features of common general knowledge but this was no impediment to whether they, alone or independently, made a substantial contribution to the claimed invention.

[96]

Consideration 505 Britax contended that other than in relation to the "pigtail use" prior art, Infa did not provide evidence to establish its allegation that any differences between the prior art and the inventions claimed in the Innovation Patents made no substantial contribution to the working of the invention. 506 Infa submitted that the arrangements described in the Innovation Patents constitute no substantial difference to the working of the pigtail arrangements used by Messrs Newman, Wade and Hall before the priority date. In particular, Infa argued that both arrangements secured the harness and tether strap to a single anchorage point in a manner in which the harness was not dependent on the (integrity of the) safety seat shell. Infa also submitted that there was no relevant difference in the "parallel" arrangement employed in the prior use, and the "series" arrangement claimed. 507 Britax sought to rely on evidence from Mr Hunter and Mr Wade that the "series" arrangement constituted a "substantial improvement" over the "parallel" arrangement to the functionality and ease of connectivity of the claimed inventions, which therefore contained an innovative step. 508 Mr Wade gave evidence to the effect that, since the adoption of the "series" connection arrangement, there is no need to rig-up any pigtail connections to connect the tether strap and harness to the same anchorage point. In cross-examination, Mr Wade explained the many components needed for a prior art pigtail fitting and the fact that it would be necessary for a professional installer to carry out the installation. 509 In his Sixth Affidavit, Mr Hunter described the differences in functionality between the "series" and "parallel" arrangements as follows: (a) the parallel arrangement creates a different and more adverse stress profile on the anchorage bolt than the series arrangement; (b) the various parallel arrangements would each require considerable design and development costs; (c) the series arrangement requires less parts or components; and (d) the series arrangement is self-contained and can be connected to a standard anchorage point without modification to that point (and without the expense of engaging a professional fitter). 510 Mr Hunter pointed out that from the perspective of a lay person, it could appear that both "series" and "parallel" arrangements achieve the same outcome, namely the harness and the tether strap both end up being connected to the same anchorage point. However, Mr Hunter, from an engineering standpoint, noted that the series arrangement had considerable advantages, from the point of view of child safety, in the event of a collision. 511 Britax further submitted that the evidence of Messrs Newman and Hall did not address the required comparison or the question of "substantial contribution". 512 Infa responded that the above evidence of Mr Hunter concerns a difference in the manufacture and does not establish any difference in the required function, or "working", of the invention, referring to Dura-Post at [79] per Kenny and Stone JJ and at [95]-[96] per Perram J. This may be correct in relation to Mr Hunter's point (b) above, but that was only one of his reasons for his conclusion. 513 In support of its criticism of Mr Hunter's evidence, Infa relied on the successful use of such arrangements by Messrs Hall, Wade and Newman, each of whom had many years of practical experience as professional installers and advisers in the industry. However, the successful use or otherwise does not answer the contention that the series arrangement constitutes a "substantial contribution to the working of the invention". 514 Infa also contended that Mr Hunter's comments were only general theoretical suppositions, and did not identify any differences between the relevant prior art and the integers of the impugned patents, nor any substantial contribution to the working of the claimed inventions. 515 Infa also relied on the evidence of Mr Wainohu, in which he outlined his observations of tests carried on by an independent tester in relation to the various stress profiles on the vehicle anchorage bolt of "parallel" and "series" arrangements. The results showed that the respective stress profiles did not differ. 516 I note that Mr Hunter pointed out discrepancies between his (admittedly) theoretical calculations and Mr Wainohu's observations. Mr Hunter said that: there was a wide discrepancy in the total amount of force that was transmitted to the anchor. That wide discrepancy, if I had observed it, would have been enough for me to say I would have to discard the results of that test and do some more repeats. So it's not something where there's a prescriptive method to say one must do 10 repeats or 20 in the standard. It's a matter of engineers using commonsense to say, "There's something here which puts up a red flag to say there's something odd going on. The experimental - the variation in the experimental variables is controlling the results not as I would expect by force equals mass times acceleration, and therefore I need to do something else with my experiment. I need to get rid of these experimental variables which are influencing the results in a way I'm not expecting, or I need to do some repeats to confirm what I'm finding." 517 It is to be recalled that there was no compliance with r 34.50 of the Federal Court Rules 2011 (Cth) or agreement between the parties as to any testing. Britax and Mr Hunter, in the context of the running of the trial, did not participate in or have the opportunity to carry out any testing. 518 However, in any event, Mr Wainohu's evidence is not supportive of Infa's contention for a number of reasons. 519 First, Mr Wainohu accepted that the test results showed experimental error, and one particular result was unexpected and caused him concern. 520 Secondly, Mr Wainohu' s evidence was not directed to the relevant prior use of "parallel" connections, in which the harness connection was spaced apart from and above the tether strap connection on the anchorage bolt. In fact, the tested arrangement was the reverse. 521 Thirdly, in Mr Hall's Second Affidavit he noted that the loading (or stress) on the anchorage bolt changes depending upon the location of the anchorage bolt. In Mr Hall's experience, the anchorage location could be on various parts of the vehicle, including the parcel shelf, the ceiling, the floor, along the rear wall, or along the back of the seat. Mr Wainohu's evidence did not attempt to deal with anchor bolt stress in these situations. 522 Finally, Mr Wainohu's evidence does not address the other differences in functionality between "series" and "parallel" arrangements, as outlined by Mr Hunter. 523 Mr Wainohu's evidence does not assist Infa. I do not consider his evidence sufficient to overcome the evidence of Mr Hunter, which whilst theoretical, was based on sound principles. Therefore, Infa has failed to discharge its evidentiary burden to establish that the inventions claimed in the Innovation Patents do not contain the required "substantial contribution to the working of the invention". Consequently, Infa's challenge on the ground of lack of innovative step must fail.

[98]

Legal Principles 525 The requirement under s 18(1)(b)(ii) of the Act that an invention involve an inventive step is informed by ss 7(2) and (3), which provide that: (2) Inventive step For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3). (3) The information for the purposes of subsection (2) is: (a) any single piece of prior art information; or (b) a combination of any 2 or more pieces of prior art information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph. 526 In context, the word "obvious" means "very plain": see Alphapharm at [34] and [85]. For Infa to succeed, it must therefore satisfy the Court that the solution chosen by the inventors of the Tenth Patent to solve the problem was "very plain" in all the circumstances. 527 It is to be recalled that "a scintilla of inventiveness" is sufficient and "no smallness or simplicity will prevent a patent being good": Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 249 per Aickin J. 528 If the invention is a combination of integers (as in this proceeding), the question is whether the combination as a whole, rather than a selection of one or some of the integers, is obvious. In Alphapharm, the High Court stated at [41] that … the selection of the integers out of 'perhaps many possibilities' … must be shown … to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers. 529 In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 ('Lockwood (No 2)') at [127] the Court said in relation to s 7(2) and s 7(3) of the Act: … by enlarging the prior art base through including relevant prior disclosures beyond those disclosures proven to be part of the common general knowledge, these provisions raise the threshold for inventiveness. However, the idea remains that the prior disclosures to be taken into account, even as enlarged by s 7(3), are being considered for a particular purpose. That purpose is the purpose of looking forward from the prior art base to see what a person skilled in the relevant art is likely to have done when faced with a similar problem which the patentee claims to have solved with the invention. 530 Section 7(3) permits the use of prior disclosures other than the common general knowledge at the priority date. In Lockwood (No 2) the High Court stated at [49]: Broadly speaking, s 7(3) has as its purpose the specification of the additional publicly available information (s 7(3) information) which must be added to common general knowledge for the purposes of deciding whether an alleged invention is obvious when compared with the prior art base. 531 And further at 222 at [152-3]: [152] Given the history, context, purpose and specific words of limitation in s 7(3), all of which were addressed by this Court in Firebelt, the phrase "relevant to work in the relevant art" should not be construed as meaning relevant to any work in the relevant art, including work irrelevant to the particular problem or long-felt want or need, in respect of which the invention constitutes an advance in the art. The phrase can only be construed as being directed to prior disclosures; that is, publicly available information (not part of common general knowledge) which a person skilled in the relevant art could be expected to have regarded as relevant to solving a particular problem or meeting a long-felt want or need as the patentee claims to have done. Otherwise the words of limitation in the last forty words of s 7(3) would have no role to play. Any piece of public information in the relevant art would be included, as is the case with the much broader and quite different formulation in the cognate provisions in the United Kingdom, which do not depend on the standard of a skilled person's opinion of the relevance of the information. [153] The question of what a person skilled in the relevant art would regard as relevant, when faced with the same problem as the patentee, is to be determined on the evidence. The starting point is the subject matter of the invention to be considered together with evidence in respect of prior art, common general knowledge, the way in which the invention is an advance in the art, and any related matters. It should be mentioned that the starting point is not necessarily the inventive step as claimed, or even agreed between the parties, because the evidence, particularly in respect of a combination of integers, may support a different inventive step. 532 Therefore, whether or not particular prior art is additional information "relevant" within the terms of s 7(3), depends on the skilled person's opinion, when faced with the same problem as the patentee, of the relevance of the information. It is important that the conditions set out in s 7(3) be satisfied before the relevant documents can be considered: see Wake Forest at [673-6].

[99]

Consideration 533 Infa's pleaded case is that the impugned claims would have been obvious to a person skilled in the art in the light of the common general knowledge, considered separately or in combination with either or both of the prior art (detailed above in relation to novelty) and patent specification AU 605621 (Australia 1991) entitled "Releasable child seat". 534 In its revised submissions, Infa submitted that Mr Bowtell had "adapted a design previously employed on a Safe-n-Sound seat in use before the priority date of the Tenth Patent". Infa submitted that this "seat" would have "been ascertained, understood and regarded as relevant by any skilled person asked to design a tether arrangement which may be used for a child safety seat in rear or forward facing mode, which allows for minimum distance between the rear of the seat and the anchorage point on the vehicle", in accordance with the promise of the Tenth Patent. It is to be recalled that Mr Bowtell gave evidence on behalf of Infa: see Construction Judgment at [215]. 535 In support of its submission, Infa relied upon the evidence of Mr Bowtell, who is named as an inventor in several patents relating to child safety products. In particular relevance to Infa's inventive step challenge, he is named as the sole inventor of AU 605621, and co-inventor of the Tenth Patent. 536 Mr Bowtell gave evidence that when he was informed that a patent was going to be filed for what is now the Tenth Patent, he was "surprised…as in my mind, there was no real invention in applying the same system …employed for the baby capsule in 1984 to adapt the APRICA for use in Australia". He said that that system was the split tether strap arrangement which was described in AU 605621. In oral evidence, he recounted that he had trouble at the time in having his name included as co-inventor of the Tenth Patent, as it described something that he did not view as an "invention". He added: I don't think this split tether is an invention. When I was developing the baby safety capsule a single strap gave the best performance. The problem was the baby's head - well, the dummy's head in the test was striking that piece of webbing that was going over the head. So one has to shift it. If you shift it, the restraining forces on the product are then causing it to skew around. The logical and most obvious thing to do is to split the strap into two. There is nothing, in my opinion, that is inventive about that. It is just plain logic. 537 Infa therefore sought to rely on Mr Bowtell's assessment of the invention described in the Tenth Patent as "obvious to a person skilled in the relevant art". 538 It is important to recall that the evidence of an inventor is not to be given special weight merely because it is the inventor's evidence: see PAC Mining Pty Ltd v Esco Corporation (2009) 80 IPR 1 at [73] and [82]. Even if there was evidence that an inventor arrived at a result without difficulty, it does not follow that it was "obvious" - an invention depends on the nature of the result ultimately claimed: see The Wellcome Foundation Ltd v VR Laboratries (Aust) Pty Ltd (1981) 148 CLR 262 at 287 per Aickin J (with whom Gibbs ACJ, Stephen, Mason and Wilson JJ agreed). 539 Further, whilst Mr Bowtell's opinion that the invention was obvious may be admissible - despite it being the ultimate question before the Court (see s 80 of the Evidence Act) - it is not determinative. It is important for the Court to determine whether the expert witness attributes the correct meaning to the word "obvious" and to ensure that hindsight is not a factor in the experts opinion: see Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 at 60-1 per Latham CJ, with whom McTiernan J agreed. 540 Mr Bowtell's knowledge of the AU 605621 prior art and what he knew about the Tenth Patent taints his evidence in relation to "obviousness" with hindsight. Further, in accordance with the legal principles I outlined above in relation to the skilled addressee, in contrast to Mr Hunter, Mr Bowtell is clearly inventive in the field of child restraints, and is therefore impermissibly "inventive" to qualify as the requisite non-inventive "person skilled in the art". 541 In addition, Mr Bowtell's conclusion that the invention described and claimed in the Tenth Patent is obvious, must be viewed with caution for three reasons. First, he does not address the inventive combination as claimed in the Tenth Patent; he only addressed the "Y" shaped or "split" tether. Secondly, he only had limited involvement in the design of the tether strap arrangements of the invention. Thirdly, he acknowledged that the Tenth Patent described an "invention" in the contemporaneous documentation concerning his inventorship and the invention described in the Tenth Patent, both in Australia and the United States. 542 I therefore do not view Mr Bowtell's evidence as supportive of Infa's inventive step challenge. Moreover, Infa has not established that the information in patent specification AU 605621 or any other prior art (at the priority date) would have been reasonably able to have been ascertained, understood and regarded as relevant in Australia by a person skilled in the art when seeking a solution to the problem the invention seeks to overcome. This would need to be established by the evidence for Infa to satisfy the requirements of s 7(3). As Nicholas J stated in Delnorth Pty Ltd v Commissioner of Patents (2013) 100 IPR 175 at [33]: [w]hether or not a particular document that forms part of the prior art base meets the requirements of s 7 (3) of the Act is something that must usually be determined by evidence. 543 In the absence of such evidence, Infa's inventive step challenge cannot succeed.

[101]

Legal Principles 546 Subsections 18(1)(c) and 18(1A)(c) of the Act require that a patentable invention, so far as claimed in any claim, must be useful. 547 Invalidity based on inutility could only be made out if the claims include within their scope forms of the invention which do not work at all or do not fulfil the stated promise set out in the specification description. 548 In Apotex Pty Ltd v AstraZeneca AB (No 4) (2013) 100 IPR 285 Jagot J at [352], adopted the following submission as summarising the applicable principles: Section 18(1)(c) requires that an invention be "useful". This will be the case if the claimed invention does what it is intended by the patentee to do, in the sense of meeting the object or promise in the specification, and the end result obtained is itself useful. For this purpose, the claims must be construed from the perspective of a skilled person in a common sense way, and not in a way that any such addressee would appreciate would lead to an unworkable result. It is not necessary for the description in the specification to spell out matters which the skilled person could supply without the exercise of any inventive faculty in order to achieve the promise of the invention. The patentee is entitled to assume that the reader has a reasonably competent knowledge of what was known before and reasonably competent skill in the practical mode of doing what was then known. A purposeful adoption of an embodiment that would obviously lead to an unworkable or inferior result is not an appropriate way of testing utility. It is also relevant to pay attention to the nature of the alleged "promise" in the specification. Ultimately, an asserted lack of utility must be established by appropriate evidence, not by mere speculation that the invention will not work or meet the promise set out in the specification. (Citations omitted.) 549 The above principles were mentioned in the context of standard patents, but are also applicable to innovation patents. I emphasise for the purposes of this proceeding that "an asserted lack of utility must be established by appropriate evidence, not by mere speculation", as Jagot J accepted. The evidence that would need to be led would be evidence relating to usefulness in light of the knowledge of persons skilled in the art, before or at the filing date or grant of the relevant patent. I need not investigate the exact date for the purposes of this proceeding, as I have concluded that Infa has either provided no evidence or insufficient evidence in support of its cross-claim on the ground of inutility. 550 In order to assess utility, it is necessary to determine the "promise" of the impugned patent, that is, what the patent intended to achieve. This involves construing the claims of the impugned patent, understanding the specification and considering the evidence of the skilled addressee. Whether or not the achievement of that purpose is difficult, expensive, or results in an invention of poor quality, is not to the point, unless those attributes are part of the promise or purpose of the invention. 551 The utility of a patent is to be objectively considered against the patent specification and claims. The High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 ('Advanced Building Systems') at [24] stated: It is no objection to validity of a patent granted under the Act that it is commercially impracticable; its utility depends on whether, by following the teaching of the complete specification, the result claimed is produced. 552 In Advanced Building Systems, the High Court cited the Court of Appeal decision of Lane Fox v Kensington and Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424 at 430-1. In that decision, in describing the essence of the utility requirement at 431, Lindley LJ said: To judge of utility the directions in the amended specification must be followed, and, if the result is that the object sought to be attained by the patentee can be attained and is practically useful at the time when the patent is granted, the test of utility is satisfied. Utility is often a question of degree, and always has reference to some object. Useful for what? is a question which must be always asked, and the answer must be, Useful for the purposes indicated by the patentee. 553 The primary utility consideration is whether the invention as claimed will achieve the result promised by the specification, the result itself being useful. However, it must be recognised that if the appropriately skilled addressee is able to supply an omitted feature, which is part of the common general knowledge, then provided the invention achieves the promise with that feature supplied, the claim will not lack utility. 554 In Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525 at [117-8] Bennett J stated that: [117] A principle has been expressed that all within the scope of a claim must be useful if the claim is not to fail for want of utility, so that a claim is bad if it covers something that will not produce the desired result, even if a skilled person would know which means to avoid it. This was the test applied by the primary judge in Lundbeck and the parties did not dispute this test in the appeal in that case. However, this principle does not mean that a specification should be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning. The claims should be construed as they would be by the person skilled in the art desirous of making use of the invention. It has also been said that a claim does not need to specify a limitation that was common knowledge in the art for that limitation to apply in construing a claim to avoid want of utility. In Lundbeck, Bennett J, with whom Middleton J agreed, affirmed the test as set out in Ranbaxy and Austal Ships. [118] The claims of the patents allow the reader to select which specific binding reagents to use in the device, although the specifications express preference for reagents such as highly specific antibodies and monoclonal antibodies. Where a claim omits a feature which, on a proper construction of the claim, is left for the reader to supply, the claim will not be invalid for want of utility if the feature is one that the skilled addressee could reasonably be expected to supply and the claimed invention is useful after the feature is supplied. A similar approach should be adopted where a claim leaves a choice to the skilled reader to select features to include in the invention. In such circumstances, the fact that it is possible to make a purposeful selection of inappropriate features with the intention of making something useless does not imply that the claim lacks utility. (Citations omitted.) 555 I accept that it is not enough for the claimed invention to fulfil the promise of the impugned patent, but the result obtained must itself be useful: see, eg, Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (2008) 77 IPR 449 at [141].

[102]

First, Third and Fifth Patents 556 The specifications of each of the First, Third and Fifth Patents describe an invention which promises to secure the harness of a child safety seat to a vehicle, and to do so independently of the safety seat shell. 557 Infa submitted the promise of an independently secured harness is not achieved by the invention as described in the claims of those patents. It noted that: (a) none of claims 1 or 2 of the First Patent has, as a feature, a connection strap that is connected or connectable to a child harness; (b) none of claims 1 to 5 of the Third Patent has, as a feature, that the connections means is connected to, or suitable for connection to, a child harness, but is anchored independently of the child safety seat; and (c) none of claims 1, 2, or 3 of the Fifth Patent has, as a feature, a harness or that the child safety seat incorporates a harness that is anchored independently of the seat shell. 558 I have already referred to the relevant claims in the Construction Judgment, and it will be observed that the scope of the inventions is for an apparatus for use in a motor vehicle. 559 Infa suggested that the independence of the harness from the seat shell could be tested by considering whether the harness would remain secured to the vehicle anchorage point, if the tether strap - connected "with respect to" the seat shell and to the vehicle anchorage point - were severed at the seat shell. It is not intuitively obvious that the harness would lose attachment to the anchorage point in such a scenario. In any event, Infa did not provide evidence in support of the asserted lack of utility. 560 Infa has therefore failed to discharge its burden of proof in relation to this ground. Neither Mr Hunter nor Mr Newman saw any difficulty in relation to the utility of each of the Innovation Patents. I do not accept that Infa has shown, in relation to each impugned patent, that within the scope of the invention there is any subject matter which would not achieve the promised result, or that the invention is not otherwise useful.

[103]

Tenth Patent 561 The specification of the Tenth Patent, having identified several problems with the prior art, states (at 2.7-11) that an object of the invention is: … to overcome the above mentioned problems and in particular to provide a single tether strap in either the rear or forward facing mode, and which also allows for minimum distance between the rear of the seat and the attachment point on the vehicle. 562 The "above mentioned problems" are identified as problems arising from the need for two separate tether straps in dual purpose (ie rear or forward facing) seats, and the use of multiple intermediate componentry (such as an adjusting means, a hook, and a means of connecting the strap to the hook) which may sometimes result in the tether strap being too long for use with the most convenient anchorage location, even at its shortest length. 563 The Tenth Patent therefore makes two promises: that a single tether strap can be used regardless of the forward or rear-facing mode of the safety seat, and that the tether strap is adjustable to ensure a tight securing of the seat with respect to the anchorage point, regardless of the distance between the seat and anchorage point. 564 Infa contended that the promise of the invention requires the tether strap to remain "adjustable" after the seat is installed in the vehicle. In support of that contention, Infa made a number of submissions. 565 First, Infa noted that the specification of the Tenth Patent (in relation to the figures, at 7.29-35) states that: [a]ll of the embodiments described above have the advantage of the tether strap 11 being suitable for use in either the rear or forward facing seats. Clearly, there is an advantage in being able to simply pull the tether strap in the required position regardless of what direction the seat is facing. 566 Secondly, it submitted that the above statement is said to be directed to the practicalities of use once the seat is already installed and in a particular mode (rear or forward facing). Similarly, Infa noted that it is evident from the specification, and from the presence of integer 10.1.1 and integer 10.19.1 as well as the adjustment means integers 10.1.8 and 10.19.11, that the promise in the Tenth Patent contemplates an ability to adjust the tethering arrangements both before and after installation of the safety seat. 567 Thirdly, Infa argued that it is no answer to say that the tether strap can be adjusted prior to the connection to the attachment point, or that it can be achieved in the abstract, since neither approach will achieve the promised "minimum distance" between the rear of the safety seat and the attachment point on the vehicle, and may still be "too long for use" - an identified problem with the prior art. 568 Fourthly, it submitted that for a patent to possess the requisite utility, the promise of the claimed invention must be practically achievable by a user of such an invention. It added that the promise in the Tenth Patent was not practically achievable, since it would not be practical for a user to uninstall the seat each time it was used, in order to adjust or correct tension in the tether strap. In support of this practical consideration, Infa pointed out the following documents, which impliedly acknowledge the accepted practical need to be able to adjust a child restraint once installed: (a) Britax Safe-N-Sound brochure entitled "A Guide to Child Restraints and Safer Motoring": It is most important that the tether strap and the seat belt which hold the child seat in place are securely anchored and tightened. Check by tugging on the child seat. It is not enough just to buckle your child in. Every time a child restraint or seat belt is used, you must check that the restraint is adjusted properly to fit your child and that it is securely fastened; (b) NSW Infant and Child Resource Manual (1996): Infant and Child Restraints Advice on Installing a Restraint Safely Ensure the top tether strap and the adult seat belt that keeps the restraint in position are properly adjusted - they shouldn't have any slack. When tightening the seat belt and top tether strap, push the child seat firmly into the car seat back and cushion, with your body weight, so that they are compressed. This helps ensure a very tight fit, and minimises subsequent movement in a crash. … Installation and Adjustment • Fold down the rear stay bar and lock it in place. • Place the unit on the car seat and push it hard against the seat back. • Pass the seat belt between the two plastic mouldings. • Couple the seat belt and remove any slack from it. • Place the child in the unit, fit and firmly adjust the harness. • Attach the top tether strap to the anchor fitting and remove any slack from it while applying pressure to the top of the unit so that the top of the car seat back is slightly compressed. (c) VicRoads Brochure "Why Use Child Restraints?" How to use a child car seat A child car seat must be installed correctly in your vehicle and adjusted properly to fit your child firmly. If it is not, the restraint may not protect your child at all. (d) Australian Standard AS/NZS 1754:2000 'Child restraint systems for use in motor vehicles' 3.2.1 RESTRAINT SYSTEM 3.2.1 General The restraint system shall comply with the following: … (f) Normal wearing adjustments shall be possible with the occupant in the restraint system and without loosening, or removal, of the restraint system from the vehicle. … (g) The restraint system shall have adequate adjustments for fitment to every vehicle model and seating position for which it purports to be suitable. Adjustments shall be possible with the system in all intended installed seating positions. Adjustment shall be accomplished without the use of tools.

[104]

Expert Evidence 569 On the basis of the above submissions as to the impracticality of the promise, Infa challenged the utility of the Tenth Patent. In doing so, it relied on the evidence advanced by the witnesses Messrs Bowtell and Hunter about the unsuitability for use of some embodiments of the described invention depicted in the drawings. 570 Mr Bowtell gave evidence that the arrangements depicted in figures 6 to 9 and in particular figure 11 were impractical. In relation to those figures, Mr Bowtell said that if there was any tension in the system depicted (such as would occur in an installed state), it would be "almost impossible to adjust the tether strap due to the frictional values that are within that webbing system". 571 Mr Bowtell answered a question from the Court concerning the presence of the lock of the adjustment means: His Honour: If you didn't have the lock on, you could adjust it, couldn't you? It is not taut? Mr Bowtell: It would still be difficult. His Honour: Difficult, but that's all? Not impossible? Mr Bowtell: Be difficult. I would - it wouldn't be impossible, but it would take a lot of force, so it would be impractical for the marketplace. 572 Mr Bowtell gave evidence that in his experience, consumers will not get the adjustment right the first time, and there will be a process of trial and error. 573 I accept that Mr Bowtell's opinions concerning operation of the arrangements reflected in figures 6 to 9 and 11. Nevertheless, I consider that Infa still cannot succeed. Mr Bowtell accepted that all the figures in the Tenth Patent (including figure 11) could be put into practice (albeit with force) and the tether strap slackened for fitment and then tightened. He considered that some of the embodiments in the figures were unworkable, but this was in the sense that consumers had little patience and would give up after one or two attempts if there were difficulties in installing a safety seat and tether strap correctly. I do not consider that this shows inutility. In any event, there is evidence that the fitting of a child safety seat is often conducted by a professional "fitter" and therefore there may be some dispute as to whether it is relevant to consider the consumer. 574 Mr Hunter similarly concluded that the embodiments in each of figures 6 to 9 and 11 would be "difficult to use, impractical". 575 Mr Hunter was asked in cross-examination whether he perceived problems with the embodiments of the Tenth Patent, particularly as to the adjustment of the tether strap under tension. He indicated that although some of the embodiments depicted in figures 5 to 11 might be difficult (to varying degrees) to install, it was nevertheless possible with a trial and error approach. Mr Hunter also stated that the tether strap adjustment would be required for different vehicles. He said that whilst a consumer might not persevere after a "second go" when installing the seat, the adjustment of the tether strap would be "difficult but not impossible". Mr Hunter did not accept that the working of any of the embodiments of figures 5 to 11 was not possible. 576 Even based upon Mr Hunter's evidence, I do not consider that Infa has provided sufficient evidence to succeed on the ground of inutility against the Tenth Patent. 577 In relation to Infa's submissions, I find that the Tenth Patent does not promise the practicability or ease of adjustment of the tether strap, whether in an installed state or not. The second promise of the invention in the Tenth Patent is that a single tether strap may be employed in a safety seat in either rear or forward-facing mode, which allows for a minimum distance between the rear of the seat and the attachment point of the vehicle. This promise is accomplished by each of the embodiments depicted in the figures of the Tenth Patent, and does not require adjustment to occur at any particular point in time (ie pre- or post-installation). Otherwise, the result obtained by the invention is itself useful. 578 In my view, the contentions of Infa on utility must fail.

[105]

CLARITY 579 As pleaded, Infa challenges the validity of the First to Tenth Patents (inclusive) on the ground of non-compliance with s 40(3) of the Act (lack of clarity). 580 Section 40(3) requires, in part, that the claims must be clear and succinct. Accordingly, a cardinal principle of construction for patent claims is that the claims define the invention and that the forbidden field of the monopoly must be stated clearly, and with precision, in the claims and not elsewhere. 581 The patent must describe the invention with precision so that the precise extent of the patentee's monopoly can be determined. 582 However, in Minnesota Mining, Aickin J stated at 274 that "[l]ack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use". 583 A claim is not ambiguous or invalid for lack of clarity merely because it is difficult to construe, provided it can be properly and fairly construed. 584 Sometimes "imprecise" terms may be used in a claim - for example, "approximately", "substantial" and "relatively". If the skilled addressee, in the context of the claim and specification, can understand such term to provide a proper standard in which to understand the Patent, this will suffice. The skilled addressee must be able, through the application of common sense, to resolve any ambiguity in description. 585 Neither Mr Newman nor Mr Hunter had any difficulty in giving meaning to the various words or phrases in the claims although there was an evident difference of expert opinion as to the scope of some of those words or phrases. The Court has resolved any ambiguity in these reasons and the Construction Judgment, and has been able to ascertain the precise extent of the monopoly claimed. 586 It is not enough for Infa to contend, as Infa does, that the impugned terms lack clarity on account of the substantial discord between the parties and the experts as to interpretation of the claims when considering whether the Infa Products infringe.

Parties

Applicant/Plaintiff:

Britax Childcare Pty Ltd

Respondent/Defendant:

Infa-Secure Pty Ltd

Legislation Cited (5)

Intellectual Property Laws Amendment (Raising the Bar) Act 2012(Cth)

Evidence Act 1995(Cth)

Patents Act 1990(Cth)

Patents Regulations 1991(Cth)

Federal Court Rules 2011(Cth)

Cases Cited (68)

Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (2008) 78 IPR 463 Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239 Eli Lilly and Co Ltd v Apotex Pty Ltd (2013) IPR 451 Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280 General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151 ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214 Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20 Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525 JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155 Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd (2011) 92 IPR 21 Lane Fox v Kensington and Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424 Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 1) (2004) 217 CLR 274 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 Lux Traffıc Controls Ltd v Pike Signals Ltd [1993] RPC 107 Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd (2009) 176 FCR 575 Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43 PAC Mining Pty Ltd v Esco Corporation (2009) 80 IPR 1 Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 PLG Research Ltd v Ardon International Ltd [1993] FSR 197 Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (2008) 77 IPR 449 Samsung Electronics Co Ltd v Apple Inc (2011) 217 FCR 238 Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132 SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd (2012) 204 FCR 325 Stena Rederi Aktiebolag v Austal Ships Sales Pty Ltd (2007) 73 IPR 257 The Sunnyfield Association v Cronk (2009) 80 IPR 300 The Wellcome Foundation Ltd v VR Laboratries (Aust) Pty Ltd (1981) 148 CLR 262 Vehicle Monitoring Systems Pty Ltd v Sarb Management Group Pty Ltd (No 2) (2013) 101 IPR 496 Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496 Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 Williams Advanced Materials Inc v Target Technology Co LLC (2004) 63 IPR 645 Windsurfing International Inc v Petit (1983) 3 IPR 449

(2004) 60 IPR 548

(2010) 88 IPR 52

(2010) 88 IPR 270

(1998) 194 CLR 171

(1999) 44 IPR 593

(2002) 212 CLR 411

(2008) 76 IPR 618

(1994) 50 FCR 1

(2013) 100 IPR 285

(2009) 83 IPR 42

(2001) 52 IPR 75

(2012) 210 FCR 21

(2012) 290 ALR 47

(2015) 318 ALR 483

(2013) 100 IPR 175

(2008) 78 IPR 463

(2009) 177 FCR 239

(2002) 188 ALR 280

(2009) 177 FCR 151

(2000) 106 FCR 214

(2008) 78 IPR 20

(2010) 85 IPR 525

(2005) 67 IPR 68

(2005) 222 ALR 155

(2011) 92 IPR 21

(1996) 67 FCR 126

(2004) 217 CLR 274

(2007) 235 CLR 173

(1977) 137 CLR 228

(2002) 56 IPR 248

(2009) 176 FCR 575

(1990) 91 ALR 513

(2000) 51 IPR 43

(2009) 80 IPR 1

(1937) 59 CLR 30

(1982) 41 ALR 471

(2008) 77 IPR 449

(2011) 217 FCR 238

(2012) 204 FCR 325

(2007) 73 IPR 257

(2009) 80 IPR 300

(1981) 148 CLR 262

(2013) 101 IPR 496

(2011) 92 IPR 496

(1961) 106 CLR 588

(2004) 63 IPR 645

(1983) 3 IPR 449

(1999) 164 ALR 239

(1987) 11 IPR 20

(1988) 11 IPR 289

(1993) 27 IPR 83

(1977) 180 CLR 236

(2001) 207 CLR 1

(1988) 81 ALR 79

(1933) 49 CLR 643

(1997) 39 IPR 29

(2000) 97 FCR 524

(2000) 49 IPR 225

(2008) 78 IPR 485

(1970) 180 CLR 160

(1990) 16 IPR 545

Cited By (4)

Axent Holdings Pty Ltd t/a Axent Global v Compusign Australia Pty Ltd

Britax Childcare Pty Ltd, in the matter of Infa Products Pty Ltd v Infa Products Pty Ltd

Globaltech Corporation Pty Ltd v Reflex Instruments Asia Pacific Pty Ltd

InterPharma Pty Ltd v Hospira, Inc