5.3.2.3 Was the invention claimed in the Patent obvious?
350 Blindware contends that the modifications to the Uniline Product necessary to arrive at the claimed invention amounted to no more than routine changes which would have been tried as a matter of course.
351 What must be shown to have been obvious is the combination of the features claimed in each claim as a self-contained mechanism. The claims in suit set out specific requirements defining the components and how those components interact with each other. It is each particular combination of a spring assisted blind as a self-contained mechanism that must be shown to have been obvious at the priority date.
352 This is not a situation where there is the use of well-known off the shelf components for the purposes for which they were known to be used for, as in the case of DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132. There is also no evidence to suggest in this proceeding that anyone used a biasing spring connected to the fixed shaft at the drive or clutch end, rather than the idle end.
353 Blindware's principal evidence on this issue was given by Mr Crick. Unlike a hypothetical skilled addressee Mr Crick did not approach the task motivated by a desire to solve any particular problem with the Uniline Product. Prior to his involvement in this case Mr Crick was unfamiliar with the Uniline Product or even chain-operated blinds, and only had personal knowledge of the latching problems with Holland blinds.
354 In his affidavit evidence, Mr Crick stated that moving from the Uniline Product to the invention of the Patent, particularly connecting the biasing spring to the clutch end rather than the idle end, was "simple", not difficult. It might require some redesigning and retooling, but it was just "incremental development which is a part of routine mass production manufacturing." Mr Crick further stated:
[103] One simple way of fixing one end of the biasing spring is to directly connect it to the fixed shaft at the drive end. Another simple way of fixing one end of the biasing spring is to fix it at the idle end. The Uniline Product is an example of such a configuration that I would have considered before August 1999. In the Uniline Product, one end of the biasing spring is connected to the cylinder through a cylinder engagement member (as shown in Figure 9 in Annexure AC-7) so that it cannot rotate relative to the cylinder. The other end of the biasing spring is connected to the spring engagement boss (which I describe in paragraph 85(b) above). The spring engagement boss is fixed to a wall bracket, with the result that the idle end of the spring is fixed relative to the fixed shaft (which is located at the drive end of the mechanism). The connection to the spring engagement boss at the idle end has the result that the spring, at the idle end, cannot move relative to the shaft at the drive end, by virtue of the fact that both the spring engagement boss and the fixed shaft are connected to the wall via wall brackets.
[104] If, before August 1999, I had been asked to design a roller blind mechanism that combines the use of a biasing spring with a clutch roller mechanism, I do not consider that it would be difficult to design the mechanism in such a way that one end of the biasing spring is connected to the cylinder so that it cannot rotate relative to the cylinder, and the other end of the biasing spring is fixed relative to the fixed shaft at the drive end so that it cannot rotate relative to the shaft, as required by claim 24 of the Patent. I also do not consider that it would be difficult to design the mechanism in such a way as to include an interconnecting means that provides a connection between the biasing means and fixed shaft at the drive end, as required by claim 25 of the Patent.
[105] As I explained above, when designing a roller blind mechanism that combines the use of a biasing spring with a clutch roller mechanism, the biasing spring needs to be fixed at one end and free to rotate at the other end, so that the rotation at one end of the spring tightens or releases the coils of the spring. There would be a number of possible configurations for designing such a roller blind mechanism in such a way that it has each of the features of one or both of claims 24 and 25 of the Patent. In my opinion, these would all be simple variations designed to achieve the same result, namely to keep the biasing spring stationary at one end so that rotation at the other end of the spring tightens or releases the coils of the spring.
355 Mr Crick also stated:
[26] While I agree that some redesigning and retooling might be required in order to manufacture a new blind product with one end of the biasing spring directly connected to the fixed shaft at the drive end, I do not consider that it would be difficult or expensive to redesign the components and tooling for such a product. This would be an incremental development which is a routine part of mass production manufacturing.
[27] In my opinion, there are also a number of other simple variations that could be made to the Uniline Product to achieve the connection between the biasing spring and the fixed shaft at the drive end required by each of claims 24 and 25. For example, one simple variation would be to add a rod that runs along the length of the cylinder and connects the fixed shaft at the drive end to the fixed shaft at the idle end. Another simple variation would be to add a bracket that fits over the cylinder and supports both ends of the mechanism. All of these variations came to my mind easily without reference to the Patent or any matters that were only known to me after August 1999.
356 Mr Crick also gave evidence that if he had been set the task of designing a new product, he would evaluate the possibility of integrating some of the components (transcript, p 245):
I believe that if you were set the task to create a new product, you would evaluate the possibility of integrating some of the components into one assembly, rather than having two separate assemblies. It seems to me that the clutch - the roller clutch assembly in itself and the spring assembly are legacies of pre-existing technologies that have been, in somewhat of an ad hoc sense, combined together in this product.
357 When asked what would be his motivation to go down that path, Mr Crick referred to the "feedback" that he had learned listening to the evidence in Court (transcript, p 245):
I think it's highly likely that if you started the process of redeveloping the product, so that it's a design brief to redevelop the product, I think that you could readily identify - particularly with the - we had feedback now from installers, which I've heard in this courtroom, one of those feedback being that the - the tab, as I've referenced it on that drawing, tends to wear out the bracket because of the tension on the spring on very heavy blinds. And the second thing we've learnt about it is the creep of the fabric. So if these elements form part of the parameters of a design brief, then I believe it would be a relatively straightforward approach to identify that if, in fact, you anchored the spring at the drive end, the clutch would assist - would ameliorate the problem of the bracket creep in the blind fabric, because the biasing has been really helping it.
358 Mr Crick admitted that he did not know about the "tab" problem or the blind creep problem either at the priority date or when he prepared his affidavits. They were matters he learnt in Court.
359 Ultimately, during cross-examination, Mr Crick agreed that his views were formed with knowledge of the Patent (transcript, p 252):
COUNSEL: Mr Crick, your evidence at 103, which, in the first sentence, addresses a design solution which, in effect, reads onto the patent, is a design solution that you arrived at because you had read the patent and had the benefit of what was disclosed?
MR CRICK: Correct.
360 I find Mr Crick's evidence unsatisfactory as a basis upon which to conclude that the Patent lacks an inventive step over the Uniline Product. It was tainted by hindsight, and obviously influenced by much of what Mr Crick learnt during the course of this proceeding.
361 The evidence of Mr Crick stands in contrast to the evidence of Mr Ruonala (Uniline), Mr Mackie (Helioscreen) and Mr Kelleher (Campbell & Heeps), who were actively engaged in the blind industry.
362 For instance, Mr Mackie provided the following evidence:
COUNSEL: … And the only place that you can fix the spring against the relative movement is at either side of one of the brackets - one bracket or the other?---
MR MACKIE: Yes.
COUNSEL: … And if you were adding a Holland blind-like spring to a roller clutch system, the way to do that with no re-tooling of the clutch or anything like that is simply to add the spring to the idle end, so you've got the clutch at the drive end?
MR MACKIE: Yes.
COUNSEL: … But if you wanted to, you could retool the clutch, so that the spring could be attached to the fixed shaft of the clutch. That was the - that's the other alternative place that the spring could be fixed?
MR MACKIE: Yes… But that - but that - to clarify that, that would need to be an engineered solution. It's not just a - you know, stick it down the other end and hope for the best.
COUNSEL: You would have to retool?
MR MACKIE: Yes.
COUNSEL: Yes. Yes, you couldn't just plunk it down the end and hope it worked. You would have to modify the clutch of a - say, a Rollease clutch?
MR MACKIE: Yes. Yes.
COUNSEL: Yes. And enable it to take a fixing or some kind of interconnection between the end of the spring you wanted to stop from moving and connect it to the fixed shaft?
MR MACKIE: Yes.
COUNSEL: And that would have been obvious to you at the time?
MR MACKIE: Yes.
COUNSEL: And the difficulty you identified is really the expense and time involved in retooling the clutch?
MR MACKIE: No, I don't think that we've ever gone into any dollars and cents about re-costing and doing anything like that at Helioscreen.
….
COUNSEL: Could you just amplify for his Honour what you meant by engineered solution?
MR MACKIE: Well, the - the spring assembly would have to be fabricated in such a way that it formed part of the clutch, so that it became one piece, rather than a combination of pieces being put in there.
363 This evidence suggests that there was more involved in arriving at the mechanism described in the Patent than simply switching the end at which to join a spring with a clutch system. It suggests that a number of analytical steps would have been required to ascertain how such a switch could be implemented.
364 Then there is the evidence of Mr Ruonala. Mr Ruonala has a Bachelor of Engineering. He has worked at or been involved with Uniline since 1988. From 1994 to 1999, Mr Ruonala was Uniline's Research and Development Manager. From 1999 until his retirement in 2009, he was Uniline's Managing Director. He continues to be a director of Uniline. Uniline is, and around the priority date was, one of the leading suppliers of blind products and parts in Australia.
365 As Research and Development Manager, Mr Ruonala's job was to develop new products and improve Uniline's existing products. His job was to ensure that Uniline was constantly improving its products. He did so by keeping abreast of market developments, obtaining feedback from customers and consultations with his father and Uniline's production staff. As Managing Director, Mr Ruonala remained responsible for overseeing new product development and production, and was responsible for developing the Uniline Product.
366 Mr Ruonala's evidence is that the two major problems with Uniline's chain-operated blind were the problems of blind creep and the weight of the blind.
367 Before developing the Uniline Product, Mr Ruonala with his father's input had experimented on a range of different combinations of springs, plastics and lubricants to achieve the right balance between the weight of the blind and the strength of the biasing spring.
368 The project to develop the Uniline Product took place over the course of about a year. In the course of developing the Uniline Product, Mr Ruonala also consulted about technical matters with his father and Uniline's production people.
369 So far as Mr Ruonala and Uniline were concerned, the Uniline Product successfully solved the two problems which had arisen with the chain-operated blinds:
COUNSEL: So, Mr Ruonala, may I take it that you had set out to develop the helper spring in order to overcome the two problems we discussed. That is blind creep and providing assistance to users in the force required to lift the blind?
MR RUONALA: That's correct.
COUNSEL: May I take it that in your view the helper spring ultimately achieved the desired goal of overcoming those disadvantages?
MR RUONALA: Yes, I believe that - that our - our product solved those two problems.
COUNSEL: By August '99, so that's about two years after you had started selling the product, is it fair to say that overall customers were happy with the benefits offered by the helper spring?
MR RUONALA: Yes, I believe - well, we were selling product, so that indicated to me that the customers were using it and were happy with the additional benefits they were providing.
370 Uniline continues to offer the Uniline Product as part of its range. Despite the imperative to continually improve and update Uniline's product offering, Mr Ruonala did not do any work on a "spring assist" device before the priority date. No-one at Uniline had any motivation to move from the Uniline Product to a "spring assist" product like that claimed in the Patent.
371 Uniline resolved to its satisfaction the problem of idle end bracket failure (the major problem with idle end spring roller blinds identified by Mr Kelleher) by supplying a heavier bracket for use at the idle end of the Uniline Product.
372 Finally, Mr Kelleher's evidence concerning the activities of Campbell & Heeps is consistent with Mr Ruonala. Mr Kelleher was an installer and retailer, not a component manufacturer. Kelleher was aware of the aforementioned problems that were associated with roller blinds at the relevant time. His evidence is that Campbell & Heeps continued supplying and installing its idle end spring roller blinds (i.e., chain-operated blinds with modified Holland springs at the idle end) right up until he left in 2003. Campbell & Heeps did not develop a "spring assist" roller blind over all the years following its introduction of the idle end spring roller blind.
373 Although Helioscreen itself was not engaged in research and development as mentioned above, Mr Mackie's evidence is also instructive in this regard. Neither he nor Helioscreen came up with a solution to the problems of blind creep and lift assistance before he left Helioscreen at the end of 2000. Helioscreen was not aware of the helper spring solution nor, it appears, while he was aware of the Verisol product, neither he nor anyone at Helioscreen appreciated it could be used for this purpose.
374 The evidence of Mr Ruonala, Mr Kelleher, Mr Mackie and what Damorgold's competitors did provides a reliable guide to what the skilled addressee would have been likely to do at the priority date. It is persuasive evidence that the claimed invention was not obvious at the priority date. The fact that none of Uniline, Campbell & Heeps, Helioscreen or any of the other blind suppliers implemented the claimed invention until many years after the priority date including, in the case of Uniline and Campbell & Heeps many years after they commenced supplying chain-operated blinds with helper springs, also indicates the claimed invention was not obvious at the priority date. The claimed invention was not a path that anyone else in the marketplace took until many years later.
375 I should indicate that there is a good basis for placing a great deal of reliance on the actions of the participants in the industry.
376 Justice Hely in Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [2001] FCA 1877 adopted a similar approach. In particular, I regard Mr Ruonala in the present case as being in the similar position as Mr Garland referred to by Hely J at [165]-[167]:
[165] The issue is whether the alleged invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date. The relevant field is that of manufacture and design of locks.
…
[166] In 1995 Mr Garland was set the specific task by Doric of designing a rim mounted deadlatch to compete with the old Lockwood 001. The solution to the problem referred to in the Patent did not occur to him at that time. If the idea had then occurred to him he would have mentioned it to Doric, even though he was working to a brief, and the resolution of the problem referred to in the Patent did not form part of that brief. He was then aware that the "locked in" problem was a serious problem but the solution to it did not come to his mind.
[167] In cross-examination, Mr Garland said that faced with the problem referred to in the Patent, he "may well have" come up with one of the two solutions which he proffered. That evidence falls short of establishing that a non-inventive skilled worker would, as a matter of routine, have come up with either one of those solutions. It is not sufficient for a finding of obviousness that the skilled person "could" have done what has been claimed: CIPA Guide to the Patents Act 5th ed 2001 par 3.12.
377 The High Court referred to Mr Garland's evidence and the fact that Mr Gardland did not come up with the solution despite being aware of the relevant "locked in" problem in that proceeding: see Lockwood at [77].
378 In the present case, Mr Ruonala was actively seeking a solution to the same problem addressed by the Patent. He did not arrive at the same solution as that reflected in the Patent.
379 In summary, I accept that the use of a "helper spring" formed part of the common general knowledge, including insofar as it was implemented in the Uniline Product. However, I do not accept that the particular approach and solution reflected in the Patent was "obvious". Industry participants seeking to address the same problem did not arrive at this solution. Conceptually, the problem reflected in the Patent may have been relatively straightforward vis-à-vis the Uniline Product, insofar as it moves the spring to the other end. However, the evidence before me is that this solution would have required a number of analytical steps, or what was referred to as an "engineered solution". Further, the evidence suggests that moving the spring to the other end could, as in the Patent, lead to a qualitative difference in vis-à-vis the Uniline Product in respect of the function of the support. This supports the view that a number of analytical steps were required to arrive at the solution reflected in the Patent. With that in mind, I recall that to demonstrate obviousness, it must be shown that the claim did not overcome some difficulty nor cross some barrier, and a mere "scintilla" of invention is sufficient to support the claim: Lockwood at [52].
380 I do not ignore the way it was put by Senior Counsel for Blindware (transcript, p 393):
COUNSEL: On this question of inventive step my friend has set up the proposition that we needed a problem to solve. Now, that may be the case in relation to assessing inventive step in Europe, but that's not the case in Australia. It can be just as good to say what would be a useful alternative. The question here is the device which is the Uniline device and a number of other devices all existed, and they all had the helper spring at one end. We say it's enough simply that one could say, well, what is the alternative to that, and is it simple, is it obvious? And in this case it plainly was because there's only two places to put the fixing of the spring, one at the fix shaft, one at the distal end. Very simple case. And all of them said that was simple, that was obvious. The only concern was how much it was going to cost, and I say there's no invention in the cost of doing something.
381 What must be shown to have been obvious is the combination of the features claimed in each claim as a self-contained mechanism. As already indicated, the claims set out specific requirements defining components with some precision and how those components interact with each other.
382 The Court does not look at the commercial motives or the cost inhibitors or advantages in determining whether or not it was obvious to take a particular step in developing a product. However, as Sedley LJ observed in Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22 at [87]-[88], the skilled addressee is not to be expelled from the real world; nor is the Court in its appreciation of what a skilled addressee would do as potentially worthwhile when considering the issue of obviousness. The mindset of the skilled addressee must be affected by their awareness of a commercial or social need, and the commercial and social background known to the skilled addressee cannot be excluded from a consideration by the Court on the issue of obviousness.
383 For completeness, I also note the following contention of Blindware:
Damorgold has elected to not lead evidence from the named inventor, Vito Fortunato, despite Mr Fortunato being available and being the best person to explain the development of the alleged invention. Mr Lava's speculation regarding Mr Fortunato's ability to read and explain things in English does not provide a basis for Mr Fortunato not giving evidence and should be given no weight, even if admissible. Following the rule in Jones v Dunkel, it should be inferred that Mr Fortunato's evidence would not have supported Damorgold's case on inventive step.
(Footnotes omitted.)
384 Jones v Dunkel (1959) 101 CLR 298 ('Jones v Dunkel') provides for the prospect that inferences may be drawn where a party does not call a witness whose evidence may assist in the resolution of a factual dispute. In that case, Kitto J observed (at 308):
…any inference favourable to the plaintiff for which there was ground in the evidence might be more confidently drawn when a person presumably able to put the true complexion on the facts relied on as the ground for the inference has not been called as a witness by the defendant and the evidence provides no sufficient explanation of his absence.
385 In addition, the authorities establish that a court may infer that the evidence of the absence witness would not have assisted the party that failed to call that witness.
386 However, it is important to observe that the rule in Jones v Dunkel does not permit the filling of gaps in the evidence, or to convert conjecture into inference: see Jones v Dunkel at p 308 (per Kitto J) and 320-1 (per Windeyer J). In my view, the application of Jones v Dunkel advocated by Blindware in respect of Mr Fotunato is more akin to converting conjecture into inference rather than resolving a specific question of fact. The burden was on Blindware to prove obviousness, and in my view the evidence it relied upon failed to satisfy that burden of proof.