YATES J
71 I agree with Bennett J that the appeal should be allowed. I agree with the orders proposed by her Honour.
72 There are two grounds of appeal. The first ground of appeal, in essence, is that the primary judge erred in finding that the RolaShades product (exhibit R6) had been imported into Australia before the priority date (25 August 1999) and was prior art information for the purposes of s 7(1) of the Patents Act 1990 (Cth) (the Act). The second ground of appeal, in essence, is that the primary judge erred in finding that the display of the RolaShades product made novelty-destroying information publicly available in Australia.
73 As to the first ground of appeal, I agree with Bennett J, for the reasons given by her Honour at [23]-[31], that the appellants have not demonstrated that the primary judge was in error in finding that the RolaShades product had been imported into Australia before the priority date and was prior art information.
74 As to the second ground of appeal, I agree with Bennett J (at [56]) that, for the purposes of anticipation, the evidence is not sufficient to show that the invention, as claimed, was made publicly available before the priority date of the relevant claims. In my respectful view, the primary judge erred in finding to the contrary. In what follows, I state my reasons for that conclusion.
75 In Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155, the Full Court discussed the circumstances in which prior use of an invention by a third party will be novelty-destroying. In that case, it was alleged that a computer system relating to electronic gaming machines, called ActivData II+, had been developed and used by Jupiters in casinos in 1996 and 1997, prior to the patent application for the claimed invention. The Full Court found (at [124]) that ActivData II+ contained all the essential features of the invention as claimed. The question was whether the alleged use of ActivData II+ made information about it publicly available, such that the invention, as claimed, was not novel.
76 In considering that question, the Full Court referred to s 2 of the Patents Act 1977 (UK) (the 1977 Act), which provides, in s 2(1), that an invention is to be taken to be new if it does not form part of the "state of the art". The "state of the art" is explained in s 2(2). Relevantly, it comprises "all matter … which has at any time before the priority date … been made available to the public …". The Full Court noted, by reference to a number of English cases (Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1995) 33 IPR 1 at 8-9; PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 225; Re Asahi Kasei Kogyo KK's Application [1991] RPC 485 at 539; Quantel Ltd v Spaceward Microsystems Ltd [1990] RPC 83 at 108; Pall Corporation v Commercial Hydraulics (Bedford) Ltd [1990] FSR 329) that an "enabling disclosure" was required to "satisfy the provision" (i.e. s 2(2) of the 1977 Act) so far as prior conduct is concerned.
77 In context, it is clear that the Full Court was referring to when the doing of an act, as opposed to the publication of a document, will be sufficient to make a matter "available to the public" for the purposes of s 2(2) of the 1977 Act, although it is clear from the cases to which the Full Court referred that a similar requirement of "enabling disclosure" exists with respect to information made publicly available by the publication of a document. Those cases make clear that, in both cases, an "enabling disclosure" is one that conveys information.
78 The concept of "enabling disclosure" was explained by Lord Hoffmann in Merrell Dow, which concerned the question of whether the invention, a particular acid metabolite, had been anticipated by the prior administration of the substance terfenadine to human patients, which resulted in the patients producing the acid metabolite in their livers. The fact that terfenadine was metabolised in the liver to produce the claimed acid metabolite was only known after further research had been carried out by the patentee to understand how terfenadine works. As Lord Hoffmann explained (at 7), the patients took terfenadine capsules "without knowing their composition and produced within themselves a substance which was not then readily capable of being identified but is now known to have been the acid metabolite".
79 Lord Hoffmann distinguished the position with respect to anticipation as it would have been under the Patents Act 1949 (UK) (the 1949 Act) with the position under the 1977 Act. His Lordship said (at 8) that, under the 1949 Act, uninformative use of the kind described would have invalidated the patent for the acid metabolite because the invention would not have been new under s 32(1)(e) thereof: Bristol-Myers Co v Beecham Group Ltd [1974] AC 646; [1975] RPC 127. However, the position under the 1977 Act was different. With respect to art 54 of the European Patent Convention (on which s 2 of the 1977 Act is based), his Lordship said (at 8-9):
This provision makes it clear that to be part of the state of the art, the invention must have been made available to the public. An invention is a piece of information. Making matter available to the public within the meaning of s 2(2) therefore requires the communication of information. The use of a product makes the invention part of the state of the art only so far as that use makes available the necessary information.
The 1977 Act therefore introduced a substantial qualification into the old principle that a patent cannot be used to stop someone doing what he has done before. If the previous use was secret or uninformative, then … it can. Likewise, a gap has opened between the tests for infringement and anticipation. Acts done secretly or without knowledge of the relevant facts, which would amount to infringements after the grant of the patent, will not count as anticipations before.
(Emphasis in original.)
80 In Jupiters, the Full Court said (at [139]):
The structure of the Act and the language of both s 18 and the definition of "prior art base" are sufficiently similar to the relevant parts of [the 1977 Act] to make guidance from authorities upon those provisions helpful, notwithstanding the effect of European jurisprudence and the need for caution as a result. Australian authorities not dealing with the 1990 Act also need to be considered with caution. It should be accepted that s 18(1)(b)(i) and (1A)(b)(i) are concerned with disclosure by conduct, not anticipation by conduct as such. It is useful to examine how different factual situations involving alleged third party disclosure have been dealt with in some the recent English cases.
81 Section 18(1)(b)(i) of the Act provides that an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, is novel when compared with the prior art base as it existed before the priority date of the claim. The corresponding provision for an innovation patent is s 18(1A)(b)(i).
82 The definition of "prior art base" is, relevantly:
prior art base means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) …
(ii) information made publicly available through doing an act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a) …
83 After considering this background, the Full Court (at [144]) posed the following question: What information was given by the use of the [ActivData II+] system at the casinos as to the nature of the invention? It can be seen that, by posing the question in that form, the Full Court was seeking to determine, as a matter of fact, what information had been given by the act or acts relied upon as amounting to an anticipation of the invention. This was an application of the notion of "enabling disclosure", as explained in Merrell Dow.
84 In answering that question, the Full Court noted that mere observation of the ActivData II+ system in operation by the person skilled in the art would not disclose its features so as to anticipate the invention as claimed. Further, the Full Court was not satisfied that the evidence established that Jupiters had otherwise disclosed the essential features of its ActivData II+ system to personnel of its own customers for the system or, it would seem, to any other person.
85 The same question arose in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20. There the question was whether the invention (an expandable framework structure) was anticipated by the use of a collapsible canopy (referred to as "the original" canopy) at various sporting (motocross) events by a Mr McKinnon. The Full Court (at [125]) posed a similar question to the question posed in Jupiters: What information was given by the display of the original at the motocross events as to the nature of the invention?
86 In answering that question, the Full Court examined Mr McKinnon's evidence which, at various stages of the hearing, had varied. At [143] the Full Court said:
There remained intact Mr McKinnon's evidence that:
• he erected the original in the pits at one or two race meetings in 1987;
• other competitors, race organisers and officials and members of the public had access to the pits;
• people would come over and look at his canopy;
• people would look in detail at the way in which it was structured and put together;
• people were "intrigued" by it;
• people asked to borrow it;
• people urged him to manufacture and sell it; and
• he "showed" it to people.
87 The Full Court said (at [144]):
In our respectful opinion, the only correct conclusion on this evidence is that information disclosing the nature of the invention was publicly available before the priority date so as to deprive the invention of novelty.
88 In that connection, the Full Court noted (at [146]) that it had not been suggested that simple visual inspection of the original canopy (meaning the original canopy as used at the motocross events by Mr McKinnon) was not an adequate means of giving the person skilled in the art an understanding of the invention. Rather, a different submission was advanced, namely that the disclosure was insufficient in duration and circumstance to constitute "availability" for the purposes of s 18(1) of the Act.
89 The Full Court rejected that submission, saying (at [148]):
[148] The evidence that we have already referred to at [143] above amply answers the respondents' "de minimis" submission. The primary judge's findings with respect to Mr McKinnon's evidence and his "retreat" as to public use at the races did not expressly or implicitly reject that evidence and, in particular, the evidence that people saw the original, sought to borrow it and urged him to manufacture it. Her Honour found that Mr McKinnon was conscious of people taking his ideas, in the context of a general public exposure … but that does not alter his evidence. As the appellants point out, it has not been suggested that the people in question were bound by any obligation of confidentiality, or were other than members of the public. There is no basis for a finding that the public use was non-enabling or as to why it should be held to be relevantly de minimis.
90 In my view, a similar question to the questions posed in Jupiters and Insta Image arises in the present case: What information as to the nature of the invention was given by showing the RolaShades product to potential customers?
91 The RolaShades product is part of a mechanism for controlling the extension and retraction of a blind. The primary judge (Damorgold Pty Ltd v JAI Products Pty Ltd (2014) 105 IPR 60; [2014] FCA 150) found that its components displayed the essential features of the invention claimed in claims 1-17, 19-22, 24-26, 29 and 30 of the patent (the relevant claims). However, a number of these components cannot be discerned in the assembled form of the product. These include: the drive means; the separate drive member and driven member; the way the drive and driven members engage each other by a rib inside a slot; the helical springs and their "fingers"; how those springs engage via the "fingers" with the projecting cylindrical barrel at the longitudinal edges; the type of connecting means between the fixed support shaft and support rod; and the overall arrangement of those (and other) features to work together. It is not in doubt that these components and their working relationships can only be seen if the product is disassembled.
92 The primary judge found (at [149]) that there was no evidence that the RolaShades product had been sold by the respondent or that samples of it had been provided to any person to retain. However, Mr Horner (a director of the respondent) had demonstrated the RolaShades product to customers for the purpose of selling it to them. The primary judge said (at [150]):
[150] The real issue in this proceeding is whether based upon the circumstances in which it occurred, the showing of the RolaShades product in Australia to some potential customers with a view to making such available to sale, amounted to making publicly available the RolaShades product.
93 His Honour then made the following important findings at [151]-[158]:
[151] The RolaShades product was mounted in blinds on display at the showroom in [Artarmon], but was also shown at customers' places of business. As Mr Horner said, the part he showed customers to explain how the product worked was similar to (if not) exhibit R6. Whilst it is not possible to ascertain all the internal componentry of the JAI spring assist without pulling it apart to understand its internal workings, this could be readily done without any damage to any part of the mechanisms. Re-assembly was easy. Whilst undoubtedly Mr Horner did not want any potential customer to "reverse engineer" the mechanism, he was offering or making available for sale the RolaShades product. I accept that he did not want any of the samples to be taken by the customers. In fact, all the samples were retained by Mr Horner and none was left with the customers. This was not to be unexpected, as Mr Horner needed the samples to show other potential customers. Nevertheless, a customer would have a general idea of the mechanism employed in the RolaShades product from observing the RolaShades product itself, specifically exhibit R6.
[152] Further, and significantly, in view of Mr Horner's commercial interest in selling the blinds, if asked by a potential customer, I find that he would have readily pulled apart the RolaShades product to demonstrate exactly how it worked. This could have been readily achieved, and re-assembly was simple. Mr Hunter dismantled Exhibit R6 with no difficulty.
[153] It is important to appreciate that the potential customers of Mr Horner were entities who made blinds, and who had an interest in the working of the new product, described by Mr Horner as "a very unique product back in the day". The RolaShades product was offered for sale in the 1996 catalogue, and if sold, would not have been subject to any restrictions on its use. Mr Horner, when showing his potential customers the samples, would appreciate that upon sale the product was capable of reverse engineering.
[154] In my view, the potential customers of Mr Horner would have been free to dis-assemble exhibit R6, and would have been interested in looking at its mechanical workings. The acts of Mr Horner in displaying the RolaShades product to various customers, with a view to sale, was making the RolaShades product publicly available. There was a means for any customer to inspect the RolaShades product. The customers had an incentive to inspect and Mr Horner had an incentive to allow the customers to do so. Each customer had the opportunity to handle, view, and test the RolaShades product. An examination of the component features would have been easy, and would have revealed all the relevant integers of the claimed invention. Such an examination would have readily enabled a person skilled in the art to put the claimed invention into practice.
[155] It is clear from the expert evidence of both Mr Hunter and Dr Field that the workings of the RolaShades product (including its use in a blind control mechanism) can be discerned from an inspection once dis-assembled. The person skilled in the art so inspecting the RolaShades product would observe sufficient to enable them to comprehend the complete invention. No further experimentation was required.
[156] Further, the person skilled in the art would readily comprehend that the RolaShades product would be combined with the other well known roller blind components, including a chain winder mechanism and a blind cylinder.
[157] It does not matter that only a few, or perhaps only one, potential customer was approached and had the opportunity to examine the RolaShades product. It does not matter that the RolaShades product was not actually dis-assembled. Each potential customer, in my view, had the opportunity of a complete examination of the internal componentry of the RolaShades product. There was no restriction placed upon any potential customer as to what he or she would do in making use of the information so obtained from an examination of the internal componentry.
[158] It is of no importance that no actual sale took place. The circumstances described above constitute sufficient conduct of making the RolaShades product publicly available in Australia. That conduct of displaying and offering for sale the RolaShades product (in the circumstances described) made available the necessary information to find anticipation.
94 On the basis that the RolaShades product possesses the essential features of the invention claimed in the relevant claims, but that all such features can only be discerned by disassembling the product, it is my respectful view that the above findings of fact can lead to only one legal conclusion, namely that, by showing the RolaShades product to customers in its assembled form, the features that could be discerned only upon disassembly of the product were not made publicly available. It follows that merely showing the assembled product in the way found, even for the purposes of soliciting sales, could not anticipate the invention claimed in the relevant claims.
95 The primary judge placed determinative significance on the fact that potential customers had the opportunity of a complete examination of the internal componentry of the RolaShades product and could have disassembled the product had they wanted to do so in order to carry out such an examination. Those are, undoubtedly, important findings. But the evidence went further and enabled the primary judge to conclude that, in fact, no potential customer disassembled the product and no such complete examination took place. In other words, there can be no doubt that the features of the RolaShades product that could only be discerned upon disassembly of the product were not disclosed to customers. Thus, in my view, the evidence positively established that all the essential features of the invention as claimed were not disclosed (i.e. were not made publicly available) by the acts relied upon.
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.
97 In my respectful view, the primary judge erred by not observing this distinction. This is illustrated by the question posed by his Honour at [150] of the reasons, which is directed to public availability of the RolaShades product; his Honour's statement at [154] of the reasons that, by displaying the RolaShades product, Mr Horner was making it publicly available; and his Honour's observations at [158], which appear to equate public availability of the RolaShades product with making publicly available the essential features of the invention claimed in the relevant claims: see [92]-[93] above. It follows, in my view, that the primary judge applied an incorrect legal test or standard to the facts as he found them to be.
98 My conclusion is based on the special - indeed, unusual - facts of this case. I wish to stress that nothing I have said should be taken as dealing with the position where, unlike here, a sale of the product has been made or a sample of the product has been given to and retained by a customer. Such cases raise different considerations, which do not fall for determination in the present case.
I certify that the preceding twenty-eight (28) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates.