Firebelt Pty Ltd v Brambles Australia Ltd

Firebelt Pty Ltd v Brambles Australia Ltd - [2002] HCA 21 - HCA 2002 case summary — Zoe

[6]

After the issue of the Petty Patent, Firebelt instituted a proceeding in the Federal Court alleging infringement of the Petty Patent by Cleanaway and the Council. The relief sought included damages and, in the alternative, an account of profits. Cleanaway and the Council denied infringement and also set up a defence under the Crown use provisions of Ch 17 Pt 2 (ss 163‑170) of the Act. The contention was that any exploitation of the Petty Patent had been for the services of the third respondent, the State of Queensland, and under an authority in writing by the State, within the meaning of s 163 of the Act.
By its cross-claim under s 138 of the Act, Cleanaway sought an order for revocation of the Petty Patent. Reliance was placed upon various grounds of alleged invalidity. There was a trial of the cross-claim before Dowsett J, in advance of a determination of the issues in the infringement action[1]. His Honour ordered that the Petty Patent be revoked and, as a consequence, dismissed the infringement action.
Dowsett J rejected a number of the grounds on which validity was attacked. In particular, his Honour decided that the invention claimed was a manner of manufacture within the meaning of s 6 of the Statute of Monopolies (par (a) of s 18(1) of the Act), and that the invention was useful (par (c)) and novel (par (b)(i)).
With respect to the reliance by Cleanaway upon various branches of s 40 of the Act, the trial judge determined that there was no substance in the allegation that the claims were not clear and succinct or fairly based on matter described in the specification[2] (s 40(3)). However, his Honour held that the best method of performing the invention had not been disclosed as required by par (a) of s 40(2).
In addition to the adverse finding as to best method, Dowsett J held that, as compared with the prior art base as it existed before the priority date of the claims in the Petty Patent, the invention claimed did not involve an inventive step within the meaning of par (b)(ii) of s 18(1). There had been a dispute as to the correct priority date under s 43 of the Act; the priority date was an important reference point for the assessment of the allegation of obviousness and lack of novelty. Dowsett J held that the priority date was 10 February 1992 and the parties now accept this.
On appeal by Firebelt, the Full Court of the Federal Court (Spender, Drummond and Mansfield JJ)[3] held that Dowsett J had erred in his finding respecting the failure to disclose the best method of performing the invention. However, their Honours affirmed the finding as to lack of inventive step or obviousness, with the result that the appeal by Firebelt failed.
The Full Court identified the contentions by Firebelt as being that (i) the trial judge had failed to appreciate the essence of a combination patent and, as a result, had failed to apply the proper test in the determination of obviousness[4] and (ii) there was insufficient evidence to enable the trial judge to conclude what was within common general knowledge in respect of the skilled or notional addressee of the specification for the Petty Patent[5]. In this Court, Firebelt, in substance, renewed those criticisms of the judgment of the trial judge and, in addition, submitted that in dismissing the appeal the Full Court had repeated those alleged errors. The Full Court had concluded[6]:

[9]

Before turning to consider the submissions upon the question of obviousness, it is convenient to say a little respecting the petty patent system. Section 39 of the Act provides for divisional applications. Where, as occurred in the present case, an application has been made for a standard patent and the specification has been accepted, an application may be made for a petty patent the claims of which fall within the scope of the claims of the accepted specification (s 39(1)(b)).
If the Commissioner of Patents accepts a "patent request" (ie an application under s 29 of the Act) and complete specification filed in respect of an application for a petty patent, then the Commissioner "must grant a petty patent by sealing a petty patent in the approved form" (s 62(1)). Whilst the term of a standard patent is 20 years from its date (s 67), the maximum term of a petty patent is for a period ending at the end of six years after its date (s 68). The attainment of that maximum term is contingent upon the grant under s 69 of an extension beyond the initial period of 12 months beginning on the date of sealing of the petty patent. There is no finding on the point but the litigation has proceeded on the assumption that the term of the Petty Patent was for six years from 23 February 1995.
A complete specification upon an application for a petty patent must end with a claim defining the invention; there must be a single independent claim and not more than two dependent claims (s 40(2)(c)). Further, the definition in Sched 1 of "prior art base", which is critical for the determination of issues respecting novelty and lack of inventive step, has a shorter geographical reach in respect to petty patents than it has with respect to standard patents; in particular, information in documents publicly available outside the "patent area" is not considered in deciding whether an invention disclosed in a petty patent does or does not involve an inventive step. The term "patent area" is defined so as to be limited to Australia, the Australian continental shelf and waters above it, and airspace above Australia and the Australian continental shelf.
The Act was amended by the Patents Amendment (Innovation Patents) Act 2000 (Cth) ("the 2000 Act"). This commenced on 24 May 2001, after the expiry of the six year term of the Petty Patent, but it provided that the Act as in force immediately before that date continued to apply to petty patents the term of which had expired[7]; further, pending legal proceedings in respect of rights under the repealed litigation were continued by s 8 of the Acts Interpretation Act 1901 (Cth).

[79]

The trial judge said that, "in the end", Firebelt had taken two approaches on the question of inventiveness. The first he described as being the suggestion that "the inventive element" might lie in a combined pick‑up system; at the priority date it not having been suggested that refuse could be collected jointly with recyclable material[36]. The second basis for resisting the attack for obviousness was said to be the assertion by Firebelt that it had gone beyond the Hickey proposal in the TWT disclosures, by identifying the need to open the lid and solving that "problem" by claiming the use of a lid‑opening device located on the loading mechanism[37].
In the course of rejecting what had been identified as these two submissions, the trial judge used expressions such as "inventive element" and "inventive step". In this Court, as it did in the Full Court, Firebelt complains that the trial judge erred in considering the question of obviousness by reference to an alleged inventive step involving the addition of particular integers, rather than a consideration of the ingenuity involved in the entire combination.
There is something to be said for the submission that both at trial and in the Full Court there are passages which, in focusing upon the incorporation of particular integers, give inadequate weight to the need for Cleanaway to establish that the selection in combination of the integers, the interaction between which is the essential requirement, was obvious at the priority date. To the extent that these shortcomings in the judicial reasoning reflected the form in which particular submissions were understood to have been made by Firebelt, then Firebelt may have brought this result upon its own head.
In this Court, Firebelt maintained that both at trial and in the Full Court it had always placed at the centre of its case the need to apply the evidence to the established principles respecting combination patents. An examination of the written and oral submissions at both levels in the Federal Court shows that reliance was placed upon established principles. That is unsurprising.
However, it is far from clear that, in meeting the exigencies of argument as the litigation progressed, submissions were not made in a form which the trial judge may have understood as representing what "in the end" were the two approaches by Firebelt on the question of inventiveness which his Honour described in the judgment. Thus, in the course of final oral submissions on the obviousness issue, the trial judge put to senior counsel for Firebelt that its difficulty was with the width of its claim and that the method of performing the invention with a lid-opening device described in the passages of the body of the complete specification accompanying figs 4 and 5 might be the only method that was not obvious. Counsel responded that, on the evidence, that conclusion was not made out and continued[38]:

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