Glaverbel SA v British Coal Corporation

Federal Court of Australia|1994-12-02|Before: Gummow J

REASONS FOR JUDGMENT This proceeding concerns the infringement and validity of patents for inventions which are put to use in the building industry, particularly in South Australia. They relate to devices used in the construction of building foundations by

It is appropriate first to say something of the conditions in Adelaide and surrounding areas which present a particular problem for building construction. Active or expansive soil reacts to changes in moisture content by swelling or _ shrinking, whereas stable soil undergoes negligible movements under load or by reason of changes in moisture content. Stable soils include rock and compact sands

and silts; reactive soils are generally clay. The movements

-2- in reactive soils as a result of changes in moisture content may be so significant as to cause damage to buildings. The most common soil type found in Adelaide is clay soil of medium to high reactivity, which undergoes shrinkage and swelling movements. This reactivity has a more significant effect on housing in Adelaide, in comparison to most parts of Australia, due primarily to the combination of reactive clays and the arid climate. The arid climate results in significant variations of soil moisture due to long hot dry summers and

The waffle pod footing to which reference will be made hereafter was developed in an attempt to provide an economical solution to the problem of differential movements of reactive clay soils detrimentally affecting footing systems and, as a

Some reference should be made to certain technical terms. The "foundation" 1s the soil that supports the "footing", namely that part of the structure which supports the walls and floors and transmits the load to the ground; in types of construction where the footing beams and floors are structurally integral, the footing can include the floor. A "footing beam" 1s that part of the footing which resists the forces induced by the mass of the building and by soil movement; a "slab" is a thin flat reinforced concrete element which may be in contact with, or suspended above, the ground.

A "raft slab" is a footing system where the beams and slab are

3 - integral, both being in contact with the ground and acting compositively; typically there are two to four steel reinforcing bars in the top and in the bottom. A "waffle slab" is a slab of concrete with integral concrete beams in grid formation on its underside, where the beams are relatively close together; typically, such slabs are formed by placing void formers, of various types, on a level supporting

The evidence indicates that the waffle slab has been well known since the turn of the century and has been commonly used as floors in buildings; what was said to be new was the development by Mr Peter Koukourou of the use of the waffle Slab as a raft for the footings for a building. Before turning to consider the advances claimed by Mr Koukourou, I should refer to the patents of the second respondent ("Mr

Mr Leonardis was the proprietor of petty patent No. 562334 for an invention entitled "IMPROVEMENTS RELATING TO FOUNDATION FORM WORK" ("the Petty Patent"). The Petty Patent was granted under the Patents Act 1952 ("the 1952 Act"), with the priority date of 23 October 1986. It was sealed on 23 June 1987 and expired, after the institution of the present proceeding, on 23 October 1992. The Patents Act 1990 ("the 1990 Act") commenced on 30 April 1991. The second respondent

alleges infringement by the applicant during the currency of

-4- the term of the Petty Patent, but after 30 April 1991. The

The second respondent also is registered proprietor of standard patent No. 591816 for an invention entitled "IMPROVEMENTS RELATING TO BUILDING FOUNDATION FORM WORK" ("the Patent"). It was upon this, rather than the Petty Patent, that the trial principally turned. Application for the Patent had been made whilst the 1952 Act was in force but the Patent was sealed on 14 September 1991. This was after the coming into force of the 1990 Act. The result of the operation of s. 234 of the 1990 Act is that no claim of the Patent is invalid

on any ground that would not have been available under the

1952 Act. The applicant ("Sartas") has manufactured and sold devices ("the Sartas spacers") which Mr Leonardis alleges

infringed the claim of the Petty Patent and continue to infringe certain claims of the Patent. Examples are Exs. Dl and D2. These were identified in evidence respectively as the

It is necessary to say something as to the relationship between the respondents. The first respondent ("Koukourou") is proprietor of standard patent No. 584769 ("the Koukourou Patent"), in respect of an invention by Mr Peter Koukourou entitled "BUILDING FOUNDATION". The invention includes a

method of forming a building foundation using what in Claim 1

-5- is described as "a plurality of box-like hollow members in rows on the levelled ground .. .". In practice, these members are constructed of cardboard, although polystyrene foam has been proposed. The problem with which the Koukourou Patent seeks to deal are described in the following passages

"The usual practice for construction of foundations is to excavate a plurality of trenches, position reinforcing rods and reinforcing mesh in and over the trenches, and pour concrete to envelope [{Sic] the reinforcing rods, to be contained within the trenches, and to overlay the intermediate areas. Not only is this arrangement expensive, but when unstable soil is required to support the foundation there is a high degree of probability of the foundations cracking if the effective volume of soil varies upon variation of moisture content.

In this invention, the method of forming a building foundation comprises levelling the supporting ground, forming peripheral shuttering walls, positioning a plurality of box-like hollow members in rows on the velle

concrete spacers on the ground between the hollow members to separate the hollow members

into rows, laying lower reinforcing rods on the said spacers and between the hollow members, in a plurality of rows which intersect at right angles to each other, placing reinforcing bar spacers on the hollow members, and positioning a mesh of upper reinforcing rods on _ the spacers, and pouring concrete to envelope [sic] said concrete spacers reinforcing bar spacers, reinforcing rods, mesh, and hollow members and thereby form a foundation with a reinforced slab and a plurality of intersecting reinforced beams."

The reference to spacers made of concrete is significant for

consideration of the Patent of Mr Leonardis, which is in suit.

-6- It deals with spacers which are more closely crafted for use

In the complete specification of the Koukourou Patent,

"formed from a stiff waterproof cardboard containing internal baffles for strength, or a rigid foamed polymeric material, either of which has a characteristic of providing good heat insulating properties, and is sufficiently rigid to support fluent concrete when poured over the reinforcing members and the hollow members."

The application date for the Koukourou Patent was 24 December 1986. The application date for the Patent in suit is 23 October 1986, when provisional specification No. PH8650 was filed. This was followed on 16 January 1987 by a second provisional specification (No. PH9915) and on 15 May 1987 by a

Each respondent opposed the application of the other. The opposition to the application for the Koukourou Patent was withdrawn by Mr Leonardis after an application for amendment under s. 77 of the 1952 Act was made by Koukourou. The opposition by Koukourou by the Leonardis application was then withdrawn on 20 August 1991. Both patents proceeded to

The first and second provisional applications filed 23

October 1986 and 16 January 1987 may be relied on, in

-7- combination, to provide the priority date of the claims of the Patent. The circumstances in which this may be done are set down in reg. 3.12 (1) of the Patents Regulations ("the Regulations") in force under the 1990 Act. This states that subject to other provisions not immediately material, the priority date of a claim of a specification is the earliest of the date of filing the specification and, if the claim is "fairly based" on matter disclosed in "1 or more relevant applications", the date of making the relevant application in which the matter was first disclosed. A "relevant application" includes a provisional application which is associated with a complete application (reg. 3.12 (2) (a)). In address, counsel for Mr lLeonardis conceded that' the earliest priority date his client properly could claim was 16 January 1987, the date of the second provisional application; 23 October 1986 was not appropriate because of the need for fair basing to rely on the combination of the first and second

It should be noted that by 14 March 1987 there had been sales of spacers by Mr Leonardis. The evidence of Mr Graham Beales establishes this. It is accepted that the result is that by 14 March 1987 the invention now claimed in the Patent was no longer novel. The invention had been published by the patentee himself; spacers had been sold and applied in building foundation form work as claimed in the Patent. Therefore, it is essential for Mr Leonardis to make good a

claim to a priority date before March 1987, namely 16 January

-g- 1987. Hence the importance of "fair basing", and reliance upon the first and second provisional applications. The third, filed 15 May 1987, came too late to be of assistance

The complete specification for the Patent alludes to the invention claimed in the Koukourou Patent, and then goes on to deal with the advance claimed in respect of spacers. The

"More recently a cardboard box has_ been proposed which has considerably reduced the potential cost of this part but there has been a major problem in respect of holding such cardboard boxes in relation one to the other in such a way that the boxes will retain with sufficient integrity their relative position especially during the pouring of concrete, and secondly such that any means that might be used to hold the boxes in a relative position do not of themselves unreasonably reduce the integrity of any foundation that is subsequently poured.

The problem in particular arises because of the inherent constructional characteristics of a cardboard box and the extremely high forces that result when concrete is being poured in a channel on one side of a box where there is no equivalent material on the opposite side of the box.

After considerable investigation I have found that cardboard boxes of the type being discussed can be sufficiently held against such lateral pressures if there are means which engage against respective sides in the vicinity of the corner of the box.

This is achieved by providing a spacer therefore which engaged against both sides of a corner of a first box, and at the same time against both sides of a corner of a second box adjacent the first, where the two boxes define therebetween a channel shape, and accordingly

provide substantive resistance to such distortional pressures."

Later it is said that the spacers may be made of plastic or other compatible materials such as steel sheet which can be

On 25 September 1991, Mr Leonardis and Koukourou & Partners Investments Pty Limited ("Koukourou Investments") registered the business name ""Podlock Distributors". On 1 October 1991, (that is to say, since a date after the commencement of the 1990 Act), these parties, trading as Podlock Distributors, began to distribute and sell a system known in the building trade in South Australia as the Podlock foundation form work system. It was suggested from the bar table that by the time of the trial, this business association had ceased. The evidence includes a promotional video (Ex. 13) showing the employment of this system at a particular building site. The video was made in October 1993 and runs for about 6 minutes. It involves the use of a plurality of

It is appropriate at this stage to refer to bar chairs in a little more detail. In any concrete slab construction, it is usual to embed steel mesh within the slab to reinforce it. The plastic "bar chairs" are employed to support the mesh and are usually located at the intersection of the rods or wires of the mesh. Examples of bar chairs in operation are

illustrated as Item 15 in Figures 3 and 4 of the drawings to

10 - the Koukourou Patent. A copy of these is Schedule 1 to these

Sartas instituted this proceeding under s. 128 of the 1990 Act in response to what it maintains were unjustified threats by Koukourou and Mr Leonardis to builders using the Sartas spacers. Sartas alleges that threats based upon alleged infringements of the Petty Patent and the Patent were unjustified because the Sartas spacers do not infringe, and,

in any event, the claims of both patents are invalid.

On 30 December 1992, the application was dismissed as against Koukourou, with no order as to costs. What remains is the litigation between Sartas and Mr Leonardis. In that litigation, the live issues are (1) a cross-claim by Mr Leonardis under s. 120 of the 1990 Act asserting infringement of the Petty Patent and of claims 1-5, 8, 9 and 12-17 of the Patent, and (2) a cross-claim by Sartas under s. 121 asserting invalidity of the Petty Patent and the Patent on the grounds ef (a) prior publication and lack of novelty, (b) obviousness, (¢) non-compliance with the requirements of s. 40 of the 1990 Act, including assertions that the claims are not clear and succinct and are not fairly based, (d) false suggestion, and (e) double claiming. It is also asserted, though the grounds for this fluctuated in the course of the trial, that Mr Leonardis is not entitled to the Patent, and that there is no

-11- At the trial, most attention was directed to issues of

infringement, fair basing, novelty and obviousness.

The construction of the Patent plainly 1s a matter of

primary importance in the litigation. In Glaverbe Av

British Coal Corporation [1994] R.P.C. 443 at 485-486, Mummery

J. set out a number of what his Lordship said were uncontroversial propositions as to construction. Some of these are certainly applicable here, as being in accordance with the development of the law in Australia. From what was said by his Lordship useful guidance, in particular, is to be derived from the following propositions. Some of them were applied in rulings on evidence in the course of the trial.

(1) "It is for the court, not for any witness, however expert, to decide the question of construction in accordance with the Meaning of the language used. Evidence can be given by experts to enlighten the judge on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning."

[C£ Agfa~Gevaert Ltd v Collector of Customs (1994) 124 A.L.R. 645.]

(2) "The specification should be construed without reference to the prior documents relied on as a ground for invalidity with a view to avoiding the effect of the prior documents. A fortiori, documents Subsequent to the complete specification

(3) "{I]t is not permissible to construe the claims by reference to the subjective thoughts, " intentions, purposes and

opinions of the patentee or his witnesses or by reference to his actions before or after the grant of the patent."

(4) "In reading the specification as a whole the different functions of the claim and the rest of the specification should be observed. The claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent: and 'what is not claimed is disclaimed'. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that. Although the claims are construed in the context of the specification as a whole, it is not permissible to restrict, expand or amend the clear language of a claim by reference to a limitation or gloss in the language used in the earlier part of the specification, but not repeated in the claim itself. It is legitimate, however, to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of the technical

terms and resolve ambiguities in the construction of the claims."

The passage which I have emphasised is better understood by reference to the remarks of Taylor J. in Martin v Scribal Pty

Ltd (1954) 92 C.L.R. 17 at 97 (affd. 95 C.L.R. 213 (P.C.)):

"Plain language must be given its' plain meaning, and clear words in a claim must not be tortured into an unnatural meaning by importing passages from the body of the specification

Musical Industries Ltd v Lissen Ltd (1939) 56 R.P.C. at 41, 1. 34). The claims must also be

See also Melbourne v Terry Fluid Controls Pty Ltd [1994]

A.I.P.C. 91-058 at 38,214; CCOM Pty Ltd v Jiejing Pty Ltd

infringer's acts. (So said Greene L.J. in RCA P opho Ltd v Gaumont British Picture Corporation (1936) 53 R.P.C. at 202, 1. 16).

On the other hand, it is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work - this is an application of the old doctrine ut res magis valeat quam pereat - and is illustrated in Nobel's Case (1894) 11 R.P.C. at 524; and, where the language of a claim is obscure or doubtful, the doubt may sometimes be resolved by referring to words in the body of the document to explain it. This is known as the dictionary principle. (See Lord Haldane's speech in British Thomson-Houston Coy Ltd v

Corona Lamp Works Ltd (1921) 39 R.P.C. at 67,

44)."

I turn to set out the text of the relevant claims in the

Claim 9 which is then relied upon in these applications.

A building foundation form work arrangement in which a plurality of boxes are located on a supporting level surface and are kept apart to leave channels between each side of each of the boxes by spacers within the channels between the boxes, at least one spacer engaging against both sides adjoining a corner of a first box, and at the same time against both sides adjoining a corner of a second box adjacent the first box.

A building foundation form work arrangement as in claim 1 further characterised in that the Spacer engages against each of the two sides

adjoining each of the corners of four adjacent boxes with corners at a common location.

A building foundation form work arrangement as in either of the preceding claims further characterised in that each of the boxes has vertical reinforcing partitions within each of the boxes.

A building foundation form work arrangement as in any preceding claim in which the boxes are each of cardboard.

A building foundation form work arrangement as in any one of preceding claims 1 or 2 in which each of the boxes has four sides, a top and a bottom, is comprised of cardboard and has extending in crossing interlocking relationship cardboard planar strips acting as vertical reinforcing partitions extending from a bottom of a respective box to a top of a respective box, and each from a first side to an opposite side of the box.

A building foundation form work arrangement as in preceding claim 2, further characterised in that the spacer is of a cruciform shape in plan and includes for each of eight sides of the respective boxes, an outermost engaging surface that is planar.

A building foundation form work arrangement as in any one of the preceding claims further characterised in that the spacer' includes outermost planar surfaces engaging against the sides of respective adjacent boxes, and frame members holding such outermost engaging surfaces which frame members have a lowermost edge which is substantially above the supporting level surface.

A building foundation form work arrangement as in any one of the preceding claims in which the spacer includes means to support and locate a reinforcement rod within a channel.

A building foundation form work arrangement as in the last preceding claim wherein the means of providing support for a reinforcement rod includes a portion of the spacer that has an upwardly open slot.

A building foundation form work arrangement as in any one of the preceding claims further characterised in that there is at least one box located above another box and there is a

joining spacer engaging against adjacent sides of a corner of a first of the boxes where there is a lowermost box, and against adjacent sides of the corner of a second of the boxes which is above the first of the boxes and wherein the said corner is above the corner of the first

A building foundation form work arrangement as in the last preceding claim wherein the joining spacer includes two spikes a first engaging within a first of the boxes and a second within @ second of the boxes so as to hold thereby engaging surfaces against the respective sides of the respective boxes.

A spacer for a building foundation form work arrangement wherein a plurality of boxes are located in spaced apart relationship to define therebetween channels, the spacer including outermost engaging surfaces adapted to engage against both sides adjoining a corner of a first box, and at the same time against both corners {sides} adjoining a corner of at least a second box adjacent the first box, the spacer being characterised in that each of the outer most engaging surfaces is held by a frame member extending between at least one other of the outermost engaging surfaces each of the frame members having a lowermost surface which is substantially above a lowermost edge of each of the engaging surfaces such that concrete can extend continuously beneath each of the said frame members.

A spacer as in the last preceding claim further characterised in that the spacer is of cruciform shape in plan having thereby eight engaging outermost surfaces adapted to engage respectively against both sides adjoining a corner of each of four adjacent boxes with the corners at a common location.

A spacer as in the last preceding claim further characterised in that there is included an upwardly extending medially positioned part having an upwardly open U-shape slot therein adapted to support and hold a reinforcing rod

A spacer as in any one of the last three preceding claims further characterised in that the spacer is moulded from plastics material.

A method of preparing a form work arrangement for the pouring of a foundation for a building

which comprises the steps of locating within a boxed area and over a substantially level area of supporting surface, a plurality of boxes each of which are kept apart one from the other to leave channels between the respective sides of the boxes, locating within the respective channel shapes a spacer such that the spacer engages against both sides adjoining a corner of a first box, and at the same time against both sides adjoining a corner of a second box adjacent the first box, and effecting support within the channels, on the spacer, of a reinforcement rod.

A method of preparing a form work arrangement as in the last preceding claim further characterised in that each of the boxes are comprised of cardboard, and the spacer is such that it engages against both sides adjoining a corner of each of four boxes with the corners at a common location.

A building foundation form work arrangement Substantially as described in the specification

with reference to and as illustrated by the accompanying drawings."

The drawings are comprised in figures 1 - 12. Claims 19, 20 and 21 are for a spacer "substantially as described in the specification with reference to and as illustrated by" figures 3, 4 and 6 respectively. Figure 3 is for a four-way spacer,

figure 4 a three-way spacer, and figure 6 a one-way spacer.

Infringement - Claims 12 - 1 As I have indicated, infringement is alleged of claims 1,

I turn first to consider claim 12 and the dependent claims 13, 14 and 15. One preliminary point should be mentioned. It concerns the 5lst word in claim 12. This reads

"corners". If the claim is read in this form it is clear that

~17- there is no infringement. At the trial, in the end it was accepted by ali counsel that "corners" should read "sides". If the significance of the discrepancy concerned no more than the parties presently before the Court, then there might be scope for application of a principle that no formal amendment was necessary because the true meaning was apparent as a matter of construction; cf Fitzgerald v Masters (1956) 95 C.L.R. 420 at 426-427, Watson v Phipps (1985) 60 A.L.J.R. 1 at

But, of course, the specification operates to confer rights in rem and the legislation makes specific provision for amendment. Further, I was told that infringement litigation concerning the Patent is on foot in another court against the parties identified as Theta Developments Pty Limited,

Reinforcement Bar Spacer Pty Limited and Podfix Pty Limited.

Accordingly, on the last day of the trial, 2 September 1994, I gave directions for the advertisement of a motion seeking amendment of claim 12. The notice of motion will be made returnable no earlier than 14 days after delivery of these reasons for judgment. In the meantime, it was accepted that I should proceed to determine this case on the footing

that claim 12 uses the term "sides" rather than "corners".

Claim 12 is a claim for an object identified as "a spacer" which has certain characteristics. First, it is

"for", that is to say adapted for use in, a _ building

18 - foundation form work arrangement in which a plurality of boxes is so located and spaced apart as to define channels between

Next, the spacer has "outermost engaging surfaces". These are adapted to engage at the same time against both sides "adjoining" a corner of a first box and again both sides "adjoining" a corner of at least a second box "adjacent" to the first box. The term "adjacent", in contrast to "adjoin", serves to emphasise that whilst the boxes are part of the one form work arrangement, the spacer serves to keep a channel

Each of the outermost engaging surfaces of the spacer is "held by a frame member" which extends between it and at least

one of the other outermost engaging surfaces of the spacer.

Each frame member is characterised by the relationship between (a) its lowermost surface, and (b) "a lowermost surface edge" of each engaging surface of the spacer. This relationship is claimed in terms of result, namely, (a) must be so substantially above (b) that concrete can "extend

The ordinary reader skilled in the art would understand that the building foundation form work was for use in the pouring of concrete for a building foundation, and that the

phrase "continuous extension" or flow of the concrete beneath

19 - the frame member was concerned with flow which resulted from the pouring of the concrete. The importance of facilitating the continuous flow of concrete in the construction of concrete beams was undisputed. What was in contention were several points of construction of claim 12 which turned upon the particular form of words used in the claim. To these I

The outermost engaging services must be adapted "to engage against both sides adjoining a corner of a first box" and also, at the same time, to engage "against both sides

adjoining a corner of at least a second box adjacent to the

first box". Further, each of the outermost engaging surfaces 1s "held" by a frame member. One issue concerns, in this context, the meaning of "engage against". That which are

subjected to the engagement are certain sides "adjoining", in

One meaning of "engage" is to interlock, as where one piece of machinery fits into a corresponding part, such as a cog wheel. One surface may also engage against another surface, such as that adjoining a corner of a box, if it bears upon it and supports it. One meaning of "engage" given in "Webster's Third International Dictionary" is to make an architectural member fast; another is to cause parts to come

In the present case, claim 12 speaks of the surfaces of a spacer engaging against sides adjoining corners of boxes. This suggests that the engagement is achieved by something less than the interlocking involved with one portion of machinery engaging another, as a cog wheel. In my view, "engage" is used more in the senses discussed above with

It is necessary now to turn to the alleged infringement. Schedule 2 to these reasons is a diagrammatic representation on reduced scale of the four-way Sartas spacer, Ex. D2. Exhibit Dl has three rather than four elements radiating from the central circular portion. Nothing for present purposes turns upon that difference in the two varieties of the Sartas spacer, save that it is conceded that the three-way spacer does not infringe claim 13. Mr Leonardis alleges infringement, within the terms of claim 12, asserting that the outermost engaging surfaces 7 and 8 are adapted to engage against both sides adjoining a corner of a first box, and that the surfaces 4 and 6 are likewise adapted to engage the sides adjoining a corner of a second box. This would be true also respectively of items found in corresponding places on the other projections, with the result that the spacer would engage with, and keep separate, the corners of four adjacent boxes. This would define a channel between them at their cross-roads,

It should be noted that the claim does not require the surface of the spacer to engage the corners themselves of the boxes. Counsel for Sartas submitted that there could be no infringement because the spacer did not, as she put it, engage

"yight up to" and "directly adjoining" the corners.

However, the claim speaks of surfaces of the spacer which are adapted to engage "against" certain "sides" of boxes. Those sides are identified as the sides "adjoining" the corners. In a loose sense, any side of a box will adjoin corners of the box. However, what is involved in Claim 12 is an engagement against sides which "adjoin" a corner, in the sense that the engagement occurs at an area on the side of the box which lies close by the corner. The ordinary skilled addressee of claim 12 would, on the evidence, perceive that each of the plurality of boxes spoken of was an object, in comparison to the size of Ex. D2, of significant proportions. Whether the engagement occurs against the side of such a box lying close to a corner is a matter for assessment in each case. My conclusion in the present case is that the engagement which would occur using Ex. D2 would fall within

In reaching this conclusion as to this aspect of the construction of claim 12, I have had regard to, though I have derived no decisive assistance from, the contextual evidence provided by the various experts including Mr J. Goldfinch, Mr

22 - I turn to the next point concerning construction and

The requirement of claim 12 that the relationship between the lowermost surface of the frame members and the lowermost edge of each engaging surface of the spacer be such that the first is so substantially above the second that concrete can flow continuously beneath the frame member, plainly 15 an essential integer. Sartas submits, and I accept, that this integer is lacking in the Sartas spacers and for this reason there is no infringement of claim 12, nor of the subsidiary

The relevant portion of claim 12 uses the expression "frame member". A "frame" may have the meaning of a structure which serves as the underlying or basic support, here holding, and thus separating, the engaging surfaces of the spacer. A "member" may be any constituent portion of a more complex structure, in this case the spacer. These senses of the terms "frame" and "member" have been taken from the second edition of "The Oxford English Dictionary". Given these meanings, which have common elements, the composite term "frame member" as used in claim 12 indicates a portion of the spacer which serves as a basic or underlying support to hold and thus separate the engaging surfaces of the spacer; by this means the engaging surfaces are kept in their relative respective

There may be other elements in the Sartas spacers which are frame members in an unspecific sense. However, claim 12 is concerned with those frame members which serve a particular function. This is to hold an outermost engaging surface of the spacer and to extend between it and at least one other of those surfaces. Furthermore, this frame member must bear the specified relationship to the lowermost edge of each of those

Counsel for Mr Leonardis submits that the Sartas spacers contain two frame members which, within the meaning of claim 12, hold an outermost engaging surface, and are "extending between" it and at least one other of the outermost engaging surfaces. In the representation of the Sartas spacer Ex. D2, these are marked 1 and 2. He contends that the upper frame member 1 has a lowermost surface 9 which 1s substantially

above a lowermost edge of the engaging surfaces 3 and 4.

Counsel submits that the lower of the two frame members, item 2, is an additional element not required by the claim; the necessary elements are constituted by the two vertical members which provide or hold the engaging surfaces 3 and 4 and the top member item 1; merely to add to an integer, which corresponds with the claimed integer, a further element which does not have a material effect on the way the invention works 18 to include an addition which does not result in escaping infringement. Counsel further submitted that the Court should

infer that the addition of item 2 to the structure which

24 - contains item 1 was an immaterial variation or minor variant

adopted to avoid infringement. In that regard, he referred to

authorities such as Minneso inin Manufacturin Oo. v Beiersdorf (Australia) Ltd (1980) 144 C.L.R. 253 at 286, and Prestige Group (Australia) Pty Ltd v Dart Industries Inc.

Counsel for Sartas met those submissions in several ways. First, she contended, with considerable cogency, that if one eliminated the bottom frame member 2 from Ex. D2 there would be a real question as to the efficacy of the Sartas spacer, the top frame member 1 being supported by items 3 and 4 which themselves would be connected to the central portion 10 only

Further, the relevant integer in claim 12 1s limited by relationship between the frame member and the engaging surface which produces a particular result, namely the continuous flow of concrete beneath the frame member. Any difficulties in construction are to be approached bearing in mind that desired result. What is required is that each of the outermost engaging surfaces be "held by a frame member" which extends to at least one other of those surfaces. If an engaging surface is held by more than one frame member then, consistently with claim 12, each frame member must extend in the manner claimed and have a lowermost surface with the specified relationship

to a lowermost edge of each of the engaging surfaces. In Ex.

25 - D2, item 1 has that necessary relationship but item 2 does

I accept these submissions. I accept that the term "a frame member", as used in claim 12, identifies what counsel for Sartas called the structure supporting and connecting the outermost engaging surfaces, the frame member being "substantially above" in the sense so as to achieve the result that the concrete may be poured continuously beneath the frame members. The skilled addressee would not read claim 12 as claiming an outermost engaging surface which was held by a plurality of frame members one of which did not, as to a lowermost surface, bear the necessary relationship to a lowermost edge of an engaging surface so as to _ permit attainment of the desired result. Put another way, if claim 12 were read as claiming a plurality of frame members, it would be the lowermost edge of the lower frame member which would have to be substantially above a lowermost edge of each

This is not a case of a mere addition of an element where the infringing integer already is present; nor is it a case of an immaterial variation or minor variant which the Court should infer was devised to avoid infringement. There is no

It follows that there is no infringement of the dependent

claims which are narrower because they claim further integers.

26 - These claims are 13, 14 and 15. I should, however, deal with particular submissions made by Sartas as to construction and infringement of claim 14. Claim 14 requires a further integer by specifying that (a) the spacer include an upwardly extending medially positioned part and (b) this part have an upwardly open U-shape slot to support and hold a reinforcing

Sartas accepts that item 5 in Schedule 2 may answer the description of "an upwardly open U-shape slot" which is "adapted to support and hold a reinforcing rod"; but the question is whether the frame containing item 5 is "medially positioned" in the spacer. Sartas submits that this slot, item 5, is not an element of "an upwardly extending medially positioned part" within the meaning of claim 14. Item 5 may be in the middie of the upper surface 1 of the frame. However, none of the frames containing an extension from the upper surface occupies a position in Ex. D2 which is in a

medial relationship to item 11, at the middle of the spacer.

Counsel for Sartas concedes that such a medial position is apparent in the spacer claimed in claim 19. Claim 19 was abandoned at the trial. It is for a spacer substantially described in the specification with reference to and as illustrated in figure 3 of the drawings. Figure 3 is Schedule 3 to these reasons. Item 34 is described in the body of the

27 - "There can be crossing rods and the height of the upwardly open U-shape slots both at 33 and in the centre raised portion at 34, are of sufficient height so as to indeed support in either way rods in one direction and then

second rods in a crossing direction lying above a first rod."

Be that as it may, the immediate issue turns upon the meaning in claim 14 of the phrase "medially positioned part", to identify that which is included so as further to characterise the spacer. It is this "part" which must have the U-shaped slot. Each of the four frames in the Sartas four-way spacer could be such a part, if it were "medially positioned". The frames are positioned at the extremes or limits of the spacer. They are not so located as to answer the description "medially positioned" i.e. situated so as to

be in or to pertain to the middle of the spacer, item 11.

It follows that for these further reasons there is no

Each of these claims is concerned each with what is identified as a "building foundation form work arrangement". The claimed arrangements are laid out on the ground of a construction site. The claimed arrangements use a spacer. However, the evidence indicates that the Sartas spacers are adapted for use not only in footing construction laid out on the ground of a construction site, but also in the

construction of suspended floor systems. It follows that the

28 - Sartas spacers are not such that one can say that a purchaser of them almost inevitably will use them in a _ building foundation form work arrangement as claimed, for example, in

Claim 1 is the widest of the arrangement claims. It characterises the arrangement as involving a plurality of boxes located on a supporting level surface and kept apart by spacers so as to leave channels between each side of each of the boxes; there must be at least one spacer which engages against both sides adjoining a corner of a first box and at the same time against both sides adjoining a corner of a

Mr Leonardis claims that Sartas is luiable for infringement of these arrangement claims on two bases. The

first is provided by sub-s. 13 (1) of the 1990 Act. This

"13 (1) Subject to this Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention."

This section thus discards the traditional description, used in s. 69 of the 1952 Act, of the patent monopoly as one "to

29 - Instead, the terms "to exploit" and "to authorise" are used. There is a definition of "exploit" in Schedule 1 of the

Counsel invites attention to the use in this sub-section of the term "to authorise" and to the authorities dealing with

the term "authorises" in sub-s. 36 (1) of the Copyright Act

These show that to authorise may mean to "sanction, approve, countenance" that which is done, or to purport to

grant to a third person the right to do the act of which

complaint is made: Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 A.L.R. 205 at 243.

Counsel for Mr lLeonardis refers to two pamphlets, together Ex. 11, which are apparently put out by Sartas. One bears on the title page the words "Ribbed Raft, The New, Economical Way to Build Concrete Raft Slabs", and the other "Easy Steps for Ribbed Raft Slab Construction". The pamphlets are in colour with diagrams and photographs. The first is of

I accept the submission that each brochure, by words, drawings and photographs or a combination thereof provides information for the making of building foundation form work arrangements. I further accept that the information includes the use of Sartas spacers to keep the cardboard boxes or void

formers apart, by holding them evenly in place so as to

-~ 30 - provide channels which effectively become concrete beams after

"Form work is set up on a levelled building site, termite proofed and plastic sheeting is laid out. Then the void formers are put down in a grid pattern. The void formers may be cut across their full width, or cut to accommodate any exposed plumbing before being sealed with tape. The spacer system, developed by SARTAS is used to hold the void formers evenly in place. Reinforcing rods and mesh are then fitted to SARTAS spacers and bar chairs. This system ensures that all the reinforcing materials are in the correct position,

conforming to the relevant Australian standards. The concrete is poured, and vibrated into the rib spaces between the void formers. "

On the back page of the same brochure, there appears:

"Construction takes place on cleared levelled surfaces, allowing work to continue uninterrupted in inclement weather conditions. The environment friendly system uses cardboard void formers arranged on the levelled building area in a grid pattern with reinforcing between and above the void formers. Concrete fills the spaces between and across the Ribbed Raft to form a slab over the entire area. The spaces between the void formers effectively become concrete beams on ribs resulting in a slab which is a structural element of immense strength."

Counsel for Mr Leonardis refers to the distinction drawn in copyright law, but now applicable in patent law, between

liability for infringement as a joint tortfeasor and liability

for authorisation of the acts of another: WEA International

Inc. v Hanimex Corporation Ltd (1987) 17 F.C.R. 274 at 282- 288. The submission is that whilst the supply of the

brochures with the information they contain may not establish a common design which renders Sartas a joint tortfeasor with the person or persons who later act upon that information by preparing building form work arrangements, nevertheless Sartas has, in the necessary sense, sanctioned, approved and countenanced such activity and thereby authorised it within

Counsel for Sartas responds with a number of formidable submissions. She says that there is no evidence to show that her client uses or has itself used a spacer of any type in making a building foundation form work arrangement. Nor, as she emphasises, is it suggested that Sartas constructs for others such arrangements using any type of spacer. Certainly Sartas produces and sells the Sartas spacers. It uses promotional material in marketing them, but the only detailed evidence of this is in Ex. 11. Further, counsel submits that the mere supply of instructions, with or without one component of a claimed combination, is insufficient to constitute infringement. In that regard, counsel refers to CCOM Pty Ltd v Jiejing Pty Ltd (1993) 27 I.P.R. 577 at 625-627, where the authorities were reviewed by Cooper J. Nothing said by his Honour on that subject was affected by the appeal, (1994) 122

~ 32 - Counsel for Sartas also emphasises the exiguous nature of

the evidence put forward by Mr Leonardis and to the lack of evidence of any particular instance of an act of infringement of claim 1 or related claims by the builder of any foundation form work arrangement; there has been a failure to establish the doing of an act of primary infringement consequent upon the supply by Sartas of Sartas spacers: RCA Corporation v John airfax ons Ltd [1981) 1 N.S.W.L.R. 251 at 256-258.

Finally, counsel refers to evidence which indicates that the plastic spacers are adapted for uses other than in on-ground form work arrangements. The evidence includes that of Mr Beales that since the commercial introduction of plastic spacers in 1987, he has seen them used in applications other than the construction of waffle slabs as footings for buildings; in particular, he has seen them used in the form work for construction of waffle slabs for suspended floors. It follows, counsel for Sartas submits, that this is not a case where her client can be said to be responsible for placing in the hands of another materials which by their nature must almost inevitably be used for the purpose of

infringement of claim 1 and the other arrangement claims: RCA

Corporation, supra at 259-260, CSB Songs Ltd v Amstrad Consumers Electronics Pic [1988] A.C. 1013 at 1052-1055, stralian e anufacturers Association Ltd v The

Commonwealth (1993) 176 C.L.R. 480 at 497-498. The spacers,

counsel submits, were capable of substantial use which did not

involve infringement of claim 1 or the other arrangement

33 - Each of these submissions should be accepted. It follows that the allegation of infringement based upon authorisation

Counsel for Mr Leonardis also relies upon s. 117 of the

"117 (1) If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent.

(2) A reference in subsection (1) to the use of a product by a person is a reference tos:

(a) if the product 18 capable of only one reasonable use, having regard to its nature or design - that use; or

(b) if the product is not a _ staple commercial product - any use of the product, if the supplier has reason to believe that the person would put it to that use; or

(c) in any case - the use of the product in accordance with any instructions for the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier."

The operation of s. 117 1s limited in cases where reg. 23.11 applies, but because the supply by Sartas did not pre- date the commencement of the 1990 Act on 30 April 1991,

I should refer also to the definition in Schedule 1 of "exploit", the term used in sub-s. 13 (1). The new definition draws a careful distinction between those cases where the claimed invention is a product, and those where it is a method or process. Claims 12 - 15, already considered, are for a product, namely a spacer. The claims of the Patent now under consideration are (and the claim of the Petty Patent was) for a method or process for arranging building foundation form

At a glance

Court

Decision date

Before

Source

Judgment (442 paragraphs)

Parties

Cited By (2)