Lockwood Security Products Pty Ltd v Doric Products Pty Ltd

WILCOX J: 1 This is an appeal against orders made by a judge of the Court (Hely J) in a patent case. The proceeding 2 The proceeding before Hely J was instituted by Doric Products Pty Ltd ("Doric"), the present respondent. Doric carries on the business of manufacturing and selling a range of door locks. The present appellant, Lockwood Security Products Pty Ltd ("Lockwood"), also manufactures and sells door locks. It is the registered proprietor of Australian Patent No 702534 ("the Patent"), this being in respect of an invention described as "key controlled latch". 3 In October 2000 patent attorneys acting on behalf of Lockwood sent letters to certain companies, including Doric, in which they asserted that one or more Doric products infringed the Patent. Doric responded by commencing a proceeding under s 128 of the Patents Act 1990 (Cth) ("the Act") claiming declarations that the threats were unjustifiable, injunctive relief and damages. By its filed Statement of Claim, Doric denied that its product infringed any valid claim of the Patent. 4 Lockwood filed a Defence and a Cross-claim in which it alleged Doric had infringed the Patent in respect of three identified products. In response, Doric pleaded the invalidity of the Patent. The Patent 5 As indicated, the invention is described in the Patent as being in respect of a "key controlled latch". The specification referred to the use of the latch on "doors" but this was done only as a matter of convenience. The specification noted that the invention had a wider application. 6 The invention arose out of a problem previously experienced in respect of doors that have a double lock; one operated from the outside of the door and the other from the inside. The situation was explained to us by Mr A Bannon SC, who appeared for Lockwood with Mr S Burley. He described three phases of development of latches. 7 Originally, latches were controlled only by keys used on the outside of the door. A person arriving home would insert the key in the outside lock, unlatch the door and enter. After the person shut the door, the latch would re-engage. Unless admitted from within, a subsequent arrival would also need to use a key, in order to gain entry. There was no keyhole on the inside handle; the door could be opened from inside the building by turning the internal handle. 8 The disadvantage of this arrangement is that an unauthorised person could open the door from inside. For example, a burglar might enter by a window, or other space too small for the removal of large objects, and then open the door from the inside in order to use the doorway for removal of goods. So as to prevent this possibility, it was thought useful to provide for a key, inserted in the inside knob, to lock the internal handle. This did not prevent movement of the bolt. A departing person could lock the door by pulling it shut behind him or her. 9 However, there was a perceived problem. An authorised person might return home, unlock the door from the outside and enter. This could be done despite the fact that the internal handle would remain locked until the key was used to unlock it from the inside. If the person failed to do this, and misplaced the key, a dangerous situation might arise. The person might be trapped in the house at a time of emergency; for example, a fire. The Patent purported to overcome this problem by proposing that the external operation of the key, or other "actuator", should simultaneously unlock the internal handle. An "actuator" is something that causes an operation to occur; for example, a handle or knob. The specification explained: "Latch assemblies for doors commonly include a turn knob or handle which is generally located at the inside of the door and which is rotated to withdraw the latch bolt into its casing. In order to improve the security of such assemblies, manufacturers have included a key operated lock which is operative to releasably hold the turn knob or handle against rotation. Such locks are typically arranged so as to be operated from the inside of the door and are not operable from the outside of the door. In particular, key operation of the latch from the outside of the door will not release the lock. That can lead to serious problems in circumstances where the door needs to be opened urgently from the inside, particularly if the lock key has been misplaced or is not conveniently accessible. It is an object of the present invention to provide a key controlled latch which can be released from a locked condition by use of a key at the outside of the door or other member with which the latch is used." 10 After setting out the elements of a typical latch assembly, the specification said: "In normal latch assemblies of the foregoing kind operation of the outer or second actuator does not affect the operation of the locking means. That locking means remains active in spite of operation of the outer actuator, and can be rendered inactive only by appropriate and deliberate operation of the locking means from the inner side of the latch assembly. It is usually the case in such prior assemblies that the locking means is key operated. That is, the locking means will generally include a key operated tumbler lock and locking mechanism connected to that lock so as to be influenced by operation of the lock. The second or outer actuator may also include a key operated tumbler lock, but in conventional assemblies of the foregoing kind operation of that lock does not influence operation of the first actuator locking means. The two locks are arranged so that one is operated from the inner side of the assembly and the other is operated from the outer side. According to the present invention, a latch assembly of the foregoing kind is characterised in that it includes lock release means which is responsive to operation of the second actuator to render the locking means inactive." 11 The specification went on to describe a particular form of "lock release means". This description is set out at para 28 below. 12 The specification described some embodiments illustrated by drawings. It concluded with 33 claims. The hearing before Hely J 13 The proceeding was heard by Hely J over ten days between 30 July 2001 and 17 October 2001. On 21 December 2001 his Honour delivered a judgment in which he dealt with each of the issues that had been raised by the parties. I will later refer to the view taken by his Honour in respect of some of those issues. For present purposes, it is enough to note Hely J's view about the issues raised before him. 14 First, his Honour dealt with infringement. He found the Doric locks infringed claims 1 to 6, 12 to 15, 20 and 30 to 32; but not claims 7, 8, 17, 22, and 23. It was not contended by Lockwood that the Doric locks infringed any of claims 9 to 11, 16, 18-19, 21, 24 to 29 or 33. 15 Hely J then turned to novelty. This issue was raised by Doric in relation to some only of the infringed claims: claims 1 to 6, 12, 31 and 32. Hely J upheld Doric's argument, with the result that each of these claims was held to be invalid on that ground. 16 Hely J considered, and rejected, arguments by Doric that the claims of the Patent were invalid by reason of obviousness. He also rejected arguments about sufficiency, utility and uncertainty. 17 However, Hely J held that claims 1 to 32 were each invalid on one of two fair basis grounds that were put to him. This finding left claim 33 as the only valid claim; and it was not contended that Doric infringed claim 33. 18 In consequence of these findings, Hely J ordered that (subject to a stay that he granted) claims 1 to 32 of the Patent be revoked. He dismissed Lockwood's cross-claim alleging infringement. Issues on the appeal 19 Lockwood's amended notice of appeal challenged three rulings of Hely J: (i) that claims 1 to 6, 12 and 31-32 were invalid for lack of novelty; (ii) that claims 1 to 32 were invalid because they were not fairly based on the specification; and (iii) that claims 7, 8, 17, 22 and 23 of the Patent were not infringed by Doric's products. 20 However, at the hearing of the appeal, counsel for Lockwood abandoned their client's challenge to Hely J's decision about lack of novelty. They said that, if Lockwood could reverse the fair basis finding affecting these claims, it would seek to amend them in such a manner as to overcome the novelty objection. 21 Counsel for Lockwood put the issue of fair basis at the forefront of their case. As they pointed out, but for his view about fair basis, Hely J would have upheld their case of infringement of claims 13, 14, 15, 20 and 30; in which case they would have been successful overall. Nonetheless, they pressed their appeal against Hely J's finding of non-infringement of claims 7, 8, 17, 22 and 23. 22 The respondent filed a notice of contention specifying eight grounds, additional to those upheld by Hely J, on the basis of which it contended the judgment ought to be affirmed. However, at the hearing, the respondent's counsel, Mr D K Catterns QC and Ms S J Goddard, pressed only two of them. They were obviousness and sufficiency. 23 One topic is central to the issues of fair basis, sufficiency and obviousness: the identity of the invention. However, before discussing that matter I will set out, in relation to each of the three issues, the relevant facts and specification provisions, Hely J's view and the arguments of counsel. Fair basis (i) Hely J's view 24 Two arguments about fair basis were put to Hely J. One was rejected and is not pursued before us. The successful argument was founded upon s 40(3) of the Act. That subsection should be read with subss (2) and (4). The three subsections read: "(2) A complete specification must: (a) describe the invention fully, including the best method known to the applicant of performing the invention; and (b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and (c) where it relates to an application for an innovation patent - end with at least one and no more than 5 claims. (3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification. (4) The claim or claims must relate to one invention only." 25 Doric argued, before Hely J, that none of the claims, except claim 33, was fairly based on the matter described in the specification. His Honour agreed. He said at para 236: "I agree with Mr Catterns' submissions that the specification does not contain a real and reasonably clear disclosure of matters broader than the particular embodiment. Yet the Patent claims a latch assembly which contains LRM (which may take any suitable form) which is responsive to the operation of the second actuator so as to render the locking means inactive, no matter what means or mechanism is employed to achieve that result. It follows that claims 1-6 are not fairly based upon the specification. As all subsequent claims are dependent upon claims 1-6, it follows that they too are invalid, except for claim 33 which claims the preferred embodiment." "LRM" stands for lock release means. (ii) The terms of the specification 26 In order to discuss counsel's submissions in relation to that finding, it is necessary to return to the terms of the Patent specification. At paras 9 and 10 above, I set out statements in the specification describing the perceived problem and the perceived solution to it. In between those statements is a description of the elements of what the specification called "a typical latch assembly". The description contains five elements: (i) a casing; (ii) a latch bolt movable relative to the casing to adopt either an extended latching position or a retracted release position; (iii) a first actuator at the inner side of the assembly which is operable to move the latch bolt to the release position; (iv) locking means which is rendered active or inactive by key operation from the inner-side of the assembly and which, when active, renders the first actuator inoperable; and (v) a second actuator at an outer side of the assembly which is operable to move the latch bolt to the release position. 27 As appears from the extract of the specification set out in para 10 above, the "present invention" would add a sixth element: "lock release means which is responsive to operation of the second actuator to render the locking means inactive." 28 One lock release means was described in the specification in the following way: "The first actuator will generally include a rotatable knob or handle which is connected to the latch bolt in a known manner so as to be operable to move that bolt into the release position, and the bolt may be spring biased into the latching position. The locking means preferably includes at least one cam controlled detent which is movable between actuator locking and actuator release positions. It is also preferred that the lock release means is operable to influence the detent cam in a manner such that operation of the second or outer actuator causes the detent cam to move to a position corresponding to the actuator release position of the detent. The cam may be spring biased towards that corresponding position, and retaining means may be operable to allow or prevent such movement according to whether or not, respectively, the second actuator is operated." 29 As previously mentioned, the specification includes diagrams illustrating some "embodiments" of the invention. As I understand the position, each of these diagrams illustrates an "embodiment" falling within the description contained in para 28. 30 Hely J noted the significance of claim 1, and analysed its content, in para 7 of his reasons: "Claim 1, and all subsequent claims are in relation to a latch assembly having a number of specified features. Claim 1 is with respect to a latch assembly having the following features: (i) a casing; (ii) a latch bolt mounted on the casing so as to be movable relative thereto between an extended latching position and a retracted release position; (iii) a first actuator operable from an inner side of the assembly to cause movement of the latch bolt to the release position; (iv) a locking means operable from the inner side of the assembly to adopt an active condition and thereby render the first actuator inoperable; (v) a second actuator operable from an outer side of the assembly to cause movement of the latch bolt to the release position; (vi) lock release means which is responsive to the operation of the second actuator so as to thereby render the locking means inactive." No complaint is made about the accuracy of this paragraph. 31 It will be noted that the first five elements identified by his Honour correspond, almost word-for-word, with the five elements in the specification's description of "a typical latch assembly"; that is, an assembly according to the prior art. The new element is the sixth element. However, this is expressed in more general terms than the description of the lock release means contained in the body of the specification; as quoted in para 28 above. That was the point made by Hely J in the passage from para 236 of his reasons quoted at para 25 above. (iii) Counsel's submissions 32 In arguing that Hely J was wrong in relation to that matter, counsel for Lockwood mentioned a sentence contained in his Honour's discussion of the question whether Doric had infringed claims 1 to 6. Doric had submitted to his Honour that there was no infringement because of the particular form of lock release means adopted in their products. With an obvious eye on the sixth element of claim 1, Hely J said (at para 39): "The specification teaches that LRM may take any suitable form provided it is responsive to the operation of the second actuator." On the basis of that statement, counsel for Lockwood submitted on appeal: "That finding is unimpeachable and it precludes a finding that the specification does not disclose an invention in the terms of claims 1 to 6. His Honour found that it discloses or teaches that very invention. This finding informed the basis of other aspects of his Honour's judgment, other than, curiously, the fair basis finding." (Original emphasis) 33 Counsel for Lockwood went on to refer to his Honour's treatment of the issue of obviousness. They said that, in considering that issue, Hely J rejected Doric's argument that claim 1 was "nothing more than known desiderata". They quoted his Honour's statement, at para 208, that "obviousness is a question of fact". His Honour went on: "Whether the latch assembly described in claim 1 is merely a product described by reference to a set of 'obviously desirable' parameters is to be determined on the evidence, rather than by the ex post facto application of judicial intuition, or by deduction from the matters accepted in the Patent." Hely J observed that no witness deposed "to the fact that it was understood at the priority date that a solution to the problem identified in the specification was to use the outside key to release the inside lock". 34 Counsel for Lockwood submitted: "In other words, his Honour found that the 'solution' reflected in claim 1 was an invention. That solution included the use of any lock release means which was responsive to the use of the outside key. That was the invention which his Honour correctly found was taught in the body of the specification. In other words the invention which was taught in the body of the specification was the conception of using a lock release means which was responsive to the use of the outside key which would not have occurred to the ordinary skilled worker possessed of the common general knowledge. A massive evidentiary attempt was made by the Respondent to persuade the court that claim 1 did not involve a contribution to the relevant art. That attempt failed. Thus far, what one has in claim 1 is an invention which is taught in the specification and which is not obvious." 35 During the course of oral argument before us, counsel for Lockwood confirmed that the alleged inventive step was the addition of element (vi) to the five previously known elements; that is why claim 1 was drafted in such wide terms as to cover any lock release means which is responsive to the second actuator (that is, the actuator on the outer side of the door), so as thereby to render inactive the inner door lock. 36 Counsel for Doric criticised the submission of their opponents quoted at para 32 above. They said this involves an elision; at that point in his reasons for judgment (para 39) "his Honour was considering infringement, in particular whether integer (vi) was present". He was dealing with a submission by Doric that a separate lock release means was required. Counsel went on: "Thus, it is clear that by 'teaches', his Honour was referring to two related matters: (a) that the words of claim 1 'claim' or 'define' the integer in a way which includes a lock release means in any suitable form, and (b) that the body of the specification says that the LRM 'may take any suitable form'. His Honour was not addressing the statutory question of s40(3) of the Patents Act 1990 in para [39]." (Original emphasis) 37 After referring to some decided cases, counsel for Doric argued: "Thus the correct question, which his Honour answered, was whether the complete specification described fully the invention claimed in claim 1 and the other claims held to be invalid. 'The matter' on which the claims must be fairly based is the full description." (Original emphasis) Obviousness (i) The evidence 38 Doric supplied particulars of its case on obviousness. They read: "The alleged invention, so far as claimed in each claim of the Patent: (i) is not a patentable invention within the meaning of the Act in that the invention so far as claimed in each claim did not involve an inventive step when compared with the prior art base as it existed before the priority date of each claim; (ii) was obvious and did not involve an inventive step having regard to what was known and used prior to the priority date of each claim." The particulars identified a large number of locks and publications that were, together, said to constitute the prior art base, although, at trial, a narrower range of matters was relied upon. 39 Three experts gave evidence relevant to obviousness. One of them, David William Garland, was called by Doric; the other two, Gary Noel Wilson and Graham Jeffrey Freestone, by Lockwood. 40 Mr Garland is not a locksmith by trade but, for many years, he has been directly involved in the design and development of door and window locks and fittings. In an affidavit dated 19 April 2001, he said: "… it appears to me that, put broadly, the Lockwood Patent describes locking mechanisms said to overcome certain 'serious problems' as are described on page 1 of the specification to that patent. These problems concern persons being, in effect, 'locked inside' premises as a result of the use of a deadlocked rim mounted latching mechanism and being unable, from the inside of the door, easily (without the use of a key) to release the deadlocking mechanism. The solution to those 'serious problems' is described on pages 1-2 of the specification of the Lockwood Patent being 'lock release means which is responsive to operation of the second actuator [outside key cylinder] to render the locking means inactive [thereby enabling the latch to be operated from the inside of the door without use of a key]' … If I had been given a 'brief' to design a lock assembly to address such 'serious problems' as at 14 February 1996, I believe that one or more solutions would have been readily apparent to me without the use of any inventive faculty, by the application of then well known and available locking techniques and locking parts and fittings. One such solution would have been, with the use of the (also then well known) locking mechanism of the Doric 'DS 60' Lock, to employ a common central cam mechanism linking the inside and the outside cylinders and to use a 'T-member' … Another quite independent solution to such 'serious problems' would have been by the use of a pretensioned or spring loaded cam member held in position, until activation, by a 'retaining member' (as is described in the Lockwood Patent). The two solutions, however, are in my opinion quite independent of each other and evidence quite different design approaches." 41 Mr Bannon cross-examined Mr Garland about this evidence. Mr Garland agreed he had never designed a lock that solved the "problem" to which he alluded in his affidavit but he said this was because he always worked to a brief and he had never been briefed to design such a lock. He said: "I actually worked to what you could call a contract, I'm given a brief and I solve the problem once I am given a brief and that's my opinion, had I been given a brief. They were two possibilities that rose to mind, I mean there would be more than two but they were two that rose to mind. You say you were never given a brief to solve that problem?---No Hence you have never solved the problem?---I've never had to, I mean I get paid for my work. I understand that. May we take it the solution to the problem has never occurred to you before?---The solution to the problem is evident to me but I've never had a cause to use it. The solution to the problem has never occurred to you before because you have never been given a design brief to solve the problem, that's right, is it not?---Yes, that's true." 42 Mr Wilson is a locksmith, not a lock designer. In an affidavit dated 3 July 2001 he said: "Prior to 14 February 1996 I was aware of the problem of people locking themselves in their houses because the key to unlock the inside handle was not accessible. … Before the release of the new Lockwood 001 with safety release, it would never have occurred to me to design such a lock that operated with a safety release mechanism to overcome the problem addressed by the Patent." 43 Hely J remarked (at para 159) that there is an ambiguity in the last paragraph: "It is not clear whether 'such a lock' refers to the physical Lockwood product manufactured in accordance with the preferred embodiment, or whether it refers to a lock containing feature (vi) of claim 1." 44 Unfortunately, Mr Catterns' cross-examination of Mr Wilson did not directly address that ambiguity. However, both his questions and Mr Wilson's answers seem to have proceeded on the basis that Mr Wilson was referring specifically to the new Lockwood 001 with safety release latch, that is, "the physical Lockwood product manufactured in accordance with the preferred embodiment". 45 Mr Catterns invited Mr Wilson to assume that, in 1996, he was "given the design task of improving" the old (non-releasable) Lockwood 001 "by providing a safety release feature whereby the key on the outside released the handle lock on the inside". Mr Wilson said he understood the task. His evidence went on: "Now, given that task would you agree that part of the possibilities that would come to mind would be to spring load the cam of the 001, that is a modified cam of the 001, in some way? --- I don't know exactly what I would have done in 1996 given that circumstance. As far as spring loading it goes I would - everything tells me that each spring I enter into the lock is another potential problem so I would reluctantly look at putting in a spring as an addition. So what would you do? --- I'm really unsure what I would do, and whether I would put a spring in or not." 46 Mr Catterns then put questions to Mr Wilson that assumed he did not wish to use a spring. He was asked about use of a cam. Mr Wilson asked whether he should assume he had been given a budget, saying "normally those sorts of features come into play, I would imagine in lock design". The evidence went on: "So if you have been given a budget you might try to use as much as possible the features of the Lockwood lock, 001 the original one? --- I might. I'd probably look at a couple of options. I'd probably look at the cost effectiveness of seeing whether something could be done with the existing parts or whether a re-design is necessary. Now if you were looking at something that could be done with the existing parts, one way would be, as I have suggested before, the possibility of using a spring. Do you agree with that? --- Springs is [sic] an option. … One approach that you might adopt is to spring load the cam with a retaining means to hold it back and a release means, operable from the outside, to let it go? --- I suppose that's an option. If you decided that that was the route you were going to take, it would be merely a matter of design choices to come up with the various means to achieve that? --- I suppose so. You would take into account matters such as manufacturing costs, simplicity of design and so on, I suppose? --- I think it would have to be looked at as a package. If you had chosen to achieve this result by using a spring, one of the design questions you have in mind is, how would you get the spring to operate to provide the turning force on the cam, is that right? --- And to do it reliably. But do you agree with my first part? --- Yes. An obvious way of doing that is to stick an arm out from the cam and have something project out from the cam that the spring can push against? --- It sounds obvious when I hear [sic] but I don't know if - in my hypothetical design choice whether that would have been an immediate thing that come [sic] mind. It may well have been but I don't know what I would have - come to mind. We're wanting to achieve circular motion of the cam, aren't we? --- If we decide to continue with the cam mechanism, yes. One way to achieve that would be to have a projection out radially from the cam surface with a spring mounted securely at one end and pushing against that projection thereby giving us a circular motion? --- It sounds wonderful. That is a pretty obvious thing to do, isn't it, though? I'm a little bit confused because I've never been asked to design a lock so I really am not sure what I would have done in 1996." 47 Mr Freestone is a qualified toolmaker. He was employed by Lockwood from 1955 until his retirement in 1997, for many years as a design draftsman or leading design draftsman. In 1989 he became chief draftsman. Between July 1993 and December 1997, Mr Freestone was design co-ordinator of new products. In that capacity he supervised the development by a Lockwood employee, David Blanch, of the new Lockwood 001 with safety release latch. 48 Mr Freestone deposed that the problems described on page 1 of the Patent had been known to him since deadlatch locks were first used in Australia. He said: "I recall on a number of occasions during the 1980's and early 1990's, having discussions with other lock draftsmen and designers at Lockwood about the difficulties that arose as a result of people being unable to unlock the door from the inside without the key. At Lockwood, newspaper clippings concerning fatalities or other mishaps resulting from this problem were occasionally pinned up on the notice board in the Research and Development Department. When such clippings were posted, further discussions ensued between the staff concerning the problem." 49 Mr Freestone said that, shortly after Mr Blanch commenced working on the new Lockwood 001, Mr Blanch said to him words to the following effect: "What if I could do auto-unlocking on the 001 Project?" Mr Freestone said he replied: "If you can do that, good luck to you. I don't think you can do it." 50 Mr Freestone explained: "I said these discouraging words because at the time, I considered that the problem posed by the deadlatch would be too difficult to resolve. I had put the question of solving this problem in the 'too hard' basket, and I believe that other lock designers at Lockwood had done the same. However, I considered Mr Blanch to be a lateral thinker and whilst I was doubtful that he would succeed, I was prepared to support him if he thought he could find a solution." 51 Mr Freestone went on to describe the prototype produced by Mr Blanch. He said: "When I saw Mr Blanch's prototype, I considered that the solution proposed was ingenious. I had certainly never seen such a safety lock release mechanism. That is, I had never seen the application of a bias to the cam so that it could be driven from the detent lock position to the detent release position. The provision of a triggering mechanism that would hold the cam against the influence of the bias until operation of the outside lock, at which time the cam would be released so that it would be driven by the bias to the detent release position, was also not previously known to me." 52 It does not appear that Mr Catterns cross-examined Mr Freestone about this aspect of his evidence. However, it is relevant to note a comment of Hely J, in para 164 of his reasons for judgment. Speaking of the last item of evidence, his Honour said: "This evidence relates to the physical Lockwood product, and is therefore restricted to such of the claims in the Patent as incorporate the preferred embodiment, or elements of it. I do not think that this paragraph says anything about whether claim 1 is obvious, although the fact that the problem identified by the Patent had previously been recognised by Lockwood personnel, and put into the 'too hard' basket is germane to that question." (ii) The view of Hely J 53 In discussing obviousness, at paras 165 to 169 of his reasons, Hely J said: "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. Mr Garland was an inventor of a number of locks or lock type products whose field was that of research and development. What may have been obvious to him gives no indication as to what would be obvious to the ordinary skilled but non-inventive worker … It is true that Mr Garland says that solutions would have been readily apparent to him 'without the use of any inventive faculty', but the fact remains that his background is that of an inventor. 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. 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. As I have said, the solutions are those reflected in the Doric and Lockwood products, and the views in Mr Garland's affidavit as to the solutions were expressed only after he had the benefit of inspecting those products. The views of Mr Garland are contrary to those of Mr Alchin who claimed that the Doric products were inventive, and represented an advance over the prior art, including the locks relied upon by Doric in these proceedings as being novelty destroying. … Mr Freestone was a former employee of Lockwood, and had a long association with that company. Mr Freestone impressed me as a careful and reliable witness. I accept his evidence that the problem identified by the Patent was one which had been recognised within Lockwood for many years, the resolution of which had been placed by Lockwood personnel into the 'too hard' basket. I do not accept Mr Garland's evidence that a non-inventive skilled worker in the field would have lit upon the solution as embodied in the Doric and Lockwood locks as an obvious solution to that problem." 54 Later in his reasons, Hely J separately discussed obviousness in relation to: (a) claims that consist of matters that are admitted or proven to be common general knowledge, in combination with integer (vi) of claim 1 ("the CGK claims"); and (b) claims that include elements of the preferred embodiment. 55 Doric does not press its case on obviousness against claims that fall within (b). It does press that case in respect of claims within (a). They were identified by Hely J as claims 1 to 6, 12 to 15, 20-21 and 30-32. 56 At paras 198-202 of his reasons, Hely J said: "The fact that a person could be locked inside using locks like the old Lockwood 001 deadlatch was common general knowledge at and prior to the priority date. Both Mr Wilson and Mr Freestone gave evidence to that effect. The specification discloses that in typical latch assemblies, key operation of the latch from outside the door does not release the lock on the inner handle … That disclosure is made in the context of a discussion of the practical disadvantages involved in the use of typical latch assemblies so as to suggest that it is a matter well known to skilled workers in the trade. … Doric submits that the advantage of unlocking the door from the outside of the door, 'the corollary of this' was also common general knowledge. The evidence cited in support of this contention is that of Mr Freestone referred to in par 161-164 above, which does not support the submission. It is also inconsistent with Mr Freestone's evidence that whilst the problem was a matter of common general knowledge, the question of finding a solution to the problem had been placed in the 'too hard' basket, where it remained until Mr Blanch's efforts in mid-1993, which were the subject of public release in early 1997. … Doric submits that claim 1 is obvious on its face, because the supposed improvement over the prior art consists of any means of releasing the inside of the lock from the outside of the door. Merely to describe this in a claim cannot of itself involve an inventive step. Feature (vi) merely states the need for means by which the outside actuator releases the lock on the inner handle. It is nothing more than (admitted) known desiderata. In Doric's submission, if the problem identified by the Patent arises and is known to arise because the outer actuator does not release the inside lock, the obvious solution is to change the device so that the operation of the outer actuator achieves that result. The specification does not admit that claim 1 is obvious. The specification accepts two matters as generally known as at the priority date: - key operation of the latch from the outside of the door does not release the inner handle; - as a result, people may be locked in; but does not contain any broader admission." 57 After referring to several decided cases, Hely J concluded at paras 211-212: "No witness deposes to the fact that it was understood at the priority date that a solution to the problem identified in the specification was to use the outside key to release the inside lock. It was not obvious to Mr Freestone or Mr Wilson. The fact that resolution of the problem was placed in the 'too hard' basket by Mr Freestone is inconsistent with obviousness. The evidence of Mr Wilson and Mr Freestone establishes that there was a perceived need to find a solution to the problem, but it had not occurred to Mr Alchin or Mr Garland until after the release of the new Lockwood 001 that the problem should be solved in a manner which, in Doric's submission, was obvious. My conclusions under the heading: 'Did Doric copy Lockwood' also point against a conclusion of obviousness. My initial impression derived from a consideration of the terms of claim 1 that the invention is obvious is not supported by, and is inconsistent with the evidence to which I have referred, particularly that of Mr Freestone. For that reason, this ground of invalidity is not made out." (iii) Submissions of counsel 58 Counsel for Doric argued all the CGK claims can be considered together, "because each merely adds integer (vi) to the old Lockwood 001 lock". The question is whether it was obvious to add that integer to the known lock; the integer being described as "lock release means which is responsive to said operation of the second actuator so as to thereby render said locking means inactive". 59 Counsel noted a comment (in para 207 of his reasons) by Hely J that his "initial impression was that the generality of the description of the invention in claim 1, and in particular feature (vi), was sufficient to lead to the conclusion that the alleged invention as claimed is obvious". However, he set aside that initial impression, for the reasons quoted in my paragraph 57; in particular, Mr Freestone's evidence. 60 Counsel for Doric pointed out the "problem" referred to by Hely J was that referred to in the specification. This was not merely that a person may be inadvertently locked in, but - in particular - that "key operation of the latch from the outside of the door will not release the lock": see para 9 above. Counsel went on: "Integer (vi) is thus the corollary of, solve (sic) the problem. Put another way, it is the same as the problem with the word 'not' deleted. The integer can be rewritten as: 'means by which key operation of the lock from the outside of the door will release the lock.' Thus, the 'problem' is the absence of integer (vi). … … As noted above, in [211], his Honour held that there was 'a perceived need to find a solution to the problem'. With respect, there was nothing left to do: if integer (vi) is no more than, provide means to solve the problem, then there can be no inventive step. … In para [200], his Honour held, 'This is not a case in which the perception of the problem can be said to be inventive because the problem was well known; any inventiveness lies with the solution.' As submitted, 'the solution' is merely to choose to satisfy the need by any means. The case is thus even stronger than Acme Bedstead Co Ltd v Newlands Brothers Limited (1937) 58 CLR 689 and Winner v Ammar Holdings Pty Ltd (1993) 41 FCR 205. In the latter case, the known device had a known problem, an 'inconvenience'. The provision of a ratchet to remove the inconvenience was obvious. … See also Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels PLC (1993) 26 IPR 565. Here, the hypothetical skilled addressee does not even have to provide the means. He or she merely needs to perceive that provision of such means is a desirable improvement. To reiterate, this was the 'perceived need'." (Counsel's emphasis) 61 Referring to the evidence, counsel said: "The evidence of Mr Freestone and Mr Wilson was not that it was inventive to realise that the problem needed to be solved (which is all that integer (vi) requires). Mr. Freestone's evidence was that he had thought the provision of particular means, being to modify the particular mechanism of the Lockwood 001 deadlock to unlock automatically was 'too hard'.… His evidence related to a different question, namely whether the particular embodiment (the subject of the 'preferred embodiment' claims, to some extent) was an ingenious solution to the problem. … Mr Wilson volunteered that finding a solution to the problem would be outside his expertise since he was not a lock designer.… When 'the evidence establishes that there was a perceived need to solve the problem' [211], no further evidence is needed to show that this is merely to claim an 'obviously desirable' parameter. There is no further step involved. Accordingly, Re Raychem Corp's Patent [1998] RPC 31, 41-42 … is apposite. If his Honour has not moved from the problem of [202], then his error must be to have had in mind something more detailed than integer (vi), broadly expressed: that is, his Honour has considered the precise means or 'manner' of the solution to the problem: [211]. Namely the preferred embodiment. That is the wrong approach to the obviousness of claim 1, which is entirely general as to the manner of solution. As submitted, the integer can be rewritten as, provide any means which solve the problem or, means which satisfy the 'perceived need'. … Para [222]…suggests that his Honour indeed fell into this error. As discussed below, there is no need to take apart the storeroom locks to see that they possess integer (vi). The need to 'understand internal mechanisms' shows that his Honour is looking beyond the terms of integer (vi) to the 'manner' of solving the problem. Accordingly, no question arises of the Court's assuming a technical expertise which it does not have. … Given his Honour's findings as to the perceived need and the admissions in the specification, the inventive step required for integer (vi) is merely to express the perceived need in words, e.g. to omit 'not' from the formulation in [235] and [202]. 'The solution' is just, provide any means. The patentee has 'recited himself out of Court': see Interlego AG v Toltoys Pty Ltd (1972) 130 CLR 461 at 469. Accordingly, claim 1 is obvious, and it follows that the remaining CGK claims are obvious." (Original emphasis) 62 In responding to these arguments, counsel for Lockwood submitted that the "question of obviousness is quintessentially a question of fact". They emphasised the advantages enjoyed by a trial judge in that regard. They said it was necessary for an appellant to demonstrate error, it was not enough that the appellate court might take a different view of the evidence. They said: "The Respondent's ultimate submission was and is that the conception of a lock which used the outside key to withdraw the latch bolt in order to permit entry and simultaneously to unlock the lock on the inside handle was obvious. That was and is a question of fact which his Honour found against the Respondent. The Respondent's submissions amount no more than an attempt to revisit the question and invite the court to come to a different view based on some only (sic) of the material. The submissions on their face do not satisfy the appropriate appellate test." (Original emphasis) 63 Counsel submitted that Hely J's construction of the specification was "clearly correct" or, at least, "not clearly incorrect". They went on: "… if it was the fact that it was well known in the art at the priority date that a desirable lock or 'solution' was one in which the outside key released the inside lock, why was there no evidence of this from the Respondent's witnesses? That is the fundamental evidentiary gap in its case on obviousness. His Honour dealt with the obviousness question looking at the evidence as a whole, including statements in the specification. His Honour was correct in adopting that approach. Rather than tackle the lack of evidence to support its ultimate factual contention and dealing with the whole evidentiary matrix before the trial judge, the Respondent seeks to engage in wordplay on the meaning of the specification. The problem of the prior art locks, as stated in the patent, arises in lock which are: '…typically arranged so as to be operated form [sic] the inside of the door and are not operable from the outside of the door. In particular, key operation of the latch from the outside of the door will not release the lock. That can lead to serious problems in circumstances where the door needs to be opened urgently from the inside, particularly if the lock key has been misplaced or is not conveniently accessible.' As his Honour pointed out at [10] to [12], this was a problem of locking oneself in because the key to the inside lock was not accessible. Contrary to [Doric's submission], 'problem' is not stated to be the absence of integer (vi). The problem is being locked inside. That was his Honour's finding at [202]. … The specification does not say in terms or even implicitly, that everyone understood that the solution was to construct the lock in such a way as to make the outside key simultaneously perform the additional function of releasing the inside lock. Indeed, the words '…such locks … are not operable from the outside of the door …' are broad enough to comprehend an inside lock being operable by an actuator or means which is different and additional to the actuator which is used to withdraw the latchbolt. Yet the respondent's attack on the ground of obviousness is based on the assumption that the only solution to the problem is to include in such a typical lock an internal (first) lock release means which is responsive to the operation of the outside (second) actuator so as render the first locking means inactive". Insufficiency (i) Submissions of counsel 64 In their written submissions, counsel for Doric said their case on insufficiency is based on Sami S Svendsen Incorporated v Independent Products Canada Limited (1968) 119 CLR 156. In that case the respondent sought a patent for a sausage casing holder. The only inventive step was the provision of a tab or tabs for gripping, in order to draw the casing over the stuffing horn. Yet both the body of the specification and the claims described the invention in wider terms. In opposition proceedings in the High Court of Australia, Kitto J said (at 165): "Assuming that there was an inventive step in this improvement, I am of opinion, first, that the specification as a whole offends against s. 40(1) by not describing the invention, since it does not enable the reader to discern what was the invention in the total thing that it describes; and, secondly, that the claims themselves offend against s. 40(1) by defining as the invention something that was much more extensive than the invention" 65 The effect of this decision was stated by the Full High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd[2001] HCA 8; 177 ALR 460 at para 23: "The point being made by Kitto J … was that, to a person versed in the prior art (including, on the evidence, one of the alleged inventors) (i) the only possible ingenuity had been in making a particular improvement to a known mechanical device used in sausage manufacture, but (ii) the specification described not this improvement but the entirety of the combination, without enabling that reader to discern the particular improvement in that combination." 66 Counsel for Doric submitted: "The present case is analogous to Sami Svendsen, except that it is admitted in the specification that a mere particular improvement in a known lock is being described: pp1-2. Yet the claims cover all locks with any means which satisfy the perceived need. … The specification here, in a more sophisticated manner than in Sami S Svendsen, does the same thing. … The present case is even stronger, given that the defect is apparent on the face of the specification." 67 Counsel for Lockwood responded to these submissions by contending that the claims in the Patent do not claim an invention which is wider than the invention described in the specification. They said: "… the claims do not claim every way of achieving a result. The claims, for example, do not claim every lock which avoids locking in problems. The claims only cover locks which include as an integer a lock release means which is actuated by the outside actuator. The Appellant accepts that the invention is to be tested on the basis that it lies in the conception that the solution to the problem lies in including a lock release means which is operated by the outside actuator. His Honour accepted that as well and the Appellant succeeded on the obviousness issue. An invention may lie in the conception of an idea which, once conceived, can be put into practice without invention. … In such a case, the inventor must describe the invention and give an example which is the best method known to the patentee of performing the invention. That is exactly what the patentee has done in this case. His Honour has tested the inventiveness of claim 1 by reference to its terms including the fact that it embraces all ways of linking the lock release means to the outside actuator." (ii) Hely J's view 68 Hely J did not express a concluded view about this issue. He dealt with it by noting the argument and commenting: "If a patentee, in writing the specification, attempts to support broader claims than are otherwise warranted by the disclosure, then it may be that the patentee has failed to describe the invention fully such that there is a failure to comply with s 40(2)(a) as well as s 40(3). … That was the way in which Mr Catterns ultimately put his submission, but I have some difficulty, with respect, in seeing how the decision in Sami Svendsen has any real bearing on that question. In any event, the specification makes it clear, in the case of claims 1-6, that feature (vi) is the particular improvement to be found in the combination. However, given my conclusion as to 'fair basis', and having regard to the way in which the sufficiency submission was ultimately formulated, it is not necessary for me to pursue this matter further." Discussion about fair basis, insufficiency and obviousness 69 As I have indicated, a common fundamental question affects the three issues I have noted: what, exactly, was the invention the subject of the Patent? It is impossible to determine whether a complete specification fully describes, and ends with a claim or claims defining, the invention without forming a clear view about the nature of the invention. This is also true in relation to obviousness. Section 18(1) of the Act provides that "an invention is a patentable invention for the purposes of a standard patent if the invention", as claimed … "(b) when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an inventive step" Section 7(2), explains the meaning of "inventive step". "(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3)." Once again, it is of critical importance accurately to identify the invention. 70 It seems to me that, at trial, there was a measure of inconsistency in Lockwood's case about what was the invention. For the purposes of its fair basis and sufficiency arguments, it was necessary for Lockwood to assert that the invention was a broadly described integer that added to the five known integers already embodied in the old Lockwood 0011 lock. This "integer" may fairly be described as a concept: the concept of the external key (or other actuator) also releasing the internal locking mechanism. Claim 1 adopted that concept, in describing a "lock release means which is responsive to the operation of the second actuator so as to thereby render the locking means inactive". However, if the invention consisted only of the addition of that broadly described element to the previously-known elements, then the issue of obviousness had to be determined by reference to the question whether it would be obvious to an ordinary, skilled but non-inventive, worker that the problem identified by the specification (that the inside handle lock was not operable from the outside of the door) could be resolved by making it operable from outside the door. Obviousness would not turn on the question whether the hypothetical worker would have realised how to achieve that result. No doubt for that reason, Lockwood's case on obviousness dealt not with the question whether the concept was obvious but whether it was obvious to adopt the particular solution devised by Mr Blanch and described in the portion of the specification quoted at para 28 above. 71 The specification identifies a problem: it is not possible to release the inside lock from outside the door. As the specification says: "In particular, key operation of the latch from the outside of the door will not release the lock." The evidence demonstrates that this was widely perceived, in the trade, to be a problem in relation to double-lock latch assemblies. The specification then describes the "invention" in broad terms: "a latch assembly of the foregoing kind is characterised in that it includes lock release means which is responsive to operation of the second actuator to render the locking means inactive." In other words, the solution to the problem of the inside lock not being responsive to the key, or other outside actuator, is to make it so. Consistently with that statement of the nature of the invention, claim 1 identifies the additional integer widely as "lock release means which is responsive to the operation of the second actuator" so as to inactivate the inside lock. 72 During the hearing of the appeal, counsel for Lockwood took the unequivocal position that the inventive step was the addition of the widely-expressed sixth integer. However, it can hardly be an inventive step simply to say that the solution to the problem of the inside lock not being responsive to an outside actuator is to make it so. That tells the addressee nothing. I agree with Hely J that the specification "does not contain a real and reasonably clear disclosure of matters broader than the particular embodiment" quoted in para 28 above. Claim 33 is concerned with that embodiment; it is fairly based on the matter described in the specification. But claims 1 to 32 are not. I agree with Hely J that these claims fail to comply with s 40(3) of the Act and are therefore invalid. 73 If, contrary to my opinion, the addition of the widely-expressed sixth integer was thought to be an inventive step, Lockwood would face a serious difficulty in relation to obviousness; it would be immaterial that (as Hely J found) it was not obvious to a skilled, but non-inventive worker, to adopt the particular means used by Lockwood. 74 I accept Lockwood's submission that obviousness is a matter of fact, in relation to which an appellate court should be slow to interfere with the view of a trial judge. But that is the situation only where the trial judge has correctly identified the factual issue that needs to be determined. It is not apparent to me, with respect, that Hely J did so. The equivocation in Lockwood's case concerning the nature of the invention seems to have spilled over to his Honour's consideration of the issue of obviousness. 75 Hely J commenced his discussion of obviousness by referring to the particulars supplied by Doric and summarising the expert evidence. As noted at para 52 above, Hely J commented that Mr Freestone's evidence about Mr Blanch's prototype related "to the physical Lockwood product"; it said nothing about the obviousness of the concept (claim 1). However, his Honour immediately introduced ambiguity by saying that "the fact that the problem identified by the Patent had previously been recognised by Lockwood personnel, and put into the 'too hard' basket is germane to that question". That is correct, with respect, only if the "problem" is identified, not as the need to add the sixth integer (which Mr Freestone and Mr Blanch already knew, and referred to as "auto-unlocking"), but as to the best way of providing this integer; that is, how to provide the sixth integer. 76 It is not necessary for me to discuss the authorities concerning obviousness that were cited by counsel. Nor is it necessary to express any final conclusion about obviousness. I am content to rest my decision on the ground of objection upheld by Hely J: that claims 1 to 32 are not fairly based upon the matters disclosed by the specification. Of course, the description of one particular means of achieving integer (vi) that was set out in the specification (quoted at para 28 above) was more than a statement about desirable outcome. It was inventive. But only claim 33 was fairly based on that disclosure. 77 As I agree with Hely J that claims 1 to 32 are all invalid for want of fair basis, it is not necessary for me to express a view about sufficiency of description. Infringement 78 Hely J rejected Lockwood's argument that Doric had infringed claims 7-8, 17 and 22-23. Counsel for Lockwood contended this rejection was wrong. They put to us detailed submissions about the proper construction of the claims and their relationship to the evidence concerning Doric's products. However, having regard to my conclusion that all these claims are invalid for lack of fair basis, it is unnecessary for me to consider the infringement issue. Disposition 79 In my opinion the orders made by Hely J were correct. The appeal should be dismissed with costs. I certify that the preceding seventy- nine (79) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Wilcox.