Meyers Taylor Pty Ltd v Vicarr Industries Ltd

Meyers Taylor Pty Ltd v Vicarr Industries Ltd - [1977] HCA 19 - HCA 1977 case summary — Zoe

[21]

Mr. Hamburger, the managing director of the plaintiff company, gave evidence of the kind of caravan windows in use prior to the production of windows in accordance with the patent. A company named L. O. Baker Pty. Ltd. (now a subsidiary of Meyers Taylor Pty. Ltd.) had manufactured manually operated push-out type windows and had supplied such windows to Viscount Manufacturing (N.S.W.) Pty. Ltd. until the latter company commenced to make their own push-out windows which was about 1964 or 1966. He also said that windows of the kind previously used in American caravans were not considered satisfactory in the industry as they were louvre-type windows which did not give a tight enough seal. They were not suitable in high wind loads and had small blades. He said that he had instructed Mr. Beaumont, who was an employee of the company, to design a new window for caravans. His instructions were to retain the large-sized windows which were then standard in Australian caravans but the wire screens, which were at that time hinged inwards into the caravan, should become an integral part of the window; in addition the window had to be operated by a winder mechanism which did not disturb the screen and the window must be waterproof under heavy pressure. Mr. Hamburger said that the problem was that in the case of a moving caravan there was much greater penetrating force than there was in an ordinary building because of the motion of the caravan. He further said that a number of versions were produced by Mr. Beaumont before he produced the one which is the subject of the patent. He said that windows in accordance with the Beaumont design had been supplied to Viscount Manufacturing (N.S.W.) Pty. Ltd. and that in 1973 he had some discussions with the Managing Director of that company concerning the price of such windows and was told that if the price could not be reduced Viscount would manufacture their own window which would be similar to such windows. In those discussions and related correspondence the existence of the plaintiff's patent was referred to.

[46]

Mr. Propsting denied that the plaintiff's window had fulfilled a want or need in the trade and attributed the fact that it had been introduced into caravans to a demand for a more luxury-type caravan which had grown at or about the time of its introduction. He said that the customers did not demand it but that it came on the market and the customers appreciated it. I found his answers on this point somewhat evasive. Moreover, implicit in this evidence is the view that these windows represented a "luxury feature" and that there was a demand for caravans with a luxury feature, which these windows helped to meet. He was however prepared to agree that windows embodying the plaintiff's device had had commercial success, and that the stay assembly provided an increased torque in the mechanism by having the actuating arm offset at both ends. Mr. Propsting's evidence as to lack of public demand was in my opinion misconceived because he answered in terms of the public which purchases caravans, whereas the relevant demand for windows in accordance with this invention is the demand by the caravan manufacturers who either purchase or construct such windows for installation in caravans. The fact that some of the defendant companies purchased large quantities, or "vast quantities" as the witness Benson described them, of the plaintiff's windows and subsequently manufactured themselves an article which can only be described as a copy in all material respects, demonstrates the existence of the kind of public need which is relevant to the question of obviousness. Commercial success can never of itself be decisive of inventiveness but it is a material matter, the weight of which must be determined by reference to all the surrounding circumstances. The evidence of Mr. Hamburger as to the prior state of the art to which I have already referred, is in my opinion sufficient to demonstrate that there was a need felt in the trade to produce an improved window and it was for that purpose that he directed Mr. Beaumont to devote his time to the endeavour to produce one.

[73]

The defendants relied upon the evidence of Mr. Propsting that in a "slim-line window" there is in effect no room for any other kind of arrangement than that set out in claim 1. It was argued that the principle of moments which had been relied upon by Mr. Propsting was an elementary principle. On this particular point I much prefer the evidence of Professor Phillips that it is simple and straightforward to analyse an existing mechanism in terms of the principle of moments and calculate the relative forces in the respective members embodied in the mechanism, but that it is quite a different matter when one was setting out to devise a new mechanism. It was sought to establish that Dr. de Laine had conceded that the fixing of the pivot points was within the competence of a design engineer but in truth that is not what Dr. de Laine said. Dr. de Laine had said that he did not regard the device of the lateral and forward displacement of the pivot as within the competence of the skilled tradesman manufacturing caravan windows so far as design was concerned. He was asked whether it was in the competence of a design engineer engaged in the designing of stay assemblies for caravan windows and answered that it would not be "unless he were inventive". The defendants relied on Professor Phillips' assent to the proposition that "looked at in isolation the purpose and effect of the top of the stay arm position as it is in the Steel patent is the same as the top of the link in the Meyers Taylor patent, positioned as it is". Professor Phillips has answered, "Yes, and I say yes, because you said "in isolation" ". I do not consider that that answer supports the defendants' arguments. It was sought to rely upon this answer to establish that this integer in the plaintiff's patent had been anticipated, but that does not produce the result that the invention has been anticipated nor that it was obvious. I do not consider that the fact that an examination of a single feature in each of two drawings, each in isolation from the rest of the drawing in which it is contained, may show apparent similarity or even identity, can warrant any conclusion as to novelty or obviousness. Ex hypothesi the observer cannot know of what device or machine the two members linked together form part. If one looks beyond the isolated point, an examination of the relevant figure in the Steel patent shows that the placing of the pivot point on the bracket was necessary to enable the window to close in view of the length of that arm and the vent arm as shown in that diagram. What the plaintiff's patent does is to claim two or more features operating in combination. Even if it could be shown that one such feature can be found by looking in isolation at one particular part of a diagram in an earlier publication, it odes not demonstrate either anticipation or obviousness.

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Before

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Judgment (84 paragraphs)

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