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[1977] HCA 19
High Court of Australia
1977-07-01
Aickin J
Original judgment source is linked above.
High Court of Australia Aickin J. Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19
(a) judgment for plaintiff against the second, sixth, seventh and eighth defendants for damages with costs, including reserved costs, to be taxed, with liberty to plaintiff to apply on notice to those defendants with respect to the time and mode of assessment of such damages.
(b) judgment for the other defendants with such costs as upon taxation are found to be exclusively referrable to their joinder as defendants.
In the counterclaim for revocation, judgment for the plaintiff with costs, including reserved costs. Certificate under s. 169 of the Patents Act 1952 that the validity of each claim of Patent No. 465073 came into question in these proceedings. Usual order as to exhibits.
J Aickin delivered the following written judgment: -
In this action the plaintiff sues for infringement of its Patent No. 465073 in respect of a window stay assembly.
The defendants comprise a group of related companies, some of which engage in the manufacture and sale of caravans. It appears that those companies formerly purchased caravan windows from the plaintiff. The body of the specification describes the prior art and the invention as follows:
This Invention relates to a window control assembly used to move a hinged casement window to, and hold it in, desired adjusted position.
In particular it comprises a control assembly in the type of window which has a window casement hinged to a fixed frame surrounding a window embrasure, said assembly including a link, pivot means connecting the link at one end to said casement, an operating unit on the inner side of said fixed frame, a pivottal connection between said unit and the other end of said link, the operating unit in use moving said other end of said link to move the casement. An assembly of this type will be referred to as "a control assembly of the type indicated".
In prior assemblies of the type indicated, the link passed through the window embrasure. It is, however, highly desirable that the embrasure be clear of obstruction by the link, particularly where an insect-screen or other closure is to be installed across it, since it is difficult or impossible to seal the closure or screen round the movable link.
It is an object of this invention to provide a control assembly in which the window embrasure is clear of obstruction by the link.
A further disadvantage of prior assemblies of the type indicated is that, when the window is brought to fully-closed position and with the link pivoted at or close to the inside face of the window (as has been usual), the link is almost parallel to the plane of the window and so can exert little inward force to hold the window fully closed. In narrow-framed metal windows this is specially so, and there is also very little space to form a pivot inside the window casement frame without interfering with its fit to the fixed frame.
It is a further object of the invention to provide [sic] a control assembly in which the link exerts appreciable inwards force on the window in fully closed position to keep it tight against the fixed frame and in which the window-link pivot does not interfere with the fit between the window and the fixed frame.
Accordingly, the invention comprises in a window having a window casement hinged to a fixed frame surrounding a window embrasure, a window control assembly of the type including a link, pivot means connecting the link at one end to said casement; an operating unit on the inner side of said fixed frame; a pivottal connection between said unit and the other end of said link; the operating unit in use moving said other end of the link to move the casement to open or closed position; characterized in that said pivot means includes a link pivot displaced outwardly of the plane of the outer face of the casement, and that the link passes through a slotted opening in said fixed frame and a slotted opening through the casement.
The specification then sets out a preferred embodiment by reference to the drawings attached. That particular embodiment is of a window assembly suitable for use in a caravan or the like and includes a fixed frame surrounding a window embrasure. There follows a detailed description by reference to the numbered parts illustrated.
There was some difference in the terminology used by the witnesses though it did not in the end cause any misunderstanding. I shall use the word "embrasure" to refer to the open area within the fixed frame and the word "casement" to refer to the moving part of the window, as in the specification.
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.
Some of the defendant companies purchased large quantities of the windows manufactured by the plaintiff in accordance with the invention in the years 1972-1973 and thereafter. There was no evidence of exact numbers but one of the defendants' witnesses, Mr. Benson, described them as "vast quantities", and said that in mid-1973 the defendants had at least a year's supply in stock.
In early 1975 the defendant companies began their own manufacture of a caravan window designed by business consultants who had over a period of eighteen months investigated this and other aspects of their business and who had, according to the witness Propsting, seen the patent specification during that period. Their window has a different actuating mechanism from that referred to in claims 3 and 4, in that it has an endless belt operating on gears which transform the rotary motion of the handle into linear motion which operates the member which in turn opens and closes the casement.
In claim 3 the only difference from claim 2 is the express description of the actuating mechanism, and the same feature is included in claim 4, which is a "Raleigh Cycle" type claim. This particular actuating mechanism is clearly an essential integer of both those claims and no argument was advanced on behalf of the plaintiff that the defendants' window infringed either of those claims.
An examination of the defendants' window shows that it embodies every feature of claims 1 and 2, and indeed it appears to be a copy of the relevant parts and their arrangement as depicted in the drawings in the specification save for the jack screw. Evidence was given by Mr. Ratz, who had been involved for some years in the design of windows, particularly those made from extruded aluminium, and who had had experience in relation to the mechanisms for opening and closing such windows. He said that each of the integers of claims 1 and 2 was embodied in the defendants' window. This evidence was not challenged in cross-examination nor contradicted by other evidence. Indeed the question of infringement of claims 1 and 2 was not seriously contested by the defendants. In these circumstances I find that there has been an infringement of claims 1 and 2. It was conceded by counsel for the plaintiff that such infringement had been proved against only the second, sixth, seventh and eighth defendants. There must therefore be judgment for the other defendants in respect of the claim for infringement. All defendants however were parties to the counterclaim for revocation and it will be convenient to defer the question of the proper order for costs on the infringement claim until the question of validity has been considered.
The validity of the patent was attacked on the grounds that it was not an invention within the meaning of the Act, that there was lack of novelty, lack of inventive step, and non-compliance with s. 40 of the Act. No separate argument was directed to the ground that the alleged invention did not comprise an invention as defined, and I turn therefore to the ground of want of novelty. The particulars given in respect of this ground were that the alleged invention was anticipated by prior use of "jack screws and travelling nuts, lifters for transom type windows" and the disclosure in five United States patents. Copies of the specifications of the United States patents were put in evidence, but the only one which was relied on, and about which any evidence was given, was Steel's patent, U.S. Patent No. 3250038, dated 20th September 1966, in respect of a window structure. The Steel patent constitutes at most a "paper anticipation" in that there was no evidence that such a window had ever been used in Australia.
Steel's patent relates to what is described as a "drop head" window, being one which is not attached to the fixed frame by one or more top or side hinges, but is attached to the frame by pivots, at each side of the top, or "shoes" which slide in channels in the vertical sides of the fixed frame. There are also four arms or links, two of which, called "vent arms", are attached to fixed points on either side of the fixed frame by a pivot and is also pivoted to the frame of the casement. The other two are the "actuating arms", one end of which is attached to a jack screw and nut located in the fixed frame and the other to the casement frame. When the jack screw is operated the window is opened. This process causes the top of the window to drop below the top of the fixed frame and the bottom of the window to be pushed outwards from the vertical line of the frame, so as to create a gap both at the top and the bottom of the window.
The actuating arm does (according to some of the drawings) appear to pass through the side of the frame of the casement and is attached by a pivot to a bracket on the outer side of the casement frame. The specification does not specifically describe this feature but it appears in some of the drawings. It is clear however that the inner end of none of these arms passes through the fixed frame surrounding the embrasure. The diagrams, even with the aid of expert evidence, are by no means clear as to the nature of the bracket. Another illustration however shows that the actuating arm and the vent arm both are located outside the metal side of the casement, the pivot by which the actuating arm is allowed to move being attached to a metal bracket attached to the side of the casement frame.
The evidence of Professor Phillips and Dr. de Laine who were called by the plaintiff showed that this window and the stay mechanism operate in an entirely different manner from the patent in suit and in a different situation. Moreover it does not involve all the features of claims 1 and 2 nor any combination of those features. In addition, it does not contain all the features of claims 3 and 4. The evidence of the defendants' witnesses, Mr. Propsting and Mr. Benson, in relation to the Steel patent does not suggest any basis for regarding it as an anticipation. Mr. Propsting acknowledged the absence of all but one, or part of one, of the integers of claims 1 and 2 but stated that one of the links shown in the Steel specification passed through the frame of the casement. He gave no evidence which could lead to the conclusion that any of the claims were anticipated by the diagrams. Mr. Benson's evidence does not add anything on this point. Nothing said by the plaintiff's witnesses warrants any different conclusion.
I am therefore satisfied that the Steel patent does not anticipate the invention as claimed in any of the claims.
As to the jack screw and travelling nut, it was common ground that this device was old. However there is no claim to the jack screw as such and the fact that one element in a combination is old does not demonstrate that the combination is old.
No more than passing reference was made to lifters for transom windows in the evidence and in the end Counsel for the defendants did not in his address rely upon such windows in relation to either novelty or obviousness.
No very precise description of such windows or mechanism was given by any witness and it is by no means certain that each witness was referring to windows of the same kind. Mr. Propsting said that it "is basically a window which opens to the inside of the premises, of a hopper nature and it also relies on an extended pivot point inasmuch that it has a bracket attached to the casement of the window and extends six or nine inches outwardly from the face of the casement to provide a pivot point". He added that there is a lever which runs down to an operating arm and that in these particular sort of windows it is usually a rod that runs up the wall. Mr. Benson said that in such windows "you have the problem of opening a window at heights" and that "you have a jack screw attachment which can be used in a number of different ways, that is, with a circular motion driving a nut up through a threader section onto a pivot point which then actuates the window". Neither of the plaintiff's expert witnesses were cross-examined about the transom window. That description of such windows and the mechanism for opening and closing them is sufficient in itself to demonstrate that they do not constitute an anticipation of these claims.
The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement (see, e.g., Harwood v. Great Northern Railway Co. [1] ). Here no prior object and no object according to a prior document involved or incorporated all the integers of any one of the claims and could therefore possibly constitute an infringement. Accordingly I am satisfied that the objection of want of novelty has not been made out.
The next ground of objection is that the invention claimed in the specification was obvious in the light of the items relied on in relation to want of novelty and of common general knowledge. In the course of the hearing the defendants asked for leave to amend the grounds of objection by adding to this ground a reference to what was called the "K.M. Cyclone-type window". It was said that this window had been brought to the attention of the defendants' advisers only a week prior to the hearing and that notice of intention to rely upon it had been given to the plaintiff late on the Friday afternoon prior to the Monday on which the hearing commenced. Upon the basis that this was material newly discovered and that there was nothing to suggest that it could reasonably have been discovered by the defendants at an earlier stage, leave to amend the particulars of objection in this respect was granted.
In considering the objection of obviousness I must follow the same course as was adopted by the Full Court in John McIlwraith Industries Ltd. v. Phillips [2] where Dixon C.J. (with whom Fullagar J. agreed) said:
The objection to validity was want of subject matter inasmuch as the alleged invention involved no inventive step. The scope of that objection having regard to s. 100 (e) of the Patents Act 1952-1955 was discussed by Williams J. in H.P.M. Industries Pty. Ltd. v. Gerard Industries Ltd. [3] . As will be seen the decision of the present case proceeds upon the assumption that the view adopted by His Honour that the scope of the objection has been enlarged is correct. Williams J. in the case referred to had held that s. 100 (1) (e) requires the Court to have regard to "what is known or used in Australia before the priority date of the claim" and that the words "known or used" embraced more than what had become commonly known or used or, in other words, more than the common general knowledge of a skilled craftsman in the particular art on that date. He referred to the decision of the Court of Appeal in Allmanna Svenska Elektriska A/B v. Burntisland Shipbuilding Co. Ltd. [4] and to the decision of the House of Lords in Martin & Biro Swan Ltd. v. H. Millwood Ltd. [5] . He concluded that [6] : It is clear from these discussions that in deciding what was obvious, it is necessary to consider what would have been obvious to the hypothetical skilled craftsman in the state of knowledge in the particular art existing at the priority date of the patent and that this knowledge consists of everything disclosed by the literature on the subject (including prior specifications), and revealed by the articles then in use and of the common general knowledge. 1. (1958) 98 C.L.R. 529, at p. 530. 2. (1957) 98 C.L.R. 424, at pp. 434 et seq. 3. (1952) 69 R.P.C. 63, at pp. 68-70. 4. [1956] R.P.C. 125. 5. (1957) 98 C.L.R., at p. 438.
In my opinion it is clear that the Full Court reserved that question and left it open for decision in a case where it arose. It did not arise in John McIlwraith Industries Ltd. v. Phillips [7] because the Court there held that, even looking at all the literature and all patent specifications in combination with common general knowledge, the alleged invention was not obvious. I do not consider that the headnote in the report of John McIlwraith Industries Ltd. v. Phillips is correct when it says: "Observations on the scope of the objection of want of subject matter in H.P.M. Industries Pty. Ltd. v. Gerard Industries Ltd. [8] approved." The Full Court has not since that case had occasion to advert to the matter and in those circumstances it is clear that a single judge of this Court must proceed upon the same view of this objection as was taken by Williams J. However reference should also be made to what was said by Windeyer J. in Sunbeam Corporation v. Morphy-Richards (Aust.) Pty. Ltd. [9] and to what was said by Gibbs J. in Universal Oil Products Co. v. Monsanto Co. [10] . The question of the meaning of s. 100 (1) (e) can in the end be resolved only by a decision of the Full Court. In these circumstances the question is whether, in the light of the Steel patent, jack screws and nuts, lifters for transom windows and the K. M. Cyclone-type window, and the common general knowledge of those skilled in the relevant art, viewed in combination, the plaintiff's patent represents an obvious development, i.e. a matter of routine involving no more than a mere improvement which a person of ordinary skill in the art could make naturally and in the ordinary course.
Counsel for the defendants did not in his address on obviousness rely upon the jack screw or the lifters for transom windows, either alone or in combination with other matters and in this I think he was plainly right. There is nothing in such evidence as was given about those items, whether viewed alone or in combination with others which would suggest the combination of features which constitutes any of the claims in the plaintiff's specification.
Conflicting evidence on the question of obviousness was given by the respective experts called by the plaintiff and the defendants. The defendants' experts were persons who were or had been officers or employees of Associated Business Consultants Pty. Ltd., a company engaged by the defendants in 1973 to investigate the design and production of caravan windows. They had participated over a period of eighteen months in the design of the infringing window, a window which differs from the preferred embodiment illustrated in the drawings only in the actuating mechanism by which the force is applied which opens and closes the window. The evidence showed that the jack screw and travelling nut, and the gears and endless belt were well known as means for converting rotary to linear motion. This venture into manufacture of the infringing window by the defendants was embarked upon after they had purchased substantial quantities of the plaintiff's windows and had become aware of the existence of the patent.
Mr. Ratz was asked in cross-examination whether the placing of the pivots, one outside the casement frame and the other inside the fixed frame, to achieve the end result of additional leverage would be an ordinary engineering routine in a workshop, to which he answered no. He was asked where else the pivots could be placed and suggested various possibilities. He would not agree that the arrangement shown in the patent was the only arrangement that could be made.
Mr. Propsting, an engineer, was the defendants' first expert witness and his evidence on the question of obviousness was substantially confined to an analysis of the preferred embodiment as set out in the drawings and to the particular requirements of such a window for a caravan. Mr. Propsting was not an independent expert, since he had been directly involved in the design of the infringing window and, as I infer, in the decision that that design should be recommended to the defendants for production. It appears that, at the time of the hearing, he was no longer employed by the consultant company but was then a consultant engaged by the defendants. He was indeed so closely associated with the defendants that he was authorized by them to swear their answers to interrogatories and to swear an affidavit of discovery on their behalf and, though neither an employee nor an officer of any of them, felt competent to swear those answers and that affidavit. This must affect the weight to be attributed to his evidence. Where he differed from the plaintiff's expert witnesses, especially on matters of engineering principles, I much prefer the evidence of the latter. He said that the only engineering principle involved was the principle of moments (i.e. a force applied about a point). He then described the principal features of the window illustrated in the drawings in the specification and said that, looking at the design of that window and the nature of caravan walls as depicted, you "start off with the principle of a moment and you have to create a sufficient moment to open the window. Then the designer would ask himself in an analytic fashion "where can I put these points"?"
This approach must be viewed with caution because it comprises only an exercise in hindsight. His evidence about the prior art consisted of saying, as to the Steel specification, that there would be no engineering problem in creating a slot through which the actuating arm could pass. He agreed in cross-examination that in the Steel patent the actuating arm occupied part of the embrasure opening and the operating unit was not situated at the back of the fixed frame and that it included none of the features which are set out in Claim 1.
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.
The other expert witness called by the defendants was Mr. Benson who was the managing director of Associated Business Consultants Pty. Ltd. and who was equally involved in the eighteen months' work done for the defendant companies on the design of the infringing window, along with other business aspects of the manufacture of caravans and windows. I did not find his evidence satisfactory because on critical matters he appeared to me to be evasive. I am not prepared to accept his opinion that it would be, as he put it, "automatic for a design draftsman to come up with answers in terms of the moment required to operate the window". I found his evidence relating to the Steel patent and drawings evasive and unsatisfactory. Like Mr. Propsting, Mr. Benson said that the only engineering principle involved was the principle of moments. In this respect I am satisfied from the evidence of Professor Phillips and Dr. de Laine that other principles were also involved and particularly the principle of kinematics. Their evidence shows that it is not merely a matter of calculating the forces applied about particular points but it is also necessary to ascertain in the design of an assembly such as that referred to in the specification the movements of each of the moving parts, independently of the forces operating upon them.
Mr. Benson said that he was familiar with the K. M. Cyclone-type window and that such windows were installed in his own house at the time when he purchased it in 1958. He said that:
In the K. M. window we have the wind-out mechanism proud of the fixed casement frame so that it is inside the room, an arm passes through from that actuating or rotating mechanism through a hole in the casement (i.e. fixed) frame, and is then pivoted on the window frame itself, the sash (i.e. moving) frame, which then swings out on an extended hinge. He also said that there was no pivot attachment on the outside of the casement.
The evidence with respect to these windows cannot be regarded as wholly satisfactory. One photograph, which did not show the critical part of the window, was put in evidence. It showed only that the window was one which was hinged at one side in such a manner that, when it was open, there was an open space at each side of the casement and that at the bottom there was some form of actuating member which fitted into a longitudinal box attached to the inside of the bottom part of the casement frame. Apart from Mr. Benson other witnesses were asked about these windows. Mr. Ratz said that he was familiar with the K.M. Cyclone-type window and agreed that it was in general use prior to 1971. He agreed that the operator arm passed through a slot in the fixed frame. Mr. Propsting said that he had seen the K.M. Cyclone-type window and said that there was a winding mechanism attached to the link but that there was no offset pivotal attachment on the outside of the casement.
Professor Phillips, one of the two expert witnesses called by the plaintiff, was a graduate in Mechanical Engineering at the University of Melbourne and held the degree of Doctor of Philosophy in the field of engineering. He was at present Associate Professor in the Theory of Machines in the University of Sydney. He had had experience in industry as well as in the academic field and was familiar with the application of mechanisms and linkages generally. He said he had been shown a photograph of the K.M. Cyclone-type window and that he had seen something similar in private houses. He said the opening mechanism was quite different from that in any other window about which he had been asked, i.e. the Steel patent and the plaintiff's patent.
Professor Phillips referred to three points of importance leading to his view that the invention was not obvious in the light of the Steel specification. First he pointed out that the Steel specification addresses itself to substantially different questions, secondly, that there is no detailed material in the Steel specification that could lead to a solution of the problem described in the plaintiff's specification as being "to provide a control assembly in which the window embrasure is clear of obstruction by the link", and thirdly, that the overall objective of the patent was to achieve uninterrupted seating along with the firm enclosure. He said that three features operated in combination to produce this result, i.e. first the actuating arm is pivoted so that one end is attached to the actuating mechanism behind the fixed frame, and second the other end is attached to an offset pivot on the exterior of the casement, and third that the link passes through a slot in the casement frame and another slot in the fixed frame so that it does not go through the embrasure opening. Professor Phillips added that none of these features alone would solve the problem of obtaining uninterrupted seating and firm closure but together they do so by co-operating one with the other. He said that in his opinion it would not be a matter of routine for a skilled person in the field to come up with Beaumont's solution to this problem. Professor Phillips in cross-examination said that he thought that the link in the Beaumont patent performs the function of seating or firm closure and of controlled movement towards the open position and said:
I believe however that it is not the link itself that performs the function of an uninterrupted seating but it is the lateral displacement of that link in such a way that is passes through a slot that permits that last function to occur. He was asked whether Beaumont's solution provided "the use of a double pivotted actuating arm's position to assist in the weatherproof closure as well as in the actuation", and answered, "yes". He said that the device in the plaintiff's patent embodies the use of the principles both of kinematics and of moments. He was asked whether it would be a matter of routine for a production design engineer to come up with a solution which embodied the use of both those principles in the way that Beaumont used them and answered, "no". He was cross-examined on this matter at some length but I do not regard these answers as adversely affected by that cross-examination.
In the course of his cross-examination Professor Phillips said that he regarded two of the objectives of the plaintiff's specification as being to achieve, first, a firm closure, and second, an uninterrupted smooth seating upon which the firm closure could take place. He had said that the firm closure was partly dependent upon the principle of moments and partly on the principle of kinematics. He was asked:
Would you accept that the application of that principle (i.e. the principle of moments) in the opening and closing of a window by a stay device was elementary? and answered by saying: I would like to answer that question with a reservation and the reservation is this, that if the mechanism is already known it is elementary to apply the principle in order to explain the working of the already existing mechanism. If however we are talking about the application of the principle in order to discover a new mechanism, then this is an entirely different question. He was then asked again: Would you agree that the principle, so far as the window assembly involves it, is somewhat elementary - the application to a window assembly of this principle is an application in its elementary form? and Professor Phillips answered: Provided the window assembly under question is already known. Provided we are engaged in an exercise of analysis and not one of synthesis.
I have set out these answers in full because they seem to me to state in relation to the present patent very clearly the application of the well-known principle that subsequent analysis of the invention - "the dissection of the invention" - is not often helpful in resolving the question of obviousness. It has been criticized as being a mistaken approach, see Blanco White,Patents for Inventions, 4th ed. (1974), at par. 4-214. This matter was also discussed by Menzies J in Commonwealth Industrial Gases Ltd. v. M.W.A. Holdings Pty. Ltd. [11] where he commented on the undesirability of analysis by hindsight because once one sees an invention it may very often appear very simple and one may then wonder why no one previously had thought of so simple an improvement or device. I would add that frequently the answer to that question will be that the device involved an inventive step, though of course that is not necessarily or always so. Menzies J. quoted from Lord Russell in Non-Drip Measure Co. Ltd. v. Strangers Ltd. as follows [12] :
Whether there has or has not been an inventive step in constructing a device for giving effect to an idea which when given effect to seems a simple idea which ought to or might have occurred to anyone, is often a matter of dispute. More especially is this the case when many integers of the new device are already known. Nothing is easier than to say, after the event, that the thing was obvious and involved no invention. The words of Fletcher Moulton L.J. (British Westinghouse Electric Manufacturing Co. v. Braulik [13] ) may well be called to mind in this connexion: "I confess" (he said) "that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to the inventors, and in my opinion it is not countenanced by English patent law."
My Lords, it is always pertinent to ask, as to the article which is alleged to have been a mere workshop improvement, and to have involved no inventive step, has it been a commercial success? Has it supplied a want? Some language used by Tomlin J. in the case of Samuel Parkes & Co. Ltd. v. Cocker Bros. Ltd. [14] may be cited as apposite: "Nobody, however, has told me, and I do not suppose that anybody ever will tell me, what is the precise characteristic or quality the presence of which distinguishes invention from workshop improvement The truth is that, when once it has been found, as I find here, that the problem had waited solution for many years, and that the device is in fact novel and superior to what had gone before, and has been widely used, and used in preference to alternative devices, it is, I think, practically impossible to say that there is not present that scintilla of invention necessary to support the patent."
Professor Phillips was asked in cross-examination whether, if given a specified "briefing", was there any part of the Meyers Taylor patent which could conceivably be beyond his comprehension. Professor Phillips answered as follows:
Yes. I would say that I would be surprised if the ordinary - how do you describe him - skilled tradesman, would, even to begin with, come up with the notion that a fixed hinge and a single link is part of the solution, he may very well come up with the idea of there being slots, cut in casements; he could well come up with the idea that pivots are available; he could well come up with the idea that you could do something with pivotted links; he would be well aware of travelling nuts and jack screws, especially because you told him about that; he would be well aware that the window is able to open in different ways; he would be well aware from ordinary practice of most of these elements of the construction of the new device. What I believe that he would not come up with is this particular combination of those elements that in this special cunning way has solved the problems that - or allegedly solved the problems - that Beaumont allegedly set out to solve.
Dr. de Laine said that the offsetting of the pivots at each end of the link give a relatively large force and combined with that the lateral displacement of a link allows the window to seal properly when closed. He said that in his opinion an ordinary skilled person in the art would not come up with that concept as a matter of routine. He also said that he had from the drawings made a calculation of the relative closing forces on the Steel window and the window depicted in the drawings in the plaintiff's specification, and found that the force in the latter was approximately 3.4 times greater. He was asked in cross-examination whether the features involved in the stay assembly as claimed would be within the competence of a design engineer engaged in the designing of stay assemblies for caravan windows, and replied, "Not unless he were inventive".
The evidence with respect to the K.M. Cyclone-type window does not clearly establish that it was available for inspection by the public. It was proved that a particular example was installed in a private house and other witnesses said that they had seen some such windows in houses elsewhere and that windows "like that" had been in use for many years. For present purposes, however I am prepared to assume that a window of the type described by the witness Benson as shown in a photograph was available for public inspection in Australia before the priority date.
There is one aspect of Mr. Benson's evidence which should be mentioned in relation to obviousness and that is his account of the K.M. Cyclone-type window from which it appears that it was well known to him throughout the period of his work for the defendants. In the course of that work, the consultants became aware of the plaintiff's patent, as appears from Mr. Propsting's evidence. If in truth the step from the K.M. Cyclone-type window to the claims in the patent is obvious, it must have been obvious to Mr. Benson at the time of the designing of the infringing window. I cannot understand how, if that be right, that window could have been brought to the attention of the defendants and their advisers only a week prior to the commencement of the hearing. The truth however is that, although the K.M. Cyclone-type window is to be assumed to be part of the prior art, and was known to Mr. Benson, the step from that window to the features set out in claims 1 and 2 is by no means obvious, even with the benefit of hindsight, and accordingly the failure of Mr. Benson to draw it to the attention of the companies and their advisers at an earlier stage is readily understandable.
In the respects in which Mr. Benson's evidence differed both in detail and in general conclusions from that of Professor Phillips and Dr. de Laine I prefer their evidence.
As to common general knowledge the defendants placed reliance on the "principle of moments" and sought to establish that it was an elementary principle. The evidence of Professor Phillips and Dr. de Laine was that, although the principle of moments was involved, it was not the exclusive principle governing the design or the operation of the mechanism. That depended also on kinematics, i.e. the study of the movements of the parts relative to each other and relative to the fixed frame. Neither regarded the principles or their application as elementary in all circumstances. As Professor Phillips pointed out the analysis of an existing mechanism in terms of the principle of moments is straightforward but synthesis of the forces and relative movements for a new mechanism is another matter. On this particular point I accept the evidence of Professor Phillips and Dr. de Laine and regard the evidence for the defendants as an over-simplification. No other engineering or design principles said to be part of common general knowledge were relied on by the defendants.
Apart from evidence of the relevant engineering or mechanical principles, the case for obviousness was approached by the defendants in two ways. The first was the analysis of the drawings in the specification to support the argument that the opening and closing mechanism was merely a logical consequence of the location of the hinge point and the size of the window. This however involves the use of hindsight and working back from an embodiment of the invention to show how easy it was.
The second was by evidence as to the steps which would be necessary in order to convert the window depicted in the illustrations in the Steel specification to the window illustrated in the drawings forming part of the specification in suit, namely the preferred embodiment of the invention suitable for use in a caravan.
Mr. Propsting and Mr. Benson were asked what engineering problems had to be overcome at the priority date to take the actuating arm shown in the Steel patent through the fixed frame of the window. The answer to that question was, it obviously had to be, that there would be no problem, and that a competent tradesman would require only simple tools. No relevant conclusion can however be drawn from that fact, because it is not to the point that an invention once made is easy to carry into practical effect: see National Research Development Corporation v. Commissioner of Patents [15] .
The same approach was pursued in cross-examination of Professor Phillips, who was asked what would be required to convert the Steel window into the window illustrated in the plaintiff's patent, although the answer was that quite a complicated process would be necessary.
I do not regard such a question as relevant to the question of obviousness. The nature of the mechanical steps involved in the conversion of an existing window into a window embodying the invention, when the addressee is presented with both windows, can do no more than show whether that particular mode of carrying the invention into effect is simple or otherwise. The invention is not the conversion of one window into another, but the devising of a new form of window assembly.
Both Professor Phillips and Dr. de Laine stated that the Steel specification operates in quite a different fashion from a window embodying the plaintiff's patent. I prefer their evidence as to the Steel patent to that of the defendant's witnesses. I am satisfied that the Steel specification is directed to quite a different problem from that with which the plaintiff's patent deals. It appears to me to point away from the solution embodied in the plaintiff's patent by its insistence on the use of two supporting arms on each side of the casement.
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.
No doubt in some cases it is possible to prove want of novelty by pointing to an isolated feature of some prior publication, but for the purposes of obviousness it is not enough to point to an isolated feature because the inquiry is what does the prior publication teach or reveal and for that purpose it must be looked at as a whole. The isolation of a single feature and its application in combination with others in a different setting may itself be an inventive step. A feature of the plaintiff's patent is that the link is extended forwards beyond the plane of the moving casement and backwards beyond the rearward plane of the fixed frame, and pivotted at each end. It is that combination, along with the "offsetting" of the link to one side so as to leave the opening or embrasure clear of obstruction that produces the improved result. It is also argued that the K.M. Cyclone-type window involved a slotted opening in the casement frame but the description given in evidence and the photograph and the oral evidence demonstrate that there is no slotting in the casement frame. There is in fact an additional member or box attached to the inside of the casement at the bottom of the frame, in which the actuating link or lever slides longitudinally, but that does not constitute any relevant disclosure of the pivotting of the link at points outside the casement and inside the fixed frame. It is true that Mr. Benson said that the actuating arm passed through to the inside of the fixed frame but there was no evidence as to how it there operated, whether on a pivot or otherwise. In my opinion the K.M. Cyclone-type window is no basis for a conclusion that the invention is obvious.
It was further argued that in order that the claims could be regarded as claims for a true combination it had to be expressly included in the claim that it was in respect of a combination of the various features mentioned. In my opinion that submission is misconceived. It is enough if it appears from the specification and the claim that there are a number of features, whether old or new, which in fact operate in combination to produce a new or improved result.
It was argued that there was no inventiveness in making a slot in the frame of the window and the evidence of Professor Phillips that, if the ordinary skilled craftsman was asked to make a slot, he would have no difficulty in doing so with a drill and a file was relied upon. The defendants relied upon an answer that, if a skilled craftsman were instructed to put something through the framework of a window, he would know that the way to do it was to drill or otherwise make a hole and push the relevant article through the hole. But that is to inquire about an entirely different question. The necessary inquiry is as to the decision that the relevant object should be put through the frame of the window and that decsion may involve an inventive step. The step, if otherwise inventive, will not lose its inventiveness because once the idea is conceived it is a very simple matter to put into effect. The latter aspect has nothing to do with obviousness. It is no valid criticism of the claims that they fail to tell the reader how to make a slot, because that is an easy thing for a skilled tradesman to do once he is told to do it.
It was argued that the evidence showed that the ultimate closing was achieved in the old hand operated window, and likewise in the new mechanically operated window, by the relevant catch. I do not think that the evidence does establish that. It is, I think, clear from Dr. de Laine's evidence that he conceded the possibility that the catch might have some such effect but he made it clear that he had not examined the particular catch and that an examination of any particular catch would be necessary before one could say whether it did or did not force the window harder or further against the frame than the winding mechanism had achieved. Nor is it to the point to say, if it be the fact, that in some configurations the catch might have some effect in the final stages of closing. It is no doubt clear enough that a catch could be devised which would in some circumstances apply additional closing force. It seems to me however that the argument is misconceived because there is no objection of want of utility, and moreover the fact that there is no want of utility is demonstrated by the defendants having seen fit to copy the preferred embodiment in all respects, save for the substitution of a mechanical equivalent for the jack screw and travelling nut.
In the result I do not think that the defendants have established obviousness in relation to claim 1. It is trite law that a "scintilla of inventiveness" is sufficient and that "no smallness or simplicity will prevent a patent being good" (Riekmann v. Thierry [16] ; and see Vicars, Sons & Co. v. Siddell [17] ). I am satisfied that there was here an inventive step in the devising of a new combination of features to obtain an improved result. Claims 2, 3 and 4 each add additional integers to the combination. Even if each such integer itself be old, that does not of itself make the claims invalid. They are no more, or less, than particular embodiments of claim 1.
No argument was advanced on the objection of failure to comply with s. 40 and I am satisfied that the alleged defects set out in the particulars have not been made out.
I am therefore satisfied of the validity of each of the claims. Accordingly the counter-claim for revocation should be dismissed with costs.
The plaintiff's counsel stated that if the plaintiff succeeded, it would under s. 118 (1) elect in favour of damages rather than an account of projects.
The question remains as to the costs of the infringement action, insofar as it failed against the defendants other than the second, sixth, seventh and eighth defendants. The defendants are related companies and they have all been represented by the same solicitors and counsel. There was a single defence delivered in respect of all defendants, a single affidavit of documents on behalf of all defendants, and, though separate answers were given to some interrogatories, all answers were contained in the one document. In these circumstances I think that those defendants who succeeded in the claim for infringement should receive in respect of that claim such costs as are exclusively referable to their having been added as defendants.
The plaintiff asked for a certificate of contested validity under s. 169 of the Patents Act. There is no doubt that the validity of the patent has been put in issue and that there has been a genuine contest as to its validity. In the circumstances the plaintiff is entitled to a certificate.
Meyers Taylor Pty Ltd
Vicarr Industries Ltd