Polaris IP Pty Ltd v Brolock Pty Ltd 2025 & TCT Group Pty Ltd v Brolock Pty Ltd [2025] APO 30

1. The application was filed on 16 February 2017. Consequently, substantive amendments of the Patents Act 1990 (the "Act") brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to the application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Notably each Opponent's bears the onus of proving their case to the requisite standard in each of their oppositions.
2. As there are two distinct oppositions, I will consider each of these in turn, starting with the TCT opposition.

1. In the TCT SGP, TCT pursued grounds under:
   • s59(b) and s18(1)(b)(i) - the invention as claimed is not novel in view of the prior art base as it existed before the priority date of the claims;
   • s59(b) and s18(1)(b)(ii) - the invention as claimed is not inventive in view of the prior art base as it existed before the priority date of the claims;
   • s59(c) - the specification does not comply with s40(3), in that the claims are not clear and succinct;
   • s59(c) - the specification does not comply with s40(3), in that the claims are not supported by matter in the specification;
   • s59(b) and s18(1)(c) - the claimed invention lacks utility;
   • s59(c) - the specification does not comply with s40(2)(a); and

• s59(c) - the specification does not comply with s40(2)(aa).

1. All of these grounds were pursued by TCT in its written submissions and at the hearing.
2. I note that TCT's SGP comprised an allegation that the claims were only entitled to claim priority from the filing date of the application, rather than the priority document, but this was not pressed in the TS or at the hearing. I have decided the TCT opposition on the basis that the priority claim is correct. I note that my decision concerning Polaris's opposition includes an analysis of whether the priority date is valid, and casts doubt over whether the claims may in fact take priority from the priority document. However, given the publication dates, and the disposition of the documents pressed by TCT for both novelty and inventive step as discussed further below, it will make no difference to the outcome in the TCT opposition whether the claims are entitled to take priority from the priority document or not. Consequently, I have not contemplated raising any priority date issues in the TCT opposition using s60(3), or, to the extent necessary, Reg 5.23.

1. As observed earlier, TCT filed a Reg 5.23 request which I must necessarily determine as part of deciding the TCT opposition. As noted in Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8, a number of factors are relevant to whether Regulation 5.23 should be invoked with respect to a document. These include:

a) the circumstances leading up to the evidence not being filed earlier; > > b) what the evidence shows and whether the information is likely to be crucial to the delegate's decision; > > c) the public interest; and > > d) the balance of convenience of the parties if the information is considered.

1. While there are four factors listed, what the evidence shows and whether it is likely to be crucial to my decision is of preponderant weight in the present circumstances. If the material concerned helps make out a ground of opposition that would not otherwise be made out without it, then admission of the material is clearly in the public interest and outweighs any balance of convenience concerns or why the material was not filed earlier in the present circumstances.[8] Conversely, if the material does not lead to a ground of opposition being made out in its absence, then any further delay brought by introduction of the material is clearly not in the public interest, would simply lead to further unnecessary inconvenience to both parties, all of which would outweigh any considerations in favour due to why the material was not filed earlier. Hence, my approach will be to consider the Reg 5.23 request as though the material concerned was actually in evidence, and use this through the lens of the relevant analysis for the grounds to which the Reg 5.23 request relates to inform whether I should invoke Reg 5.23 as requested by TCT.

1. The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to possess the common general knowledge ("CGK") in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd [2000] FCA 980 at [70] to [71] ("Root Quality Control"); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; [1980] HCA 9; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that "... the patent is directed to a person interested in making, constructing, compounding or using the invention..."
2. There was little discussion by the parties on the nature of the skilled addressee, either in the written submissions or at the hearing. The nature of the skilled addressee, and the suitability of the expert declarants to represent the same, was simply absent in written and oral submissions by the Applicant. At the hearing, Mr Tsang noted that Mr Hunter had been accepted as a skilled addressee in TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493 ("TCT Group") but otherwise referred to the OS at section E concerning the skilled addressee. No comment has been provided by the Opponent concerning the suitability of the Applicant's experts to represent the skilled addressee, leading to the rather rare absence of a dispute over which party has the better experts. At [19] of the OS, the Opponent has reiterated Justice Burley's formulation of the skilled addressee from TCT Group at [86], which I also adopted in TCT Group Pty Ltd v Polaris IP Pty Ltd [2024] APO 5 ("TCT APO") at [39]. Given the matters concern the same field, I again adopt this formulation of the skilled addressee for this matter, namely "...a person engaged in, or who has experience in, the design of mechanical devices and, in particular, in respect of hinges used in domestic and commercial applications".
3. Despite the lack of disagreement, I have reviewed the declarations, and, where given, the CVs provided by each of the expert declarants, and I am satisfied that each is able, at least in some way, to adequately represent the views of the skilled addressee as I have defined it. In this regard I note that:
   • Mr Hunter is a mechanical engineer with bachelor's and master's degrees in that discipline.[9] He has extensive experience in product design and development, including of hinges;[10]
   • Mr Murauer is a director of the Applicant and has worked for/in the Applicant for about 25 years designing and manufacturing tools and mechanical components.[11] Mr Murauer has not provided a CV/resume and does not claim any formal qualifications but states that he is a mechanical engineer, as well as being the inventor for the opposed application.[12]
     • Mr Graham is an owner and operator of Lox Locking Pty Ltd, a company that "designs and distributes various items of door hardware including door and gate locks, cabinet locks and latches, door closers and door retainers".[13] Mr Graham has a Bachelor of Education (Industrial Arts) and has gained extensive knowledge and understanding of doors, gates, and their associated hardware through his line of work.[14]
4. Particularly given the lack of dispute, I do not propose to make any general statements or conclusions here about the relative suitability of any of the experts to represent the skilled addressee. Suffice to state that where the declarants disagree on a factual point that I intend to rely upon, or where I seek to make findings of fact based on the expert evidence, it will be up to me to weigh each declarant's evidence accordingly in view of the particular context concerned and their skills, knowledge and experience.

1. The statutory basis for clarity is given at s40(3) of the Act which states that the claims must be clear and succinct. The requirement for the claims to be clear does not mean that terms used in claims must be precise or absolute, as noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; [2000] FCA 890; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) ("Austal Ships") at [14]:

"Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use...The consideration is whether, on any reasonable view, the claim has meaning...In determining this, the expressions in question must be understood in a practical, commonsense manner... Absurd constructions should be avoided...and mere technicalities should not defeat the grant of protection..."

2. In particular one can consider that the claims provide a workable standard if a third party could, without difficulty, determine whether an act falls within the scope of the claim; see Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59 ("Monsanto") at 60-61:

"There will, I think, in the present case be no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim...For these reasons I do not regard the use of the adjective 'substantial' as giving rise to any uncertainty."

1. The only claim the Opponent has objected to for lack of clarity is claim 6. In the OS, the Opponent argues:

"113. Claim 6 lacks clarity for the simple reason that it refers to 'contact between the cam and the housing' in circumstances where none of the previous claims on which it depends introduces or identifies 'the housing'. > > 114. Claim 3 refers to the damper being 'housed inside a sleeve', but that only serves to highlight the problem. 'Housed' is used here as a verb. The only noun is the word 'sleeve'. The skilled addressee is therefore left to guess or presume, as Mr Hunter did (see Hunter 3, [37]), that the 'housing' in claims 6 is in fact the 'sloped surface at the end of the sleeve'. However that residual uncertainty is precisely what s 40(3) is intended to prevent."

2. Mr Tsang did not add anything further regarding the clarity of claim 6 at the hearing, merely referring to the TS and noting that the Applicant conceded the issue in the ATS and was amenable to an amendment to rectify the same.[15] Mr Wood-Roe confirmed this at the hearing.
3. Despite cessation of hostilities between the parties over this issue, I do not accept that claim 6 is unclear as argued by TCT. Claim 6 is directly appended to only claim 5 and indirectly appended to claim 3 via claims 4 and 5, with claims 4 and 5 respectively dependent on only claims 3 and 4. As noted by TCT, claim 3 refers to the hydraulic damper being housed "inside a sleeve". TCT's suggestion that "housed" is used in claim 3 as a verb is clearly correct, but the notion this somehow makes the nature of the "housing" in claim 6 unclear seems little more than a metaphysical abstraction. If an object is housed by a thing, then that thing is undoubtedly a housing - to entertain, particularly in the present context, the alternative is merely an apagoge that undermines TCT's position. I am not satisfied that claim 6 lacks clarity.

1. The test for determining novelty is often expressed in the form of the reverse infringement test as given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; [1977] HCA 19; 13 ALR 605 at page 611 ("Meyers Taylor"):

"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."

2. In determining whether a disclosure comprises an infringement, it is convenient to consider the principles laid down in General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at pages 485-486) ("General Tire & Rubber") as to what a skilled addressee would do based on the disclosure in question:

"...if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.

If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice."

1. Of relevance to this decision, s7(1)(c) of the Act provides for prior art information for the purposes of "whole of contents" novelty by referring to subparagraph (b)(ii) of the definition of "prior art base" in Schedule 1 of the Act. This subparagraph provides criteria that determine whether a document may be used as prior art information for the purposes of whole of contents novelty as follows:

"(b) in relation to deciding whether an invention is or is not novel:

(ii) information contained in a published specification filed in respect of a complete application where:

(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and

• (B) the specification was published after the priority date of the claim under consideration; and
  • (C) the information was contained in the specification on its filing date and when it was published."

1. With respect to "whole of contents" objections, it was noted by Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209 at [178][16] ("Danisco") that:

"A 'whole of contents' objection under s 7(1)(c) and paragraph (b)(ii) of the definition of 'prior art base' in the Dictionary in Schedule 1 to the Act attracts additional considerations. The usual rules as to clarity of disclosure to the skilled addressee apply but, in addition, it must be possible to draft a notional claim (assuming there is not an actual claim to the relevant subject matter) that is fairly based on the disclosure of the prior specification relied upon (E I Du Pont de Nemours & Co v ICI Chemicals & Polymers Ltd [2005] FCA 892; (2005) 66 IPR 462 at [80]-[84] per Emmett J)."

1. TCT's novelty case is premised on AU 2020277205 A1 ("D1") and CN 110259302 A ("D3"). D1 was published on 18 February 2021, but has an earliest priority date of 29 July 2019. D1 therefore nominally qualifies as prior art for the purposes of "whole of contents" novelty. D3 is the Chinese family member of D1, and a translation of this is in evidence as WSH-9. Whilst having the same priority date as D1, D3 was published on 20 September 2019, and therefore is prior art for novelty without any need for "whole of contents" considerations. Unsurprisingly, except for immaterial formatting differences, D1 and D3 are identical, and it is therefore somewhat unusual that TCT seeks to press both of these documents separately and to rely on D1 on a whole of contents basis when D3 alone would suffice. As the TS and TCT's oral submissions at the hearing primarily proceeded by way of D1, I will consider D1 below for novelty purposes, on the understanding that my findings will equally apply to D3.

1. D1 discloses a hinge. The embodiment of D1 most relevant for present purposes is illustrated in figures 1 and 2, reproduced below. As may be seen on these figures, the hinge is suitable for glass doors and comprises a hinge body 1 with first and second clamp plates 4, 5 which are able to clamp glass panels within the hinge via opposing plates, fasteners, gaskets and inserts - these last features are visible on figure 2, but are unlabelled. D1 also comprises a damping mechanism 3. As may be seen by reference to figures 2 and 5 and 6, also reproduced below, the damping mechanism 3 comprises a pair of hydraulic dampers 33 each with its own fixed pressure block 31 and movable pressure block 32 connected to respective ends of the hydraulic damper 33. Each movable pressure block 32 has a first inclined surface 34, whilst each fixed pressure block 31 has a second inclined surface 35. The hydraulic dampers 33 are respectively accommodated in first and second clamp plates 4, 5 and reside on respective damper bases 2, and are arranged parallel to the hinge axis.

1. As may be appreciated from figure 2, the hydraulic dampers 33 are arranged in the hinge in an opposed manner such that the first inclined surface 34 associated with one hydraulic damper 33 can abut the second inclined surface 35 associated with the other hydraulic damper 33 and vice versa. In use, each of the moveable pressure blocks 32 can displace along a line parallel to the hinge axis such that the first inclined surface 34 moves along the second inclined surface 35 of respective fixed pressure blocks 31 so as compress the hydraulic dampers 33 or allow them to extend, depending on the direction of movement. Although various modes of action between the inclined surfaces 34, 35 are discussed in D1,[17] it is clear that the hydraulic dampers 33 reach their maximum possible extension when the hinge is open and are progressively compressed as the hinge closes, the hinge being biased towards the closed position by torsion spring 63.
2. The only feature of claim 1 in dispute between the parties, in terms of whether it is disclosed in D1 or not, is feature 1.11, discussed as feature 1(k) by the parties. I agree that D1 discloses all the other features of claim 1.
3. TCT[18] relied upon Mr Hunter's evidence in support of its case that feature 1(k) is disclosed in D1. Specifically, TCT referred to [85] to [88] of Hunter1 and Mr Hunter's annotated partial copy of figure 2 of D1. These are reproduced below:

"85. As can be seen in Fig. 2 and Fig. 5 of D1, the damper base 2 includes a rectangular cavity for accommodating the hydraulic damper 33 with the fixed pressure block 31 and movable pressure block 32 of the damping mechanism 3. As I have noted above, part of the damper base 2 forms an insert portion to be received in the edge recess of the glass panel. Fig. 2 of D1 shows bosses protruding from an underside of one of the two damper bases 2, which bosses will sit within the conventional rounded regions of the 'mouse-eared' shaped edge recess in the glass panel. This shape is also seen in the gaskets lying below the damper bases 2 in the exploded view of Fig. 2. On a close inspection of the drawings in D1, it is clear, however, that not all of the rectangular cavity accommodating the hydraulic damper 33 will, in use, sit within the edge recess of the glass panel - i.e., the rectangular cavity will not lie entirely within the plane of the glass panel. > > 86. To illustrate this point, an excerpt from Fig. 2 of D1 is reproduced below in Figure 9 of this declaration. As can be seen in Figure 9 below, the triangle-shaped and angled extensions are provided on flanges which extend from the sides of the rectangular cavity. As shown by the two red lines, the bottom of these flanges is set below the top of the rectangular cavity. In addition, the bottom of these flanges presents a surface against which the gasket (shown in green) bears when the hinge is assembled. That is, the gasket (in green) is sandwiched between these flanges of the damper base 2 and the outer face of the glass to protect the glass from excessive stress as the front and rear plates of the hinge clamp are tightened. The green line (i.e., below the two red lines) thus illustrates where the gasket would lie in relation to the rectangular cavity housing the damping mechanism 3.

87. It is therefore apparent from Fig. 2 of D1 that about two thirds of the cavity housing the damping mechanism 3 will lie within the edge recess of the glass panel, noted by marking 'x' in Figure 9 above. As the fixed pressure block 31 appears dimensioned to closely fit or match the rectangular cavity and the hydraulic damper 33 itself appears only marginally smaller than the fixed pressure block 31 which holds it, one can then appreciate that a considerable portion of the damper 33 will not be within a plane of the glass panel. The portion of the damper 33 which is outside the plane of the glass panel has been coloured in red and green to correspond with the red and green lines marked against the width of the rectangular cavity.

88. In my view, therefore, D1 discloses all the features 1(a) to 1(k) of claim 1. In this connection, I consider that feature 1(k) is satisfied because this feature does not require or specify that the entirety of the damper must be located outside of the planes which describe the faces of the glass panel and inside the first hinge member. This feature is therefore realised when at least part of the damper is located outside of the planes of the glass. As such, in my view, D1 discloses all the features of claim 1." (emphasis in original)

1. A further reason TCT made in support of its views are that:[19]

"Mr Hunter interprets the language of integer 1(k) as requiring that only part of the damper be located outside of the planes of the glass panel. Mr Hunter holds this view because nothing in the claim requires or specifies that the entirety of the damper must be located outside of the planes describing the faces of the glass panel: Hunter 1, [88]. Consistently with this, Mr Hunter observes that having the ability to use a longer damper - being one of the professed advantages of the Opposed Application (see p 6, lines 28-29) - does not require that the entire damper be located outside of the panel at all. This is because, as Mr Murauer has himself observed, 'if the dampener was mounted in the hinge in a vertical orientation, then this would also allow a longer dampener to be used' (Murauer, [11]). In other words, it would be sufficient to simply change the dampener's orientation (from that of the Polaris 120 as depicted in Annexure MM-1) to be parallel to the hinge axis. This is precisely the orientation of the dampeners shown in D1. Further, Mr Hunter observes that a damper need not be constrained in its length when part of the damper lies within the plane of the glass panel - i.e., when the damper lies only partly outside of the glass panel, as is apparent from D4 and D5. That is, it is not necessary for the damper to be located wholly or entirely outside of the glass panel in order to achieve a longer damper. (Hunter2, [11])." (emphasis in original)

2. Mr Tsang essentially reiterated the same arguments at the hearing.
3. The Applicant contested TCT's position in the ATS[20] by reference to the evidence of Mr Murauer and Mr Graham:

"55. This view of Mr Hunter is contradicted in the declarations of Murauer[21] and Graham[22]. > > 56. In Murauer, at paras 21 and 22: > > 21. It does not make sense to me for something that is mostly 'inside' something to be considered to be 'outside' of it. That is not the normal meaning of the word 'outside'. > > 22. Furthermore, the dampener in D1 is located inside the insert portion of the hinge which in use locates in the mouse-ear cutout in the glass. The dampener in D1 is therefore constrained in size because it must fit within the mouse-ear cut out in the glass. The definition in the claims of the Opposed Application that 'damper is located outside of the planes which describe the faces of the glass panel' was not intended to include arrangements like D1 and I believe this is clear from a reading of the specification of the Opposed Application. > > 57. In Graham, at paras 16 to 18: > > 16. The inventor has explained that by locating the dampener outside of the planes of the faces of the glass panel, that this allows use of a longer dampener. However, in D1, this is not the case. The length of the dampener is still constrained by being located within an insert component which in turn locates inside a cut out in the glass. I therefore do not think that the inventor intended the meaning of the phrase 'located outside of the planes of the glass' to encompass the arrangement seen in D1. > > 17. I do not think that the normal meaning of the word "outside" means only a small portion of something is outside. I also do not think that this is the intended meaning of the word in the context of the claims of the Opposed Application. > > 18. I do not think that feature 1(k) is seen in D1. > > 58. Applicant therefore rejects the complaint that claim 1, or any of the dependent claims, are not novel in light of D1. The same considerations apply to D3." (emphasis in original)

4. Mr Wood-Roe essentially reiterated these arguments at the hearing but noted that the Applicant would not have a problem with further defining the claim to avoid the issue as raised by TCT.
5. It is perhaps helpful to reproduce the relevant passage from claim 1 the centre of the dispute:

"...the at least one damper is located outside of the planes which describe the faces of the glass panel..."

The Macquarie Dictionary Online, 2025, www.macquariedictionary.com.au, Macquarie Dictionary Publishers, an imprint of Pan Macmillan Australia Pty Ltd (the "Macquarie Dictionary") defines "locate" as:

"verb (located, locating)

-verb (t) 1. to discover the place or location of: to locate a leak in a pipe.

2. to set, fix, or establish in a place, situation, or locality; place; settle: to locate one's headquarters in Norfolk Island.

3. Australian History

a. to grant (land) to settlers: grants of 50 acres were located.

b. to establish (oneself, someone) in a place with a view to settling: they located themselves on undeveloped land.

4. to refer (something), as by opinion or statement, to a particular place: locate the garden of Eden in Babylonia.

-verb (i) 5. to find a suitable location: the new Sydney airport must locate somewhere."

1. For present purposes, the verb form of definition 2 is most appropriate. That is "located" as used in claim 1 refers to setting, fixing, situating, placing etc. the damper in a certain way. That "way", of course, is "outside the planes which describe the faces of the glass panel". As far as that goes, the Macquarie Dictionary defines the noun "outside" as:

"1. the outer side, surface, or part; the exterior. > > 2. the external aspect or appearance. > > 3. something merely external. > > 4. the space without or beyond an enclosure, boundary, etc. > > 5. seaward, beyond the point where the waves break. > > 6. Rugby Football > > a. a back. > > b. any player other than a forward. > > 7. Colloquial the world outside prison."

2. Definition 4 is most apposite for present purposes. That is the damper is set, fixed, placed, situated etc. without or beyond the planes which describe the faces of the glass panel. Applying this to Mr Hunter's annotated copy of figure 2 of D1, it is difficult to see how the damper there, of which about two thirds to three quarters lies within the planes of glass panel, can be said to be set, fixed, placed, situated etc. without or beyond the planes which describe the faces of the glass panel. To use an agricultural analogy, one would not say that a cow which has stuck its head through a fence to avail itself of the grass growing on the other side is beyond the fence as such, even if part of it is.
3. Mr Hunter and TCT are correct in that the claim does not explicitly state that the entirety of the damper be located outside the planes concerned. However, that does not mean that any damper which has any part of itself located beyond the planes concerned can be considered to be located "outside" those planes as such - the claim language clearly adverts to a situation whereby the damper itself is actually located beyond the planes concerned. There may well be situations where part of a damper lies within the planes but one would still consider the damper itself to be beyond the planes - to use an agricultural analogy again, a cow that has escaped its fencing would be considered to be beyond that fencing even if it is standing adjacent to the fence with its tail within the fence boundary. However one wishes to put it, it is simply an unnatural distortion of the claim language to consider that the damper of D1 is located "outside" the planes describing the faces of the glass panel.
4. TCT's argument, based on Mr Hunter's views that one does not need to have the damper within the planes concerned to allow for a longer damper, is merely extraneous in constructional terms. The words of the claim are clear on their own terms and cannot be varied in view of whether one considers they achieve a certain purpose or are necessary for that purpose - such considerations are more relevant to matters of support, sufficiency, or utility.

1. On balance I am not satisfied that any of the claims lack novelty in view of D1 or D3. TCT has been unsuccessful in making out this ground of opposition.

1. The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:

"(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 (whether in or out of 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).

(3) The information for the purposes of subsection (2) is:

(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined."

1. Although not expressly referred to in the Act, it has been accepted by the authorities that lack of inventive step in the Act is commensurate with the previous concept of obviousness under the Patents Act 1952 (albeit relying on a different prior art base); see Re James Earl Winner and Donna C Winner v Ammar Holdings Pty. Limited [1992] FCA 377 at [12]; [1992] FCA 561; (1992) 24 IPR 137 at 140.

1. In terms of inventive step, the TS did not explicitly put forward an approach to be taken. Rather, it seems TCT has identified the closest items of prior art to the invention as claimed and refers to the differences between these and the claims as being conventional, known in the art or obvious in view of Mr Hunter's evidence.[23] At the hearing, Mr Gehrig framed the question of obviousness per one of the ways that Justice Nicholas outlined in Hood v Bush Pharmacy Pty Ltd [2020] FCA 1686; 158 IPR 229 ("Hood") at [116] and references therein, as follows:

"Something may be 'obvious' in light of the common general knowledge, or the common general knowledge coupled with relevant s 7(3) information, if it is 'plain or open to the eye or mind, something which is perfectly evident to the person thinking on the subject' (Olin Mathieson Chemical Corp v Biorex Laboratories Ltd [1970] RPC 157 at 188) or something which 'would at once occur to anyone acquainted with the subject and desirous of accomplishing the end' (Vickers, Sons & Co Ltd v Siddell (1890) 15 App Cas 496 at 502)".

1. Justice Nicholas[24] also identified other common ways of assessing obviousness, namely:

"An invention may also be obvious in light of the common general knowledge if the person skilled in the art faced with the same problem as the inventor would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not (Wellcome at 286 per Aickin J) or (using the language of the 'modified Cripps question') if the person skilled in the art would be directly led as a matter of course to take such steps in the expectation that doing so might well produce a useful or better alternative to the prior art (Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 at [50]- [53]). However, a claimed invention is not obvious merely because the person skilled in the art would consider that it was 'worthwhile to try'."

2. The Applicant, in discussing inventive step in the ATS[25], refers to Hood[26] and later identifies the problem to be solved as improving damping performance[27]. At the hearing, Mr Wood-Roe referred, at various points, to the skilled addressee not being led as a matter of course or being led to solve a different problem instead of the problem referred to in the ATS.
3. In terms of the problem-solution approach, I tend to agree with the Applicant, in that I consider the problem to be solved, if one were to frame the matter in those terms, is improving the damping performance of hinges used with glass panels having an edge recess. As I understand it from the TS and from Mr Gehrig at the hearing, TCT did not necessarily dispute the Applicant's formulation of the problem. Rather, TCT took issue with the suggestion[28] that Mr Hunter had solved a problem that was not posed; Mr Gehrig argued that rather, Mr Hunter was considering what is plain or open to the mind of the skilled person.
4. As apparent from Hood and references therein, there are a variety of ways of assessing inventive step, and one need not resort to a problem-solution approach as such. However, it will be the case, where an approach is properly and appropriately applied, one would expect that the outcome from each approach will yield the same result. It is not apparent to me that any of the approaches in the present matter would be inappropriate in some way. I will utilise the reformulated Cripps question as per Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411; 77 ALJR 398; 194 ALR 485; 56 IPR 129 ("Aktiebolaget") at [53] as follows in assessing inventive step:
   • Would the [skilled addressee] at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result].

The "useful desired result" in this case is improving the damping performance of hinges used with glass panels having an edge recess.

1. Whilst US 2019/040667 A1 ("D7") and US 2018/010376 A1 ("D8") were particularised for the purposes of s7(3) in the SGP, TCT's case has understandably shifted in view of amendments to the claimed invention. Ultimately lack of inventive step was pursued in the TS based on s7(3) with regard to D3 and D7. The shift in TCT's case has led to a number of procedural issues that I will briefly consider before moving onto whether either of D3 or D7 deprive any of the claims of inventive step under s7(3).
2. In that regard, the position of D7 is somewhat unusual. While cited in the TCT SGP, the document was not filed with the SGP on 27 July 2022. This means that D7 was not covered by the Commissioner's usual direction, made on 28 July 2022, making documents accompanying the TCT SGP part of the EIS. Whilst D7 was filed on 28 July 2022, this was after the aforementioned direction was made. D7 was not otherwise filed into evidence during the evidentiary stages of the opposition. The upshot is that D7, as best understood, is not actually in evidence and as per Coal Corporation of Victoria v David William Hinkley & Brian Alan Nugent [1993] APO 56, is not available to TCT in its opposition.
3. However, D7 was filed as part of the Reg 5.23 request. Consequently D7, if I were to accede to the Reg 5.23 request, would become available to me in deciding the TCT opposition, even if not still formally part of TCT's opposition as such. As previously noted, the Reg 5.23 request also comprises Hunter3, which discusses the inventiveness, amongst other things, of the claims as amended in view of D3, D7 and D1"[29].
4. Conversely, D3 was filed as EIS[30] and pressed for inventive step purposes in the TCT SGP. TCT does not need the Reg 5.23 request to introduce D3 into the opposition. However, as may be apparent, the attempted introduction of Hunter3 is (in part) sought by TCT to help establish that the claims as amended lack inventive step in view of D3.

1. The arguments presented in the TS[31] proceeded on the basis that feature 1(k) would be found absent in D1/D3. Moving the damper 33 outside the planes which describe the faces of the glass panel was said to be "natural and obvious" to allow the hinge to be used in a wider range of applications, for example solid panels[32]. Mr Gehrig made similar arguments at the hearing. These arguments are based on Hunter3 at [57], which is reproduced below:

"Considering the hinges shown in D3 for glass panels having an edge recess, and faced with the task of adapting those hinges to use with panels (glass or otherwise) not having an edge recess, it seems to me that it would be a natural and obvious consideration to displace the damping mechanism of those hinges laterally into the hinge member of the leaf assembly. This is because the damping mechanism of those hinges is designed to operate generally parallel to the plane of the panel. By displacing the damping mechanism laterally, not just the damper 33 but also the movable pressure block 32 and the fixed pressure block 34 can be moved entirely out of the plane of the panel, thereby enabling the panel to be solid. This could be expected to lead to some extra bulk or volume in the hinge member and could be expected to involve some tests or trials of a narrower profile damping mechanism, but the hinges would then be adapted to use in a much broader range of applications with basically the same damping mechanism as in D3." (emphasis in original)

2. At least two problems for TCT's case emerge from [57] of Hunter3. The first is that the modification posited by Mr Hunter changes the hinge in D3 from a hinge which "...is arranged to attach to a glass panel which is provided with an edge recess..." as recited in claim 1 to one which is attached to something that does not have such a recess. Mr Hunter does not indicate that a hinge so modified in the way he indicates would still be capable of being attached to a glass panel with an edge recess. It is a simple matter of logic that it would seem unlikely that that is the case with Mr Hunter's "modified" hinge absent any evidence to the contrary. While essentially fatal to TCT's arguments with respect to D3, this also undermines Mr Hunter's evidence vis-à-vis D3 and inventive step, since it suggests that Mr Hunter simply concentrated on achieving an end result that provided the missing feature (i.e. 1(k)) thereby indicating that his evidence is confounded by ex post facto analysis.
3. A second issue is that Mr Hunter concedes that the changes he has outlined "...could be expected to involve some tests or trials of a narrower profile damping mechanism"[33], but he does not elaborate on the nature or degree of such experimentation. It could be simple or routine testing and experimentation or a major research project. The absence of elaboration on this undermines any ability to infer that claim 1 lacks an inventive step in view of D3.
4. I am not satisfied that any of the claims lack inventive step in view of D3.

1. Unsurprisingly D7 discloses a door hinge[34], which is best understood by reference to the figures, of which 1 to 3 and 7 are reproduced below. As may be seen from these figures, the hinge 10 comprises left and right leaves 34, 35 extending from respective parts of cylinder 36 that, when the hinge 10 is assembled, forms the barrel of hinge 10. As may be understood from figures 1 and 7, a number of components reside within cylinder 36. These include top cap 11, shaft casing 12, bearing ring 13, shaft sleeve 14, ring placement groove 15, ball bearing ring 16, O ring 17 and oil seal 18 that together define an upper rotatable assembly that allows the upper part of the hinge 10 to rotate between an open and closed position. Adjustment pin 19 threadedly engages rotation control mechanism 20 at its lower end, with its upper end being accessed via a hole in top cap 11. Rotation control mechanism 20 comprises a slot for housing pin 22 that engages spring 24 which biases the hinge to the closed position. Rotation of adjustment pin 19 thereby adjusts tension in the spring 24.

1. Rotational control mechanism 20 comprises a ribbed portion 38 at its lower end which is complementarily received in the upper portion of control cylinder 26, such that the rotational control mechanism 20 and control cylinder 26 are fixed with respect to each other. A flat "D" shaped edge on the upper part of rotational control mechanism 20 engages a complementary flat section in the shaft casing 12 such that rotational control mechanism 20 is fixed with respect to, and rotates with, right leaf 35. Consequently, control cylinder 26 is also fixed with respect to right leaf 35
2. A leaf ring 21 separates the leaves 34, 35 and the upper and lower portions of the cylinder 36. The lower portion of the barrel/cylinder 36 comprises a hydraulic damper 39 housed within hydraulic cover 23. Hydraulic damper 39 includes control cylinder 26, control pin 28, outer casing 29, hydraulic pin 30 and bottom cap 31. Control cylinder 26 is positioned within outer casing 29 and has a pair of spiral slots 40. Control pin 28 is fixedly mounted with respect to outer casing 29 via being received within a hole therein. Control pin 28 is also received in spiral slots 40 and may also have a pair of sleeves 25 which act as ball bearings in the spiral slots 40. Outer casing 29, and thereby control pin 28, is fixed with respect to, and rotate with, left leaf 34.
3. Hydraulic pin 30 extends from base cap 31 with its upper end being operably connected to the control cylinder 26 via a plunger (not illustrated). The plunger and base cap 31 define a fluid chamber, thereby providing a means to apply a force against control cylinder 26, with the result that hydraulic damper 39 is operable to provide a force against spring 24. Hydraulic pin 30 is threaded, such that it can be axially translated via being rotated by a user through a hole in end cap 31. This allows a user to vary the hydraulic pressure of hydraulic damper 39 via raising/lowering the plunger and control cylinder 20 thereby increasing/decreasing the volume of the fluid chamber and so decreasing/increasing resistance to the hinge closing.
4. When hinge 10 is, for example, 90 degrees open (as seen on figure 2), control pin 28 is closer towards the lower part of slots 40[35] with the result that control cylinder 26 is in a higher position in the hinge barrel such that it compresses spring 24. This compression of spring 24 provides a biasing force to close the hinge, and in doing so movement of the right leaf 35 causes the control cylinder 26 to rotate in a downward direction, with control pin 28 moving upward in the spiral slots 40 until they reach the terminus of the spiral slots 40. At this point, which is associated with hinge being open by about 20 degrees[36], the hydraulic damper 39 applies a force against the spring 24 so as to slow the closing of the hinge 10 towards the closed position (as seen on figure 3). As may be seen from figure 7, the hinge 10 is capable, at least in some embodiments, of opening to around 180 degrees, and indeed this is apparent in D7 at [0028].
5. An obvious difference between D7 and the claimed invention is that D7 discloses a door hinge. In that regard, TCT considers that D7 does not disclose features 1.9 and 1.10,[37] based on Hunter3.[38] As I understand it, both parties do not disagree that these are the only differences between claim 1 and D7; that is, I took it that both parties otherwise accepted the presence of the remaining integers of claim 1 in D7. I agree with that position.
6. Unsurprisingly, TCT's case that claim 1 lacks an inventive step in view of D7 is based on Hunter3:[39]

"136. The difference between the hinge of D7 and the hinge defined in claim 1 of the Opposed Application relates to the hinge portions being designed for use with glass panels having an edge recess. That is, the hinge portions are designed for a glass panel to be clamped or sandwiched between the two parts of the hinge portion - namely, between a 'hinge member' and a 'clamping member' as they are denoted in the Opposed Application with an insert provided to sit snugly within the edge recess between those two parts of the hinge portion. This is a conventional hinge leaf configuration for glass panels having an edge recess and corresponds to integers 1(h) to 1(j) of claim 1: Hunter 3, [19]. > > 137. As observed by Mr Hunter, glass panels are preferred for certain applications. Further, Mr Hunter noted that there were well-known engineering advantages associated with using glass panels with edge recesses, including ease of installation and alignment of the hinge assemblies, and less stress on the glass panel during the assembly and operation of the hinge by virtue of the recess: Hunter 3, [23]. > > 138. Indeed, it is also apparent from the Opposed Application itself that hinges are designed for use with a range of different doors, gates, and panels. The Opposed Application at p9, lines 7-11 states: > > Although the embodiment described above described the hinge in use with a glass pool fence, in other embodiments the hinge can be used with other types of glass panels, such as a glass shower screen door. For example, hinge 100 is designed to be surface mounted and used with fence or gate structures formed from extruded metal square sections or glass panels. > > 139. In addition to identifying a motivation for the ordinary skilled person to adapt the hinge portions or leaves 34, 35 of the hinge 10 of D7 for use with glass panels, Mr Hunter also observed that the design of such 'hinge portions' for glass panels with an edge recess was commonly known and understood by skilled persons in the field before May 2020: see Hunter 3, [12], [13], [22]. Further, Mr Hunter observed that it would not have required any inventive effort for a skilled person to adapt the leaves 34, 35 of the hinge in D7 to the alternative well-known design for glass panels having an edge recess in order to make that hinge suitable for use with those glass panels. See Hunter 3, [23]. > > 140. For the above reasons, claim 1 of the Opposed Application lacks an inventive step in light of D7."

7. The Applicant refuted the Opponent's case with respect to claim in the ATS at [61] to [70]:

"61. The immediate difficulty which is apparent with the device of document D7 is that it is a door hinge, and not a gate hinge. At para 15 of Hunter 3, Mr Hunter states that 'D7 describes a self-closing hinge for a door or gate'. But Mr Hunter is mistaken in this belief. We have word-searched D7 and at no point does it teach the use of its hinge on a gate. Mr Hunter appears to have inadvertently imported this purpose into D7. > > Closed and Open positions are incompatible with pool gate usage > > 62. The relevance of D7 being a door hinge becomes apparent when one comes to consider how D7 operates between its open and closed conditions. Figures 2 and 3 of D7 are reproduced below. In the section 'Description of the Drawings' in D7 it is explained that Figure 2 shows the hinge in its open position, and Figure 3 shows the hinge in its closed condition. > > > > 63. In the closed position of figure 3, the two leaves 34, 35 of the hinge are in a close facing parallel relationship. In use, the leaves are affixed respectively to the edge of a door and the inside surface of a door frame using countersunk screws in the countersunk holes which are best seen in Figure 2 of D7. > > 64. The barrel of the hinge which joins the leaves will sit outside the joint between the door and the doorframe on the inwardly opening side of the door. This type of hinge mounting is commonly seen used with doorways inside buildings. > > 65. The closed and open positions of the hinge of D7 are completely different to those required for use in a pool gate hinge. Figure 3 of the present application is reproduced below. This image shows the hinge in its closed condition. As can be readily appreciated, in this position the two leaves of the hinge are pointing outwardly 180 degrees away from each other. > > > > 66. If the hinge of D7 were repurposed for use as a hinge in a pool gate then it would actually serve to bias the pool gate to a completely open position and would never return the pool gate to the closed position. This would not be a workable solution and would not even be contemplated by the skilled person. > > 67. There are additional countervailing issues which the skilled person would face if they tried to repurpose the hinge of D7. > > Not intended for outdoor use > > 68. The hinge of D7 is for use on doors in internal applications. Even if mounted on the entrance door to a building, the damping and spring components of D7 are not exposed to the elements. The hinge of D7 does not need to withstand direct sunlight, rain, wind, frost and wide ranging temperature fluctuations. The skilled person would not adapt a hinge designed for internal use for external use. And if they did, this would introduce a significant burden of redesigning the assembly to withstand outdoor use. > > Not intended for use with glass panels > > 69. At para 18 of Huner 3 [sic], Mr Hunter acknowledges that the hinge of D7 is not designed for use with glass panels having edge recesses. Mr Hunter asserts that the skilled person would find it obvious to modify the leaves 34, 35 of D7 for use with clamping members and using an insert portion. There is no reason provided by Mr Hunter for the motivation of the skilled person to do this. Mr Hunter only refers to this being a 'conventional hinge leaf configuration'. > > 70. The relevant enquiry here then is would the skilled person be "directly lead as a matter of course" to redesign a hinge that does not bias or close to the correct positions, is not used with glass, and is not deigned [sic] for use on gates, to do all of these things. We believe the preferred finding is that they would not." (emphasis in original)

8. Mr Gehrig made similar submissions at the hearing as in the TS, as well as addressing the ATS as it concerns D7. Similarly, Mr Wood-Roe largely reiterated the Applicant's position in the ATS, as well as addressing Mr Gehrig's further arguments.

1. As noted, TCT's case concerning inventive step and D7 essentially rests on Hunter3. It is worthwhile considering some aspects of Hunter3 in rather more detail than has been considered by either party in their submissions. In that regard Hunter3 observes that:

"12. The prior art is replete with examples of generic hinges designed for use with glass panels having features 1(a) to 1(j). Examples are illustrated in documents D1 to D5 referenced in my first declaration and in Australian Patent Application No. 2017201858 referenced in the Annexure MM1 of the declaration of Mr Murauer dated 30 January 2023. > > 13. Where this type of generic hinge has a central barrel formed by the two 'hinge portions' for housing a spring as 'biasing means' for the self-closing action, the typical position of the barrel is illustrated in Fig. 1 of D3 and in Fig 1A of Annexure MM1, reproduced below:

1. This builds into the crux of Mr Hunter's argument that it would be obvious to modify D7 to include features 1(h) to 1(j) in Hunter3:

"20. As is clear from the hinges in paragraphs 12 and 13 of this declaration, the hinge barrel of this arrangement is located offset from, or outside of, the planes of the glass panels. It is apparent, therefore, that simply adapting the leaves 34, 35 of the hinge described in D7 for use with glass panels having an edge recess (i.e., as described in paragraphs 12 and 13 of this declaration) would necessarily result in a hinge that has all the features 1(a) to 1(l) of claim 1 of the Amended Claims.[40] > > 21. This is the case because the Opposed Application specifies the barrel as part of the 'hinge member' (see p.4, 1.21-22). By arranging the linear damper within the barrel or cylinder 36, the damper will clearly be outside of the planes describing the faces of the glass panel and inside the first hinge member when the hinge is attached to a glass panel, as in feature 1 (k) of claim 1 of the Amended Claims. This is also the case because the hydraulic damper 39 is arranged in the barrel or cylinder 36 for movement in a direction which is substantially parallel to the hinge axis, as set out in feature 1(l) of claim 1 of the Amended Claims. > > 22. It is clear from the prior art, and also from the declaration of Mr Murauer referring to the fact that the Polaris 120 hinge was already 'popular' by 2019, that the design of hinge leaves or 'hinge portions' for glass panels with an edge recess (as described above in paragraphs 12 and 13 of this declaration) was commonly known and understood by skilled persons in the field before May 2020. > > 23. It is therefore my view that it would not have required any inventive effort for a skilled person to adapt the leaves 34, 35 of the hinge in D7 to the alternative well-known design for glass panels having an edge recess in order to make that hinge suitable for use with those glass panels. On the contrary, this would involve a straight-forward substitution of one well-known hinge leaf design for another. In this context, I note that glass panels are preferred for certain applications and that long before May 2020 there were well-known engineering advantages associated with using glass panels with edge recesses, including firstly ease of installation and alignment of hinge assemblies, secondly less stress on the glass panel during assembly and operation of the hinge by virtue of the recess."

2. Putting aside the CGK status of hinge leaves for glass panels with an edge recess, as asserted by Mr Hunter, I have several reservations about the line of reasoning adopted by Mr Hunter to arrive at claim 1 in view of D7. The first proceeds from the nature of the "conventional" hinge leaves for glass panels with an edge recess as identified by Mr Hunter at [12] and [13] of Hunter3. As apparent from the reproduction of figure 1 of D3 and 1A of MM-1, the hinge leaves of these documents cooperate to form the hinge barrel in a different way to that of the hinge of D7. As can be seen from figures 1 to 3 of D7, each hinge leaf 34, 35 comprises half of the barrel, with the left leaf 34 comprising the lower part of the barrel and the right leaf 35 comprising the upper half of the barrel. The upper and lower halves of the barrel appear as offset appendages to the comparatively thin, plate-like material that defines the remainder of each leaf 34, 35. The leaves 34, 35 are brought together to form the barrel with leaf ring 21 separating the upper and lower halves of the barrel.
3. In contrast, the hinge leaves of D3 and MM-1 comprise one leaf (for example item 22 of figure 1A of MM-1) having a comparatively long contiguous barrel portion, while the other leaf (for example item 32 of figure 1A of MM-1) has smaller upper- and lower-barrel portions such that this other leaf has a somewhat "u" shaped profile. In use the leaf with the contiguous barrel portion is slotted between the upper- and lower-barrel portions defining the arms of the "u" so that all the barrel portions cooperate to form a complete barrel. Consideration of D4 (see for example figure 2) and D5 (see for example figure 1) demonstrates the same type of barrel arrangement as per D3 and MM-1.[41] If, as asserted by Mr Hunter,[42] these represent the conventional hinge leaf configuration for glass panels having an edge recess, then it follows that design of these leaves is also "conventional" including the way in which they cooperate to form the barrel of the hinge. For convenience I will call these conventional hinge leaves for a glass panel with an edge recess the "conventional hinge leaves" and a hinge using these as the "conventional hinge".
4. If the skilled addressee sought to simply keep the conventional hinge leaves as they stand, i.e. forming the barrel as they stand, then this would seem to be taking the conventional hinge leaves and modifying the internal barrel components of D7 so that they work with the barrel of the conventional hinge, noting the differences in the barrel between D7 and that formed by the conventional hinge leaves. Whether, or if, this would be straightforward is not immediately clear, particularly given, for example, the weight difference to be expected between a door comprising a glass panel and the doors that D7 appears to be made for. For example, would the arrangement of hydraulic damper 39 and spring 24 allow for sufficient forces for self-closing of a glass door without it slamming or taking too long to close? Are further modifications to the damping and/or self-closing mechanisms of D7 needed to achieve this for a glass door, particularly in view of the various considerations that go into the damping effect of a hydraulic damper as noted by Mr Hunter.[43] Are routine or complex changes and experimentation needed? Nothing in Mr Hunter's evidence addresses these issues.
5. Alternatively, if the skilled addressee intended that the barrel style of D7 should be kept, but the leaves 34, 35 simply adapted to accommodate a glass panel with an edge recess, then further questions arise. In addition to the above issues concerning the hydraulic damper 39 and spring 24, a more fundamental question exists as to whether a skilled addressee would in fact abandon the "u" shaped barrel-forming arrangement of the conventional hinge for the upper and lower offset arrangement of D7. As noted, the fact that the conventional hinge has this "u" shaped arrangement for forming the barrel is highly suggestive that this is a desirable arrangement when applying hinges to glass panels with an edge recess. Again, the differences in weight between glass panels and doors seems highly relevant in this regard. Mr Hunter has not addressed whether this is the case, leaving one to wonder whether the skilled addressee simply would not adopt the barrel arrangement of D7 for glass panels with an edge recess due to some detriment in doing so.

1. Altogether, Mr Hunter's conclusions of the obviousness of claim 1 in view of D7 appear rather peremptory and lack any material details concerning design issues that would be expected to arise in modifying D7 to work with glass panels with an edge recess. The lack of detail concerning these issues, whilst quickly arriving at the "missing" features of claim 1, where Mr Hunter already knew what those missing features were, smacks of ex post facto analysis.[44] All of this leaves significant doubt as to what the skilled addressee would do in modifying D7 when trying to improve the damping of a hinge for use with a glass panel comprising an edge recess, even assuming they set out to do so to begin with. On balance, I do not consider Hunter3 to provide a basis to conclude that claim 1 lacks an inventive step in view of D7 when combined with the CGK.
2. Turning to TCT's arguments in support of obviousness in view of D7, even assuming that it is well known and desirable to use glass panels with an edge recess as part of a gate or door,[45] this is simply no answer to the matters discussed above. Similarly, the fact that the application indicates that its hinges may be used with other types of glass panels or other materials[46] does not mean that, somehow, the hinges of D7, which are for a door, would be necessarily understood as suitable in some way for glass panels with an edge recess as defined in claim 1. At the hearing, Mr Gehrig went to some lengths to note that claim 1 is simply a hinge with the claim being silent on the application of that hinge. These arguments were made by Mr Gehrig in the context of submissions made by the Applicant concerning alleged distinctions between gates and doors. On one level Mr Gehrig is correct - what the context of the end use of the hinge is not inherently important, but, again, this in no way addresses whether D7 would be modified by a skilled addressee in some way to be suitable for a glass panel with an edge recess.
3. I am not satisfied that any of the claims lack inventive step in view D7 when read with the CGK.

1. I am not satisfied that any of the claims lack inventive step in view of either of D3 or D7 when read with the CGK. TCT has been unsuccessful in this ground of opposition.

Section 40(2)(a) - clear enough and complete enough disclosure

1. The requirement for clear enough and complete enough disclosure was introduced into the Act as part of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 ("RTB") reforms. Specifically, s40(2)(a) reads as follows:

(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;..."

1. As indicated in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 ("Encompass") at [167] the requirements of s40(2)(a) equate to enablement of the invention; I note that this was undisturbed in the appeal to Encompass in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161. As explained in the Explanatory Memorandum ("EM") to the RTB legislation at item 8, enablement amounts to a requirement that "...sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention".
2. The nature of s40(2)(a) was considered in some detail by a Delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 ("CSR"), including an extensive consideration of a number of UK and EPO decisions relevant to an understanding of this part of the Act. After this consideration the Delegate provided a process for assessing s40(2)(a) at [95]:

"In order to decide whether a specification provides a disclosure as required by section 40(2), it is necessary to:

1. construe the claims to determine the scope of invention as claimed,
2. construe the description to determine what it discloses to the person skilled in the art, and
3. decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims."

1. In Evolva SA [2017] APO 57; 133 IPR 147 ("Evolva") at [45], a Deputy Commissioner provided some further analysis and consideration of UK and EPO decisions relevant to the question of s40(2)(a). After having done so, the Deputy Commissioner expanded on the third point from the test in CSR as follows (at [45]):

"Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims, and in particular:

(a) Is it plausible that the invention can be worked across the full scope of the claim?

(b) Can the invention be performed across the full scope of the claim without undue burden?"

1. I note that the above approach was approved by Justice Burley in Cytec Industries Inc. v Nalco Company [2021] FCA 970; 162 IPR 202 at [143] to [146]. It was also adopted by his Honour in TCT Group, at [154], in the context of determining priority dates, albeit without reference to the sub-test from Evolva. See also: Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 at [523] to [526] and Calix Limited v Grenof Pty Ltd [2023] FCA 378; 171 IPR 582 at [118] to [121].
2. As a final observation, it can be seen that the expanded consideration from Evolva nominally comprises two extra sub-tests. However, item (b), relating to undue burden, can be understood as being inherently encompassed by iii) from CSR due to the fact that "enabling disclosure" includes a requirement for the absence of undue burden as understood from the EM. Thus Evolva can be seen as adding a plausibility requirement as a kind of threshold test in assessing s40(2)(a); that is, it can hardly be said that there is an enabling disclosure where it is implausible that the invention can be worked across the full scope of the claim.

1. TCT provided four arguments (couched as "complaints") as to why the claimed invention failed under s40(2)(a). In broad terms these are:
   • complaint 1: that the claims encompass multiple dampers, when the application only discloses embodiments with a single damper;
   • complaint 2: that the claims do not properly define the actuating mechanism for the hydraulic damper, when there is only disclosure in the application of the actuating mechanism being a rotary cam, fixed to an outside of the barrel portion for rotation with the hinge member through the edge recess of the glass panel to engage the sloped surface on the end of the sleeve covering the hydraulic damper;
   • complaint 3: that claims 1 to 3 do not properly define the location of the biasing spring relative to other components of the hinge, when the application only discloses the biasing spring being mounted in a hollow barrel portion of the hinge; and
     • complaint 4: that claims 1 to 6 do not explicitly define the existence or use of insert portions in the edge recess of the glass panel when the application only discloses embodiments using such insert portions.

1. This is discussed in the TS at [26] to [44]. This complaint essentially boils down to the fact that the claims extend to having two or more dampers via the recital in claim 1 of "at least one hydraulic damper", whereas all of the embodiments as disclosed only comprise a single damper. As stated in the TS:

"39. There is no disclosure in the Opposed Application as to how any hinge should be constructed with more than one hydraulic damper. According to Mr Hunter:[47] > > It is not apparent to me from the Opposed Application, however, how this concept [namely, the invention of claim 1] should be implemented for more than one damper. All of the examples or embodiments concern a single damper. The Opposed Application provides no guidance as to how the concept should be implemented for more than one damper. Using only the common general knowledge, I do not consider it would be a simple task for a person skilled in the art to redesign the hinges disclosed in the Opposed Application for multiple dampers. On the contrary, I consider that it would be difficult and probably not possible without that person exercising some inventive ingenuity. > > 40. It is not difficult to see why Mr Hunter considers that introducing a second (or more) damper in any of the embodiments disclosed in the Opposed Application would require inventive ingenuity. At the very least, there is no disclosure or guidance given in the Opposed Application of: > > (a) where any such further dampers should be located; > > (b) how such further dampers should be orientated; > > (c) what kind of actuating mechanism should be employed; > > (d) how any such actuating mechanism should be constructed to ensure that it works. > > 41. Taking the first embodiment as an illustrative example, looking at Figure 4 (reproduced at paragraph 31 above)[48], if one were to venture the possibility of introducing a second damper, at least the following questions would arise: > > (a) where should the second damper be located? > > (b) if a second damper is to be located in the first hinge portion 21: > > (i) where will the actuating mechanism be located, noting that the actuating cam 27 for the first damper is already fixed to (or relative to) the barrel of the first hinge portion 21? > > (ii) what kind of actuating mechanism should be used, noting that the actuating cam 27 for the first damper has been specifically designed and shaped to engage the first damper at the 35 degree open position (p 8, line 10) and any actuating mechanism to be located on the second hinge portion 31 will necessarily need to be of a different shape and/or size compared to the actuating cam 27 for the first damper; > > (c) how should the second damper be orientated? > > (d) in any event, how is the skilled addressee to ensure that the introduction of a second damper will 'provide an overall damping effect such that the door closes slowly, but does not take a very long time to close'? (p 1, lines 31-32). > > 42. These, and likely many other, important questions are just some of the issues that would necessarily arise if the skilled addressee were tasked with implementing a second (or more) damper in any of the hinges disclosed in the embodiments of the Opposed Application. > > 43. The Opposed Application provides no guidance at all in relation to any of these issues. It would cast an undue burden on the skilled addressee to resolve them. The Opposed Application therefore fails to provide an enabling disclosure of 'all the things that fall within the claims'."

"14. This complaint is based on an inclusive construction of claim 1, that the claim might cover embodiments that include more than one hydraulic damper. This is not disputed by the applicant. This was intended. > > 15. The use of the phrase 'at least one hydraulic damper' was defined in claim 1 to account for a situation where a hypothetical infringing article has more than one damper, perhaps only one of which is mounted in the way specified in claim 1. The use of the phrase 'at least one' conveys that the presence of more than one damper in an alleged infringing article would not mean that that article falls outside the scope of claim 1. > > 16. The opponent has construed that the additional dampers that are permitted by the definition in claim 1 are also mounted outside the glass, and vertically. However, they could similarly be mounted horizontally inside the hinge, and inside the recess in the glass panel in an insert component, in much the same style as in the Polaris 120. > > 17. The more limited definitions of the invention in claims 2 and 3 refer only to 'the hydraulic damper' which is consistent with the construction of claim 1 outlined at para 16. > > 18. Should the hearings officer find that the phrase 'at least one' leads to invalidity on this ground then applicant would be amenable to amend this phrase to define 'a hydraulic damper' which is consistent with the language of claims 2 and 3." (emphasis in original)

3. Mr Tsang made similar submissions on this issue at the hearing as in the TS, with additional responses to the points raised in the ATS. In particular, Mr Tsang argued that the claim language did not allow second or subsequent dampers to be placed in any location in any orientation as suggested by the Applicant. Rather, Mr Tsang argued that the claim language requires all dampers to be located outside the planes of the glass panel and to move in a direction parallel to the hinge axis, although Mr Tsang noted that even if this were not the case, it made no difference to the outcome under s40(2)(a).
4. Mr Wood-Roe made similar submissions at the hearing as in the ATS. Mr Wood-Roe disputed the need to limit the claims to one damper, but reiterated openness to an amendment to rectify any issues in this regard.

Does the claimed invention fail under s40(2)(a) due to complaint 1?

1. In my view the invention defined in claim 1 fails under s40(2)(a) due to the recital of "at least one hydraulic damper". The disclosure of the application only deals with the use of a single damper. It is difficult to see how accommodating more than one damper would merely be a matter of routine experimentation. Mr Hunter's evidence[49] quite clearly indicates this is the case. Tellingly, nothing in the EIA addresses Mr Hunter's evidence on this point or the issue more generally. The suggestion in the application[50] that additional dampers could be used is little more than desiderata to be figured out by the skilled addressee.
2. For completeness, I note that it is unnecessary to go into whether additional dampers must also be located outside the planes of the glass panel. It is simply the case that the application only provides an enabling disclosure with respect to a single damper located outside the planes of the glass panel.

Complaint 2: claims do not properly define the actuating mechanism for the hydraulic damper

1. This is covered in the TS at [45] to [50], with passages particularly relevant to claim 1 at [45] and [46]:

"45. Independent claim 1 does not contain any integer describing the existence or operation of the actuating mechanism responsible for engaging the (single) hydraulic damper: Hunter 1, [66]. That is despite the fact that integer 1(k) specifies that the damper must be 'located outside of the planes which describe the faces of the glass panel and inside the first hinge member'. This is a significant omission. > > 46. According to Mr Hunter, given the stipulations of integer 1(k), details concerning the specific actuating mechanism to be used to permit the damper to be operated when located 'outside of the plane of the glass panel and inside the first hinge member' represent a significant feature that is relevant to an effective operation of the hinge: Hunter 1, [68(d)]. Despite this, claim 1 is entirely silent about the presence and design of any such actuating mechanism."

2. I also note that the TS at [48] made further arguments, based on Hunter3, concerning features of the actuating mechanism specified in the dependent claims:

"48. Claim 2 introduces the feature of the hydraulic damper being 'actuated by way of a cam'. But as Mr Hunter explains, the only embodiment in the Opposed Application that corresponds to independent claim 1, being the first embodiment depicted in Figures 1 to 5 (emphasis added):[51] > > ... does not merely involve a 'cam', but rather a rotary cam fixed to an outside of a barrel portion of the hinge member for rotation with the hinge member to extend through the edge recess of the glass panel and to engage a sloped or inclined surface provided on an end of a sleeve covering the hydraulic damper to thereby compress the damper to its retracted condition. In my view, the Opposed Application only describes how the hinge of Amended Claim 1 can work by using a rotary cam fixed to an outside of the barrel portion for rotation with the hinge member through the edge recess of the glass panel to engage the sloped surface on the end of the sleeve covering the hydraulic damper. There is no disclosure in the Opposed Application that explains how a skilled person should, or even could, construct the hinge with such an actuating mechanism - i.e., there is no disclosure in the Opposed Application of how the hinge would work with some generic, otherwise undescribed 'cam'." (emphasis in original)

"19. This complaint is based on an assertion that the skilled person could not work the invention to actuate the damper of claim 1 in any other way than by using a 'rotary cam fixed to an outside of the barrel portion for rotation with the hinge member through the edge of the glass panel to engage the sloped surface on the end of the sleeve covering the hydraulic damper'. > > 20. The opponent has put forward a very limited proposed definition for inclusion in claim 1. The skilled person could easily devise alternatives to the formulation promoted by the opponent based on their own common general knowledge. The prior art is replete with dampener actuating mechanisms that do not include the features proposed by the opponent. > > 21. Should the hearings officer find claim 1 bad for failure to adequately define the mechanism for compressing the damper then applicant would be amenable to amend claim 1 to define the cam currently defined in claim 2." (emphasis in original)

4. Mr Tsang made similar submissions at the hearing. He also suggested that the Applicant's arguments at [20] of the ATS were pure assertion. Mr Wood-Roe provided rather limited submissions on complaint 2, which would be best characterised as a summary of what was said on the matter in the ATS.

Does the claimed invention fail under s40(2)(a) due to complaint 2?

1. Mr Hunter's evidence is key to this issue, particularly given nothing in the EIA addresses this matter at all. It is worthwhile to reproduce the relevant passages of Hunter1:

"65. Interestingly, although features 1 (h) to 1 (k) of claim 1 of the Accepted Application as set out above focus on features of the specific embodiment shown and described with reference to Figs. 1 to 5 of the Opposed Application, claim 1 seems to be incomplete in respect of the features of that specific embodiment that allow the invention to work. > > 66. In this regard, for example, some details of the first hinge portion are set out in claim 1 but no details of the second hinge portion. Further, although the first hinge portion is stated as being arranged to attach to a glass panel that is provided with an edge recess, there is no reference to the hinge including an insert portion for the recess and the relevance of the edge recess is not apparent from the claim. As the components of the actuating mechanism, namely the arm 25 with the cam 27, and the sloped surface 54 of the sleeve 53 need to be located or arranged within the edge recess, however, this appears to be a very significant omission. In fact, there is no reference at all in claim 1 of the Accepted Application to the components of the actuating mechanism in Figs. 1 to 5 which allow the damper to be located outside of the plane of the glass panel and inside the first hinge member. > > ... > > 68. In light of the above considerations, I conclude the following in relation to the hinge set out in claim 1 of the Accepted Application: > > ... > > (d) it concerns the hinge embodiment shown in Figs. 1 to 5 of the Opposed Application but omits significant features relevant to an effective operation of that hinge, including details of the second hinge portion, an insert portion for the recess, and details of the actuating mechanism which permit the damper to be operated when located outside of the plane of the glass panel and inside the first hinge member. > > 69. For the reasons set out above, the disclosure in the Opposed Application is not clear enough and complete enough to enable a hinge to be implemented over the scope of claim 1 of the Accepted Application. The Opposed Application discloses just a single embodiment of the hinge in claim 1 of the Accepted Application and relevant features of that embodiment are omitted from the claim. Claim 1 of the Accepted Application is therefore also not clear."

2. While Mr Hunter indicates that the failure to specify certain features, including the actuating mechanism leads to a lack of clear and complete disclosure, he uses different language when discussing these features as opposed to the "multiple damper issue". For multiple dampers, Mr Hunter clearly states that it would require inventive ingenuity[52] to implement the invention with multiple dampers and that it is not apparent how this would be implemented.[53] However, with respect to the absence of details for the actuating mechanism and details of the second hinge portion, these are called "a very significant omission",[54] the details of which are "relevant to an effective operation of that hinge".[55] The difference in language is important - one clearly indicates something beyond the routine skill of the skilled addressee, whilst the other simply denotes the fact that features needed for the hinge to properly operate are not specified. The former clearly denotes something that is not enabled for the purposes of s40(2)(a), while the latter may denote that something is not enabled but does not indicate that this is necessarily the case - one may conceive of a claim referring to a car that does not specify wheels or a steering wheel, which are clearly quite significant to the operation of the car, yet the failure to specifically list these in the claim would not leave the claim wanting in terms of enablement.
3. Similarly, Hunter3[56] merely states that there is no disclosure of an actuating mechanism beyond the cam arrangement described in the application. However, a lack of disclosure of something does not necessarily mean a lack of enablement. Hunter3 does not say or imply that the skilled addressee would not be able to implement the hinge as claimed with other damping actuating mechanisms or that there would be some undue burden in doing so.
4. The fact that Mr Hunter has not referred to the details of the second hinge portion or the actuating mechanism as leading to implementation difficulties or further invention by the skilled addressee means, on balance, that I am not satisfied that the absence of these details in the claims necessarily leads to a lack of enablement.
5. Mr Hunter's comments in Hunter1 on the lack of details for the first and second hinge portions with respect to working with a glass panel with an edge recess, is at odds with his statements in Hunter3 concerning the ubiquity of the types of hinges that work with glass panels having an edge recess. This much is apparent from [12] as cited above, but also [19] of Hunter3:

"19. In contrast to the hinge of D7, the hinge examples described in paragraphs 12 and 13 above of this declaration have their hinge leaves designed for use with glass panels that have an edge recess. That is, the hinge portions are designed for each glass panel to be clamped or sandwiched between two parts of the hinge portion (i.e., between a 'hinge member' and a 'clamping member' in the Opposed Application) with an insert provided to sit snugly within the edge recess between those two parts of the hinge portion. This conventional hinge leaf configuration for glass panels having an edge recess corresponds to features 1(h) to 1(j) of claim 1 of the Amended Claims."

Similar may be said for Mr Hunter's arguments, canvassed above, with respect to it being obvious to modify D7 so as to arrive at a hinge that is used with a glass panel having an edge recess.

Complaint 3: biasing spring mounted in a hollow barrel portion of the hinge

"51. Independent claim 1 does not contain any integer describing the location of the biasing spring relative to other components of the hinge. What this means is that claim 1 includes within its scope hinges where the biasing spring could be: (i) any kind of spring (e.g. a compression spring, a leaf spring, a torsion spring); and therefore (ii) located anywhere relative to the other components of the hinge, provided it is 'arranged to bias the hinge towards the closed condition' as required by integer 1(f). > > 52. However, as Mr Hunter observes, the hinge disclosed in the Opposed Application as the only embodiment corresponding to independent claim 1, being the first embodiment depicted in Figures 1 to 5:[57] > > '...has the biasing spring mounted in a hollow barrel portion of the hinge. In my view, the Opposed Application only describes how the hinge of Amended Claim 1 can be produced with the biasing spring mounted in a hollow barrel portion of the hinge. In other words, there is no disclosure in the Opposed Application of how a skilled person should, or even could, construct such a hinge without the biasing spring being mounted in a hollow barrel portion of the hinge'. > > 53. The need to specify in claim 1 that the biasing spring is 'mounted in a hollow barrel portion of the hinge' can be demonstrated by considering the difficulties that would be encountered by the skilled addressee in trying to implement a hinge that is broadly similar in construction to the first embodiment, but in which the spring is to be located outside of the barrel portion of the hinge. In its simplest form, the biasing mechanism could be limited to the use of a spring alone i.e. without any other components to form a more complicated biasing mechanism. That might suggest the use of a compression spring that is directly connected to both hinge portions. But if such a spring were to be used, what size spring should be used? Where would it be located? How could it be made to fit with the other components of the hinge in a way that does not interfere with them? Resolving issues such as these would clearly involve the skilled person engaging in an undue amount of experimentation. > > 54. Accordingly for the above reasons at least claims 1 to 3 of the Opposed Application are invalid because the specification of the Opposed Application does not disclose the invention the subject of those claims in a manner that is 'clear enough and complete enough' as required by s 40(2)(a) of the Act."

"22. In this complaint, the opponent considers the difficulties that a skilled person would have in providing spring arrangements alternative to mounting the spring in a hollow barrel portion of the hinge. > > 23. The feature of a 'biasing spring' is a common feature of hinges of the type with which this invention is concerned. The specification provides adequate disclosure of suitable implementations of a biasing spring and the prior art is replete with biasing spring options. If they wished, the skilled person could adopt the arrangement of the preferred embodiments described in the specification, or not. It is not necessary for the patent specification to provide details of suboptimal biasing spring alternatives."

3. Mr Tsang made similar submissions at the hearing. He again suggested that the Applicant's arguments in response in the ATS were pure assertion. Mr Tsang also referred to [223] of the TCT Group case:

"223. The concession obtained is of limited value. On its face, it asks about the task when the engineer is designing a new product. This does not equate to the task presently under consideration, which is not a question of new product design, but the enablement of an invention said to have been disclosed in a patent specification. Furthermore, conclusionary statements by experts do not in any event go very far. The process of considering sufficiency of disclosure involves an evaluation of the disclosure, in the context of the art and consideration of whether implementing the invention across its scope falls on the wrong side of the line. In my view in the present case it does."

4. Mr Wood-Roe provided rather limited submissions on complaint 3, which would be best characterised as a rather generalised summary of what was said on the matter in the ATS.

Does the claimed invention fail under s40(2)(a) due to complaint 3?

1. Similarly as for complaint 2, the problem for TCT here is that Mr Hunter's evidence simply refers to a lack of disclosure - it does not actually go into or necessarily imply that there are difficulties in implementing a biasing spring in locations other than the barrel of the hinge commensurate with a lack of enablement. I respectfully agree with Justice Burley's remarks at [223] of TCT Group, however these merely highlight the deficiencies in TCT's s40(2)(a) case on complaint 3, albeit from the other side of the fence. TCT bears the onus of proof, and evidence merely stating that there is a lack of disclosure of something does not provide a proper basis for determining that that lack of disclosure leads to a lack of enablement.
2. Further, claim 1 and all the claims considered by Mr Hunter in drafting Hunter1 comprised "a biasing means" rather than "a biasing spring" but are otherwise the same in terms of the self-closing mechanism. It is thus odd that Mr Hunter did not comment on the even more generic "biasing means" in Hunter1 yet made remarks on the "biasing spring" in the claims after amendment in Hunter3. Although it is not determinative, [19](i) of Hunter1 is also indicative that the use of springs to provide a self-closing mechanism for hinges is CGK, including the possibility of having springs external to the hinge. These aspects of the evidentiary material provided by Mr Hunter further undermines TCT's case on complaint 3.
3. I am not satisfied that the claimed invention fails under s40(2)(a) due to complaint 3.

Complaint 4: insert portion which locates in the edge recess of the glass

"55. Claims 1 to 6 do not specify the existence or use of insert portions located in the edge recess of the glass panels. This means that claims 1 to 6 extend to hinges where there are no such insert portions, despite integer 1(i) specifying that the hinge is to be 'arranged to attach to a glass panel which is provided with an edge recess'. The failure to specify the use of insert portions is a material omission in circumstances where the hinge is to be used (only) for glass panels that have an edge recess. > > 56. Specifically, the specification of the Opposed Application describes the insert portions in the following passage (p 3, line 32 to page 4, line 6): > > The hinge 10 is arranged to be attached to glass panels using a technique in which the glass panels are pre-machined to provide edge recesses in the glass panel of known profile and locations. Insert portions 28, 38 (see figure 4) locate in the edge recesses apertures provided in the glass panels. The hinge portions 20, 30 mount to the glass panels 100, 101 by sandwiching the glass panels and insert portions 28, 38 between the respective pairs of hinge members 21, 31 and clamping members 22, 32... > > 57. As Mr Hunter has noted, with respect to the hinge the subject of the amended claims, being the first embodiment depicted in Figures 1 to 5:[58] > > '...the first hinge portion must necessarily include an insert portion which locates in the edge recess of the glass. In other words, the Opposed Application only describes how the hinge of the Amended Claims can work by using an insert portion which locates in the edge recesses of the glass. There is no disclosure in the Opposed Application that explains how a skilled person should or even could, construct the hinge without such an insert portion that locates in the edge recess of the glass.' > > 58. Mr Hunter's comments in the above passage indicate that the skilled addressee, tasked with making of a hinge according to any of claims 1 to 6 without the use of insert portions located in the edge recess of the glass, would be required to engage in an undue burden or an undue amount of experimentation. > > 59. Accordingly for the above reasons at least claims 1 to 6 of the Opposed Application are invalid because the specification of the Opposed Application does not disclose the invention the subject of those claims in a manner that is 'clear enough and complete enough' as required by s 40(2)(a) of the Act." (emphasis in original)

"24. The feature of an 'insert portion' is a common technique in field of the pool hinge technology. However, other possibilities are within the common general knowledge of the skilled person. > > 25. The hinge members themselves can include formations to locate in the edge recess of a glass panel without the need for a separate insert portion > > 26. Hinges can be attached to glass panels by sandwiching the glass panel between a hinge member and a clamping member regardless of whether the glass has as edge recess or not. > > 27. The use of insert portions is only a feature of a preferred embodiment."

3. Mr Tsang made similar submissions at the hearing as in the TS. He again suggested that the Applicant's arguments in response in the ATS were pure assertion. Mr Wood-Roe provided rather limited submissions on complaint 4, which would be best characterised as a rather generalised summary of what was said on the matter in the ATS.

Does the claimed invention fail under s40(2)(a) due to complaint 4?

1. Similarly as for complaints 2 and 3, the problem for TCT here is that Mr Hunter's[59] evidence again simply refers to a lack of disclosure, without providing anything material on whether that lack of disclosure leads to a lack of enablement.
2. Further, the statement by Mr Hunter that "According to my understanding, the first hinge portion must necessarily include an insert portion which locates in the edge recess of the glass"[60] is not as helpful as TCT would perhaps like it to be. It could simply be taken to mean that the skilled addressee would implicitly understand that there is an insert portion where a hinge is to operate with an edge recess in a glass panel. In other words this evidence in Hunter3 could be taken to mean that the existence of an edge recess in claim 1 implies the existence of an insert portion. This wording in Hunter3 is something of a juxtaposition to these statements from [66] of Hunter1:

"Further, although the first hinge portion is stated as being arranged to attach to a glass panel that is provided with an edge recess, there is no reference to the hinge including an insert portion for the recess and the relevance of the edge recess is not apparent from the claim."

Although the positions of Mr Hunter in Hunter1 and Hunter3 are not necessarily contradictory, Mr Hunter provides no further explanation that assists in building a clear picture of what he means and how this leads to a lack of enablement further undermines TCT's case on complaint 4.

1. I am not satisfied that the application is wanting under s40(2)(a) due to complaint 4.

Clear enough and complete enough disclosure - conclusion

1. I am satisfied that the application does not disclose the invention as claimed in claims 1 to 7 in a manner which is clear enough and complete enough to be performed by a skilled addressee as these extend to embodiments comprising more than one damper.

1. The requirement that the claims be supported was introduced into the Act as part of the RTB reforms. Specifically, s40(3) reads as follows:

"(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification."

1. In Encompass Perram J noted (at [170]) that with the insertion of the support requirement by the RTB legislation, the previous requirement for fair basis was no longer relevant. Justice Perram, on considering the nature of support then quoted the following passage from the EM:

"'[T]he terms 'support' and 'full support' pick up two concepts:

• there must be a basis in the description for each claim; and
  • the scope of the claims must not be broader than is justified by the extent of the description, drawings or contributions to the art.'"

Other than this Justice Perram did not elaborate further on the nature of support.

1. As I apprehend it, the first detailed judicial consideration of support post-RTB was undertaken by Justice Burley in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 ("Merck"). After extensive analysis of the secondary materials and the law in Europe and the United Kingdom, from [511] to [543], his Honour summarised the law on support in Australia as follows at [545] to [547]:

"545. The theme common to each ground, however, reflects what the Minister described in his Second Reading Speech as the cornerstone of the patent system, namely that in exchange for a monopoly on commercialisation, the patentee must tell the public how their idea works. As said in the Explanatory Memorandum, in exchange for the exclusive rights given to the patentee, the patentee must share with the public the information necessary to make and use the invention. This is the essential exchange between inventors and the public which has long been a feature of patent law in Australia: see Lockwood No 1 at [57]. > > 546 In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 - 253, which has been often followed in the United Kingdom (emphasis added): > > '...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court's task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word "support" means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.' > > 547. That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed."

2. This approach was reiterated by his Honour at [241] of TCT Group.
3. His Honour also observed in connection with his formulation of the law on support in Australia, at [242] of TCT Group:

"This statement of the position has been adopted without criticism by other judges of this Court: Rakman International Pty Ltd v Trafalgar Group Pty Ltd [2022] FCA 464; 166 IPR 264 at [120] (Yates J); Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540; 167 IPR 1 at [370]- [372], [481] (Rofe J) ["Jusand"]."

It may also be added that Justice Burley's formulation of the law on support was undisturbed, as I understood it, in the recent decision of the Full Court in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 ("Jusand FC"), being the decision on appeal to Jusand.

1. As may be understood from the preceding discussion, the nature of support was considered prior to any judicial reckoning in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [109] to [116], where the delegate considered caselaw from Europe and the UK relevant to the nature of support. After doing so the Delegate outlined a three-step process for assessing whether the claims are supported at [115]:

1. construe the claims to determine the scope of the invention as claimed,
2. construe the description to determine the technical contribution to the art, and
   1. decide whether the claims are supported by the technical contribution to the art."

1. I take the considerations of technical contribution from CSR to be congruent with the EM as cited by Justice Perram in Encompass and of the approach cited above by Justice Burley from Merck. The delegate's three step process from CSR provides a convenient means of analysing support, and I shall adopt his process in this matter, although as shall be seen, there is little need for extensive analysis on support.
2. Justice Burley provided further guidance on what "support" means at [243] to [245] of TCT Group:

"243 In Fuel Oils/Exxon, (T409/91) [1994] OJ EPO 653 the EPO Boards of Appeal said, in a passage at 3.3 that has been often cited, including by Lord Neuberger in Generics UK [Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] All ER 955; [2009] RPC 13] at [97], that: (emphasis added): > > '...[there is a] general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified... This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words,... the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.' > > 244 The language of 'at the disposal of the person skilled in the art' should be understood to mean that the patent must enable the invention to be performed by such a person. > > 245 In Jusand, Rofe J observed that one way for the claim impermissibly to exceed the technical contribution to the art is for the claim to cover ways of achieving the desired result which owe nothing to the patent or any principle that it discloses: at [483]."

3. Guidance on what is meant by "the technical contribution to the art" is apparent from CSR at [111] to [112]:

"111. The technical contribution to the art is a subtle concept that is not to be confused with the inventive concept that is often discussed in relation to inventive step. The distinction was explained by Lord Walker in Generics at [30]:

'The expressions are certainly connected, but I do not think it is helpful (either in considering Lord Hoffmann's opinion, or generally) to treat them as having precisely the same meaning. "Inventive concept" is concerned with the identification of the core (or kernel, or essence) of the invention - the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 9 paras 112-113) which entitles the inventor's achievement to be called inventive. The invention's technical contribution to the art is concerned with the evaluation of its inventive concept - how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.'

112. In the same case Lord Neuberger of Abbotsbury described the technical contribution at [95] as:

'in the context of a simple product claim such as the present (especially where the claim is to a single chemical product), the technical contribution is (at least in the absence of special factors) the product itself. As I have suggested, the technical contribution can often be equated with non‑obvious novelty - what is new to the art and not obvious is really another way of identifying the technical contribution.'"

1. It can be seen that the requirement for the claims to be supported by the technical contribution to the art includes within its ambit a requirement that the claims be enabled, in the sense understood under s40(2)(a), by subject matter in the description and drawings. This is due to the fact that a failure to do so would, in the parlance of Generics, result in the claim extending "...to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art." Hence a claim which is not enabled by the description is not supported by the technical contribution to the art and therefore lacks support under s40(3).
2. However, as also apparent from the above, the support requirement is not a mere reiteration of s40(2)(a). The enabling disclosure requires consideration of the claims in isolation from the remainder of the specification - that is, the enablement must come from the description and drawings. This contrasts with s40(2)(a) where the enabling disclosure comes from the entire specification. As observed in Jusand FC at [155]:

"The requirement in s 40(2)(a) is often referred to as the sufficiency obligation whilst the requirement in s 40(3) is referred to as the support requirement. The sufficiency requirement requires that the patentee should sufficiently disclose in the specification how to perform the invention. The support requirement requires that the claims defining the patent should themselves be supported by what appears in the specification. In many cases these obligations may tend to be the same since they are describing the same relationship although viewed from the differing perspectives of the claims and the specification. As Burley J has observed in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 ('Merck Sharp') at [543], they may often be viewed as two sides of the same coin. But they may nevertheless sometimes differ as Birss J (as his Lordship then was) explained in Illumina Cambridge Ltd v Latvia MGI Tech SIA [2021] EWHC 57 (Pat); RPC 12 ('Illumina') at [255]."

3. As may also be gleaned from the above, it is also the case that the requirement to not exceed the technical contribution to the art requires consistency between the invention described and the invention claimed, which can result in a lack of support even if the claim is otherwise enabled. This was expressed by Justice Nicholas as follows in Calix Limited v Grenof Pty Ltd [2023] FCA 378; 171 IPR 582 ("Calix") at [128]:

"Although discussion of s 40(3) is often focused on the breath [sic] of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed. See, for example, the invention described in the relevant priority document and the invention claimed in AstraZeneca at [254]-[255] [AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324; 312 ALR 1; 107 IPR 177] which were characterised by the Full Court of the Federal Court as 'fundamentally different' inventions. It is difficult to see how a claim to an invention that is fundamentally different from that which is disclosed in the specification could be 'supported by matter disclosed' in accordance with s 40(3) of the Act." (emphasis added)

1. Similarly as for s40(2)(a), TCT's support arguments are couched in terms of four "complaints" as follows:
   • complaint 1: that the claims encompass multiple dampers, when the application only discloses embodiments with a single damper;
   • complaint 2: that claims cover every means of compressing the hydraulic damper, when there is only disclosure in the application of the actuating mechanism being a rotary cam fixed to an outside of the barrel portion for rotation with the hinge member through the edge recess of the glass panel to engage the sloped surface on the end of the sleeve covering the hydraulic damper;
   • complaint 3: that claims 1 to 3 do not properly define the location of the biasing spring relative to other components of the hinge when the application only discloses the biasing spring being mounted in a hollow barrel portion of the hinge; and
   • complaint 4: that claims 1 to 6 do not properly define the existence or use of insert portions in the edge recess of the glass panel when the application only discloses embodiments with such insert portions.
2. I shall consider each of these complaints below.

Do any of the claims fail for lack of support?

1. As can be seen from the mere listing of the complaints, the discussion of these "complaints" in the TS[61] shows that TCT's support "complaints" essentially mirror those made under s40(2)(a). While complaint 2 is framed in somewhat different terms from complaint 2 under s40(2)(a), the TS[62] indicates that complaint 2 under support is made for essentially the same reasons as complaint 2 under s40(2)(a). Similarly, complaints 1, 3 and 4 essentially rely upon the reasoning made with regard to their respective complaints under s40(2)(a). Similarly, the ATS[63] essentially relies upon arguments made with respect to s40(2)(a), although [31] to [34] comprised a discussion concerning the technical contribution in view of Generics that did not appear to be in reply to anything in the TS.
2. At the hearing, Mr Tsang noted that a finding under s40(2)(a) would lead to a corresponding finding under support. He also spent some time on the principles to be applied (perhaps in view of some of the ATS discussion involving Generics), as well as responding to some other matters in the ATS concerning the means to compress the damper. Other than this, Mr Tsang more or less relied upon the corresponding arguments made under s40(2)(a). For support, Mr Wood-Roe essentially reiterated the arguments concerning means of compressing the damper from the ATS.
3. Given the congruence with the arguments presented under s40(2)(a), there is no need for me to go into detailed analysis for support. I agree with Mr Tsang that in the present circumstances the conclusions reached under s40(2)(a) will lead to the same findings under support. It follows that I am satisfied that complaint 1 leads to claims 1 to 7 lacking support as they extend to hinges with more than one damper, whilst none of the other complaints lead to support issues.

1. I am satisfied that all of the claims lack support. The Opponent has been successful in making out this ground of opposition.

1. Section 18(1)(c) requires a claimed invention to be "useful". Section 7A was introduced with the RTB, and defines the meaning of "useful" as follows:

"(1) For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification. > > (2) The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art. > > (3) Subsection (1) does not otherwise affect the meaning of the word useful in this Act."

2. The effect of subsection 3 is such that the insertion of section 7A adds the specific, substantial and credible use criteria to the existing case law on utility, rather than displacing the same. This is apparent from the Explanatory Memorandum to the RTB:

"The specific, substantial and credible use test is not intended to displace the existing Australian case law on usefulness. An invention must have both a specific, substantial and credible use that is disclosed in the patent specification and meet the requirements of the existing case law (broadly that the invention must achieve the promised benefit).

The item bolsters the existing requirement that the claimed invention be useful with the requirement that the invention has a specific, substantial and credible use. The intent is that specific, substantial and credible be given the same meaning as is currently given by the US courts and the United States Patent and Trade Mark Office (USPTO).

Currently, the US courts interpret the terms as follows:

• 'specific' means a use specific to the subject matter claimed and can 'provide a well-defined and particular benefit to the public.'
• 'substantial' means the claimed invention does not require further research to identify or reasonably confirm a 'real world use'. 'An application must show that an invention is useful to the public as disclosed in its current form, not that it prove useful at some future date after further research'
  • an asserted use will be 'credible' 'unless there is evidence that the invention is inoperative (i.e. does not operate to produce the results claimed by the patent application) or there is reason to doubt the objective truth of the statements in the specification.'"[64] (emphasis in original, footnotes removed)

1. In terms of the existing case law on utility, the Full Court of the Federal Court provided a useful summary at [119] to [121] of Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29; 245 FCR 485; 117 IPR 210:

"119. It is 'no objection' to the validity of an innovation patent granted under the Act that it is 'commercially impracticable'. The utility of the patent depends upon whether, by following the teaching of the specification, the result claimed is produced: Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171 at 187 [24], Brennan CJ, Gaudron, McHugh and Gummow JJ adopting and citing Lane Fox v Kensington & Knightsbridge Electric Lighting Co [1892] 3 Ch 424 at 430‑431. > > 120. The 'basic principle' of inutility is that if an invention 'does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention': Fawcett v Homan (1896) 13 RPC 398, Lindley LJ at 405, adopted by Gummow J as a correct statement of principle in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 232; (1988) 81 ALR 79 at 96 ("Rehm"). What the invention is 'intended' to do is a matter to be gathered from 'title and the whole of the specification': Rehm, Gummow J at 96. > > 121. Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee?: Décor Corporation Pty Ltd v Dart Industries Inc [1988] FCA 399; (1988) 13 IPR 385 at 394 ('Décor v Dart'), Lockhart J (in the Full Court); Welcome Real‑Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110 at 144 [160], Heerey J; H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151 at 198 [217] ('Lundbeck'), Bennett J; Ranbaxy Australia Pty Ltd v Warner‑Lanbert Co LLC [2008] FCAFC 82; (2008) 77 IPR 449 at 479 [141], Emmett, Weinberg and Bennett JJ. Further, 'everything' that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee: Lundbeck at 172 [81], Emmett J."

1. As I understood it, TCT's arguments were based wholly on the claimed invention not meeting three alleged promises of the invention as described. These promises are said to be:
   1. longer damper resulting in more significant damping;[65]
   2. longer damper travel by locating the damper outside the plane of the panel;[66]and
      1. longer damper travel by altering the damper orientation.[67]
2. Although occupying some length in the TS, TCT's arguments that the claims fail to meet the first promise essentially rests on:

"94. ...the assumption that using a longer damper per se will deliver a greater damping effect. That assumption is incorrect. As Mr Hunter explains at Hunter 1, [47]: > > ...I would observe that the 'damping effect' or the damping force exerted by the hydraulic damper is not expected to be influenced by the length of the damper, but rather by a range of other factors, including:[68] the diameter of the damper, the resistance to flow of hydraulic fluid within the damping cylinder, e.g.,[69] due to the viscosity of the hydraulic fluid and/or the relative constriction of the fluid flow by the aperture size vis-à-vis piston size inside the damper cylinder, the frictional properties of the damper piston inside the damper cylinder, and the speed of the piston within the cylinder of the damper."[70]

3. TCT's arguments for the second and third promises also rely on more or less the same matters as discussed in Mr Hunter's evidence:

"102. This [second] promise is not met by all hinges within the scope of the claims, for essentially the same reasons as discussed above in relation to the first promise. In short, as Mr Hunter states (at Hunter 1, [48]): > > '... damper travel is determined by the stroke length that the actuating mechanism is able to impart on the hydraulic cylinder.'"[71] > > "110. This third promise is also not met for essentially the same reasons given in relation to the second promise above. In short: > > (a) damper travel is determined by the stroke length that an actuating mechanism is able to impart on the hydraulic cylinder (see paragraph 102 above), not by simply having a longer damper (see paragraph 105 above); > > (b) though there may be a way of increasing the damper's stroke length by implementing an actuating mechanism that specifically does this for a damper orientated parallel to the hinge axis, no such way (i.e. no such mechanism) is described in the Opposed Application and it would require a different hinge design (see paragraph 104 above); > > (c) accordingly, claim 1's requirement that the damper be 'moves in a direction which is substantially parallel to the hinge axis' does not, of itself, deliver the professed advantage of a longer damper stroke; > > (d) accordingly claims 1 to 7 of the Opposed Application lack utility."[72]

4. The Applicant responded to these arguments at [43] to [51] of the ATS. The following I consider to be sufficiently representative of these passages:

"44. At para 94 it is explained that Mr Hunter is of the view that 'the damping effect exerted by the hydraulic damper is not expected to be influenced by the length of the damper'. Applicant does not agree with this statement. It is well known that the energy absorbed by a damper is the 'work' that needs to be done in moving the damper. This is schoolboy physics and is calculated by the resistive force of the damper multiplied by the distance travelled. A damper of longer length can absorb more energy over its range of travel than a damper of shorter length, all other properties being equal."[73] (emphasis in original) > > "46. At para 97[74] Mr Hunter has also stated that 'the stroke length L .... is not increased by increasing a length of the damper.' This statement is also true in the absence of making any other modifications, itself, but it overlooks the fact that the increase in stroke length has been achieved by mounting the damper outside of the recess in the glass. This modification has enabled use of a longer damper with a longer stroke. As explained in the evidence of the inventor, a 40% increase in stroke length has been enabled."[75] (emphasis in original)

5. Mr Tsang reiterated TCT's position in the TS at the hearing but also referred to the requirement for everything that fell within the scope of the claim to meet the promised benefit. Mr Wood-Roe made brief comments that more or less reflected the position put in the ATS.

1. Although it may be trite, a key issue here is, firstly, what is the promised benefit? In that regard, it is helpful to reproduce the passages from the application cited by TCT in support of its utility arguments:

"The damper 51 is not mounted inside the insert component. As best seen in figure 3, it is mounted outside of the glass panel, to one side of the glass panel in a well in one of the hinge members. This means that the length of the damper is not constrained to fit inside the inert [sic], which in turn must fit inside the edge aperture formed in the glass panel. This allows use of a damper of longer length, which can provide a more significant damping effect when compared with damper of shorter length."[76] (emphasis added) > > "It can be seen that embodiments of the invention have at least one of the following advantages:

• The hydraulic damper is mounted in a cavity in one of the hinge members and lies outside of the plane of the panel. This further allows for longer damper travel when compared with hinges in which the dampers are mounted inside one of the hinge insert components and further improves the predictability of the speed and smoothness of the closing action.
• The hydraulic damper is mounted so that it moves in a direction which is parallel to the hinge axis. This allows for longer damper travel in a smaller assembly which in turn spreads the resistance force over a longer distance for a more predictable and smoother closing action."[77](emphasis added)

1. As may be apparent from the passages emphasised above, the promised benefit is not simply to provide a better damping action per se as expressed in TCT's three "promises", but to allow for the use of a longer damper, with the consequent advantages associated with that, compared to hinges which have the damper located within the planes of the glass panel and orientated perpendicular to the hinge axis - to be clear, the promised benefit is with respect to known hinges that are used in conjunction with a glass panel with an edge recess. Although coming from a small proportion of the description, my reading of the application as a whole indicates that these passages serve to accurately highlight the promised benefit of the application as I have formulated it. I have no reason to believe, based on the evidence in the TCT opposition, that everything falling with the claims as they stand would not achieve this promise.
2. I am not satisfied that any of the claims lack utility. TCT has been unsuccessful on this ground of opposition.

1. The requirement that an application disclose the best method of performing the invention is given at s40(2)(aa) of the Act, which reads as follows:

"(2) A complete specification must: > > ...(aa) disclose the best method known to the applicant of performing the invention;...".

2. The requirement to provide the best method was present in the Act prior to the RTB legislation, although it was incorporated with considerations of sufficiency under s40(2)(a). The RTB legislation carved off best method from s40(2)(a) into new subsection 40(2)(aa). The consideration of best method is otherwise the same pre- and post-RTB, as is clear from item 8 of the RTB EM. As noted in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; 225 ALR 416; 68 IPR 1 at [379], the best method requirement means an applicant needs to include the best method known to them of performing the invention at the time of filing the application.
3. Importantly, the "invention" for best method purposes "...is the embodiment which is described and around which the claims are drawn...": Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138; 348 ALR 156; 126 IPR 427 ("Sandvik") at [94]; Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 75 ALJR 518; 177 ALR 460; 50 IPR 513 ("Kimberly-Clark") at [21] and Zoetis Services LLC v Boehringer Ingelheim Animal Health USA Inc [2024] FCAFC 145; 306 FCR 19; 182 IPR 20 ("Zoetis") at [14]. Unsurprisingly, it is important to understand the particular circumstances of each case when assessing best method: Sandvik at [126] and Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 ("Servier") at [103]:

"The authorities that have dealt with s 40(2)(a)[78], its precedents and equivalents, must be understood in context. The first, and most important, factor is the nature of the invention being described and claimed. Servier divides this simply into products and processes but that is not sufficient. It is necessary to understand the invention itself in order to appreciate what is required of an inventor by way of disclosure in the specification in order to secure a monopoly from the public. In some cases, the claim to a product will require no description of the method of obtaining it and it can be left to the skilled worker (as in AMP v Utilux[79]). In other cases, the product claim, properly understood, will require sufficient directions in order to obtain the monopoly."

4. In line with comments made by the delegate in British American Tobacco (Investments) Limited v Phillip Morris Products S.A. [2019] APO 40 at [83], the "best method" requirement is rarely let out of its box to trouble patent applicants and patentees, though it clearly had some bite in Servier and Sandvik.
5. In Kineta, Inc. [2017] APO 45 ("Kineta") the Deputy Commissioner canvassed some of the relevant case law on best method, including Servier and Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710. After doing so the Deputy Commissioner posed a process for determining the best method requirement at [29] as follows:

"It is clear that I need to consider three matters:

6. what is the invention for which a best method must be provided;
7. what method is described in the specification; and
8. was the applicant aware of a better method?"

1. TCT's arguments concerning the claimed invention and best method are provided in the TS as follows:

"84. As noted at paragraph 26 above, the claims of the Opposed Application include hinges having two or more hydraulic dampers. > > 85. A hinge featuring more than one hydraulic damper would undoubtedly be a more 'perfect or complex embodiment' of the Opposed Application's invention. This is because, all other things being equal, a hinge that relies on the compression of two hydraulic dampers rather than one would be expected to deliver a greater damping effect. Accordingly, the Applicant was under an obligation at the filing date to disclose such an embodiment. > > 86. Yet there is simply no disclosure in the specification of the Opposed Application as to how such an embodiment is to be performed. > > 87. Accordingly, the Applicant has failed to disclose the best method of performing the invention the subject of claims 1 to 7 of the Opposed Application. > > 88. Claims 1 to 7 are therefore invalid pursuant to s 40(2)(aa) of the Act."

2. The response in the ATS occupies a single paragraph at [42]:

"Opponent hypothesises that a hinge with two dampers would be a more perfect embodiment than using a single damper. It is purely speculation on the part of the opponent. There is no evidence to suggest that applicant has concealed a best method. The embodiments described and illustrated in the specification all represented the best methods of performing the invention. Applicant rejects this complaint."

3. At the hearing, Mr Tsang reiterated the arguments from the TS, adding that the disclosure of only a single damper in the provisional application was further alleged proof that the Applicant knew of a better way of performing the invention at the time of filing. Mr Wood-Roe provided rather limited submissions that were essentially a reiteration of what was said in the ATS.

Has there been a failure to disclose the best method ?

1. I agree with the Applicant. There is simply nothing, let alone any evidence, that points to the Applicant knowing of a better method of performing the invention at the time of filing the application. The fact the claims extend to more than one damper is not evidence per se that the Applicant knew of a better way of performing the invention but has withheld it.
2. I am not satisfied that the Applicant has failed to disclose the best method of performing the invention. This ground of opposition by TCT has been unsuccessful.

1. As the material sought to be introduced via Reg 5.23 does not assist in making out any ground of opposition, I refuse TCT's request under Reg 5.23.

1. Grounds under s40(2)(a) and support under s40(3) have been made out with respect to all the claims. No other grounds of opposition are made out. The TCT opposition is successful.
2. I allow the Applicant two (2) months from the date of this decision to propose amendments overcoming the deficiencies identified in this decision.

1. Costs usually follow the event. I see no reason to do otherwise in the TCT opposition. I award costs against the Applicant according to Schedule 8 of the Regulations.

1. In the Polaris SGP, Polaris pursued grounds under:
   • s59(b) and s18(1)(b)(i) - the invention as claimed is not novel in view of the prior art base as it existed before the priority date of the claims;
   • s59(b) and s18(1)(b)(ii) - the invention as claimed is not inventive in view of the prior art base as it existed before the priority date of the claims;
   • s59(c) - the specification does not comply with s40(3), in that the claims are not clear and succinct;
   • s59(c) - the specification does not comply with s40(3), in that the claims are not supported by matter in the specification;
   • s59(b) and s18(1)(c) - the claimed invention lacks utility;
   • s59(c) - the specification does not comply with s40(2)(a); and

• s59(c) - the specification does not comply with s40(2)(aa).

1. Of the above grounds s40(2)(a), best method, support, inventive step (based on a deferred priority date) and utility were pursued in the PS and at the hearing. My consideration of Polaris's opposition is accordingly confined to these matters.

1. I have considered the nature of the skilled addressee above in connection with my discussion of TCT's opposition,[80] which I will not repeat here.
2. There was little discussion by the parties on the nature of the skilled addressee, either in the written submissions or at the hearing. The nature of the skilled addressee, and the suitability of the expert declarants to represent the same, was simply absent in written and oral submissions by the Applicant. Polaris has only commented briefly on the skilled addressee at [14] and [15] of the PS, where it is argued that Mr Schroder falls within the description of the same. No comment has been provided by Polaris concerning the suitability of the Applicant's experts to represent the skilled addressee.
3. I see no reason not to adopt the formulation of the skilled addressee as for the TCT opposition, namely that from TCT Group which I repeat here for convenience: "...a person engaged in, or who has experience in, the design of mechanical devices and, in particular, in respect of hinges used in domestic and commercial applications". I note this is identical to the skilled addressee as formulated at [14] of the PS.
4. Despite the lack of disagreement, I have reviewed the declarations, and, where given, the CVs provided by each of the expert declarants and I am satisfied that each is able, at least in some way, to adequately represent the views of the skilled addressee as I have defined it. In this regard I note that:
   • Mr Schroder has a Bachelor of Technology in Industrial Design, commenced working in that field in 2002 and was still actively working in this field at the time Schroder1 was completed.[81] Mr Schroder's industrial design experience includes running his own business since 2017, where he as provided services to Polaris regarding soft close hinges for glass pool gates.[82] Mr Schroder's business is "...inclusive of concept generation, detailed CAD design, technical documentation for manufacturing, procurement, assembly and testing followed by final installation".[83] Mr Schroder's experience also extends to hingers and latches more generally.[84]
   • Mr Murauer is a director of the Applicant and has worked for/in the Applicant for about 25 years designing and manufacturing tools and mechanical components.[85] Mr Murauer has not provided a CV/resume and does not claim any formal qualifications but states that he is a mechanical engineer, as well as being the inventor for the opposed application.[86]
     • Mr Graham is an owner and operator of Lox Locking Pty Ltd, a company that "designs and distributes various items of door hardware including door and gate locks, cabinet locks and latches, door closers and door retainers".[87] Mr Graham has a Bachelor of Education (Industrial Arts) and has gained extensive knowledge and understanding of doors, gates and their associated hardware through his line of work.[88]
5. Particularly given the lack of dispute, I do not propose to make any general statements or conclusions here about the relative suitability of any of the experts to represent the skilled addressee. Suffice to state that where the declarants disagree on a factual point that I intend to rely upon, or where I seek to make findings of fact based on the expert evidence, it will be up to me to weigh each declarant's evidence accordingly in view of the particular context concerned and their skills, knowledge and experience.

1. I have considered the invention as described above.[89] I refer to those passages and do not see any need to repeat those here.
2. In terms of the claims, I similarly repeat what I have said on those above.[90] However, I will reproduce claim 1 below, annotated with integer numbers according to the numbering used by Polaris in its submissions. I do this merely as a matter of convenience for myself writing the Polaris opposition and to hopefully make it easier to read for others:

1.0 A hinge including: > > 1.1 a first hinge portion; > > 1.2 a second hinge portion; > > 1.3 a biasing spring; and > > 1.4 at least one hydraulic damper; > > 1.5 the first and second hinge portions are connected together and are arranged to pivot with respect to one another about a hinge axis between an open condition and a closed condition; > > 1.6 the biasing spring is arranged to bias the hinge towards the closed condition; > > 1.7 in use the at least one hydraulic damper is compressed from an extended condition to a retracted condition as the hinge moves from the open condition to the closed condition; > > 1.8 the first hinge portion includes a first hinge member, and a first clamping member; > > 1.9 the hinge is arranged to attach to a glass panel which is provided with an edge recess, the first hinge portion is arranged to attach to the glass panel by sandwiching the glass panel between the first hinge member and the first clamping member; > > 1.10 and when attached to the panel in use the at least one damper is located outside of the planes which describe the faces of the glass panel and inside the first hinge member; and > > 1.11 wherein the damper moves in a direction which is substantially parallel to the hinge axis.

1. I have outlined the relevant principles concerning the best method requirement above at in connection with the TCT opposition.[91] I refer to those passages and do not see any need to repeat these here.

1. Polaris's best method attack is premised on several alleged "missing" features not being disclosed in the application, which are said to be known to the Applicant and provide for a better method of performing the invention. These features are:

a) damper adjusters; > > b) lugs of an insert portion; and

c) a method of slidably installing the hinge by loosening and tightening bolts.

1. Polaris supported its best method contentions with respect to features a) to c) by reference to AU 2021900297 ("D12" or the "297 application"), being a provisional application filed by the Applicant on 9 February 2021, which Polaris maintained established the Applicant knew of better damper adjusters before the filing date of the present Application. At the hearing I noted that D12 did not actually appear to be filed in evidence, being a document that accompanied the amended Polaris SGP.. Polaris's representatives indicated to me that they were relying on the direction made, on 28 July 2022, in connection with the initial Polaris SGP as originally filed to bring D12 into evidence. The direction concerned is a standard one made by the Commissioner which specifies that all documents that accompany the initial SGP are treated as EIS. Such a direction is made to obviate irritating technicalities that occur when a document discussed in expert evidence in the EIS and filed with the initial SGP is not itself filed in the EIS. It is appropriate to make such a direction, as is the Commissioner's standard practice, since the direction always occurs during the period to file EIS. Conversely, these directions cannot be taken to provide, nor were they ever intended to result in, an endless backdoor to file "new" evidence when an amended SGP is filed. Such a situation is clearly contrary to notions of procedural fairness and to Regulations 5.8 and 5.9, which respectively provide for strict evidentiary time periods and extensions to the same. To be fair to Polaris's representatives, I take the issue to be one of simple confusion over the effect of amending the SGP on the documents accompanying it, particularly as I was advised at the hearing that Polaris's representatives were aware D12 would not be appropriate as EIR.
2. At the hearing I indicated to the parties that I would give the matter more thought and write to them if necessary. Procedurally, D12 can be introduced via Reg 5.23, and while I did not explicitly discuss Reg 5.23 in connection with D12 at the hearing, the hearing otherwise proceeded as though D12 was in evidence. Consequently, I will approach D12 in a similar way as for D7 in the TCT opposition, albeit without an actual Reg 5.23 request being made by one of the parties.[92]
3. Polaris also relied upon CS-9 in connection with its best method attack, as this document more explicitly illustrated the damper adjusters , which appear unlabelled in figure 4 of D12 and without any discussion in the description of D12. Schroder1 at [43] to [46] indicates that CS-9 relates to a commercially available version of the invention that was publicly available before the application was filed and had not substantially changed since its launch into the Australian market. None of this was disputed in the EIA, the APS or by Mr Wood-Roe at the hearing. I accept, based on Mr Schroder's evidence, and the lack of disagreement by the Applicant, that CS-9 is in fact related to a commercialised version of the invention that has not substantially changed since launch.[93]
4. Turning to Polaris's best method arguments themselves, these extend from [32] to [51] of the PS. Primarily, these are directed towards the "Damper adjusters" feature. Polaris's argument with respect to this feature is that it provides "...predictable degrees of damping to the hinge when biased from the open position to the closed position".[94] Polaris goes on to state in the PS:

"40. The damper adjuster is central to the invention of the Opposed Application. The Opposed Application outlines in the Background section that: > > However, it has been found that the damping action of these hydraulic dampers is somewhat variable and it can be difficult to achieve the desired damping characteristics. > > 41. As the damper adjuster provides predictability in relation to the damping characteristic of the damper, as indicated by the integer printed or embossed on the damper adjuster[95], the damper adjuster provides a solution to the problem defined in the background section of the Opposed Application and thus goes toward the objective of the alleged invention. The Opponent submits that given the nature of the problem to be addressed by the alleged invention[96], the damper adjuster ought to have been in the Opposed Application to satisfy the best method requirements."

• "43. The Opponent submits that the failure to disclose the damper adjuster, which:

• a. was known to the Applicant at the filing date of the Opposed Application as forming, or part of, the best method of performing the invention;
  • b. was present in Figure 4 of the 297 Application filed 3 months before the Opposed Application; and

c. is present in the Applicant's commercialised embodiment of the Opposed Application, > > is sufficient to establish the Opponent's best method ground of opposition."

Ms McDonald made similar submissions at the hearing, and in particular pointed to Mr Schroder's evidence at [45] of Schroder1 as to the centrality of the damper adjusters to the invention:

"I was then asked whether the Atlantic Soft Close Hinge that was marketed in the first half of 2021 and prior to 10 May 2021 was different to the hinge as described and depicted in the Opposed Application. It is my understanding that the Atlantic Soft Close Hinge was always sold with multiple dampener adjustments. The dampener adjustments could be interchanged with the hinge to adjust the dampening action of the hinge. The dampener adjustment allows for customised dampening which, in my view, appears quite important to addressing the problem of customising the dampening action of the hinge. I note that the Opposed Application does not disclose a dampener adjustment or multiple interchangeable dampener adjustments."

With respect to features b) and c), these were not discussed by Ms McDonald at all at the hearing, Polaris being content to rely upon its written submissions concerning these features. These extend from [44] to [49] of the PS, where Polaris asserts that both these features are disclosed in D12. The PS goes on to state at [49]:

"As the 297 Application was filed approximately 3 months prior to the filing date of the Opposed Application, and the fact that the current installation instructions of the Atlantic Soft Close Hinge continue to depict the lugs and the slidable installation method, indicates that the Applicant has withheld the disclosure of the best method of performing the alleged invention, namely, the best method of installation. The fact that the Applicant was very aware of the importance of these features which improve the method of performance of the alleged invention is highlighted by the Applicant proceeding to file a provisional application, the 297 Application, approximately 3 months prior to the filing date of the Opposed Application. Furthermore, the nature and importance of these features is highlighted by the Applicant continuing to file Australian Patent Application No. 2022200698 on 3 February 2022 claiming priority to the 297 Application. As the underlying premise of the patent system is the disclosure of a novel and non-obvious invention, it cannot be argued that these features were minor or routine developments. Rather, the features relating to the lugs and the slidable installation method were extremely important features of the Applicant's alleged invention at the filing date of the Opposed Application."

The Applicant's response in the APS[97] is essentially that feature a) does not relate to the "invention" for best method purposes. This is perhaps best exemplified by the following:

"16. The present invention relates to a new configuration of a damper in a hinge which allows a greater range of damper travel to make the performance of the hinge more predictable. So, for example, if an installer were installing a number of pool gates of the same type, they could be confident that the degree of damping would be consistent. So, if using the adjusters, then once an adjuster of a particular rating (12, 15 etc) is determined as suitable for one weight of door, then it will be likely that this adjustment will suit all gates of the same weight, due to the inherent consistency of operation that has already been provided by the longer damper stroke. > > 17. The advantages of the invention are not provided by the adjusters, they are provided by mounting the dampers in a manner that they are not constrained in size by the recess in the glass to enable a longer stroke. > > 18. Mr Schroder at para 45 explains that he believes the adjusters address the problem of 'customising the dampening action of the hinge'. However the present invention is not aimed at a problem of customisation, it is aimed at a problem of inconsistent operation, which is addressed by providing a damper of longer stroke. These are not the same problem. > > 19. The beneficial effect of the present invention does not rely on the provision of damper adjusters. It relies on providing a damper with a longer stroke and the best method known to the inventor of achieving this has been disclosed in the complete specification."

The Applicant's response concerning features b) and c) is encapsulated at [20] of the APS:

"At para 44 opponent draws attention to some other features in the '297 application that are not seen in the present application as follows: > > a) 'Lugs of in[98] insert portion' - these lugs are a standard feature of the 'mouse ear cutout' system for attaching hinges to glass pool hinges and would be well known to the skilled person. In fact, they are seen in figure 4 of the present application, pointed to by reference numeral 28. > > b) 'A method of slidably installing the hinge' - a particular method of installing a hinge by loosening and tightening bolts. This method of installing the hinge is unrelated to the present invention. These method steps have no bearing on the damping operation of the hinge. This is a separate invention which was the subject of the '297 application." (emphasis in original)

Mr Wood-Roe made similar submissions at the hearing, whilst also making further submissions concerning the lack of EIS on the best method issue.

Has there been a failure to disclose the best method ?

1. While I may not necessarily agree with how it has been articulated, I substantially agree with the Applicant's position. In my opinion, the invention which is described and around which the claims are drawn, clearly concerns a hinge for a glass panel with a recess wherein the damper is located outside the planes of the glass panel and moves in a direction substantially parallel to the hinge axis. The point of this, as indicated in the application, is to provide for longer damper travel compared to a hinge without the damper orientated/located in this way, which in turn leads to a smoother and more predictable closing action.[99] The benefits and solution of the invention extend specifically from the orientation and placement of the damper in the hinge in the manner described in the application. Nothing about the damper adjusters, lugs, or method of slidably installing the hinge in any way informs or affects the manner or way in which the damper is located outside the planes of the glass panel and moves in a direction substantially parallel to the hinge axis.
2. The language used by both Polaris and Mr Schroder betray a departure from a proper understanding of the invention for the purposes of best method. This can be seen at [45] of Schroder1, where Mr Schroder refers to "...addressing the problem of customising the dampening action of the hinge" and [41] of the PS, which refers to the damper adjuster providing a solution to the problem defined in the background section of the application. While the problem to be solved may inform the nature of the invention disclosed, it is not to the point to simply equate everything that solves the same problem, or leads to a similar outcome, as something that must be disclosed for the purposes of best method. The starting point is, of course, what is the "invention", not what problem it has solved or what effect is provided by the invention. The fact that Polaris's position is little more than its own apagoge is demonstrated by the fact that it would require an inventor, who has simultaneously developed different inventions to solve the same problem, to file every such invention in the one application.
3. I am not satisfied that the Applicant has failed to disclose the best method of performing the invention. This ground of opposition by Polaris has been unsuccessful.

1. I have outlined the relevant principles concerning utility above in connection with the TCT opposition.[100] I refer to those passages and do not see any need to repeat these here.

The thrust of Polaris's utility attack is provided at [56] of the PS:

"The Opponent relies on two arguments in support of its lack of utility ground of opposition: > > a. All of the claims of the Opposed Application lack utility because they fail to meet the promise of the invention, being to improve the predictability of the speed and smoothness of the hinge when it moves from the open position to the closed position; and > > b. Claims 1 to 3 of the Opposed Application lack utility as they cover means that will not work."

Arguments in support of these are then developed in the PS at [57] to [64]. At [59] of the PS, Polaris points to page 9 of the application to support its contention that:

"...the objective of the alleged invention is to improve the predictability of the speed and smoothness of the hinge when it moves from the open position to the closed position."[101]

This then leads to the crux of the argument in the PS concerning failure to meet the "promise":

"61. The Opposed Application allegedly achieves this objective[102] through the requirement that the hydraulic damper be mounted so that it moves in a direction which is parallel to the hinge axis and lies outside of the plane of the panel. The Opponent submits that this requirement does not address the objective of the alleged invention. Evidence of Mr Schroder at [38]-[39] of Schroder-1 states that the hinge disclosed by the Opposed Application does not improve the predictability of the speed and smoothness the hinge [sic] when it moves from the open position to the closed position. Mr Schroder highlighted that the stroke of the dampener of the Opposed Application is still relatively small (e.g., a few millimetres) in the vertical orientation based on the angle of the sloped surface along the hinge axis. Thus, reorientating the dampener does not increase the stroke length. Mr Schroder stated in evidence that the way in which the stroke can be increased is by increasing the angle of the sloped surface of the housing containing the damper (see Schroder-1 at [40]). > > 62. Mr Murauer submitted evidence regarding the background to the development of the hinge of the Opposed Application. Mr Murauer asserted at [9] and [10] of the Murauer declaration that the hinge was developed in light of the Polaris 120 hinge - namely a hinge commercialised by the Opponent. The Murauer declaration states at [9] that due_)_ the dampers [sic] in the Polaris 120 hinge being located in the cut-out in the glass panel, locating the damper outside the cut-out in the glass panel would not constrain the size of the damper so a longer damper could be used with a longer travel. Furthermore, the Murauer declaration at [11] has submitted that as the two halves of the Polaris 120 hinge are taller than they are wide, a vertical orientation, would also allow a longer dampener to be used. However, the Opponent submits that the statements provided by Mr Murauer do not apply to the wording of claim 1 of the Opposed Application as claim 1 encompasses many different types of hinges other than the Polaris 120 hinge and that the alleged advantages achieved by the alleged invention simply do not apply to hinges of differing dimensions. Other hinge designs would fall within the claims where the hinge may not have the same dimensions (it may have a wider dimension compared to vertical orientation) compared to the Polaris 120 hinge (see Schroder-2 at [4.4]). Furthermore, as there is no defined length or dimensions of the stroke length of the damper or the damper itself, the claim encompasses embodiments having a very short length, thereby failing to provide the promised result of the Opposed Application (see Schroder-2 at [4.4])."

Polaris's arguments that claims 1 to 3 cover means that will not work are given as follows in the PS:

"63. The Opponent also submits that at least claims 1 to 3 encompass embodiments of the hinge that do not do what it is intended by the Applicant. Mr Schroder submitted in evidence in Schroder-1 at [42] that the alleged invention of claim 1 cannot work. At [42] of Schroder-1, Mr Schroder states: > > In my view, the hinge of claim 1 will not work only with a hydraulic dampener. By this I mean that the dampener has no linkage coupled directly or indirectly to the panels. I believe there needs to be a linkage between the panels and the dampener so that there is a transfer of the closing force to the dampener. In the specification, this linkage is provided in the form of a cam. But I note that features like the cam are only introduced in dependent claims. > > 64. As noted in the authorities mentioned above, all that is within the scope of a claim must be useful if the claim is not to fail for inutility, or, to express the matter differently, a claim is bad if it covers means that will not produce the desired result even if a skilful person would know which means to avoid. In the Opposed Application, claims 1-3 clearly fail to define any form of linkage to transfer the closing force to the hydraulic damper and thus the claims are bad as they cover means that simply will not work, let alone produce an improvement in the predictability of the speed and smoothness the hinge when it moves from the open position to the closed position."

At the hearing. Ms McDonald made similar submissions, although at some points she referred to the promise as being "...a hinge which is more consistent in its function" as well as two related concepts, being predictability in the speed and the closing action and the length of the damper travel, as well as observing that Mr Schroder did not see any benefit or difference in the predictability by the adding a couple of millimetres of damping effect. Ms McDonald also argued that the commercial embodiment of invention may not in fact have a longer damper stroke due to the use of damper adjusters. Ms McDonald also argued, in response to submissions made by the Applicant, that the intended result of the invention is more than just a longer damper stroke, reiterating that predictability still formed part of the result. 6. The Applicant's response in the APS is as follows:

"22. Opponent draws attention to statements by Mr Schroder at paras 38 to 40 of Schroder 1. In para 40 Mr Schroder explained that he believed the stroke of the damper in the Atlantic Hinge 'is still relatively small' when compared to the Polaris 120. These statements were made prior to Mr Schroder considering the evidence in Murauer. > > 23. In Murauer, Mr Murauer explained that the extent of damper travel had in fact been increased by 40% and further explained that 'This would absorb energy during the closing phase of the hinge over a longer distance. The peak force on a longer dampener would be lower, and the energy would be absorbed more gradually'. > > 24. In Schroder 2, in reply to the explanation of Mr Murauer, Mr Shroder [sic] only stated that he did not see an explanation of this advantage in the opposed application. Mr Schroder does not dispute that the advantage has been determined to exist in a hinge constructed according to the directions given in the opposed application. > > 25. At paras [sic] 63, opponent asserts that at least claim 1 covers embodiments which do not work and draws attention to comments of Mr Schroder that there is no linkage defined in claim 1 and that 'In the specification, this linkage is provided in the form of a cam'. > > 26. Various damper actuation arrangements are within the common general knowledge of the skilled person and we believe the skilled person would be able to make working embodiments across the scope of claim 1. > > 27. Nevertheless, should the hearings officer find claim 1 to lack utility for the lack of defining a cam then applicant would be amenable to amend claim 1 to incorporate the features of claim 2 to define that the damper is actuated by a cam to address this." (emphasis in original)

7. At the hearing, Mr Wood-Roe pointed out that the promise related to the ability to use a damper with longer travel, leading to the advantages that the invention promises, by having the damper located outside the planes of the glass. Mr Wood-Roe argued that specific dimensions are not given in the application because the result related to orientating the damper in a certain way enables a use a damper with longer travel. Mr Wood-Roe observed that the ability to use a longer damper was in the context of the type of hinges concerned, namely hinges having an insert component and used with glass panels having an edge recess. This was said to be due to the fact that moving the damper outside the planes of the glass meant that the damper did not have to fit within the edge recess, further noting that the insert component was also located within the edge recess. At the hearing, Mr Wood-Roe observed that:

"...in the prior art, the dampers were all either located inside, not only inside that edge recess, but they were located inside another component which would was called an insert component which took up further space in that edge recess. So then within the insert component yourself, you have a further restricted space to insert these dampers."

"...all of the measures which Mr Murauer brought to the problem were aimed at enabling a longer stroke of the damper and the reason for this is that then the energy absorbed by the damper is absorbed over a longer distance...the reason that provides a smoother and more consistent or predictable operation is that the energy that's taken out is sort of averaged over a longer distance of travel of the damper, rather than just a sudden absorption of energy in a smaller stroke of the damper which he hypothesised was leading to a smoothness or predictability of closing that could be improved."

1. As noted above in the TCT opposition[103], the starting point of the analysis is to identify the promised benefit. As noted above with respect to the TCT opposition, I am of the that view the promise of the invention is to allow for the use of a longer damper, with the consequent advantages associated with that, compared to hinges which have the damper located within the planes of the glass panel and orientated perpendicular to the hinge axis. I do not see any reason to come to a different conclusion in the present matter.
2. One of the questions raised by Polaris is whether having the damper outside the planes of the glass panel and moving in a direction parallel to the hinge axis will achieve the promise of predictability and smoothness of the hinge on moving from the open to the closed position. Polaris points to [38] and [39] of Schroder1 in support of this contention. This evidence is repeated below, including [37] of Schroder1 for context:

"37. I was then asked to provide my opinion as to whether the hinge disclosed in the Opposed Application addressed the problem stated in the Background of the specification. I was reminded that the problem in the Background in the specification was that the 'damping action of these hydraulic dampeners is somewhat variable and it can be difficult to achieve the desired dampening characteristics'. > > 38. In my view, I do not see how the dampener of the hinge in the Opposed Application has improved characteristics compared to well-known hinge designs to address this problem. > > 39. Whilst the specification on pages 6 and 7 discusses customising the dampening effect by varying the dampener assembly face surface geometry, the specification does not discuss providing a user with differently shaped dampener assembly faces for selection for the particular application. Furthermore, the specification provides no instructions as to how to customise the profile of the dampener assembly face to achieve these desired dampening characteristics. There appears to be no adjustability provided by the hinge or its components to be able to achieve the desired dampener characteristic. Therefore, as an industrial designer, I would need to use a significant amount of trial and error to design and interchange parts to achieve a desired variable dampening characteristic using the hinge of the Opposed Application."

3. It can be quickly seen that Mr Schroder's evidence here is related to his opinion as to whether the hinge of the application addressed an alleged problem put to him from the application. Mr Schroder here focuses on issues and features concerning customisation/adjustability/variability of the dampening effect. While these may impact on predictability and smoothness of the closing action, Mr Schroder does not comment on predictability or smoothness as such, and does not contemplate what effect the orientation and location of damper would have on the same. This evidence of Mr Schroder does not support Polaris's contentions concerning utility.
4. However, [40] and [41] of Schroder1 are rather more on point:

"40. I also believe that the movement of the hydraulic dampener in direction parallel to the hinge axis does not address the problem mentioned in the Background. From my reading of the specification, it appears that the stroke of the dampener is still relatively small (e.g., a few millimetres) in the vertical orientation based on the angle of the sloped surface along the hinge axis, so I cannot see how reorientating the dampener has solved this problem, as the stroke length has not been materially changed compared to hinges where the dampener is not oriented parallel to the hinge axis. In this hinge design of the Opposed Application, the way in which the stroke can be increased is by increasing the angle of the sloped surface to increase vertical displacement of the dampener, but this modification leads to ineffective or seizure-prone force transfer as it is preferable that the contact surfaces between the cam and sloped surface is close to 45 degrees. > > 41. I also believe that locating the dampener outside the faces of the glass panel is unrelated to the predictability of the speed and smoothness of the closing action."

5. Mr Murauer responded directly to this in the EIA:

"4. I had noticed a drawback with the Polaris 120 hinge which was that when installed for use it tended to have an inconsistent closing action. In some installations the glass pool gate would close too slowly and take a very long time to close. In other installations, the glass pool gate would close too quickly and would collide heavily on its latch. > > 5. I thought about how to make an improved hinge with a more consistent closing action. > > 6. The Polaris 120 is designed to attach to glass panels using an industry standard 'mouse-ear' profile cut out - seen in figure 2A. The hinge includes an insert 40 - seen in figure 6B. The insert 40 locates in the mouse ear profile cut-out when the hinge is attached to a glass panel. A pair of hydraulic dampeners 100 are mounted in the insert 40. When the door is allowed to close, a biasing spring in the hinge urges the hinge (and attached door) to the closed position. When the hinge is almost closed, the extended parts of the dampeners strike a region on the other half of the hinge, and the remaining arc of closure is made against the combined damping force of the dampeners 100. > > 7. It seemed to me that the operation of the Polaris 120 hinge would be improved if the dampener had a longer stroke. This would absorb energy during the closing phase of the hinge over a longer distance. The peak force on a longer dampener would be lower, and the energy would be absorbed more gradually. I thought this would provide more consistent operation. > > 8. After some time thinking about this, I devised two ways which would enable a longer dampener to be used. > > 9. Dampener mounted outside glass - I realised that the dampeners in the Polaris 120 are constrained in size because they need to fit inside the insert, and in turn are located inside the mouse ear cut-out in the glass panel. I realised that if the dampener could be mounted outside of the mouse ear cut-out in the glass, then the size of the dampener would not be constrained by the dimensions of the mouse ear cut-out and so a longer dampener could be used with a longer travel. > > 10. In the opposed application, this feature is defined in the claims as 'the at least one damper is located outside of the planes which describe the faces of the glass panel and inside the first hinge member'. > > 11. Dampener mounted vertically - I also realised that the dampeners in the Polaris 120 are constrained in size because they are mounted horizontally in the hinge. The two halves of the hinge are taller than they are wide. This would mean that if the dampener was mounted in the hinge in a vertical orientation, then this would also allow a longer dampener to be used. > > 12. In the provisional priority application 2020901504 this feature of vertical orientation had been defined as 'the at least one hydraulic damper is compressible from an extended condition to a retracted condition and moves along an axis which is substantially parallel to the hinge axis'. > > 13. However, after filing the provisional application I later realised that a damper does not really move 'along' an axis. Rather, an axis is more usually a reference to a line about which something rotates. In order to improve the clarity of the claims, the definition of 'moving along an axis' was changed to 'moving in a direction'. > > 14. In the opposed application, the feature is defined in the claims as 'the damper moves in a direction which is substantially parallel to the hinge axis'. This was a clearer way of defining the feature of vertical/upright orientation of the dampener. > > 15. I combined both of the above ideas into a new design of hinge which is the subject of the Opposed Application. The dampener is mounted vertically in the hinge, and it is located outside of the glass panel, to one side of the glass panel. > > 16. According to my calculations, with my new design I achieved an increase in damper travel from 12mm to 16mm when compared with the Polaris 120. In addition, as a rule of thumb, about 2mm of travel of these types of dampeners is lost in a short period of initial wear during the early stages of use. So, the effective increase in travel can be thought of as going from 10mm to 14mm. An increase of 40%."[104] (emphasis in original)

6. As can be seen from the PS as cited above, Polaris's response to this was to note that there were other hinge designs that would fall within the claims that may not have the same dimensions as the Polaris 120 hinge, and that the claim allegedly encompasses embodiments with very short dampers or damper stroke length that would not meet the promised benefit. Polaris made some reference to the EIR, and it is worthwhile repeating some salient passages from Schroder2 below:

"4. The Murauer Declaration states at [5] that the goal of the hinge disclosed in the Opposed Application was to provide 'a more consistent closing action'. However, as I stated at [37]-[41] of the EIS, I fail to understand how the claimed feature of the hydraulic dampener moving parallel to the hinge axis addresses the consistent closing action problem. The Murauer Declaration seems to address my concerns at [9]-[16]. I have the following response to the Murauer Declaration: > > 4.1. The Murauer Declaration states that the two features of 'the dampener being mounted outside the glass' and 'the dampener is mounted vertically' together provide increased stroke length of the dampener, leading to more consistent closing action. > > 4.2. The Murauer Declaration errs by conflating the issue of ensuring that a hinge reliably closes with the required force, and the issue of ensuring that the forces experiences [sic] by the dampener within the hinge are controlled to ensure adequate design life for the dampeners. The term 'consistent closing action', in my view, refers to ensuring that the spring and dampening forces are adequately sized, and adjustable for environmental factors such as an imperfect mounting angle and potential wind or other forces acting on the parts being moved by the hinge. A consistent closing action means that, in the context of a particular spring return force, the hinge is not over-dampened, such that the closing speed is slow or the hinge does not close at all due to friction or wind forces, and that the hinge is not under-dampened, such that the hinge slams shut with excess force. Adjusting the stroke length has nothing to do with either of these issues. > > 4.3. That said, even if the variables mentioned in the Murauer Declaration were to have the stated effect on consistent closing action, I note that claim 1 as examined in table CS-T1 of the EIS does not include the feature of 'the dampener being mounted outside the glass' or the feature of 'the dampener is mounted vertically'. Instead, claim 1 includes the feature of 'the damper is located outside of the planes which describe the faces of the glass panel and inside the first hinge member'. There is no feature in claim 1 that relates to the orientation of the dampener. > > 4.4. I am instructed that the Opponent[105] has sought an amendment to the claims of the Opposed Application and was provided a copy of these claims, attached as Exhibit CS-12. Examining these claims, I see that claim 1 now includes the feature 'wherein the damper moves in a direction which is substantially parallel to the hinge axis'. However, the statement in the Murauer Declaration refers to a 'vertical mounting', referring to the general aspect ratio of hinges used in situations where the hinge axis is parallel to the vertical axis. This, however, is only the case because of the substantial weight that must be counteracted by the hinge. If a hinge were to be designed for a horizontal use case, the additional space in the vertical dimension would not exist and the claimed configuration would not provide the alleged benefit, the existence of which I continue to fundamentally dispute as mentioned at [4.2] above. There is, in my view, no causal relationship between the orientation of the hinge axis and the space available in the hinge body for receiving a dampener. > > 4.5. The Murauer Declaration states at [16] that the stroke length was increased from 12 mm to 16 mm when compared to the Polaris 120. I do not see any disclosure of this feature in the Opposed Application. It is stated that the effective travel of the dampener has been increased by 40%. I do not see any disclosure of this advantage in the Opposed Application."

7. Based on Mr Murauer's statements at [4] and [5] of Murauer2, it is not clear to me that he has in fact "conflated" issues as suggested by Mr Schroder. It seems to me he understands that consistent opening relates to the speed and force with which the gate will close; his discussion of the Polaris 120 hinge at [4] clearly conveys an understanding of issues concerning how a hinge reliably closes as put by Mr Schroder at [4.2] of Schroder2. In my view, it is the case that Mr Schroder simply rejects the possibility that the stroke length of the damper has any effect on the consistency of the closing action, while, as best understood, Mr Murauer takes a contrary view.
8. In this regard, Mr Murauer's statements about the peak force and more gradual energy absorption[106] appear inherently plausible and have not been addressed by Mr Schroder in the EIR. In my view Mr Schroder seems to be taking an unduly narrow view of those factors that go into the "consistency" of the hinge closing action. All things being equal, it is hard to see how reducing the peak force and more gradual energy absorption would not allow for better consistency of closing action, even if this is only achieved via improving the design life of the dampeners. The same can be said for "predictability and smoothness" which is what is actually used in the application, to the extent there may be any difference between these and "consistency".
9. The nature of the "comparison" hinges for the purposes of the promised benefit is important in terms of understanding whether the claims meet the same. Polaris has been at pains to point out that the invention was developed with respect to the Polaris 120 hinge whilst neither claim 1 or the application mention or are in any way restricted by reference to the same. Notionally, "other" hinges could have any dimensions as pointed out by Polaris and thereby lead to issues with claim 1 failing to meet the promised benefit. However, on balance, I do not think that is the case in view of the evidence in this matter, for reasons that I will explain further below.
10. Firstly, as noted at [4.4] of Schroder2, Mr Murauer's evidence (and clearly the disclosure of the application) are with respect to hinges with a hinge axis parallel to the vertical, these being, as I understand it from [4.4.] of Schroder2, longer in the vertical direction for each leaf of the hinge than the horizontal direction to deal with the weight borne by the hinge. That being the case, then there would seem to be no issue with claim 1 achieving the promised benefit with respect to vertically orientated hinges, particularly given that claim 1 defines attachment to a glass panel (which is rather heavy and therefore one would expect the "general aspect ratio" to be abided by). This also indicates that "comparison" hinges for glass panels with a recess, when used for a vertical hinge, would also be understood to comprise the same general aspect ratio. There is simply no other evidence going to the typical dimensions or aspect ratios that would be used by a skilled addressee in implementing such hinges.
11. Secondly, [4.4] of Schroder2 also seems to suggest that the aspect ratios would be "flipped" for a hinge designed for use with the hinge axis placed horizontally. On this basis Mr Schroder argues that claim 1 would not meet the promised benefit with respect to such horizontal axis hinges, as there would not be additional space in the vertical direction. Mr Schroder has focussed on Mr Murauer's evidence concerning his inventive journey in connection with the Polaris 120 hinge, where he suggests that there was more room to be had in the vertical direction. However, neither claim 1 nor the application refers to a vertical direction of the hinge axis at all, nor is the orientation of the hinge, whether vertical or horizontal, specified in the claim or the application. Rather, the damper is located outside the glass panel and moves substantially parallel to the hinge axis. Consequently, the alleged lack of space in the vertical direction is not directly relevant to whether claim 1 meets the promised benefit or not.
12. There is still something of a question as to whether hinges with horizontal hinge axes lead to any utility issues for claim 1. In that regard, working again with Mr Schroder's evidence on aspect ratios, it would seem that a hinge with a horizontal hinge axis would have leaves longer in the horizontal direction than the vertical direction. If that is the case, then it would seem there is room in the horizontal direction to provide for the damper to be located outside the glass panel and to move substantially parallel to the hinge axis, and therefore there are no issues with meeting the promised benefit. I have emphasised "seems" here, as Mr Schroder's evidence on horizontal hinges is slender to say the least, and the only firm inference I can draw is that a horizontal hinge would have less room in the vertical direction than a vertical hinge.
13. Overall, [4.4] of Schroder2 is suggestive that there are certain aspect ratios that would be used by the skilled addressee depending on the orientation of the hinge, however Mr Schroder seems to have simply been content with refuting Mr Murauer's vertically focused inventive journey, instead of explaining in more detail how aspect ratio issues would lead to embodiments of claim 1 not meeting the promise of the invention. For example, Mr Schroder has not explained whether, or if, certain aspect ratios would be rejected by a skilled addressee for the types of hinges the subject of the invention, depending on the orientation of the hinge. While I can accept that claim 1 notionally encompasses any sized hinge in any orientation, Schroder2 at [4.4] suggests that there are limits on what the skilled addressee would understand those to be, without actually making those clear. Because of this I cannot be satisfied on balance that claim 1 extends to embodiments that will not meet the promised benefit due to dimensional issues.
14. It is also worthwhile noting that, in some respects, the ability to provide for a longer damper travel would seem to be independent of the aspect ratio of the hinge or its orientation. This is due to the fact that the damper is located outside the glass panel and thereby would not tend to come in conflict with that panel or any insert used to clamp the glass panel. Nothing in Mr Schroder's evidence addresses this issue.
15. A final issue raised by Polaris, in terms of the promised benefit, concerns whether the claim encompasses very short dampers or dampers with a very short travel length. It is true that claim 1 does not specify the length of the damper to be used. However, I do not consider that this leads to any utility issues. The promise relates to allowing the use of a longer damper, by virtue of the damper being located outside the glass panel and moving substantially parallel to the hinge axis. That is, the promised benefit does not relate to a particular length of the damper as such, as opposed to the ability or capacity to use a longer damper in comparison to hinges without the features concerned.
16. On balance, and in view of the evidence before me, I am not satisfied that claim 1 or any of the claims are wanting in terms of failing to meet the promised benefit.
17. Turning to arguments concerning claims that will not work due to lack of "linkage" between the cam and the hinge leaves, these can be disposed of fairly quickly. Claim 1 specifies that:

"in use the at least one hydraulic damper is compressed from an extended condition to a retracted condition as the hinge moves from the open condition to the closed condition..."

The fact that the damper is compressed as the hinge closes is indicative that there must be some means, even if unspecified, to facilitate its compression. The damper is clearly operable in claim 1 as defined. There is no lack of utility on the basis that claim 1 or any of the claims simply will not work.

1. I am not satisfied that any of the claims lack utility. Polaris has been unsuccessful on this ground of opposition.

Section40(2)(a) - clear enough and complete enough disclosure

1. I have outlined the relevant principles concerning s40(2)(a) above in connection with the TCT opposition.[107] I refer to those passages and do not see any need to repeat these here.

1. Polaris's arguments for this ground run from [74] to [89] of the PS but essentially boil down to arguments that there is a lack of enablement for any linkage means and multiple dampers, as well as enablement issues to do with the geometry of the hinge itself. The PS at [84] to [88] provide a good overview of the crux of Polaris's arguments:

"84. The third step from CSR is to determine whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims. In other words, does the specification of the Opposed Application permit the skilled addressee to make, without undue burden or inventive ingenuity, hinges featuring multiple hydraulic dampers which are actuated by all manners of force transmission means as implied by claim 1. The Opponent submits that the answer to this question is clearly no. > > 85. The specification of the Opposed Application at Page 9, lines 22 to 25, Page 5, lines 9 to 10, and Page 1, lines 25 to 2 discusses rearranging the damper from the horizontal axis, as used in the Polaris 120 hinge as noted by Mr Murauer at [4] and [11] of the Murauer declaration, to the vertical axis parallel to the hinge axis. Mr Schroder noted at [sic] that various cammed arrangement [sic] can be used for damping hinges of pool gates and fences. However, Mr Schroder highlighted in Schroder-1 at [9.3] that friction between the damper and the cam must be taken into consideration. Mr Schroder highlighted that there can be a build-up of dirt and debris on the end of the damper and the cam, wherein this build-up introduces variability to the movement of the hinge toward the closed position. Thus, careful design of the cam arrangement is required, otherwise the cammed arrangement could prevent the hinge from providing predictable damping characteristics in terms of speed and smoothness of the closing movement. > > 86. The specification of the Opposed Application at Page 6, line 31 to Page 7, line 7 also discusses customising the dampening effect by varying the dampener assembly face surface geometry. However, as stated by Mr Schroder in Schroder-1 at [39], the specification does not discuss providing a user with differently shaped dampener assembly faces for selection for the particular application. Furthermore, the specification provides no instructions as to how to customise the profile of the dampener assembly face to achieve these desired dampening characteristics. Mr Schroder importantly states at [39] of Schroder-1: > > Therefore, as an industrial designer, I would need to use a significant amount of trial and error to design and interchange parts to achieve a desired variable dampening characteristic using the hinge of the Opposed Application. > > 87. In addition, the specification does not provide an enabling disclosure of the use of multiple dampers in the hinge. > > 88. The Opponent submits that specification of the Opposed Application does not permit the skilled addressee to make, without undue burden or inventive ingenuity, hinges featuring multiple hydraulic dampers that are actuated by a 'force transmission means' across the full range of options encompassed by the words 'when attached to the panel in use the at least one damper is located outside of the planes which describe the faces of the glass panel and inside the first hinge member; and wherein the damper moves in a direction which is substantially parallel to the hinge axis' as defined by claim 1. (emphasis in original)

2. Ms McDonald made similar submissions at the hearing, though relied upon the PS with regard to the "geometry" issue.
3. The Applicant responds to the s40(2)(a) matters raised by Polaris in the APS at [29] to [39]:

"1 - Claim 1 encompasses multiple dampers > > 29. This complaint is based on an inclusive construction of claim 1, that the claim might cover embodiments that include more than one hydraulic damper. This is not disputed by the applicant. This was intended. > > 30. The use of the phrase 'at least one hydraulic damper' was defined in claim 1 to account for a situation where a hypothetical infringing article has more than one damper, perhaps only one of which is mounted in the way specified in claim 1. The use of the phrase 'at least one' conveys that the presence of more than one damper in an alleged infringing article would not mean that that article falls outside the scope of claim 1. > > 31. The opponent has construed that the additional dampers that are permitted by the definition in claim 1 are also mounted outside the glass, and vertically. However, they could similarly be mounted horizontally inside the hinge, and inside the recess in the glass panel in an insert component, in much the same style as in the Polaris 120. > > 32. The more limited definitions of the invention in claims 2 and 3 refer only to 'the hydraulic damper' which is consistent with the construction of claim 1 outlined at para 16. > > 33. Should the hearings officer find that the phrase 'at least one' leads to invalidity on this ground then applicant would be amenable to amend this phrase to define 'a hydraulic damper' which is consistent with the language of claims 2 and 3. > > 2 - No cam defined in claim 1 > > 34. As for para 27 above, should the hearing officer be of the view that claim 1 is bad for lack of defining a cam then applicant would be amenable to amend claim 1 to incorporate the features of claim 2 to define that the damper is actuated by a cam. > > 3 - Varying dampener face surface geometry > > 35. At para 39 of Schroder 1, Mr Schroder points to a teaching at p.6, l.31 to p.7 l.3 of the specification which reads as follows: > > 'In some embodiments the damping effect can be customized by varying the damper assembly face 54 surface geometry which varies the speed of the dampers depression and alters the resistance force. (can provide varied damper resistance dependent on the gate angle). For instance, the face 54 can be formed from a sandwich type arrangement of materials of varying hardness and Coefficient of friction.' > > 36. This passage is really teaching two things: (a) that the shape of the face of the damper assembly need not be as illustrated in the drawings, and (b) that the face of the damper assembly could me made of materials with varying coefficients of friction. > > 37. The passage referred to at para 39 is outlining possible variations to the preferred embodiment to the skilled address. It would be well understood by the skilled person that a cam face need not be flat, and that different materials would exhibit different frictional characteristics. > > 38. It would appear, according to the logic advanced by the opponent, that deleting the above passage from the specification would restore utility. This does not make sense. This passage is providing the skilled person with teaching about alternative versions of the preferred embodiments. > > 39. We do not believe that the passage referred to by Mr Schroder creates utility problems for claim 1." (emphasis in original)

4. Mr Wood-Roe made similar submissions at the hearing.

1. The problem for Polaris in connection with their assertions on multiple dampers is that there is no evidence in this opposition, to support their case - as I reiterated several times in the TCT opposition above, a lack of disclosure does not necessarily mean a lack of enablement. I do not consider that the nature of the invention is one, in the circumstances, where I can make findings concerning s40(2)(a) in the absence of appropriate evidence to do so.
2. While it is possible for me to incorporate evidence from the TCT opposition concerning multiple dampers into this one, using Reg 5.23, there is little point in doing so. The fact that I have made adverse findings in the TCT opposition on this issue means that there is no danger to the public interest, which would simply suffer by any further delay in this decision issuing if I was minded to take the Reg 5.23 path. Similarly, the parties would be further inconvenienced by the delay and by the need to file further evidence and submissions in response to the material sought to be introduced. I note that there may be some point in exercising Reg 5.23 in view of Polaris's contentions on the priority date of the claims, however, as will be seen later in this decision, these also do not militate in favour of me exercising Reg 5.23.
3. With regard to the linkage means/actuating mechanism, Polaris essentially makes the same arguments, based on [42] of Schroder1, concerning this issue as it did for utility. As I noted above, claim 1 clearly defines the damper as being operable. There is no other evidence that goes to questions of whether the skilled addressee would face an undue burden or require further invention in implementing the invention with all possible actuating mechanisms that fall within the scope of claim 1, whether for a single damper or where there are multiple dampers.
4. Turning now to the "geometry" issue, I am having some difficulty in understanding this matter in terms of s40(2)(a). Polaris's argument here is based on [39] of Schroder1, however this discusses optional features that are not even claimed. This evidence does not establish that any of the claims are wanting under s40(2)(a).
5. In summary, I am not satisfied, in view of the evidence in this opposition, that any of the claims are wanting under s40(2)(a).

1. I have outlined the relevant principles concerning support above in connection with the TCT opposition.[108] I refer to those passages and do not see any need to repeat these here.

1. Polaris's support arguments are provided at [105] of the PS and are simply a reiteration of Polaris's position on s40(2)(a). This was reiterated by Ms McDonald at the hearing.
2. Similarly, the Applicant's support arguments, at [40] and [41] of the APS, simply referred to its position on s40(2)(a). Mr Wood-Roe addressed support and s40(2)(a) together at the hearing.

1. Given my conclusions on s40(2)(a), it follows that I am not satisfied that any of the claims lack support in view of the evidence before me in this opposition.

1. I note that the relevant sections of the Act and Regulations relating to the determination of priority dates were changed as a result of the RTB Act and consequent changes to the Regulations contingent on the RTB Act.
2. Thus, with respect to priority dates, section 43 of the Act reads as follows:

"(1) Each claim of a specification must have a priority date. > > (2) The priority date of a claim is:

(a) if subsection (2A) applies to the claim - the date determined under the regulations; or

(b) otherwise - the date of the filing of the specification.

(2A) This subsection applies to a claim if:

(a) prescribed circumstances apply in relation to the invention defined in the claim; and

(b) a prescribed document discloses, or a prescribed set of prescribed documents considered together disclose, the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

(2B) A prescribed document, or a prescribed set of prescribed documents considered together, is taken to disclose the invention in a claim as mentioned in paragraph (2A)(b) so far as such disclosure requires a description of a micro‑organism, if:

(a) the micro‑organism is deposited with a prescribed depository institution in accordance with such provisions of the Budapest Treaty as are applicable; and

(b) the prescribed circumstances apply.

(3) Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.

(4) The priority date of a claim of a specification may be different from the priority date of any other claim of the specification.

(5) If, at the time when a Convention application or a PCT application is made in respect of an invention:

(a) an application (the earlier application) has been made for protection in respect of the invention in a Convention country; and

(b) the earlier application was made in the prescribed period; and

(c) the earlier application has been withdrawn, abandoned or refused without becoming open to public inspection; and

(d) the earlier application has not been used as the basis of claiming a right of priority in a Convention country under a law of that country; and

(e) a later application has been made by the same applicant for protection in respect of the invention in a Convention country;

the earlier application is taken, for the purposes of this Act, to have never been made."

1. Chapter 3 Part 1 Division 2 of the Regulations deal with the priority date of claims. Specifically, for present purposes, Regulation 3.12 reads as follows:

"(1) This Division determines the priority date of a claim:

(a) for subsection 36(4) of the Act (see regulation 3.13); and

(b) for paragraph 43(2)(a) of the Act (see regulation 3.13A to 3.13E); and

(c) (c) for section 114 of the Act (see regulation 3.14).

(2) However, if more than one of regulations 3.13A to 3.13E applies to a single claim, the priority date of the claim, for paragraph 43(2)(a) of the Act, is the earliest of the dates that is determined by those regulations.

(3) Despite regulations 3.13A to 3.13E, the priority date of a claim, for paragraph 43(2)(a) of the Act, is no later than the date of the filing of the specification.

(4) In this Division, a document, or a set of documents considered together, clearly discloses an invention if the document, or set of documents, discloses the invention in a manner that is clear enough, and complete enough, for the invention to be performed by a person skilled in the relevant art.

(5) For the purposes of subregulation (4), a document, or a set of documents considered together, is taken to clearly disclose an invention as mentioned in that subregulation so far as such disclosure requires a description of a micro‑organism, if:

(a) the micro‑organism is deposited with a prescribed depository institution in accordance with such provisions of the Budapest Treaty as are applicable; and

(b) the prescribed circumstances for paragraph 43(2B)(b) of the Act apply.

1. Regulation 3.13A is relevant for present purposes.[109] This reads as follows:

(a) the circumstance mentioned in subregulation (2) (a prescribed circumstance for paragraph 43(2A)(a) of the Act) applies to the invention defined in the claim; and

(b) either:

(i) a document mentioned in subregulation (4) (a prescribed document for paragraph 43(2A)(b) of the Act) clearly discloses the invention in the claim; or

(ii) 2 or more of those documents (a prescribed set of prescribed documents for paragraph 43(2A)(b) of the Act), considered together, clearly disclose the invention in the claim.

Circumstance

(2) For paragraph (1)(a), the circumstance is that the specification containing the claim that defines the invention was filed for a PCT application, and:

(a) either:

(i) the PCT application claims the priority of an earlier application under Article 8 of the PCT; or

(ii) the PCT application has been amended to include a claim to priority from an earlier application that, at the time of filing the PCT application, was a claim to priority that could have been made under Article 8 of the PCT; and

(b) either:

(i) the earlier application was made in Australia no more than 12 months before the filing date of the PCT application; or

(ii) the earlier application was made in Australia more than 12 months before the filing date of the PCT application, and:

• (A) a receiving Office has restored the priority under Rule 26bis.3, and the restored priority has not been found to be ineffective by the Commissioner or a prescribed court under Rule 49ter.1; or
• (B) the Commissioner has restored the priority under Rule 49ter.2; or
• (C) the Commissioner has granted an extension of time under section 223 of the Act that has the effect of restoring a right of priority; or

(iii) the earlier application is a basic application that was the first application made in a Convention country in relation to the invention, and:

• (A) the earlier application was made no more than 12 months before the filing date of the PCT application; or
• (B) the earlier application was made more than 12 months before the filing date of the PCT application, and a receiving Office has restored the priority under Rule 26bis.3, and the restored priority has not been found to be ineffective by the Commissioner or a prescribed court under Rule 49ter.1; or
• (C) the earlier application was made more than 12 months before the filing date of the PCT application, and the Commissioner has restored the priority under Rule 49ter.2; or
• (D) the earlier application was made more than 12 months before the filing date of the PCT application, and the Commissioner has granted an extension of time under section 223 of the Act that has the effect of restoring a right of priority; or

(iv) the earlier application is a basic application that was made after a basic application mentioned in subparagraph (iii).

(3) For the purposes of this regulation, if a provisional specification was filed for a basic application when the application was made, a complete specification later filed for the basic application is taken to be another basic application from which the PCT application claims priority, made on the day when the complete specification was filed.

Documents

(4) For paragraph (1)(b), the documents are the documents filed for the earlier application at the time the application was made.

Priority date

(5) Subject to regulation 3.12, the priority date is:

(a) the date when the earlier application was made; or

(b) if there is more than one earlier application - the date the earliest of those applications was made for which paragraph (1)(b) is satisfied.

Prescribed circumstances for micro‑organisms

(6) For paragraph 43(2B)(b) of the Act, the prescribed circumstances for a disclosure that requires a description of a micro‑organism are as follows:

(a) the deposit of the micro‑organism with a prescribed depository institution, in accordance with such provisions of the Budapest Treaty as are applicable, occurs on or before the date when the documents mentioned in subregulation (4) are filed;

(b) either:

(i) a document mentioned in subregulation (4) includes the relevant information on the characteristics of the micro‑organism that is known to the applicant at the time the documents are filed; or

(ii) 2 or more of those documents, considered together, include the relevant information on the characteristics of the micro‑organism that is known to the applicant at the time the documents are filed;

(c) the requirements of paragraph 6(c) of the Act are satisfied by the complete specification that contains the claim."

1. The EM to the RTB Act states that "Item 10 aligns the requirement for securing a priority date from an earlier filed application with the requirement for disclosure in a complete application (see item 8 above)". Notably item 8 refers to the new requirements introduced to s40(2)(a) by RTB, namely "...that a patent specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art" (EM at item 8 and s40(2)(a)). Reference to item 10 from the EM is also made at item 3 of the Explanatory Statement to the Select Legislative Instrument 2013 No 31, being the Legislative Instrument that implemented changes in the Patents Regulations 1991 corresponding to those made in the Act due to RTB.
2. The operation of s43 and Reg 3.13A means, in the present case, that a claim in the application may take the nominally earliest priority date available from the priority document if this meets the relevant test in terms of providing a suitable basis for priority. As apparent from subregulation 3.12(4) as brought into existence by RTB, to clearly disclose an invention the document or set of documents concerned must disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art. Thus, in wording and in effect, as noted in the EM, the post-RTB priority requirements are substantially identical to the post-RTB requirements for s40(2)(a).
3. Notably the question of priority dates post-RTB was considered in Glass Hardware Australia Pty Ltd v TCT Group Pty Ltd [2024] FCAFC 95; 182 IPR 1 at [59]; ToolGen Incorporated v Fisher (No 2) [2023] FCA 794 at [181] and TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493; 170 IPR 313 at [142] et seq. These decisions make it clear that the disclosure test for the purposes of determining priority under s43(2A)(b) is the same as for s40(2)(a).

1. For Polaris, their submissions extend from [118] to [125] of the PS, and, in summary, argue that there is no clear and complete disclosure of the invention as claimed in the priority document. Because of this, Polaris alleges that the priority date of the claims is the date of filing of the application, by virtue of s43(2)(b) of the Act.
2. The reasons for the alleged lack of disclosure in the priority document are essentially the same as those made by Polaris in connection with s40(2)(a), as far as those go to the linkage/actuating mechanism and multiple dampers. Ms McDonald's comments on priority at the hearing were more or less that if there is a failure under s40(2)(a), then the claims must also fail in relation to priority.
3. The Applicant provided rather abbreviated comments on priority in the APS, noting that they did not see an issue with priority as the disclosure of the priority document in relation to the claims was the same in the application. Otherwise, the Applicant considered the issue as best addressed under s40(2)(a). Mr Wood-Roe made similar submissions at the hearing.

1. I have considered the priority document,[110] and I am of the view that this comprises materially the same disclosure concerning the linkage/actuating mechanism and dampers as the application with respect to these features as claimed. While it follows that any defects concerning these two features held under s40(2)(a) would also undermine the priority date under s43, Polaris has been unsuccessful in its attack under s40(2)(a). Notionally, that is the end of the matter as far as priority dates are concerned.
2. However, as observed earlier in this decision, TCT has been successful in establishing non-compliance under s40(2)(a) due to the claims extending to more than one damper. As Polaris has made an inventive step attack based on a deferred priority date in view of the presence of multiple dampers, this could be taken to provide a separate impetus to introduce evidence from the TCT opposition into this matter using Reg 5.23.
3. Noting the criteria for invoking Reg 5.23, as outlined earlier in the TCT opposition, it is necessary for me to understand whether introducing material from the TCT opposition will lead to grounds being made out in the opposition that would not otherwise be made out. Essentially, this boils down to two questions 1) will this in fact change the priority date of the claims such that Polaris's document for inventive step (WO 2020/237303 A1 "D6") becomes prior art for the purposes of s7(3) and 2) does D6 deprive any of the claims of inventive step?
4. With respect to the first question, it is reasonable to believe that the priority for each of the claims would not be valid in view of my findings on the multiple damper issue in the TCT opposition. However, that does not automatically mean D6 becomes relevant prior the entire scope of claim 1. As one can appreciate from s43(3), where a claim comprises more than one form of an invention, each of those forms must be treated as though they are separate claims for the purposes of determining a priority date. The fact that claim 1 recites "at least one hydraulic damper" in several places at least notionally raises the prospect of there being different alternatives or forms of the invention within claim 1, and therefore the possibility of different priority dates.
5. The issue of alternative forms was considered in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324; 312 ALR 1; 107 IPR 177 ("AstraZeneca") at [250] and [251], and at some length in Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699 ("Nichia") at [58] to [87]. Crucially, both these cases highlight the importance of understanding whether the claim concerned encompasses genuine alternatives or forms of an invention, or merely variants of an invention. It is helpful to reproduce [58] to [70] of Nichia, which also provides a useful overview of the position in AstraZeneca:

"58. The plurality in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324 at [250] briefly discussed the history of s 43(3) of the Act and its predecessor provision in the Patents Act 1952 (Cth), noting that these provisions were included to overcome the ruling in Thornhill's Application [1962] RPC 199. > > 59. In Thornhill's Application, consideration was given to the drafting of the following claim. It should be noted that the indices (a), (b)(i), (b)(ii), (c) and (d) were added to the claim at the hearing before the Hearing Officer in that case to illustrate the argument made. The indices did not appear in the printed specification: > > 1. A method of producing a black tea concentrate (a) which consists in cutting, grinding, or otherwise finely dividing fresh green leaves of the tea tree, and (b) oxidising the comminuted particles either (i) by exposing the raw mass to the action of the oxygen of the air until the mass becomes dark brown in colour and subsequently extracting by boiling water or steam the water-soluble constituents of the leaves, or (ii) initially after comminuting the leaves extracting in the same way by percolation the soluble constituents of the leaves and introducing into the obtained solution a minute quantity of an oxidising inorganic substance, (c) subjecting the solution obtained in either way to heating in the open air at a temperature approaching the boiling point of water for a duration up to six hours until the required degree of oxidation is attained and until as a result of heating there occurs the polymerisation of the tannin compounds polyphenol and catechol with constituents of the solution and the solution has lost its bitter taste inherent in the solution of the constituents of the green tea leaf, and (d) evaporating excess water. > > 60. The Hearing Officer described the claim as follows: > > It will be noted that claim 1 embodies two alternatives, i.e. it may be regarded as two claims 1A and 1B, wherein: - > > 1A = a + b(i) + c + d > > and the method which may be represented as > > 1B = a + b(ii) + c + d > > 61. The Hearing Officer concluded that, as the claim could be regarded as two notional claims, each notional claim could be afforded its own priority date. However, on appeal, Lloyd-Jacob J concluded (at 207) that there was no provision in the Patents Act 1949 (UK) that would warrant the attribution of two different priority dates to different parts of the one claim. > > 62. In AstraZeneca, one of the claims in question (claim 1 of what was called the 842 or cation patent) was as follows: > > 1. A pharmaceutical composition comprising [rosuvastatin] or a pharmaceutically acceptable salt thereof as the active ingredient and an inorganic salt in which the cation is multivalent, provided that: > > (i) the inorganic salt is not hydrotalcite or synthetic hydrotalcite; and > > (ii) the counter anion to the inorganic salt is not a phosphate. > > 63. At [251], the plurality concluded (Jessup J agreeing at [447]): > > 251 In our view, claim 1 of the 842 or cation patent does not define more than one form of the invention. Unlike the claim in issue in Thornhill's Application, claim 1 of the 842 or cation patent does not by its terms allow for any alternatives or, adopting the language of s 43(3), different forms of the same invention. Claim 1 defines only one form of the invention even though there will be any number of potential variants that are within its scope. We do not think s 43(3) is intended to treat every potential variant of the defined invention as if it was a form of the invention that must be treated as a separate claim which is to be given its own priority date. Rather, it is intended to deal with very different situations such as that which arose in Thornhill's Application or where, to take a slightly different example, a claim is dependent on one or more independent claims (claim 3 of the 842 or cation patent takes this form) each of which has a different priority date. We therefore reject AstraZeneca's submission based upon s 43(3) of the Act. > > (Emphasis in original.) > > 64. The corresponding provision in the United Kingdom is s 125 of the Patents Act 1977 (UK). Section 125 relevantly provides: > > 125 Extent of invention > > (1) For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly. > > (2) It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim, each invention may have a different priority date under section 5 above. > > ... > > 65. In Miller R, Burkill G, Birss C and Campbell D, Terrell on the Law of Patents (17th ed, Sweet and Maxwell, 2011), the authors state (at 7-12): > > When can a claim have multiple priorities? > > 7-12 If a claim is drafted in such a way that it encompasses clear alternatives - for example, a claim which defines a chemical compound by reference to a structure which may take identified alternative forms - then attributing multiple priorities is unlikely to cause difficulty. In effect, the claim can be regarded as being made up of several discrete claims or - in the words of section 125(2) - as specifying more than one invention, each with a different priority date. However, it is difficult to see how a broad claim which does not set out alternatives as such could be regarded as specifying more than one invention, and it is hard to see how such a claim could allow for multiple priorities to be claimed. This is in line with the approach taken by the European Patent Office. > > (Citations omitted.) > > 66. Section 125(2) of the Patents Act 1977 (UK) was considered in Hallen Company v Brabantia (UK) Ltd [1990] FSR 134. In that case, a particular claim (claim 9) claimed 'an apparatus according to any preceding claim'. Aldous J construed the claim as being a number of discrete claims, and not a composite claim. At 140, Aldous J said: > > The use of the words 'apparatus according to any preceding claim' is a shorthand way of writing out a large number of claims. For instance, if those words are used in claim 3 of a patent having three claims, what is being claimed, and claimed separately, is the combination of claims 1 and 3 and claims 1, 2 and 3. To hold to the contrary ... would mean that the patentees in the future would have to write out each combination as a separate claim which would lead to even more claims in patents than there are now. > > 67. In Merck & Company (Macek's) Patent [1967] RPC 157, Lloyd-Jacob J considered an allegation of prior claiming in relation to a number of claims in a granted patent, including the following: > > 1. A composition having enhanced bactericidal activity comprising novobiocin in combination with at least one other antibiotic selected from the following, namely, penicillin, tetracycline, oxytetracycline, chlortetracycline, streptomycin, chloramphenicol, bacitracin, neomycin, spiramycin, streptothricin and grisein. > > 68. As to the construction of this claim, Lloyd-Jacob J said: > > The claim, it will be seen, is of the comprehensive type permitting of alternative additions to novobiocin, which alternative additions consist of one or more of the named antibiotics. It is a convenient summation of what is in effect a number of separate claims to different compositions of which some will relate to compositions having two ingredients and some to three or more ingredients. > > The first notional rewriting of this claim to make plain this differentiation would be: (A) 'A composition having enhanced bactericidal activity comprising novobiocin in combination with one other antibiotic selected from the following, namely, penicillin, tetracycline, oxytetracycline, chlortetracycline, streptomycin, chloramphenicol, bacitracin, neomycin, spiramycin, streptothricin and grisein.' (B) 'a composition...comprising novobiocin in combination with two or more antibiotics selected from the following, namely, penicillin, tetracycline, oxytetracycline, chlortetracycline, streptomycin, chloramphenicol, bacitracin, neomycin, spiramycin, streptothricin and grisein.' > > Of these two notional divisions of claim 1 only 'A'is relevant and this may be notionally further rewritten in the form of eleven independent claims in the form, (C) 'A composition...comprising novobiocin in combination with penicillin'; (D) 'A composition...comprising novobiocin in combination with tetracycline'; (E) 'A composition...comprising novobiocin in combination with oxytetracycline'; (F) 'A composition...comprising novobiocin in combination with chlortetracycline'; and so on through the list. > > 69. Although dealing with prior claiming, Merck provides guidance on how claims of the kind there under consideration are to be construed. The applicant placed reliance on Merck because the relevant claim had drafting similarities to claims 1 and 3 of the 355 specification in that each of these claims provides an explicit selection step leading to various combinations and hence various phosphors within the scope of the claim. The applicant submitted that if the claim in Merck was written out as described by Lloyd-Jacob J, it would comprise 2,047 claims. > > 70. The applicant also referred to 'claim splitting' cases where, in order to avoid the problem posed by Thornhill's Application, amendments were sought to split a composite claim into various forms of the invention so as to render each as a separate claim with its own priority date. Farbenfabriken Bayer AG's Patent [1966] RPC 278 and Anderson's Application [1966] FSR 218 are two such examples. It is not necessary for me to refer to these cases in greater detail."

6. It is also helpful to reproduce Justice Yates's consideration in Nichia, as this helps illustrate the principles cited above and the differences between variations of an invention and different forms thereof:

"84. In AstraZeneca, the Full Court emphasised the terms in which the claim is drafted and directed attention to whether the claim, according to its terms, allows for alternatives. > > 85. Claim 1 and claim 3 of the 355 specification are cast in terms that are different to the claim considered in AstraZeneca. Claim 1 includes two discrete and express selection steps - one referable to the selection of the 'large' metal ions and the other referable to the selection of the 'small' metal ions in the fluorescent material - providing for differently constituted phosphors, depending on the selections made and the combinations arrived at. > > 86. Claim 3, although differently drafted, also contains discrete and express selection steps. Similarly to claim 1, there is a stated, but different, selection with respect to the 'large' metal ions in the fluorescent material. The constituents of this material are also determined by the selection of a value for r from the given range. The general formula in claim 3 also provides for a selection in relation to the 'small' metal ions of the fluorescent material by providing a range of values for s. These various selection steps combine to provide differently constituted phosphors. > > 87. I am satisfied that, by their terms, each of claims 1 and 3 of the 355 specification envisage and provide for different forms of the invention, as understood by s 43(3) of the Act. In each case, these forms are represented by the individual phosphors obtained after the selection steps have been undertaken."

7. Given the principles that emerge from AstraZeneca and Nichia, I am of the view that claim 1 of the application comprises different alternatives or forms of the invention. Specifically, the use of "at least one hydraulic damper" leads to forms of the invention with only one damper and other forms with two or more dampers. It is also possible to further split two or more into only two dampers, only three dampers, only four dampers etc., each defining a distinct form of the invention. Although perhaps not necessarily relevant to the present issue, I observe that while the claim nominally includes the possibility of an infinite number of dampers, it is quite apparent that the skilled addressee would consider a number of dampers much less than the amount needed for a hinge to imitate a blackhole to be so silly as to be beyond the terms of the claim. In short, the alternatives or forms are countably non-infinite and probably much less than the 2047 claims referred to in Nichia.[111]
8. While there may be several forms of the invention within claim 1, for present purposes it is sufficient to consider these as two forms: hinges with only one damper and hinges with two or more dampers. As noted, I am satisfied that the disclosure of the PD with respect to dampers is materially the same as for the application. In view of my discussion of the multiple damper issue in the TCT opposition, it follows that there is no enabling disclosure in the PD with respect to hinges having more than one damper. This means a notional claim formed from claim 1 comprising only two or more dampers cannot claim priority from the PD, such that its priority date is the filing date of the application i.e. 10 May 2021. Conversely, there is an enabling disclosure in the PD for a notional claim that is restricted to only one damper, and thus this claim can take its priority from the PD i.e. 11 May 2020.
9. Consequently, even if I were to incorporate material from the TCT opposition to deal with the priority date issue, D6 cannot deprive a notional claim restricted to only one damper of inventive step, since D6 was published on 3 December 2020. Whether, or if, D6 may deprive a notional claim based on two or more dampers of inventive step is something I will consider below in connection with Polaris's inventive step arguments. As will be seen, for completeness, my inventive step analysis will also extend to the case where there is only a single damper.

1. I have outlined the relevant principles concerning inventive step above in connection with the TCT opposition.[112] Other than some specific comments I will make below, I refer to those passages and do not see any need to repeat those here.
2. In terms of the approach, I note that Polaris adopted the test for obviousness[113] as per Aktiebolaget that I also adopted in the TCT opposition. The APS did not provide any submissions on the approach to be taken with respect to inventive step, nor was one provided by Mr Wood-Roe at the hearing. As noted above, I see no issue with also adopting the modified Cripps test for assessing inventive step in the Polaris opposition, particularly in view of the submissions provided by the parties.
3. In terms of the "useful desired result", I note that the APS did not provide any submissions on the problem to be solved or the useful desired result, nor did Mr Wood-Roe provide anything on these at the hearing. The PS does not specifically single out a problem or useful desired result, but refers to Mr Schroder identifying that:

"...D6 addressed the problem of the variability of the dampening characteristics of the damper by transferring the force to the damper quite early during the movement to the closed position and increasing the stroke length."[114]

4. The PS then refers to a "range of problems"[115] that Mr Schroder considers he would need to solve with respect to the hinge of D6, including:

"In my view, dust, dirt and the like which could be located between the cammed surfaces could introduce additional friction which could introduce variability in the movement of the hinge from the open position to the closed position.[116]"

5. As I understand it, the problem, or the useful desired result, adopted by Polaris is to remove variability or inconsistencies in the damping characteristics of hinges. While not the "useful desired result" I have adopted in the TCT opposition, it clearly falls within the remit of improving the damping performance of hinges used with glass panels having an edge recess. That is the approach taken by Polaris is somewhat narrower than I took in the TCT opposition, which, if taken in this opposition, seems rather more detrimental to the Applicant than Polaris. In any case, while the application does refer to variability in damping characteristics, it also refers to achieving the desired damping characteristics, which is rather broader than simply the variability in damping per se. I am satisfied that it is appropriate to also adopt the "useful desired result" from the TCT opposition in the Polaris opposition as well, namely improving the damping performance of hinges used with glass panels having an edge recess. As will be seen, nothing turns on the precise formulation of the "useful desired result" in any case.

1. As noted, Polaris's inventive step case is based on the application having a deferred priority date, thereby allowing D6 to become prior art for the purposes of inventive step. Polaris's contentions on inventive step extend from [132] to [150] of the PS. Here Polaris asserts that claims 1 and 2 as they stand lack inventive step in view of D6 when read with the CGK, based on Mr Schroder's evidence. At the hearing Ms McDonald was content to simply rely upon the PS.

1. D6 relates to a frameless glass hinge for a self-closing gate or door, including a swimming pool gate.[117] While D6 discloses a total of five hinge embodiments, for present purposes it is convenient to restrict discussion to the fourth embodiment. This embodiment is represented by figures 10 to 16, of which figure 10 is reproduced below.
2. As can be seen from figure 10, the frameless glass hinge 100 comprises first and second leaf assemblies 112, 114. Leaf assemblies 112, 114 have respective first and second knuckle bodies 120, 124 each with first and second cam surfaces 122, 126. Cam surfaces 122, 126 provide a cam formation 118. In use, when the hinge moves about the hinge axis, the cam formation 118 causes the second leaf assembly 114 to move axially upward along the hinge axis from a rest position, as shown in figure 12 to a biassed position as shown in figure 13. Both these figures are reproduced below.

1. As may also be seen on figures 12 and 13, the hinge 100 also includes a damping assembly 128 comprising a piston 130 fixed to first knuckle body 120. Although the means of operation are described in some detail in connection with the first embodiment [118], the hinge 100 comprises a seal (not shown) that acts as a high pressure seal to the damping chamber 132 when its volume is reduced but allows air to easily pass as the volume of the damping chamber 132 increases. In effect this results in the piston 130 compressing air inside damping chamber 132 when the hinge moves from the biased position to the rest position so as to provide a soft close action for the hinge 100. As should be apparent, the damper assembly 128 works on air compression, rather than hydraulics.
2. Damping assembly 128 also includes a pair of biassing springs 133 housed in damper slots 135 of piston 130. These exert an upward force on the contact position between the cam surfaces 122, 126, thereby creating friction between these surfaces as the first and second leaf assembles 112, 114 undergo relative pivotal movement. When the hinge 100 is near to closing or moving slowly, the biasing springs 133 are arranged so as to not to induce friction between cam surfaces 122, 126 so as to allow the gate to close.
3. Figure 16, reproduced below, shows an exploded view of hinge 100. As can be seen from this figure, the piston 130 and biassing springs 133 are located along the axis of the hinge. With respect to the second lead assembly 114, the glass panel (not shown) is sandwiched between clamping cover plate 156, clamping plate 154 and clamping plate gasket 158 on one side and side gasket 150 on the other, with side gasket 150 adjoining the body of the second leaf assembly 114. Bolts of the clamping plate 154 (not labelled) pass through clamping plate gasket 158, bushes 143, glass panel, holes in the second leaf assembly 114 and clamping washer 160 so as to ultimately fix the glass panel in place by tightening clamp fasteners 164 on the bolts of the clamping plate 154. It can be seen by this arrangement that the damping assembly 128 is located outside of the planes which describe the faces of the glass panel and inside the second knuckle body 124 of the second leaf assembly 124. It is apparent that an identical arrangement secures a glass panel to the first leaf assembly 112, with the same relative disposition of the damping assembly with respect the glass panel and the first knuckle body 120.

1. Polaris's inventive step case relies upon combining D6 with the CGK,[119] with the CGK in question said to be the Polaris 120 hinge, as outlined in AU 201701858 A1.[120] While this document does not appear anywhere in Polaris's evidence, it does appear as annexure MM-1 to Mr Murauer's declaration but is not particularised in any way in the SGP. It is well understood that an opponent's case is constrained to what is in the SGP, and any evidence not encompassed by the SGP cannot form part of an opponent's case. It follows that Polaris's inventive step case has suffered a fatality on procedural grounds.
2. However, it is possible for me to determine whether the claims lack inventive step in view of D6 via using the Commissioner's powers under 60(3) - I note that Reg 5.23 is not available for D6, since it has been filed as evidence and therefore fails the criteria to enliven Reg 5.23 as specified at Reg 5.23(1)(b). Be that as it may, whether I should exercise any power under s60(3) in connection with D6 is, in my view, rather similar in these circumstances as if one were to actually utilise Reg 5.23. This essentially boils down to whether MM-1 is likely to make out a ground of opposition that would not otherwise be made out. Consequently, I will consider Polaris's inventive step case in view of D6 and MM-1 for the purposes of determining whether I should exercise the Commissioner's powers under s60(3).
3. Turning to the inventive step case in more detail, as I understand it, the parties agree that D6 discloses all the integers of claim 1, except 1.4, 1.6 and 1.7.[121] After considering the disclosure of D6, I agree with that assessment.
4. The only evidence that Polaris relies upon for MM-1 being CGK is this from [3] of Mr Murauer's declaration, cited at [136] of the PS:

"In around the year 2019, a popular soft close hinge on the market was the Polaris 120 hinge. I refer to the document attached as annexure MM-1. This document is published Australian Patent Application No. 2017201858A1 and I recognise the hinge described in the application to be the Polaris 120. I devised the invention specifically to improve upon this hinge." (emphasis added)

5. It is not clear to me that a hinge being merely "popular" means that its technical features, as appreciated by a skilled addressee, have been assimilated into the CGK. At best, popularity is suggestive that something might have become CGK. The Applicant also disputed that MM-1 was CGK at [50] of the APS. It is true that Mr Schroder does in fact state, at [9] of Schroder2, that the Polaris 120 hinge was "well-known", but, again' this seems to be a statement of popularity as opposed to CGK.[122] On balance, I do not consider that MM-1 was CGK in view of the evidence before me. This is yet another point that is fatal to Polaris's inventive step case (and whether I should exercise any power under s60(3) or Reg 5.23, as the case may be).
6. In any event, even if I assume that MM-1 was CGK, it, ultimately, does not assist Polaris's position.. Polaris looks to MM-1 to provide the missing integers 1.4, 1.6 and 1.7, as apparent from this table presented at [140] of the PS:

1. I agree that MM-1 discloses the features concerned as per Polaris's table. Polaris's arguments,[123] are essentially premised on Schroder2 at [6], though in my view, one should consider [6] to [9] of Schroder2, reproduced below:

"6. I was asked what changes, if any, I would make to the proposed embodiments of D6 to address the problem of 'consistent closing action'. In my view, a hydraulic dampening system is far superior to an air dampened system at the magnitude of forces being experienced in heavy glass gates. The lower dampening force provided by an air dampener would have to be coupled with a very strong resistive spring which would make it much more difficult to adjust the tension of the closing spring such that the hinge reliably and quickly closes in the installed environment. Additionally, the strong resistive spring would cause oscillations about the end point which would further negatively impact the hinge's ability to consistently close. It is preferable to have stronger damping forces such that a stronger closing action can be provided, and adjusted. It would be relatively straightforward to simply replace the air restriction of D6 with a hydraulic restriction and use the damping assembly of D6 as a hydraulic damping assembly. > > 7. Lastly, in my view the invention claimed in the Opposed Application is generally related to the position and orientation of the dampener. The type of dampener, in the context of the Opposed Application, seems to me to be a minor design choice rather than an essential integer to achieve the effects claimed by the Opposed Application.

8. The Graham Declaration seems to be mostly in support of the statement that D6 does not disclose a hydraulic dampener. I refer to [5]-[7] of this declaration in response to those statements.

9. The Graham declaration states that a gasket would be required at the top of chamber 70. One embodiment of D6, disclosed at [0075] of D6, specifically contemplates the addition of such a gasket in the form of O-ring 202. The O-ring 202 is mounted to form part of the damping assembly so that compressed air will provide friction to facilitate additional gate slowing properties. I note in this regard, that the manufacture or properties of the hydraulic dampener of the Opposed Application are not discussed and assume therefore that they are off-the-shelf components. Thus, as stated at [6] in this declaration, I would consider it a simple change of shelf-ready components to replace the air dampeners of D6 with hydraulic dampeners as used in the well-known Polaris 120 hinge, or the hinge described in the Opposed Application."

1. There are number of issues with Mr Schroder's evidence concerning inventive step and Polaris's case based on the same. Firstly, I find parts of Mr Schroder's evidence here to be inherently contradictory. Mr Schroder suggests that a hydraulic damper is superior to air dampeners for heavy glass gates[124] but in the next paragraph[125] suggests that the type of dampener in the context of the application is a minor design choice. It is worth noting that claim 1 explicitly defines attaching the hinge to a glass panel, and this would seem to be context that Mr Schroder overlooked in providing his evidence, perhaps similar to how Mr Schroder assumed in his first declaration[126] that the second embodiment of D6 comprised a hydraulic damper when that is not the case. Either way, this apparent contradiction means I cannot be satisfied that the skilled addressee would in fact replace the air dampener of D6 with a hydraulic damper as asserted by Polaris. If anything, it tends to suggest that Mr Schroder was seeking to discredit the inventiveness of claim 1, rather than providing careful and objective evidence relevant to the matter at hand.
2. This impression is further enhanced by the fact that D6, as best understood, has deliberately opted for an air dampener over a hydraulic damper:

"It is desirable that self-closing hinges include a soft-close assembly to ensure the long-term reliability of such hinges. This is particularly desirable in frameless glass fencing installations as such hinges will lower impact forces when the gate is closed to avoid damage to glass panels. Existing hinges with an inbuilt soft-close assembly, however, suffer from various drawbacks which often result in premature failure. For example, self-close hinge assemblies which employ a spring mechanism often fail due to corrosion or fatigue. Hydraulically actuated self-close hinges, in turn, are prone to failure resulting from hydraulic fluid leakage. Other self-close assemblies are prone to failure as a result of continued exposure to environmental factors such as sunshine and rain.[127] (emphasis added)

3. D6 outlines, in some detail, how an air bleed assembly is used to provide a soft close function.[128] D6 also refers to the air damper as "enabling operative soft closure of the embodiment [sic] frameless glass fencing hinge 10"[129], that "[t]his feature provides a preferred soft-closing action"[130] and "[o]nce a person has opened such gate and released their hold on the gate, the gate will close under the influence of gravity to provide self-closure. The damping assembly 28, in turn, will then operate to arrest movement of the gate during closing to enable soft closure."[131] Despite this, Mr Schroder does not explain in any detail why D6 would fail to achieve soft closing. In this light, Mr Schroder appears to make a glib assumption that, as, in his view, hydraulic dampers provide superior damping performance in the context of glass panels compared to air dampeners, the skilled addressee would simply swap out the air dampener in D6 for a hydraulic dampener.
4. Similar may be said regarding Mr Schroder's comments at [6] of Schroder2 concerning the air dampener needing to be coupled with a very strong resistive spring, which, Mr Schroder stated, would cause oscillations about the closing point. This part of Mr Schroder's evidence seems to overlook that the biassing springs in D6 operate in a completely different and, if anything, opposite manner to typical biassing springs that bias the hinge towards the closed position. The biassing springs in D6 operate to provide friction about a cam that in fact resists closing until near to the closing point when they are arranged to reduce that friction. In giving his evidence, Mr Schroder appears to have overlooked what the biassing springs of D6 actually do, and instead assumed that these are biasing springs that bias the hinge towards the closed position. Indeed, in view of how the hinge of D6 operates, it is hard to see how one would either actually change the biasing springs to bias the hinge of D6 to a closed position, or add such springs to the existing biasing springs of D6. All of this further undermines Mr Schroder's contention that a skilled addressee would replace the air dampener of D6 with a hydraulic damper.
5. Putting the preceding passages together, it is apparent that Mr Schroder's proposed changes to D6 are not so much modifications as a radical change of the hinge of D6 into something substantially different from what is described. As explained above, Mr Schroder's reasons for affecting this radical change appears to reside on assumptions that overlook the disclosure of D6 per se, putting aside any inconsistencies in Mr Schroder's evidence. I fail to see how the changes suggested by Mr Schroder would be relatively straightforward. It follows that, putting aside any procedural difficulties, Polaris would not have been successful in establishing that any of the claims lack inventive step in light of D6. In particular, this applies to all forms of the invention encompassed within claim 1.

Conclusion on priority, inventive step and Reg 5.23 or s60(3)

1. I am satisfied that Polaris would be unsuccessful in establishing the obviousness of any of the claims if I were to arrive at a "deferred" priority date by incorporating material from the TCT opposition under Reg 5.23. It follows that I do not see any need to exercise Reg 5.23 with respect to any material from the TCT opposition, nor do I see any need to exercise s60(3) in connection with MM-1.

1. Polaris's opposition is unsuccessful. None of the grounds pursued by Polaris have been made out. Subject to final determination concerning the TCT opposition, I direct the application proceed to grant.

1. Costs usually follow the event. I see no reason to do otherwise in the Polaris opposition. I award costs against Polaris IP Pty Ltd according to Schedule 8 of the Regulations.

Annex A - Claims of the 2021271942 Application.

[1] WSH-16 is a copy of US 2019/0040667 A1, referred to below as "D7".

[2] Specification page 1, line 25 to page 2, line 2

[3] Specification page 2, lines 14 to 21.

[4] Specification page 3, line 7 to page 9, line 32.

[5] Specification page 6, lines 24 to 29.

[6] Specification page 7, lines 10 to 12.

[7] Specification page 9, lines 13 to 25.

[8] I did not take it that there were any issues concerning convenience or why the material was not filed earlier that would outweigh the relevance of the material in making a decision under Reg 5.23.

[10] Hunter1 at [7] to [11] and WSH-2.

[16]Undisturbed on appeal in Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417.

[17] For example, the inclined surfaces 34, 35 may always be in contact or may lose contact when the hinge is fully open and come into contact during the closing of the hinge; see D1 at [0050] and [0051].

[23] For example, the TS at [136], [139] and [146].

[29] As D1 has not been pressed by the Opponent in the TS or at the hearing for inventive step, I have given it no further consideration, though I could not anyway, since D1 does not form part of the prior art base for inventive step purposes.

[30] WSH-8 and WSH-9 (English translation).

[34] See for example D7 at [0011] to [0013] and [0029].

[35] That is, for example, the part of the slots 40 closer to the bottom of the page on figure 7.

[36] The degree of angular opening at which the damper 39 begins to operate is user adjustable, however the degree of user adjustability of these ranges is not clear in D7.

[37] Called features 1(h) to 1(j) by the Opponent

[40] That is, all the features of claim 1 as it currently stands.

[41] I have not considered D1 or D2, as these are published too late for inventive step purposes, although D1 is redundant with respect to D3 anyway.

[44] Mr Hunter was provided with a copy of the amended claims and D7 before making Hunter3 - see Hunter3 at [4] and [5].

[45] See TS at [137] and [139]. Mr Gehrig made similar arguments at the hearing.

[46] See TS at [138]. Mr Gehrig made similar arguments at the hearing.

[54] Hunter1 at [66]. Similar statements are made with respect to some previous dependent claims at [72] to [75] of Hunter1.

[59] Although not referred to by TCT, Hunter1 also made observations about the lack of disclosure of the insert portions at [66] and [68](d), for example.

[64] Explanatory Memorandum at pages 44 to 45

[68] Hunter1 at [47] includes this semicolon, but this is omitted as quoted in the TS.

[69] Hunter1 at [47] includes this comma, but this is omitted as quoted in the TS.

[74] Paragraph [97] of the TS is meant, which quotes the text concerned from Hunter1 at [51].

[76] Application page 6, lines 24 to 29.

[77] Application page 9, lines 13 to 25. I note TCT did not cite lines 13 and 14, however I have included these to assist with context.

[78] Servier dealt with a pre-RTB application, where best method still formed part of s40(2)(a).

[79] AMP Inc v Utilux Pty Ltd 45 ALJR 123; [1971] ALR 495; [1972] RPC 103.

[92] I note that the Commissioner is able to invoke Reg 5.23 irrespective of whether a request has been made by one of the parties.

[93] Based on Schroder1 at [43], these prior sales/marketing of the invention appear to fall within the grace period defined by Reg 2.2C and probably explains why CS-9 or other material concerning such marketing/sales has not featured in a novelty attack by Polaris.

[95] The damper adjuster illustrated in CS-9 is provided with numbers that indicate the degree of damping adjustment provided to the damper.

[98] The PS at [44] refers to "Lugs of an insert portion".

[99] See, for example, the application at page 9, lines 13 to 25.

[102] As asserted at [60] of the PS.

[105] While "Opponent" reflects the wording of Schroder2, I assume Mr Schroder meant "Applicant".

[109] I note that Polaris refers to Regs 3.13C and 3.13D (perhaps erroneously) in the PS at [109] and [110]. In any case, to the extent any one or more of Regs 3.13B to 3.13E may also be applicable, this will not make any difference in the present matter - all these Regs require disclosure commensurate with s40(2)(a).

[113] PS at [129]. I note that Polaris also cited Hood at [130] of the PS.

[114] PS at [143], referring to Schroder1 at [16].

[116] Schroder1 at [17], cited at [144] of the PS.

[121] See PS at [140]. The APS, at [51] to [59] does not dispute that these are the absent features but rather concentrates on how the skilled addressee would not modify D6 to arrive at the invention of claim 1. Similar submissions were made by Mr Wood-Roe at the hearing.

[122] To the extent Mr Schroder's evidence here could be taken to help establish MM-1 as being CGK, this aspect of his evidence is, in my view, not properly in reply.

[123] At [145] to [150] of the PS.

[126] See Schroder1 at [15], Murauer2 at [18] and [19] and Schroder2 at [5].