Lack of Novelty (s 18(1A)(b)(ii) of the Patents Act 1990 (Cth))
36 The respondents' case on lack of novelty can be divided into two categories; the first proceeds on the assumption that the Claimed Priority Date is the correct priority date and requires consideration of two publications; and the second category proceeds on the assumption that the Deferred Priority Date is the correct priority date and also involves consideration of two publications.
37 The respondents' case is that a brake controller known as the "Hopkins InSIGHT Brake Controller" (the Hopkins Product) was sold by Hopkins Manufacturing Corporation in the United States of America from at least 2013. Their case is that US Patent 20100152989 titled "Universal Trailer Mounted Proportional Brake Controller" (the US Patent) was published on 17 June 2010. Both of these publications were made before the Claimed Priority Date and both, or either, establish that the claims in suit lack novelty.
38 As part of his first affidavit, Mr van de Loo produces packaging for the Hopkins Product and a photograph of the product. He disassembled the brake controller component of the Hopkins Product and found that it contained a two-axis accelerometer. He also produced the instructions inside the packaging for the Hopkins Product. This document contained instructions as to where to locate or mount the "Smart-Box" of the Hopkins Product. The instructions were such as to ensure that the Smart-Box was mounted on vertical surfaces which are aligned with the vehicle fore/aft axis. In Mr van de Loo's opinion, this meant that the Hopkins Product did not have the final essential element of the claims in the Innovation Patent, namely, "without prescribing a mounting orientation of the brake controller relative to the towing or towed vehicle".
39 In his affidavit, Mr Berry produces an Installation Guide for the Hopkins Product. Mr Berry expresses the opinion based on this document, that there is one fixed plane and, therefore, the product includes at least a two-axis accelerometer. Furthermore, the Installation Guide does not prescribe one specific orientation of the Smart-Box. There are some orientations that cannot be used, but if the instructions are followed "you are free to install the device in any one of many allowable orientations".
40 Mr van de Loo's second affidavit makes it clear that, although there are many mounting orientations in which the Hopkins Product will work as intended, there are at least some mounting orientations in which it will not work.
41 The issue between the parties involves a question of construction. The applicants contend that the element of the claims of "without prescribing a mounting orientation of the brake controller relative to the towing or towed vehicle" means any mounting orientation, whereas the respondents contend that it means one specific mounting orientation.
42 Clearly, I am not making a final decision on this issue on this application. However, I am disposed to think that the applicants' construction is the better construction. The specification of the Innovation Patent refers in paragraphs 10 and 13 to the controller comprising an inertial sensor including plural sensor axis adapted to be mounted in an undefined orientation relative to the longitudinal axis for either vehicle and that the controller acts in a manner that is relatively insensitive to said orientation. These references are not decisive of the point, but they tend to support the applicants' construction.
43 As part of his affidavit, Mr Berry produces the US Patent. He expresses the opinion that the US Patent discloses all of the features of claim 1 of the Patent and of claim 2, when a three-axis accelerometer is used. With respect to the final integer or element of claim 1 (i.e., without prescribing a mounting orientation of the brake controller relative to the towing or towed vehicle), Mr Berry expresses the opinion that the US Patent teaches this because it provides in paragraph 8 that the power control unit may be mounted "in any fixed location and is independent of direction of travel" and in paragraph 50 it provides that the power control unit may be mounted in any direction relative to direction of travel. With respect to claim 3, he expresses the opinion that in paragraph 59 of the specification of the US Patent, it teaches the use of three-axis accelerometers.
44 In his second affidavit, Mr van de Loo addresses the US Patent. He does not agree with Mr Berry. Mr van de Loo's main thesis is that the invention described in the US Patent does not include the final integer or element of claim 1, that is, without prescribing a mounting orientation of the brake controller relative to the towing or towed vehicle. He bases this thesis on the following matters:
(1) The US Patent should be read as a whole and when that is done, it is clear that the brake controller only takes account of acceleration data in two orthogonal axes and the brake controller cannot work properly unless it is mounted within a certain range of mounting orientations;
(2) In elaboration of paragraph 1, Mr van de Loo states that there are numerous references in the US Patent to prescribed mounting orientations: paragraph 55 and Figure 7 (mounting on the trailer frame: all the suitable mounting surfaces are vertical); paragraph 60 (reference to the x-axis and y-axis); paragraph 61 (mounting of two-axis accelerometers;
(3) A specific accelerometer mentioned in paragraph 59 of the US Patent is a two-axis accelerometer;
(4) There is nothing in the US Patent to indicate that the brake controller is adapted to do anything with the data of the third axis which a three-axis accelerometer is capable of providing. Put another way, even if a three-axis accelerometer is used, the brake controller is, in Mr van de Loo's opinion, only adapted to make use of the information provided by two of those axes.
45 Again, clearly I am not making a final decision on these issues on this application. However, on the evidence adduced to this point, I find the evidence and arguments advanced by the applicants more persuasive than those advanced by the respondents.
46 I should record that in considering whether the Hopkins Product and the US Patent constitute anticipations of the claims in the Patent, I have borne in mind the well-known authorities in this area. They are discussed in the recent decision of the Full Court of this Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324 at [293], [300] and [302] per Besanko, Foster, Nicholas and Yates JJ (Jessup J agreeing at [447]).
47 The respondents' case is that the applicants' REDARC Tow-Pro Elite was offered for sale and sold to customers in Australia from at least September 2015. It is not in dispute that this product has all of the features of the claims in suit. This publication was after the Claimed Priority Date, but before the Deferred Priority Date and the strength of the argument depends on the strength of the argument that the Deferred Priority Date is the correct priority date.
48 The respondents' pleaded case is that Hayman Reese sold and used a product they call the Hayman Product in Australia from at least 2014. The Hayman Product was not the subject of any detailed consideration in the expert evidence or the submissions.
49 As I have said, the Innovation Patent is a divisional application of the Standard Patent and the latter document was filed on 11 September 2014. There is no dispute about the Standard Patent's claim for priority from Australian Provisional Application No 2014900483 which was filed on 17 February 2014. The dispute concerns the applicants' claim that the claims in the Innovation Patent are entitled to priority from the priority date for the Standard Patent (i.e., 17 February 2014).
50 The determination of the priority date of the claims in the Innovation Patent is governed by s 43 of the Patents Act 1990 (Cth) (the Act) and regs 3.12 and 13.13D of the Patent Regulations 1994 (Cth) (the Regulations). The test is whether the Standard Patent clearly discloses the invention identified in the claims in the Innovation Patent. The disclosure must be of 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.
51 Although the case dealt with internal fair basing (i.e., s 40(3)), it was accepted by the parties that the High Court's observations in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274 are relevant in this context. The Court said (at [68]-[69]):
The approach required by s 40(3)
Erroneous principles. The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ "an over meticulous verbal analysis". It is wrong to seek to isolate in the body of the specification "essential integers" or "essential features" of an alleged invention and to ask whether they correspond with the essential integers of the claim in question.
"Real and reasonably clear disclosure". Section 40(3) requires, in Fullagar J's words, "a real and reasonably clear disclosure". But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments.
"The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."
Fullagar J's phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the "real"' disclosure, are in truth only loose or stray remarks.
(Citations omitted.)
52 Mr Berry was asked by the respondents to express an opinion on two matters. First, he was asked to identify the differences between the contents of the Standard Patent and the contents of the Innovation Patent. Secondly, he was asked to provide an opinion on whether the Standard Patent discloses the invention claimed in the Innovation Patent in a manner which is clear enough and complete enough for the claimed invention to be performed by a person skilled in the art.
53 Mr Berry expresses the opinion that, generally speaking, the invention described in the Standard Patent is a brake controller which is adapted to generate a brake control signal to control activation of the towed vehicle braking system in a manner that is substantially insensitive to acceleration of the vehicle in a lateral direction and to the orientation of the inertial, multi-axis sensor of the controller relative to a longitudinal axis of the towing vehicle. He expresses the opinion that the Standard Patent describes algorithms and calculations that allow the braking signal to be calculated in this way.
54 Mr Berry sets out differences between the specification of the Standard Patent and the specification of the Innovation Patent. For present purposes, I do not need to set out the differences. Mr Berry also sets out in tabular form the differences between claim 1 in the Innovation Patent and claim 1 in the Standard Patent.
55 The thrust of Mr Berry's opinion is that the controller referred to in claim 1 of the Standard Patent is required or adapted to generate the braking control signal to control said towed vehicle braking system in a manner that is substantially insensitive to acceleration of said vehicle in a lateral direction and to the orientation of the inertial sensor relative to the inertial relative to the longitudinal axis of the towing vehicle, whereas no such adaption is required of the controller of claim 1 of the Innovation Patent. It seems to me that the key aspect of Mr Berry's opinion, bearing in mind claim 2 of the Innovation Patent, is that the "entire gist" of the Standard Patent is to generate said control signal to control activation of the said towed vehicle braking system in a manner that is substantially insensitive to acceleration of said vehicle in a lateral direction and this is what the acceleration models and formulas in the Standard Patent bring "to the forefront". Mr Berry expresses the opinion that by contrast, claim 1 of the Innovation Patent is described in "substantially broader and more generic terms" and is silent about this feature. The essence of Mr Berry's opinion is that when regard is had to the problems in the existing art and the algorithms and models identified and described in the Standard Patent, claim 1 in the Innovation Patent, which makes no reference to the substantial insensitivity to acceleration in a lateral direction, is not described in the Standard Patent in a manner clear enough and complete enough that he could implement the invention in claim 1 in the Innovation Patent.
56 Mr Berry expresses opinions about claims 4 and 5 which I do not need to address for present purposes.
57 Mr Berry also expresses the opinion that a feature in claim 1 of the Innovation Patent of a remote head mounted in the towing vehicle remote from the brake controller is not disclosed in the Standard Patent. Having said that, he notes a reference to a remote head in paragraph 18 of the Standard Patent.
58 In his second affidavit, Mr van de Loo addresses Mr Berry's opinions on whether the Standard Patent discloses the invention in the claims in the Innovation Patent in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art. He expresses the opinion that the information in the Standard Patent is sufficiently clear and complete enough for him to build the invention described in the Innovation Patent, having regard to the similarities between the two patents and the fact that he considers the differences between the two as identified by Mr Berry are not of any particular importance. With respect to the particular point made by Mr Berry to the effect that the algorithms and models described in both patents all point to the need to make the braking control signal insensitive to lateral acceleration, Mr van de Loo expresses the opinion that the same algorithms allow the brake controller to do the things set out in claim 1 of the Innovation Patent without prescribing a mounting orientation of the brake controller relative to the towing or towed vehicle.
59 The respondents submitted that the effect of Mr van de Loo's evidence on this topic is that he considers that the claims in the Innovation Patent have, as an element or integer, a requirement that the braking control signal be substantially insensitive to lateral acceleration. They contend that if that be correct, then the Curt Product does not infringe the claims because the evidence of Mr Lambert is that the Curt Product does not include this feature. The applicants submitted that the effect of Mr van de Loo's evidence is not as the respondents assert.
60 In my opinion, the respondents have a reasonable argument to the effect that the claims in the Innovation Patent are not entitled to priority from the Standard Patent. I find it difficult to be any more precise about the strength of the argument in light of the complexity of the issue and the fact that I have not had the benefit of having the experts explain their respective views, both in-chief and in the course of cross-examination.