7.5 Review of the submissions and the expert evidence
178 In considering whether the invention claimed in the 485 patent is disclosed in a manner that is clear enough and complete enough for the invention claimed to be performed by a person skilled in the art it is first necessary to consider the scope of the claims. The parties addressed this question by reference to claim 1 of the 485 patent and in particular by reference to two parts of the combination identified in it. The first concerns the "adapted to locate" integer which I have construed in section 4.3 above. TCT submits that this is much broader in concept than the disclosure of the parent, which refers to "tight fittingly receivable" in the description. I return to this at the conclusion of this part of my reasons.
179 The second concerns the "dampener" integers in claim 1, which I repeat for convenience:
1.10 a dampener, having a longitudinal dampener axis, said dampener at least partially housed within the first insert component and adapted to dampen movement of the hinge from the open position to the closed position, 1.11 wherein said longitudinal dampener axis is disposed between and substantially parallel with planes defined by respective opposing faces of the first panel.
180 It is apparent that the dampener of the claim must have a longitudinal dampener axis, be at least partially housed within the first insert component and be "adapted to dampen movement" of the hinge when under bias it moves from the open to the closed position. The claim is agnostic as to the arrangement of the dampener relative to the second leaf assembly. It is this aspect of the claim upon which TCT's submissions focussed. Otherwise, the claim requires in integer 1.11 that the longitudinal axis of the dampener be disposed between and substantially parallel with planes defined by the opposing faces of the first panel. This means that the dampener must be co-planar or parallel with the panel in which it sits.
181 The parties are at issue as to whether the parent discloses a dampener arrangement as claimed in claim 1 of the 485 patent, and whether a person skilled in the art is adequately enabled to make a hinge within the breadth of the claim.
182 More specifically, TCT contends that the disclosure of the parent does not sufficiently describe a hinge which deviates from an arrangement whereby the longitudinal axis of the dampener is aligned to be orthogonal to the hinge axis. It contends that the summary of the invention at [011] of the parent, and the disclosure of the balance of the specification is confined to a mechanism whereby a portion of the dampener retracts within the first insert component "when coming into contact with the second leaf assembly" during closing of the hinge under the influence of a biasing component. The only manner in which this occurs is when the dampener is arranged to be orthogonal to the hinge axis.
183 Polaris first disputes that the parent requires that there be an orthogonal arrangement. It submits that [011] does not require it, because the reference in [011(5)] does not require that the dampener come into "direct contact" with the second leaf assembly. Alternatively, it submits that the word "dampener" in [011] should be understood to refer to a "dampener mechanism" rather than a particular part, which may include a sliding cam which cooperates with the dampener.
184 In my view the disclosure of the parent as a whole, when considered in conjunction with the expert evidence, supports the contentions advanced by TCT.
185 The passage at [011] is set out immediately after the Background and supplies a Summary of the invention. It relevantly provides in relation to the dampener:
(5) a dampener to slow movement of the first and second leaf assemblies to the closed position, wherein at least a first portion of the dampener is located within the first insert component and a second portion is configured to at least partially retract within the first insert component when coming into contact with the second leaf assembly during hinged movement toward the closed position under bias from the one or more biasing components, (6) wherein the second portion of the dampener extends and retracts along an axis which is coplanar with the first panel.
186 In my view the reference to the dampener "coming into contact" with the second leaf assembly is unambiguous. It requires that the dampener make contact or touch the second leaf assembly. The language does not admit for a construction that would permit an intermediate part or indirect contact to be made.
187 Nor, in my view can "dampener" be read down to mean "dampener mechanism" such that not only may a dampener contact the second leaf assembly, but also a part attached to it may, such as a sliding cam. In this regard three points may be made.
188 First, a "dampener" is a component recognised in the field. In his evidence, Mr Hunter describes a dampener as a part where a piston moves inside a cylinder and the motion of the piston is restricted in some way, such as by friction or by pressure resistance by the working fluid. Mr Richardson similarly observes that a dampener with a longitudinal dampener axis operates to dampen in a linear direction. By contrast, there are other commercially available dampeners that operate to dampen rotationally which are not the subject of the claims because they do not have a longitudinal axis.
189 Secondly, the balance of the body of the specification supports the view that the skilled reader would understand the reference to a dampener to be to a particular component. The only description of a dampener in the parent is of the embodiment referred to in the figures. In those, dampener 100 is described and depicted as an individual part, having dampener body 104 and dampener pin 102 (see fig 3 of the parent and also the 485 patent). If the broader definition proposed by Polaris were adopted, the "dampener" would include other parts of the hinge that are not a dampener, but which cooperate with it to achieve that function such as the separately described striking surface 64. There is no suggestion that this was intended, and I reject the contention that the skilled addressee would read the reference in [011] or the specification of the parent as a whole in that way.
190 Furthermore, the Background refers to prior art dampeners that were orientated orthogonally relative to the plane of the hinge members, with the overlapping portion of the hinge contacting "a protruding portion of the dampener when the hinge had nearly progressed to the closed position". This suggests that the dampener referred to is not a broad "mechanism" but rather a part, which has a particular orientation and protrusion. Leaving aside the context of the language of the [011] of the parent as a whole, perhaps the clearest reason for this view is that the patentee has chosen to use the word "dampener" and not "dampener mechanism" in that paragraph and elsewhere in the parent.
191 Thirdly, the expert evidence further supports this distinction. In cross-examination during the course of the concurrent evidence session Mr Hunter was asked to agree that the second dampener in the Orion hinge included the parts identified in the drawing (depicted in section 5.2 above), being jointly the second damper body, second dampener pin and also the second sliding cam. Mr Hunter resisted that proposition. It was then suggested that the second sliding cam could be regarded as part of the "dampener mechanism" to which he responded:
MR DIMITRIADIS: And I suggest to you that that is fairly - you're fairly able to regard that [being the sliding cam] as part of the dampener mechanism in this product for that reason?
MR HUNTER: I think it's a fair - it's fair to say that it's a component of the overall dampening mechanism, because a mechanism can obviously be comprised of many different components that work together to achieve a functional outcome, but you were saying something different before, which was that the sliding cam was part of the dampener, which is not something I would agree with.
192 I accept Mr Hunter's description.
193 In my view it is not only [011] of the specification that confines the scope of the invention disclosed and described to one where the dampener is aligned to be orthogonal to the axis of the hinge. In the balance of the specification of the parent this is the only arrangement described. The description of the preferred embodiments specifically emphasises that the dampener makes (direct) contact with the second leaf assembly, thereby ensuring the orthogonal arrangement: see, for example, [090] (485 patent at [68]), [114] ([093] of the 485 patent) and also [99] ([078] of the 485 patent), which relevantly provides:
[099] As shown in Figure 7A, 7B and 7C, the first insert component 40 includes a plurality of hollows 44 which have a longitudinal axis which is orthogonal to the hinge axis 290 and coplanar with the plane of the first panel 500. … Due to the dampener pin 102 being secured within the respective hollow 44 and the dampener body 104 having a cross sectional profile which substantially corresponds to the cross-sectional profile of the respective hollow 44, the dampener pin 102 is less likely to deflect and bend during hinge movement toward the retained position. … As the orientation of the longitudinal axis of the one or more dampeners 100 is substantially coplanar with the first panel 500, the overall thickness of the hinge leaf component 20 can be reduced thereby providing material efficiencies in relation to manufacture of the hinge. Additionally, due to the orientation of the dampeners 100, a majority of the vibrational force experienced by the hinge 100 when approaching the retained position is transferred in a direction substantially parallel to the planes of the faces 502, 504, 602, 604 of the panels 500, 600 thereby reducing the stress on the panels when moving toward the retained position.
194 The teaching in this passage is not only of the advantages of the coplanar aspect of the hinge arrangement, namely that the overall thickness of the hinge may be reduced thereby addressing the manufacturing problem and the alignment of the majority of the vibrational force to reduce stress on the panels. It is also of the arrangement of the dampener pin which is less likely to deflect and bend during hinge movement.
195 The expert evidence indicates that the person skilled in the art reading the parent would understand that the advantage of the orthogonal arrangement of the dampener relative to the hinge axis is that it addresses a problem that would otherwise arise in dealing with lateral forces that would be applied to the dampener at other angles.
196 Mr Hunter's evidence was that to make a hinge with dampeners that had a damped closing function and that addressed the problems identified in the parent without the dampeners coming into direct contact with the second leaf assembly would require new concepts to be developed for a completely new hinge design compared with that described in the parent.
197 Mr Richardson gave evidence in answer that in his view it would be apparent to anyone skilled in the art that there are other embodiments beyond those described in the specification of the parent where the dampener comes into contact with the second leaf assembly without necessarily coming in contact with the second insert component. However, in this context his evidence was that:
…for anyone skilled in the art of using dampeners in product design it would be known that other arrangements can be employed that include a dampener with a longitudinal axis… For example, an intermediate sliding component could be used between the dampener and the second insert component that would not require the dampener to come in direct contact with the second insert component as in hinge 10 (emphasis added).
198 Significantly, Mr Richardson went on to say that an intermediate sliding component "could also mitigate the effect of force that is not co-axial with the dampener axis as the angle changes between the dampener axis and the striking surface of the second insert component … as the hinge rotational movement approaches the closed position".
199 Mr Richardson gave evidence that by using an intermediate component between the dampener and the second leaf assembly "it would be possible to have a dampener in orientations different to orthogonal to the hinge axis". Yet no intermediate components are described or disclosed in the parent. It is apparent that Mr Richardson was deviating from the disclosure in this evidence.
200 Mr Hunter cogently explains the mechanical consequences of moving away from the coming into contact requirement and the orthogonal dampener requirement in his evidence in chief. He says that adopting orientations that significantly vary from one that is orthogonal to the hinge axis and, when the hinge is fully closed, the striking surface of the second leaf assembly would produce the negative effects of asymmetrical forces on the dampener. As he explains, it is a matter of simple geometry that, if the dampener is used on an angle rather than having its longitudinal axis being orientated orthogonally to the striking surface when the hinge is fully closed, its stroke will need to be longer in order to provide the same dampening effect. It will in turn need to have a deeper hollow within which to be retained, which will be less compact.
201 He further explains, again as a matter of simple geometry, that dampeners that are subject to asymmetric loads are more likely to jam or fail. If a dampener is used on an angle rather than having its longitudinal axis orthogonal to the striking surface when fully closed the striking surface will "load" the dampener asymmetrically by exposing it to side or "lateral" loads. It will increase the tendency of the dampener to jam and could lead to premature failure, particularly for piston dampeners featuring a dampener pin. He notes in this regard that fig 6H of the parent shows that, in keeping with one of the objectives of the specification, the dampener itself is quite thin, with the pin being even thinner. Accordingly, the dampener pin depicted will be quite prone to failure if loaded in a non-axial direction. As a result of these matters, an engineer would seek to avoid putting the dampener at a different angle.
202 Mr Hunter gives evidence going to the challenges facing the person skilled in the art seeking to design a hinge with a dampener that did not meet the orthogonal dampener requirement. He notes that there is no disclosure as to how to implement such a device. If he were trying to do so, he considered that he would need to re-design the insert components, the hollows to house the dampener and the shape of the striking surface, identify whether the same or a different type of dampener should be used, and then develop a testing protocol for ascertaining whether the other orientation could work.
203 He further explained that this would involve identifying or building a test rig to run tests on the hinge's durability and testing the effect of asymmetric loading on the dampener pin, body and piston seals and on the hollow to take into account the effects of the lateral loading described above. This would, he considered, take a lot of time and skill and substantial design and experimentation work.
204 In his oral evidence, Mr Hunter emphasised that the step of changing the dampener angle involved a fundamental redesign of parts and the possible introduction of new parts which, he said "is pretty much like starting all over again". In this context, a variation of angle orientation of ten degrees would likely require fundamental changes, because by that point one begins to put "considerable lateral loads" on the dampener and it is necessary to take steps to protect it. As he explained, by reference to [0078] of the 485 patent (which is [099] of the parent):
MR DIMITRIADIS: What I'm suggesting to you is that the reason you're not motivated to make - to look at making another embodiment - is because, provided you get the result of a hinge that has acceptable dampening, it doesn't matter to you what axis the dampener lies in and what plane it lies in as long as it gives you the result.
MR HUNTER: No, that's not true because if the - the reason why the embodiment in the patent is attractive is that, and it obviously goes to some length to describe this as we've - we've been through before in paragraph 78, it describes a particular arrangement of the dampener where the pin is captured inside the insert. The dampener body is sliding in and out in a hollow. It's oriented orthogonally to the hinge, and as a result of that arrangement, one of the most important things we can do with this hinge is to protect the dampener from failure and prevent the dampener from locking up by protecting it from lateral loading. So the patent seems to me to be, and as described in 78, a good solution to that problem. So once you start saying, well, then, I can just choose any dampener orientation angle, that whole benefit of paragraph 78 goes away, so I'm not inclined to think that another dampener on angle is axiomatic from there.
205 As noted above, Mr Richardson's evidence demonstrated that he was also concerned about the effects of lateral loading on the dampener if the angle was changed. He agreed, in discussion with Mr Hunter during concurrent evidence, that if he were to change the angle of the dampener from orthogonal to the hinge, it would make the lateral load problem worse than in the embodiment described in the patent. He then proposed that in order to address that problem it would be necessary to add an intermediate component, which he then depicted in a hand-drawn sketch, which became exhibit D, as follows, where the dampener is (1), the intermediate component is (2), the striking surface of the second leaf assembly is (3) and the dampener cylinder recess is (4):
206 He explained that if the dampener axis was at 45 degrees (as depicted) and also within the coplanar relationship described, then the intermediate component (2) could be positioned on the end of the dampener, with a twisted, angled face which sits out towards the second leaf assembly (3). When the hinge operates to close, as the second leaf assembly comes closer to the first leaf assembly housing the dampener (1), the intermediate component (2) slides progressively over the angled surface on the second leaf assembly so that it compresses the intermediate component in the same direction as the dampener axis.
207 Mr Richardson explained that he would start the design process with hand sketches and move to computer aided design drawings, using software to create the forms of the parts and the relationship between the parts. He gave evidence that the difficult aspect to design is the shape of the surfaces that are coming together and how they would interact. He gave evidence that there are different ways to go about it, the easiest being to define a start position when the surfaces contact, the final position and some intermediary points. This, he said, "would start to indicate to you a shape for a lofted surface which would be on each part, because what you're trying to do is to maximise the contact area so that you don't have a high wear area in one location as those surfaces come together". He said that one could do it mathematically, but that would be "very difficult". He would instead design a prototype, and then build that and test it and then tune the design from there.
208 It is apparent from his evidence that he would not know whether the problem of the lateral loading had been solved until the prototype was built and tested.
209 After a leading question from counsel for Polaris, Mr Dimitriadis SC, Mr Richardson agreed that the process that he had described was the sort of process that he adopted in his practice as a designer. However, leaving aside that he was led to that point, it is apparent from the context of his explanation that Mr Richardson was explaining the process of a new product design.
210 Indeed, Mr Richardson accepted that the process of arriving at a design such as depicted in exhibit D involved a new design using his own "imaginative faculty". In my view this observation provides a degree of insight into the task facing the skilled addressee who wishes to design a device within the scope of claim 1 of the 485 patent. It points to the fact that the parent leaves gaps in its teaching that must be filled by imaginative design work. An example of a gap, as I have found, is that the parent does not disclose the use of an intermediary component.
211 I accept, as Mr Hunter explained, that the step of changing the dampener angle involved a fundamental redesign of parts. By this, I understand his evidence to mean that the parent specification does not disclose to him how to address the problem of moving away from the orthogonal arrangement.
212 Separately from the example given by reference to his sketch (exhibit D), Mr Richardson agreed that if one were to change the orientation of the dampener from orthogonal to the hinge axis, the person skilled in the art would need to make a number of decisions, none of which is guided by the patent beyond a requirement that the angle of orientation be in the same plane as the panel. Those decisions would include which angle of orientation to choose; what arrangement to design for any intermediate sliding component or components; what arrangement to choose for any cooperating elements; the rearranged design of an insert component; and how those components are to fit together. He agreed that whilst with the benefit of the parent he would be able to keep the outside features of the hinge (being the broad arrangement of the first leaf assembly, the hinge knuckle and the second leaf assembly), the interaction between the dampener and the second leaf assembly and the internal components of the insert would need to be altered.
213 In his oral evidence, Mr Richardson agreed that the Orion hinges provide an example of a design that falls within the scope of claim 1 of the 485 patent. It will be observed that those hinges possess dampeners that are not orthogonal to the hinge axis but parallel to it. Nor do the dampeners come into contact with the second leaf assembly. Rather, the addition of intermediate sliding cam surfaces ensure that the dampener performs its function.