Tramanco Pty Ltd v BPW Transpec Pty Ltd

Federal Court of Australia (Full Court)|2014-03-13|Before: Mr P, Allsop CJ, Nicholas JJ

Background 172 As the Chief Justice explains, the notice of appeal raises two issues of construction. So far as the first of them is concerned, I agree with what the Chief Justice has written. 173 As to the second construction issue, I agree with the Chief Justice that it is not without difficulty. At one stage I was inclined to think that claim 1 and its dependent claims might be invalid for lack of clarity. After all, if a patent claim is to be valid, it must define the monopoly claimed in such a way that it is not reasonably capable of being misunderstood: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610. However, the case was conducted below, and on appeal, on the basis that while claim 1 was ambiguous, the relevant ambiguity was capable of being resolved by the application of well-known principles of construction.

The relevant principles 174 There was no dispute between the parties as to the content of the relevant principles. They have been summarised in many previous decisions of this Court: see, for example, Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 (Hely J) at [70]-[81] and Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155 (Hill, Finn and Gyles JJ) at [67]. I would also add a reference to Lord Hoffman's speech in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 169; (2004) 64 IPR 444 at [32]-[35] in which his Lordship made some important observations in relation to "purposive construction". The relevant passages from Lord Hoffman's speech are reproduced in the primary judge's reasons for judgment. As his Lordship remarked in the course of his consideration of "purposive construction" of patent specifications, "[t]he question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean." For this purpose, the "person skilled in the art" is the notional skilled addressee who is in possession of the common general knowledge as at the priority date relevant to the field of the invention. 175 The following principles are of particular relevance to the proper construction of the patent in suit: A patent specification is to be given a purposive construction, and must be read as a whole and in light of the common general knowledge as at the priority date. A specification should be read in a practical and common sense way. If words are used in a particular way in the specification, such that a particular meaning has been attributed to those words, then that meaning will usually be given to those words where they appear in the claims. An appropriately qualified expert may give evidence on the meaning which persons skilled in the art would give to technical or scientific terms, and to any unusual or special meaning which such persons might give to words apart from their ordinary meaning. However, the construction of the specification and, in particular, the claims, is ultimately a matter for the Court to determine. There is a danger that in seeking to give a claim a purposive construction, or in seeking to read it in context, an impermissible gloss might be imposed upon the language used based upon material found in the body of the specification. 176 In the present case the appellant accepts that if the primary judge's construction of the phrase "impact loading of the vehicle" as used in claim 1 is correct then claim 1 and its dependent claims are invalid for lack of compliance with s 40(2)(a) of the Patents Act 1990 (Cth) (the Act) (as it relevantly stood prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)). This follows, according to the appellant, because the specification does not enable the use of a method for determining the impact loading of the vehicle at the tyre/road interface. If, on the other hand, the words "impact loading of the vehicle" are properly understood to refer to "the impact loading of the vehicle on the suspension" then the respondent contends that claim 1 and its dependent claims still do not comply with s 40(2)(a) of the Act. 177 Before attempting to resolve the construction issue, it is useful to make some general observations concerning the patent in suit. The claimed invention relates to vehicle suspension systems and, in particular, methods for logging the performance of a vehicle suspension system in response to impulsive loads to which such a system is subjected. An "impulsive load" in this context refers to the sudden load or force to which the suspension is subjected when a vehicle encounters a bump. These loads occur frequently when a vehicle is traveling at speed. The size of the loads imposed, and the frequency with which they occur, will vary with the prevailing conditions including the weight and speed of the vehicle, the extent to which the vehicle's brakes are engaged and, of course, the condition of the road upon which the vehicle is travelling. 178 Impulsive loads are transmitted upwards, through the tyres and axles of the vehicle, and into the suspension between axle and chassis. They are also transmitted downwards, back through the axle to the tyres, but with less force due to the damping effect of the suspension. The purpose of the suspension is to dampen the force transmitted upwards into the chassis where the driver, passengers or cargo are located and to dampen the downwards force transmitted back down through the axle and into the tyres. It does this by allowing relative movement between the axles and the chassis. A vehicle that has a "road friendly suspension" is one that is relatively gentle, or is at least less severe, on road surfaces than a vehicle that does not have a "road friendly suspension". 179 There are two measures of suspension performance that are directly reflected in industry standards. The first such measure is the damping ratio; the second is the oscillation frequency. Oscillation frequency is a reference to the rate at which a mechanical system moves back and forth, or up and down, relative to its preferred resting place. Oscillation frequency is measured in terms of cycles per second or Hertz (Hz). In the context of heavy vehicle suspension, oscillation frequency usually refers to the motion of the vehicle body relative to the axle. The damping ratio is a measure of the rate at which the magnitude of oscillation of a system diminishes over time. A damping ratio of zero implies that there is no damping in the system and that the magnitude of oscillation does not diminish over time. 180 The primary judge referred to various criteria specified in the National Road Transport Commission (NRTC) standard published in April 1999 (VBS-11). In simple terms, VBS-11 provides that suspension should have a free transient vertical oscillation frequency no higher than 2.0 Hz, and a mean damping ratio of not more than 20% of critical damping for the suspension in its normal operation. Another standard that is referred to in VBS-11 as providing acceptable tests of suspension road-friendliness is the European Union Council Directive 96/53/EC of July 1996 (the EU Standard). The EU Standard specifies three different tests whereby a suspension system is subjected to an impulsive load for the purpose of measuring "body bounce". The first involves dropping the vehicle off a small step, the second involves pulling the chassis down and then releasing it, and the third involves pulling the chassis up and releasing it.

The Specification 181 The patent specification in suit (the Specification) refers to various disadvantages associated with methods for testing suspension in the prior art. Some of the prior art methods involve removing components (ie. shock absorbers) from the vehicle. The Specification suggests that the testing of such components after removal from the vehicle is unsatisfactory because, among other things, it leads to increased vehicle downtime. 182 The Specification makes reference to the standards relating to the performance of suspension and suspension components with which haulage or freight trucks may be called upon to comply. The requirements of VBS-11 are referred to specifically. The Specification states that, in order to be considered road friendly, suspension must have a damping ratio of greater than 20% and a frequency oscillation of less than 2 Hz. This is followed at page 2, line 33 - page 3, line 9, by a discussion of compliance testing in the context of the "road friendliness" of the suspension: This compliance testing may test one or more parameters of the suspension which determine the "road friendliness" of the suspension. A "road friendly suspension" may be one which functions within predetermined limits for one or more of the parameters, and attaining or complying with "road friendliness" may provide advantages for the owner/operator of the vehicle such as the ability to carry heavier loads or access to roads which noncompliant vehicles may be restricted from using. As well, the road friendly performance of the suspension/s will affect the working life of the road itself with attendant reduction in maintenance costs and increased safety to all road users, with the economic benefits of such savings flowing on to the general community. According to the Specification at page 3, lines 12-17: It is therefore desirable to provide for an accurate test procedure for testing the performance of suspension components on a vehicle to determine whether the suspension is functioning properly and within legally acceptable limits while the vehicle is in use and without requiring the removal of the vehicle from service. In addition, it is desirable to provide for a test procedure for testing vehicle suspension components that does not require subjective interpretation by a technician. 183 The Specification states that the invention is directed to a method for logging the performance of a vehicle suspension system which may overcome the disadvantages of the testing methods that form part of the prior art. This statement is followed by a consistory clause which mirrors the language of claim 1. 184 According to the Specification, the method described in the consistory clause is one which is preferably used to test the road friendliness of a suspension system. At page 4, lines 1-9, the Specification states: The method given above is preferably used to test the "road friendliness" of a suspension of vehicles. "Road friendliness" is assessed by the National Road Transport Commission (NRTC), and once a road friendly standard has been attained, the vehicle is generally allowed increased mass limits. The road friendliness of a suspension or suspension group, that is two or more axles connected together for load sharing as defined in the guidelines of the Higher Mass Limits (HML), is generally assessed under the current Higher Mass Limits (HML), currently in force, according to two criteria, namely the damping ratio of the suspension and the frequency of oscillation of suspension in response to an impulsive load. 185 The Specification then describes how an electronic weighing system mounted on board the vehicle may be used to measure or collect data that may be used to calculate the damping ratio and frequency of oscillation. The Specification explains that a global positioning system (GPS) device, or other locating means, might also be utilised to collect information as to the location of the vehicle. 186 The Specification also explains how the electronic weighing system mounted on the vehicle may be used to log the performance of the vehicle suspension system. The Specification indicates that this can be done in a number of different ways using a number of different tests. There are four such tests described in the Specification which are referred to as the "axle test", "bump test", "road test" and "trip test". 187 It is common ground that none of the four tests discussed in the Specification permit the measurement of the load or force experienced by the vehicle at the tyre/road interface. 188 The "road test" is significant because it is said by the appellant to support its contention that the third parameter referred to in claim 1 is not concerned with the load or force at the tyre/road interface, but with the load or force in the suspension. The road test is described in the Specification at page 7, lines 3-9 as follows: A third test which may be performed may be a road test. According to this test, the variation in the mass signal may be recorded as the combination test rig vehicle travels along a normal, uneven road at speed. The speed may be up to 60km/h or may be higher or lower if required. The GPS location device may be linked to the data collected, to precisely locate the portion of road upon which the test was conducted for future comparison of the test conditions as well as the road condition to determine the degradation in either or both. 189 The road test involves the establishment of a performance benchmark against which variations in the performance of the vehicle may be measured based upon variations in the mass signal. The "mass signal" in this context refers to variations in mass induced by dynamic loads or forces in the suspension measured at high frequency using the electronic weighing system. The appellant says that this mass signal constitutes, or records, the "impact loading of the vehicle" as that phrase is used in claim 1. 190 The "trip test" is said to allow for the collection of information as to road conditions. At page 7, lines 17-26, the Specification states: The trip test may preferably allow data to be collected about the condition of the roads which a test vehicle travels over whilst gathering data in the form of the axle test for analysis, at the same time. Each trip test may be expanded into a series of axle tests for such purposes. For example, an impulsive load may be imposed on the suspension if the test vehicle drives over a pothole in the road. If a test vehicle uses the same route, it would generally traverse the same pothole on different trips. By assessing the performance of the suspension in response to the impulsive load applied to the suspension on different trips, a user may determine whether the pothole is getting larger or deeper or whether it has been repaired or not. 191 Claim 21 (which, together with other relevant claims, is reproduced in the Chief Justice's reasons) is for a method that "allow[s] data to be collected about the condition of the roads which a test vehicle travels over." The significance of the description of the "trip test" upon which claim 21 is based is that the invention is said to enable the user to monitor changes in road conditions, not by measuring such changes at the tyre/road interface, but by assessing the performance of the suspension in response to impulsive loads applied to the suspension. 192 The general description of the invention appearing in the Specification concludes with the following observations at page 8, lines 1-7: Suitably, the method of the present invention may be utilised to collect and analyse data in order to log the performance of the suspension of a vehicle. Individual components of the suspension may be tested or groups of components may be tested. The system allows the logging of information relating to the dynamic effect of impulsive loads applied to suspensions and the compliance of the suspension to parameters adapted to ascertain the effectiveness of the suspension in dampening the impulsive load applied. 193 It is convenient at this point to note that the appellant's counsel submitted that the primary judge failed to grasp the true nature of the advance made by the inventor over the prior art. Counsel for the appellant submitted that the inventive step in this case consisted of the idea of using an on-board electronic weighing machine to capture the "mass signal" or "excursions in mass" by taking measurements at high frequency of the dynamic loads on the suspension of the vehicle from which conclusions could be drawn as to the performance of the suspension. 194 The characterisation of the invention was said by counsel for the appellant to be particularly important to the construction question because a skilled addressee who read the Specification would understand that the inventor was not claiming to have invented a method for measuring a load or force at the tyre/road interface. Rather, the skilled addressee would understand the invention to involve a new method of measuring the performance of suspension by logging at high frequency variations in the load or force in suspension using an on-board electronic weighing system. 195 The general description of the invention is followed by a more detailed description of a preferred embodiment of the invention by reference to drawings (Figs 1-9). Importantly, the detailed description commences at page 9, lines 3-5 as follows: According to an aspect of the invention, a method for logging the performance of a vehicle suspension system in reaction to impulsive loads applied thereto is provided. This statement is clearly referring to the performance of the suspension in reaction to the impulsive loads applied to the suspension. 196 The detailed description of the invention is provided in the context of, and with reference to, the use of the invention on a truck and trailer combination equipped with air suspension. A road test of the rig is described in which the variation in mass signal was recorded as the rig travelled along normal, uneven roads at speeds of up to 60 kph. A sample of data from the road test is presented in the Specification in hexadecimal form and with the whole data set plotted in Fig 6. Figure 6 consists of a plot of the mass signal. 197 According to the Specification at page 16, line 19 - page 17, line 7: By subjecting the data from the on road test to Fourier analysis, the system is able to determine the trailer's body-to-axle-group frequencies induced by the dynamic forces on the combination. For this analysis, it was assumed that the signal derived from driving the vehicle on normal roads approximated to a random signal. Fourier analysis of an output, or derived, signal after it has been generated from a random input signal of uniform amplitude to any system allows determination of the transfer function of the system as expressed by the frequencies present in the output signal. The plot illustrated in Figure 6 is a Fast Fourier Transform (FFT) that is, by definition, lumpy and does not yield pure and clean plots on the magnitude axis. Even allowing for the overall noise created by the FFT process, it can be seen that the greatest frequency magnitude 46 present in the FFT of the on-road signal is that of 1.5 Hz - 2 Hz. Given that the EU standard for body bounce is > 2.0 Hz [sic: < 2.0 Hz], it is statistically probable that this parameter is met by the suspension tested and reflected on this plot. (footnote omitted) A fast Fourier transfer (FFT) is a mathematical process used in data analysis which may assist in identifying cyclic patterns, or oscillations, in a data series where it may be difficult to do so using a simple time series plot. The Specification thus indicates that a FFT may be used to determine whether or not it is statistically probable that the EU Standard for "body bounce" is met by the suspension tested.

Consideration 198 The phrase "impact loading of the vehicle" is not defined in the body of the Specification. It appears in the consistory clause and claim 1 but is not used in any other part of the Specification. The phrase does not have any accepted technical meaning. Neither party suggested that the language was clear or unambiguous and both parties accepted that the phrase is capable of conveying either of the two different meanings to which I have referred. However, the appellant submitted that when claim 1 is read in the context of the Specification as a whole, the construction which it propounds is clearly preferable to that adopted by the primary judge. 199 The Specification does not provide any clear indication of what is intended by the use of the phrase "impact loading of the vehicle" as it appears in claim 1. It is true, as the respondent submitted, that if the phrase was intended to refer to "impact loading of the vehicle on the suspension" then the patentee could easily have said so in terms. But it is equally true that the claim might have been drafted so as to refer to "the impact loading of the vehicle at the tyre/road interface" or, perhaps, the "dynamic load co-efficient" (a technical expression referring to the load or force at the tyre/road interface). In the present case, however, semantic arguments of this kind, while recognising that the claim could have been drafted so as to avoid the relevant ambiguity, are of little assistance when it comes to ascertaining the meaning of the claim. 200 It is necessary to construe the language of claim 1 in light of the Specification as a whole and in light of the common general knowledge that the skilled addressee would consider relevant when seeking to understand the document. The skilled addressee would be aware that there was no simple way of measuring the impact loading of a vehicle at the tyre/road interface. The skilled addressee would also understand that the Specification does not purport to describe any means by which the impact loading of the vehicle could be measured at the tyre/road interface. 201 In my view, the skilled addressee would understand the description of the invention to relate to the measurement of loads or forces at the suspension, and would apply that understanding to his or her reading of claim 1. In cross-examination Dr Blanksby gave evidence which indicates that he approached the claim in precisely this way, that is to say, having read the Specification as a whole, he formed the view that it was "not the intention of the patent" to measure loads or forces at the tyre/road interface. I think Dr Blanksby's reading of the claim is fully borne out by the description of the invention in the Specification. 202 The support that the respondent seeks to draw from the Specification for its construction of claim 1 is said to be found in the references to "road-friendliness". It is true that the concept of road-friendliness is very much focused upon the impact that heavy vehicles have on roads and the affect that this may have on road maintenance costs and road safety. However, the standards referred to in the Specification are concerned with the road-friendliness of suspensions in heavy vehicles. Each of the compliance tests specified in these standards assess road-friendliness by reference to the performance of the suspension. None of them involve the measurement of loads or forces at the tyre/road interface. I do not see references to "road-friendliness" in the Specification as providing any support for the respondent's construction of claim 1. 203 The principal arguments in favour of the respondent's construction of claim 1 are referred to in the Chief Justice's reasons for judgment. They are essentially based upon a close textual analysis of claim 1. If claim 1 is read in isolation then these are powerful arguments. However, they lose much of their force when claim 1 is read in light of the Specification as a whole and, in particular, the complete absence from the description of any suggestion that the invention involves the ascertainment of loads or forces at the tyre/road interface.

SUFFICIENCY 204 The respondent contended that even if the appellant's construction of claim 1 was correct, then claim 1 and each of the dependent claims that are alleged to be infringed are invalid because, contrary to s 40(2)(a) of the Act, the Specification does not describe the invention fully. 205 The test for sufficiency under s 40(2)(a) (as s 40 stood prior to recent amendments) was formulated by the High Court in Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1 (Kimberly-Clark) at [25] as follows: The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty? The disclosure, or rather, the "enabling" disclosure, is the consideration that the patentee gives for the grant of a monopoly for the term of the patent: see the observations of Romer LJ in No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 at 243, cited with approval in Kimberly-Clark at [25]. 206 In Lockwood Security Products Pty Limited v Doric Products Pty Limited (2004) 217 CLR 274 (Doric) the High Court said at [60]: For the purposes of s 40(2)(a), it is not necessary for the inventor to disclose all the alternative means; it is enough that there is disclosure in the sense of enabling the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting additional difficulty. 207 In Kimberly-Clark and Doric the High Court was concerned with various product claims each of which consisted of a number of features all of which were essential (in the sense of non-optional) integers of the claim. However, there are some types of claim that may need to be approached slightly differently including, in particular, claims to methods for producing one or more specified results. For example, a claim for a method of producing one or more of outcomes A, B or C might be infringed if the alleged infringer uses the method to produce outcome A, but not outcome B or C. Whether there is infringement in such a case will depend upon (inter alia) the proper construction of the claim and, in particular, whether it requires the use of the method to produce only one or more of outcomes A, B or C, as opposed to all three of them. Assuming the former construction (in the present case it appears to have been assumed by both parties at the trial and on appeal that claim 1 is to be construed in this way), it would seem to me to be wrong in principle to hold that the description of the invention is sufficient if the specification enables the use of the method to achieve outcome A, but not outcomes B or C. It would be inconsistent with the purposes of the Act to confer a monopoly on a patentee for a method of producing any of outcomes A, B or C, if the patentee's disclosure only enabled the use of the method to produce some of those outcomes. 208 On this view of s 40(2)(a), the concession made by the appellant that claim 1 was invalid for insufficiency of description if the respondent's construction of claim 1 was accepted was properly made. However, this concession still leaves open the question whether claim 1 is invalid for insufficiency on the appellant's construction of claim 1. This is a question of fact that was not the subject of a finding by the primary judge. 209 The respondent's submissions on this question were brief. In its written submissions the respondent stated that "the patent remains in breach of section 40 even under Tramanco's interpretation, as the specification does not say how the variations in mass that Tramanco identifies are derived". A footnote to this submission stated that the Specification (at page 12, lines 25-32) asserts "the proportionality of air pressure and mass but do[es] not disclose how the conversion is made." The same footnote includes a reference to the evidence of Mr Di Cristoforo discussed below. 210 At para [29] of the appellant's written submissions in reply the appellant responded as follows: BPW correctly notes that Tramanco does not dispute the finding of insufficiency of claim 1 if impact loading has the meaning set out in the reasons. However, it now contends that the patent remains in breach of section 40 even on Tramanco's interpretation "as the specification does not say how the variations in mass that Tramanco identifies are derived". We find this submission difficult to understand. What is required in the body is a real and reasonably clear disclosure of what is claimed. The determinations of mass are made by using an EWS. As described in the patent specification this comprises, for example, APTs, smart amplifiers and a computer. There is no doubt that it was part of the common general knowledge that on-board electronic weighing systems use various sensors and then perform calculations to arrive at a mass or weight measurement, for example in kilograms. The invention was to use this dynamically. (footnotes omitted) 211 This passage of the appellant's submissions elides the distinction between grounds of invalidity arising under s 40(2)(1)(a) (sufficiency) and s 40(3) (fair basis). Leaving that aside, the substance of the respondent's submission that the Specification does not enable the skilled addressee to derive a mass signal from air pressure was left unanswered by the appellant in both its written and oral submissions. 212 In his report dated 18 March 2011 at para 3.5, page 5, Mr Di Cristoforo said: … [T]he patent describes the operation of a standard on-board mass measurement system based on air pressure readings as I described in Section 2.5 of my report dated 8 June 2010. The patent is unclear as to whether the method is intended to operate from a single airbag pressure reading or from multiple readings in several airbags. In my experience, while the precise setup, accuracy and format of the display on on-board mass measurement systems available in August 2003 varied depending on the manufacturer, such systems require only one air pressure transducer per axle group. Therefore I believe that for the purpose of vehicle weighing an on-board electronic weighing system requires only one air pressure transducer per axle group. For some of the features of the patented method it may be necessary to obtain more measurements. The on-board electronic weighing system described in the patent is stated to be designed to report mass in "40 kg increments," which I interpret to mean to a resolution of 40 kg, or to the nearest multiple of 40 kg. The last part of the passage describes how the system determines the mass on the steer axle (the front axle of the prime mover) when it only measures the air pressure in the airbags of the drive axles (rear axles of the prime mover) and the trailer axles. For a given prime mover and semi-trailer combination, the loads on the steer axle and on the drive axles increase and decrease according to the load imposed on the prime mover by the trailer, and the steer axle load is related to the drive axle load by a simple formula that may be calculated theoretically, or determined by experiment when the system is calibrated. Such systems determine the mass of the vehicle when stationary. If a vehicle is moving then the air pressure reading will vary substantially and will not correlate to the mass of the vehicle. One of the claims of the patent (Claim 19) claims that the "variation in a mass signal" is recorded. The term "mass signal" is not defined clearly in the patent … [T]he phrase "Air pressure is converted to a mass signal by a mass measurement system ..." suggests to me that at some point in the system one of its components converts the pressure in the airbags to a signal indicating mass. It is not clear whether this is a reference to the signal transmitted by the pressure transducers, the signal transmitted by the smart amplifiers, or something else. This raises the question of the difference between a mass signal and a pressure signal. Although the "mass signal" is claimed as being recorded the patent suggests that the pressure signal is what is captured by the APT [air pressure transducer]. How such a pressure signal is converted to a mass signal is not disclosed in the patent. 213 Counsel for the respondent submitted that this evidence shows that Mr Di Cristoforo was of the opinion that the Specification does not disclose how a pressure signal is converted to a mass signal. I accept this submission. However, I do not think this takes the matter far enough. To succeed on sufficiency it is necessary for the respondent to establish that the disclosure did not enable the skilled addressee to perform the method referred to in claim 1 "without new inventions or additions or prolonged study of matters presenting initial difficulty": Kimberly-Clark at [25]. It is possible that Mr Di Cristoforo would have said, if asked, that the skilled addressee would not know how to convert a pressure signal into a mass signal or, at least, that he or she would not be able to perform that task without considerable difficulty. However, none of the evidence to which we were referred suggests that he was asked that question and, in my opinion, the evidence to which we were taken does not answer it. 214 Counsel for the respondent also referred to evidence of Dr Gilmore given during cross-examination in which he agreed that there was nothing in the Specification to identify how the impact loading of the vehicle is to be determined. Counsel for the respondent submitted that subsequent cross-examination clearly showed that Dr Gilmore's concession related to "the impact loading of the vehicle" as the phrase was interpreted by the appellant. However, the subsequent evidence referred to by counsel for the respondent is to the opposite effect. It shows quite clearly that Dr Gilmore was referring to the absence of any disclosure enabling the determination of impact loading at the tyre/road interface. 215 In my opinion, the evidence relied upon by the respondent does not establish that claim 1 (or any of its dependent claims) is invalid for insufficiency due to the lack of an enabling disclosure with respect to the determination of the impact loading of the vehicle at the suspension. 216 The primary judge found at [235] of his reasons that claim 21 was invalid for insufficiency (s 40(2)(a)) and lack of fair basis (s 40(3)). So far as s 40(2)(a) is concerned, his Honour found, in substance, that claim 21 was not supported by an enabling disclosure. In my opinion, this finding was open on the evidence. 217 In its written submissions the appellant submitted that the Specification indicates that a GPS, or other locating means, such as a trip meter, may be used according to the invention, and that the discussion of "road test" and "trip test" in the Specification includes a clear description of the use of such locating means, including a GPS, to locate the position of the vehicle when a test is undertaken. The road test, as described in the Specification, is said to permit the collection of data which may be used for the purpose of drawing comparisons from which conclusions may be drawn as to road conditions. The trip test, as described in the Specification, is said to enable a user to determine whether a pothole is getting larger or deeper, or whether it has been repaired. 218 However, the Specification does not explain how variations in mass signal "allow data to be collected about the condition of the roads which a test vehicle travels over" as required by claim 21. It is clear that variations in the mass signal may be attributable to a variety of causes including a deterioration in the effectiveness of a vehicle's suspension. Variations in mass signal tell the user nothing about the condition of the road upon which the vehicle has travelled unless he or she can exclude the possibility that one or more other potential causes, including a deterioration in the effectiveness of the vehicle's suspension, produced such variations. I therefore agree that claims 21-23 (claims 22-23 are dependent on claim 21) are invalid because, in this particular respect, they are not supported by an enabling disclosure.

NOVELTY 219 I agree with the Chief Justice's reasons for concluding that none of the US patent by Tal et al and the papers written by Dr Sweatman anticipate claim 1.

OBVIOUSNESS 220 It is common ground that the primary judge did not make a finding that any of the claims was invalid for lack of inventive step even though his Honour said in his later judgment on costs that he would almost certainly have made such a finding had it been necessary for him to do so. Hence, inventive step was an issue that arose on the respondent's notice of contention (ground 8) rather than on the appellant's notice of appeal. 221 The respondent bore the onus of establishing that the method referred to in claim 1 (and its dependent claims) would have been obvious to the hypothetical, non-inventive worker in the field equipped with the common general knowledge and any other information which satisfied the requirements of s 7(3) of the Act. 222 The primary judge dealt with the topic of common general knowledge at [150]-[166] of his reasons. His Honour made detailed findings as to the common general knowledge and the other information made relevant pursuant to s 7(3) of the Act. At [156] and [157] the primary judge enumerated specific matters which he later found were common general knowledge including VSB-11 and Dr Sweatman's 1983 and 1994 papers. His Honour also found that Dr Sweatman's papers, even if not common general knowledge, could be considered separately pursuant to s 7(3) of the Act. These findings were not challenged. However, it does not follow from these findings that the method the subject of claim 1 was obvious. 223 In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 Aickin J (with whom Gibbs, Stephen, Mason and Wilson JJ agreed) referred to the need for a valid patent to "involve an inventive step" (language which appears in s 7(2) and s 18(1) of the Act). His Honour said at 286: The test is whether the hypothetical addressee faced with the same problem 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. This test of obviousness was cited with approval by the majority of the High Court in Aktiebolaget Hassle v Alphapharm Pty Limited (2002) 212 CLR 411 at [50]. As to what "a matter of routine" means in this context, the majority said at [53] that the reformulation of the "Cripps question" by Graham J in Olin Mathieson Chemical Corp v Biorex Laboratories Ltd [1970] RPC 157 is an approach that should be accepted. 224 Both parties accepted that the "reformulated Cripps question" should be applied in this case for the purpose of determining whether the method defined in claim 1 involved an inventive step. For the purposes of this case the question can be posed in these terms: Would the hypothetical, non-inventive worker in the field, armed with the relevant prior art (in this case the common general knowledge) directly be led as a matter of course to try a method within the scope of claim 1 in the expectation that it might well produce a useful alternative to known methods for testing the effectiveness of a vehicle's suspension system? 225 On appeal, the respondent did not undertake any analysis of the common general knowledge with a view to establishing that any of the methods described in the Specification within the scope of claim 1, or any other method within the scope of that claim, was obvious, or that the "reformulated Cripps question" should be answered in the affirmative. 226 The evidence of Dr Hart did not establish that a non-inventive worker in the field would have taken, as a matter of routine, whatever steps might have led from the relevant prior art to the invention. As the Chief Justice has observed, none of the methods described by Dr Hart in his reports involved the use of an on-board electronic weighing system. 227 Having considered the common general knowledge as found by the primary judge along with the evidence of Dr Hart, I am not persuaded that claim 1 is invalid for lack of inventive step.

INFRINGEMENT 228 I agree with what the Chief Justice has written on the issue of infringement and have nothing to add.

DISPOSITION 229 For the above reasons I would allow the appellant's appeal, in part, against the primary judge's declaration of invalidity and his Honour's order for revocation, and set aside both the declaration and the order for revocation. There should instead be a declaration that each of claims 21, 22 and 23 of the patent is invalid and an order revoking each of those claims. The application and cross-claim should otherwise be dismissed. The appeal also should be otherwise dismissed. The parties should be given an opportunity to file written submissions in relation to the question of costs with respect to the proceeding below and the appeal. To that end, each party should be required to file and serve written submissions on the issue of costs (up to 5 pages in length) within 7 days and any written submissions in reply (up to 2 pages in length) within 14 days. I certify that the preceding fifty-nine (59) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Nicholas.

Intellectual Property Laws Amendment (Raising the Bar) Act 2012(Cth)

Patents Act 1990(Cth)ss 7(3), 40(2)(a)

ALLSOP CJ 1 This is an appeal against orders of the Court dismissing the appellant's (Tramanco Pty Ltd, hereafter "Tramanco") claim for infringement of Australian Patent 2004264997 and upholding the respondent's (BPW Transpec Pty Ltd, hereafter "BPW") cross-claim for revocation of the patent. For the reasons that follow, I would dismiss the appeal with costs. 2 The patent is entitled "A Method for Logging the Performance of a Vehicle's Suspension System". The object of the invention described in the specification is to test: the performance of suspension components on a vehicle … while the vehicle is in use and without requiring the removal of the vehicle from service. 3 The claim for infringement concerned claims 1, 12, 13, 14, 19, 20, 21, 22 and 23 of the patent. It will be necessary in due course to refer to some aspects of the specification. The careful and detailed reasons of the primary judge make reference to the specification at length unnecessary. It is, however, helpful to set out the relevant claims in the patent, which are as follows: 1. A method for logging the performance of a vehicle suspension system including the steps of measuring the dynamic effect of an impulsive load with an electronic weighing system, wherein the electronic weighing system is mounted onboard the vehicle, and determining one or more parameters selected from the group consisting of the dampening ratio of the suspension, the oscillation frequency of the suspension and the impact loading of the vehicle. … 12. A method according to claim 1 wherein the performance of the vehicle suspension system is logged over a standard road section at different times to test the performance of an individual axle or group of axles to an impulsive load. 13. A method according to claim 12 including the step of comparing the performance of the vehicle suspension system to predetermined standards. 14. A method according to claim 12 wherein the performance of the vehicle suspension system when the suspension is new is compared to performance at various periods throughout the life of the suspension in order to ensure that the performance of the suspension remains within the predetermined standards. … 19. A method according to claim 12 including a test in which the variation in a mass signal is recorded as the combination test rig vehicle travels along a normal, uneven road at speed. 20. A method according to claim 19 wherein a location device is linked to the data collected, to precisely locate the portion of road upon which the test was conducted for future comparison. 21. A method according to claim 12 wherein the performance of the vehicle suspension system is logged over a variable road section at different times, the position of the vehicle being identifiable at all times during the logging process, allowing data to be collected about the condition of the roads which a test vehicle travels over. 22. A method according to claim 21 wherein the logging is triggered by the application of a particular preset magnitude impulsive load. 23. A method according to claim 22 wherein the location of the vehicle is ascertainable with precision using locating means. 4 All of the claims subsequent to claim 1 are method claims that are dependent on claim 1. 5 The primary judge adopted the taxonomy of claims identified by BPW, rather than Tramanco. Nothing turns on any difference, and it is convenient to set out the primary judge's division of claim 1 into the following integers: (a) logging the performance of a vehicle suspension system (integer 1.1) including the steps of (b) measuring the dynamic effect of an impulsive load (integer 1.2) (c) with an electronic weighing system (integer 1.3), wherein the electronic weighing system is mounted on-board the vehicle (integer 1.4), and (d) determining one or more parameters (integer 1.5) selected from the group consisting of (i) the dampening ratio of the suspension (integer 1.5.1), (ii) the oscillation frequency of the suspension (integer 1.5.2), and (iii) the impact loading of the vehicle (integer 1.5.3). 6 Critical to the determination of the appeal is the resolution of the asserted errors of the primary judge in construing claim 1. 7 Before examining the arguments of Tramanco in that regard, it should be noted that, on appeal, Tramanco accepted that all that was required in order for there to be either an infringement or an anticipation of claim 1, was the determination of any one of the three claim parameters being the dampening ratio of the suspension, the oscillation frequency of the suspension, or the impact loading of the vehicle. Until the abandonment of grounds 4 and 5 in the Notice of Appeal in 2013, Tramanco contended that, for infringement, a determination of only one of the three identified parameters was required, but that, for the invalidity of the patent through lack of novelty, a prior art publication was required to disclose a method that determined all three parameters in order to anticipate. 8 In construing claim 1, the primary judge took the word "logging" to mean "recording in a systematic way". No complaint is made about this approach. He read the expression "logging the performance of a vehicle suspension system" as meaning "recording, in a systematic way, the quality of the suspension system's performance of its intended function". This resolved a dispute at the trial about whether (as BPW submitted) "performance" in claim 1 should be construed as meaning "performance directed to the question of so-called road-friendliness". The primary judge rejected this narrower view. No complaint is made about this. 9 The first asserted error was the primary judge's conclusion that (see, for example [44]) claim 1 does not disclose any necessary connection between the measurement of what is to be measured and the determination of what is to be determined. He noted that the specification suggested that the measurement was to be utilised in the determination; but he concluded that the claim did not say so. Tramanco submitted that there were not two independent steps in claim 1 and that the determination of one or more of the parameters identified in the second step necessarily used measurements taken in the first step (measurement of the dynamic effect of an impulsive load using an electronic weighing system mounted on board the vehicle). 10 The second asserted error was said to be in the primary judge's construction of the phrase "impact loading of the vehicle". His Honour concluded (at [58]) that the phrase described the effect of the vehicle upon the road surface, the impact loading of the vehicle being the force transmitted to the road surface through the tyres. Tramanco had argued that the phrase referred to the effect of a force passing through the tyres to the suspension and the rest of the vehicle, in other words, that the claim concerned determining by measurement the impact load of the vehicle on the suspension. 11 Broadly speaking, Tramanco criticised the primary judge for interpreting the individual integers in isolation from the whole of the claim in an acontextual way, ignoring the body of the specification. 12 The primary judge set out at [26]-[28] the guiding principles of construction of the patent. He referred to Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8; 207 CLR 1 at [15], Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 at [44]-[45], and Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 at [32]-[35]. 13 No real debate took place on appeal as to the proper principles of construction. It was accepted that they are as recently restated in Kimberly-Clark. The submissions involved the proposition that the primary judge had failed to apply a proper contextual and purposive construction. In particular, the appellant submitted that it was important that the claims and specification were not to be interpreted in a way that would be understood by a person skilled in the art to lead to unworkability: see in particular Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; 106 CLR 588 at 601-2. Closely related to that proposition was the submission that the claim is a description of an invention which is intended to be put to practical use and that it is to be construed in a practical common-sense manner with an eye to the utility of the invention and avoiding a construction that is over-meticulous or unduly technical: see the discussion of the authorities by Middleton J in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [2012] FCA 467; 290 ALR 47 at [267]-[273]. These complaints were encapsulated in ground 1 of the notice of appeal. It is convenient, however, to turn immediately to the substance of the complaints as to construction in ground 2 of the notice of appeal.

OBVIOUSNESS 70 The primary judge dealt with obviousness at [141]-[227]. He concluded as follows at [227]: I am not satisfied, on the balance of probabilities, that the idea of using a commercially available weighing system for the purposes identified in claim 1 lacked an inventive step. The weighing exercise involved measurement of changes in air pressure. That measurement was then to be used to calculate weight, as well as oscillation frequency and damping ratio. Calculation of all three parameters from the one measurement seems to me to have been inventive. However Tramanco's claim is much more widely drawn. 71 In his Honour's costs judgment, however, the primary judge said (Tramanco Pty Ltd v BPW Transpec Pty Ltd (No 2) [2013] FCA 170 at [4]): Having formed the view that no good purpose would be served in this case by reaching a conclusion as to inventiveness, it is not appropriate that I decide the matter for the purpose of awarding costs. Although BPW did not succeed on that issue, it did not fail. As I have observed, I examined the question in some detail. Were it necessary to reach a conclusion I would almost certainly have concluded that the claims lacked inventiveness. 72 The only submission put by BPW on obviousness was based on the primary judge's comments at [116] and [137] of his reasons that the use of a commercially available or suitable weighing system was not part of claim 1, and at [4] in his cost judgment. 73 BPW bore the onus of proof that having regard to the common general knowledge, a skilled addressee would have been led as a matter of course to an electronic weighing system to measure the dynamic effect of impulsive loads and use those measurements to determine suspension performance parameters in the expectation that it would provide a useful method of logging performance of a vehicle suspension system. In argument, BPW accepted that [147] of the reasons encapsulated the test: I note also the general approval given in Alphapharm to the test formulated by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187-188. Adopting and adapting that formula, counsel for Tramanco postulates the present question as follows: Would the person skilled in the art, in all the circumstances, which include a knowledge of all relevant prior art, directly be led as a matter of course as a method for logging the performance of a vehicle suspension system to try using an electronic weighing system mounted on board the vehicle to measure the dynamic effect of an impulsive load and determine one or more apparent parameters selected from the group of damping ratio, oscillation frequency or impact loading of the vehicle, in the expectation that it might produce a useful alternative to existing methods for testing vehicle suspensions (for example methods such as the European Drop Test and similar tests in Australia)? 74 The long and careful analysis of the primary judge on the evidence concerning inventive step supports a conclusion of an absence of obviousness. That appeared to be his Honour's view at the conclusion of that review: [227] of the reasons, set out above. 75 In written submissions virtually no submissions of substance were put. In oral address, reliance was placed on Dr Hart's evidence. But an analysis of Dr Hart's evidence does not reveal the use of an electronic weighing system for the purpose of performing the two steps. Dr Hart uses an airbag, but there is no use of an electronic weighing system mounted on the vehicle. 76 On the limited arguments submitted on behalf of BPW, I am not persuaded of obviousness and lack of inventive step. 77 I have read the reasons of Nicholas J on obviousness and I agree with them.

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