Prior art
There was a body of evidence as to prior art. That which was the subject of debate on the appeal was as follows.
Mr James Lockrey is the Managing Director of Lockrey Hoardings Pty Limited, a company he founded in about 1962. His company is one of the leaders in the field of overhead protective structures in New South Wales. Mr Lockrey's successful career comes from a practical rather than theoretical background. As a young man he worked for
some seven years as a bus driver.
In about 1981 or 1982 Mr Lockrey's company constructed a timber hoarding at a building site in Woolloomooloo. The hoarding was about three metres in length. He prepared for the purposes of his evidence a rough sketch of the hoarding as follows. (The view is from above and to the right of the structure.)
The unit consisted of four timber legs, a timber roof and a plywood side wall attaching the leg assemblies on the building site side. Timber beams attached each of the four legs and the timber roof was secured to those beams. The hoarding was a complete unit which had been custom built for the particular site. Later the unit was used on a building site in Mort Street, Balmain. That site was uneven so the company's employees cut down the legs to suit the site. The unit was "much too high" to carry around in its existing form as a fully built hoarding structure. The legs were cut down again and the units used as a work platform on the back of a truck.
In his affidavit Mr Lockrey deposed:
"Although we did not construct other units, it occurred to me in or about 1981 or 1982 that it would save a lot of time in labour to erect hoardings if we constructed a number of these modules, transported them to site and then attached them together on building sites."
He was not cross-examined on this passage. It is not mentioned in his Honour's judgment.
Mr Preston gave evidence that in about 1983 he commenced work on a design for what he described as "a combination modular office and pedestrian gantry". He said that the design was for a number of prefabricated modules which would be transported to a site and there joined to other modules to form a complex. He prepared the following diagram at the time.
It was accepted in evidence that, when this drawing was made by Mr Preston, it did not contain what appears to be a line drawn behind the rearmost legs of the module. If that line indicates a wall between the module and the building site, this was not indicated on the plan that Mr Preston drew.
The judgment below
On the issue of novelty his Honour said as to the Lockrey unit
"Thus, it is apparent that the structure was not reusable as a gantry module without alteration. It does not, in my view, anticipate the module described in the Speedy Gantry specification. It certainly does not possess adjustable legs or pivotable feet."
As to the Preston drawing his Honour thought that it did not:
"disclose a gantry or protective hoarding for pedestrians at all. The Preston Drawing depicts no more than offices on legs".
As to obviousness, his Honour noted Speedy Gantry's contention that the patent was a combination patent. Its invention was said to be:
"… the conception and execution of 'a new thing', namely, an assembly of independently movable gantry modules, each possessing in combination the various integers of the claims. The inventive step was combining each of the integers described in the claims in a way which previously had not been done. Each of the integers described in the claims may have been obvious and it may be that one by itself could not be said to involve an inventive step. Indeed, it was not contended that any of the separate elements was not common place. The essential question, however, is whether the combination of all of those elements was obvious having regard to what was then common general knowledge." [Emphasis in original]
After referring to Wellcome Foundation Ltd v V R Laboratories (Aust) Pty Ltd (1981) 128 CLR 262 at 270 his Honour noted that the issue was "whether anyone skilled in the relevant art but lacking inventive capacity would consider that trying [the respondent's] combination of the plurality of components or integers in a module form would be something 'worth trying' in order to solve recognised problems or needs": Re Beecham Group Ltd's (Amoxycillin) Application [1980] RPC 261 at 290-1, Re Coopers Animal Health Australia Limited v Western Stock Distributors Ltd (1986) 67 ALR 390 at 410. His Honour then said:
"Preston Erection contended that the elements which were part of common general knowledge in Australia included:
· a roof composed of either wood or steel as an overhead protective structure;
· a side wall made up of wood, steel or plywood;
· legs made up of wood or steel to support the roof;
· sufficient space between the legs to allow pedestrian access;
· adjustable screw jacks or legs;
· a combination of all the above.
All of those elements were clearly enough part of common general knowledge because they are the elements of any gantry or hoarding. I accept that on the evidence before me, the following matters were part of common general knowledge as at 20 February 1986:
· a gantry could provide a protective passageway for pedestrians walking next to a building site;
· gantries were custom built structures which comprised a roof structure, legs and solid wall on the site side of the gantry, erected on site and dismantled on site;
· some of the parts of a gantry could be modular in the sense that wall panels, beams, joists and leg members were precut to size;
· the modular parts and other custom built parts would be delivered to the site and a gantry would be erected from the parts and subsequently dismantled on the site.
The question, however, is whether the following combination was obvious at 20 February 1986 or whether such combination was inventive:
· a module comprising pairs of spaced legs supporting a roof assembly, having a roof panel extending between the upper ends of the legs, a side wall between adjacent legs and extending from an edge of the roof assembly to adjacent the lower ends of adjacent leg;
· such gantry module being moveable as a unit but independently of other modules;
· the aligning of the roof assembly and side wall of such gantry module with a roof assembly and side wall of an adjacent module to form a continuous roof assembly and side wall for the gantry;
· such gantry module having adjustable legs and pivotable feet."
His Honour thought that the evidence did not suggest a failure to satisfy a "long felt want" although the problem and needs described in Speedy Gantry's specification were real. He referred to cross-examination of the inventor, Mr Nielsen, to the effect that, before the priority date, he had seen scaffolding which combined legs, roofs, side wall and adjustable legs. Mr Nielsen agreed that, before February 1986, he had seen such structures and that it could have been possible to build another and put it beside it. He effectively conceded that there existed before the priority date gantry assemblies which included all the elements he observed in the module described in claim 7 of the patent in suit. His Honour then said:
"However, that does not, in my view, go far enough. The modules together may well have resembled parts of hoarding and gantries custom built for a particular site. The essence of Speedy Gantry's invention is the concept of having separate substantially identical modules which are fabricated in advance with adjustable legs and which are transported to a site erected and joined together much more quickly than would be possible if all the elements of each module had to be assembled and erected at the site. That was the inventive spark."
His Honour then referred to the evidence of Preston Erection's expert Mr Black who said that, had he been asked prior to the priority date to consider a pedestrian gantry design, he would have chosen a modular gantry because it would enable a scaffolding construction company to prepare the gantry off site and have it transported to the site either as a whole or with elements to be fitted in on site. His Honour pointed out the dangers of applying hindsight and observed that Mr Black's expertise was in relation to scaffoldings rather than hoardings or gantries.
The conclusions of his Honour on the issue of obviousness are contained in the following passage:
"The recognised problems or needs identified in the Speedy Gantry specification must have existed for some time prior to 1986 as Mr Preston's evidence confirmed. As I have held above, the idea of modules in relation to gantry hoardings of the nature shown in the Speedy Gantry specification was not, on the material before me, advanced in Australia, or elsewhere for that matter, prior to the lodging of the provisional specification on 20 February 1986. The evidence relied on by Preston Erection to support its contention that the Speedy Gantry invention was obvious and did not involve an inventive step indicates that there was a need for a system which would overcome the difficulties arising from a plurality of scaffolding elements, being the time to erect and dismantle, coupled with the risk of loss of some of the numerous parts involved. The evidence indicates that attempts were made to provide a solution for those problems. No attempt produced the answer which Mr Nielsen produced. None of the systems described above fulfilled the need identified in relation to gantry hoardings. That indicates that Mr Nielsen's concept was inventive.
Clearly, the concept of modularity alone is not, of itself, adequate to constitute an invention. There must be any number of instances where modules, being a series of standardised parts or units from which a complex structure can be assembled, have been employed. The question, however, is the nature of the "modules". I have referred above to the evidence of Mr Sydes concerning the Bidner Scaffolding System. In the course of cross-examination, Mr Sydes was asked whether he ever saw a modular hoarding. His response was that it depends on what is meant by 'modular'. The Bidner Scaffolding System was modular in the sense that sets of beams and joists were modular. However, he agreed that before he saw the Speedy Gantry system, he had never seen a modular hoarding system where all of the components were assembled off-site. In circumstances where Mr Sydes' company, E.M. Miller, was an important participant in the hoarding market, it might be considered surprising that he did not devise a system similar to the Speedy Gantry one if it was obvious. Even his own system described above, while modular, did not involve a module of the kind seen in the Speedy Gantry specification.
The Speedy Gantry invention is the concept of constructing a gantry assembly from a plurality of modules manufactured off-site which have adjustable legs and a protective wall and roof. While the question of obviousness is a difficult one in the present case, which I regard as very much a borderline one, I consider on balance that that concept was not obvious and involved an inventive step. In other words, it was not so obvious that it would at one occur to anyone acquainted with the subject of gantry hoardings who was desirous of accomplishing a solution to the need identified. Accordingly, the ground in section 100(1)(e) is not made out."
Having regard to the conclusion we have reached on this appeal, we need mention the remaining issues only briefly. His Honour found there had been infringement by Preston Erection in supplying modular gantry units by way of hire at a Westfield Shopping Centre construction site in Parramatta and in selling such units to one T A Taylor, which units were being used at a site in Petersham. His Honour further held that a final injunction was appropriate.
The claim against Mr Preston was based on s 13 of the Patents Act 1990 (Cth). His Honour rejected this claim. He considered there was no question of Mr Preston giving authority to Preston Erection to act on his behalf.