Lockwood finally gets a valid patent, which Doric infringed


You will recall that the High Court had overturned the Full Federal Court's finding that Lockwood's patent for a locking mechanism was not fairly based and sent the matter back to the Full Federal Court to determine whether the patent was bad for lack of inventive step or infringed. A differently constituted Full Federal Court found there would have been infringement, but the patent was lacked an inventive step and so was invalid.

Now, in a 63 page judgment, the High Court has reversed that finding of lack of inventive step in relation to some of the dependent claims which were infringed.

No doubt there is much of significance but, on first impression, the decision is particularly important in relation to the application of s 7(3) and the use which can be made of 'admissions' in a specification. There are also some clarifications of aspects of the Alphapharm decision and some important observations on the nature of invention.

Now, those of us who have been following this gripping saga, are probably wondering how is this so? The answer is that perhaps you, like me, have been concentrating on claim 1 which added the famous integer [vi] - the safety release mechanism - to the known prior art:

"1. A latch assembly including, [(i)] a casing, [(ii)] a latch bolt mounted on the casing so as to be movable relative thereto between an extended latching position and a retracted release position, [(iii)] a first actuator operable from an inner side of the assembly to cause movement of the latch bolt to said release position, [(iv)] locking means operable from said inner side of the assembly to adopt an active condition and thereby render said first actuator inoperable, [(v)] a second actuator operable from an outer side of the assembly to cause movement of the latch bolt to the release position, and [(vi)] lock release means which is responsive to said operation of the second actuator so as to thereby render said locking means inactive."

The answer is that claim 1 was in fact obvious, but lurking within the claims was claim 13 which added four more radically important features:

[(vii)] said locking means includes detent means which is movable between an actuator locking position and an actuator release position which correspond to said active and inactive conditions respectively of said locking means, and [(viii)] cam means which is operable to control which of said positions is adopted by said detent means [(ix)] said cam means includes a cam of [sic] which is movable about an axis of rotation between first and second positions of rotation so as to thereby control [(x)] said detent means, and said detent means includes at least one detent which moves substantially radially of said cam axis when moving between said actuator locking and release positions."

Some points of general application.

Alphapharm arose under the 1952 Act which tested obviousness in light of the common general knowledge as it existed in Australia at the priority date. Lockwood No 2 (or is that 5?) concerned s 7(2) and (3) under the 1990 Act before the 2001 amendments introduced the current forms - for present purposes, the main difference lies in the prior art information which can be taken into account.

In Lockwood No 2, the High Court unanimously confirmed that Alphapharm established that "obvious" meant "very plain".

The High Court also confirmed that "common general knowledge" for the purposes of s 7(2) under the 1990 Act had the same meaning as "common general knowledge" was understood to mean under the 1952 Act, so that Alpharpharm and the 3M case remain relevant. The High Court then upheld the trial judge's finding on the evidence that Lockwood's patent did not lack an inventive step in light of the common general knowledge.

Next, the High Court confirmed that s 7(2) and 7(3) were intended to raise the threshold of inventive step and considered that this test was similar to (OK, strictly speaking "brought to mind") the Lord Reid's diligent searcher" test from the old Mills & Rockley case.

The trial judge had found that certain storeroom locks could not be brought into consideration by s 7(2) and (3) as there were so many locks on the market and the costs of acquiring them and taking them apart meant that his Honour was not satisfied the person skilled in the art could reasonably be expected to have ascertained them, let alone understood them. In addition, the storeroom locks were "mortice mounted" locks, not "rim mounted" and at least one of the expert witnesses would not have regarded them as relevant.

The High Court confirmed that the Full Federal Court was right to reject the trial judge's approach to "ascertained" and "understood". "Ascertained" simply meant "discovered or found out" and "understood" just meant that the person skilled in the art would have "comprehended it" or "appreciated its meaning or import". The evidence showed that each of the expert witnesses knew of one or other of the relevant storeroom locks and so it could not be maintained that those locks would not have been ascertained and understood. In particular, there was no requirement - at least for this particular technology - to show that the locks needed to be disassembled.

According to the High Court, the third requirement of s 7(3), regarded as relevant, was not to be tested in the abstract:

[152] Given the history, context, purpose and specific words of limitation in s 7(3), all of which were addressed by this Court in Firebelt[206], the phrase "relevant to work in the relevant art" should not be construed as meaning relevant to any work in the relevant art, including work irrelevant to the particular problem or long-felt want or need, in respect of which the invention constitutes an advance in the art. The phrase can only be construed as being directed to prior disclosures, that is publicly available information (not part of common general knowledge) which a person skilled in the relevant art could be expected to have regarded as relevant to solving a particular problem or meeting a long-felt want or need as the patentee claims to have done. Otherwise the words of limitation in the last 40 words of s 7(3) would have no role to play. Any piece of public information in the relevant art would be included, as is the case with the much broader and quite different formulation in the cognate provisions in the United Kingdom[207], which do not depend on the standard of a skilled person's opinion of the relevance of the information.

The question, therefore, was whether the person skilled in the art would have regarded them as relevant to the particular problem, or long felt want, in question and, at this point, the significant differences in scope between claim 1, on one hand, and claim 13 (and its subsidiary claims) on the other became very important.

Apparently, claim 1 covered any kind of lock, rim mounted or mortice mounted; claim 13, however, related only to rim mounted locks.

The problem for Doric (in shades of Alphapharm's downfall) was that it never occurred to any of the witnesses, including one of Doric's own experts who was an unabashed inventor, to take into account storeroom locks in addressing problems concerning rim mounted locks.

The case is still not over - it has been sent back to the Full Federal Court to resolve Lockwood's attempt to amend under s 105 and to work out remedies and how the costs of trial and the appeals should be dealt with.

Posted: Thursday - May 24, 2007 at 04:45 PM         |

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