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The Full Court of the Federal Court recently upheld a decision of Justice Gyles in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 that Dura-Post’s ‘Exy-Drive Steel Flex’ post infringed Delnorth’s patent for roadside posts. Click here to view our alert on Justice Gyles’ decision at first instance.
Background to the decision
Delnorth is the patentee of three divisional innovation patents for elastically bendable posts made from sheet spring steel, with various additional features such as marker holes, for “supporting signage or delineating paths, roadways or boundaries”.
Delnorth brought proceedings against Dura-Post alleging that Dura-Post’s ‘Exy-Drive Steel Flex’ post infringed its patents. In its cross-claim, Dura-Post alleged that Delnorth’s patents were invalid for want of novelty, for lack of clarity, utility and fair basis and on the ground that they did not relate to a new manner of manufacture. Justice Gyles at first instance rejected all of these arguments, however accepted that two claims of two of the innovation patents were invalid for want of innovative step.
On appeal, Dura-Post challenged Justice Gyles’ findings that the claims of the patents which were not found to be invalid involved an innovative step, were novel and related to a new manner of manufacture.
Innovative Step
Justices Kenny and Stone (with whom Justice Perram agreed) confirmed that when considering innovative step, the Court must consider:
- the invention so far as claimed in any claim
- the person skilled in the relevant art
- the common general knowledge as it existed in Australia before the priority date, and
- whether the invention only varied from the prior art in ways that make no substantial contribution to the working of the invention.
Dura-Post submitted that a person skilled in the art would understand that Delnorth’s invention simply related to the use of sheet spring steel to manufacture roadside posts, and that the additional features of the invention were part of the common general knowledge which were commonly used in various combinations. Specifically, it was alleged that additional features which were added to the spring steel did not contribute to the capacity of the sheet to operate in a manner that is “elastically bendable”. Consequently, Dura-Post argued, the innovation patents provided no substantial contribution to the working of the invention.
In rejecting Dura-Post’s submissions, the Full Court found that when assessing innovative step, the Court must compare the invention as claimed with each prior disclosure and identify whether any variations between the claimed invention and the prior disclosure make a substantial contribution to the working of the invention. The Full Court also accepted Justice Gyles’ view that “substantial” in this context means “real”, or “of substance”.
In deciding whether any variation contributed substantially to the way in which the roadside post functions, the Full Court accepted Justice Gyles’ finding that the prior art disclosed an elastically bendable sheet spring steel post that was bendable to either side. Rejecting Dura-Post’s submission regarding the additional features of Delnorth’s alleged innovation the Full Court found that the presence or absence of a substantial contribution was a question of fact and that it was open to Justice Gyles to find that the variation did in fact provide a substantial contribution.
Manner of Manufacture
In assessing whether a claimed invention is a manner of manufacture, the Full Court confirmed that where a thing is known to be used for making known articles, a patent claiming use of the known thing for the making of a new article, where its known properties make it suitable for that use, will be invalid. The Full Court rejected Dura-Post’s submission that because it was evident on the face of the specifications of Delnorth’s patents that spring sheet steel was known to be useful in the making of the posts, claiming a new use of this known material (ie, a flexible roadside post) was unsustainable. Rather, the Full Court upheld Justice Gyles’ findings that the claims were not so broad as to merely claim a new use of a known material, as each of the claims involved an article which had additional features to the sheet spring steel.
The Full Court also noted that in order to show invalidity on the grounds of manner of manufacture, there must be no new manner of manufacture on the face of the specification. Here, there was no admission on any of the specifications that the quality of innovation was absent.
Novelty
At first instance, Justice Gyles also found that Delnorth’s patents were novel over two patents, the Pellowski Patent and the Kennedy Patent, which Dura-Post alleged anticipated Delnorth’s innovation patents. The Full Court upheld Justice Gyles’ finding that the Pellowski Patent disclosed the use of marking devices within the bounds of the roadway (ie, a highway road marker), whereas the claimed inventions related to the use of posts on the ‘shoulder’ of the roadway (ie, a roadside post). Similarly, the Full Court agreed with Justice Gyles’ conclusion that the Kennedy Patent disclosed a flexible support structure with multiple layers of sheet spring steel in contrast to Dura-Post’s patents which claimed a homogenous body of sheet spring steel. Accordingly, the finding of novelty was upheld.
Concluding remarks
The decision provides a useful confirmation of the approach that will be taken by the Court in assessing whether an innovation patent involves an innovative step. In particular, that it is essential to concentrate on the wording of the entire claim and not what purports to be the underlying new concept. It is also a practical illustration of the treatment by the Full Court of allegations that an innovation patent does not relate to a new manner of manufacture and lacks novelty.