ASSA ABLOY Australia Pty Ltd (formerly Lockwood Security Products), represented by Phillips Ormonde & Fitzpatrick Lawyers, has recently succeeded in its second (and final) appeal to the High Court of Australia against Doric Products Pty Ltd.
The decision of the High Court is notable for many reasons, not least because two appeals to the High Court on one matter is highly unusual.
The proceedings were commenced in the Federal Court of Australia in October 2000 by Doric alleging that Lockwood had unjustifiably threatened Doric and its two distributors with infringement of its Australian patent (number 702534) for a key controlled latch assembly. Lockwood cross claimed against Doric for infringement of the patent and in a second cross claim Doric sought revocation of the patent alleging it was invalid.
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Background to the invention leading to the patent
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In addition to securing a door against access from outside the door, typical dead locks were lockable on the inside so as to prevent an intruder exiting through the front door or from unlocking the door through (for example) a window next to the door and reaching inside to turn the handle.
However, whilst such a lock enhanced internal security, it created other potential problems.
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- In the event of a fire, for example, the home owner could not escape through the locked door without a key.
- The occupant could be inadvertently locked inside their premises, if for example, the door shut after the occupant entered and did not remove the key from the outside of the lock.
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The invention the subject of the patent addressed the problem by providing the feature of a lock-release means which operated in response to the outer activator (ie the key in the outside lock) when it was operated, the lock release means released the lock operating on the inside turn handle.
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Court decisions
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The trial judge, Hely J, found that whilst some of the claims of the patent were infringed by Doric’s product, none of the claims were valid on a ground of invalidity called fair basis. In essence, His Honour found that claims of the patent covered the feature of a lock release means in any form, however only one particular form of this feature was disclosed in the patent.
Lockwood appealed the primary judge’s decision to the Full Federal Court comprised of justices Wilcox, Branson and Merkel. That full bench unanimously agreed with the findings of the trial judge on the ground of fair basis and did not go on to consider other grounds for the appeal.
Lockwood was successful in obtaining special leave to appeal to the High Court and the High Court handed down a unanimous decision on 18 November 2004 (Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ) allowing Lockwood’s appeal. The appeal was confined to the issue of fair basis and the decision is important as it provided much needed clarification on what is needed for a patent to satisfy the requirement of fair basis.
The matter was remitted back to the Full Federal Court in 2005 to determine a number of issues left undecided by the Full Federal Court including whether the invention defined by the claims of the patent possessed an inventive step.
A second Full Federal Court (Heerey, Sundberg and Bennett JJ) handed down a unanimous decision on 8 December 2005 finding that various claims of the patent lacked an inventive step, when compared with knowledge well known in the field of lock design and in light of such knowledge combined with the disclosure of various locks available in Australia before the patent.
In June 2006 the High Court granted special leave to Lockwood to appeal the second Full Federal Court’s decision this time relating to inventive step.
The hearing took place in September 2006 and the parties were requested by the court to address it further on the issue in February 2007. The High Court (Gummow, Hayne, Callinan, Heydon and Crennan JJ) handed down its decision on 23 May 2007 unanimously allowing Lockwood’s appeal and granting various orders, including an injunction stopping Doric from continuing to deal in the infringing locks.
The second appeal judgment of the High Court provides detailed commentary on the law of inventive step in Australia and it is anticipated it will become a significant judgment in patent law in Australia.
Amongst the various findings made by the High Court were the following:
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- whether combining integers is an inventive step or not will turn on what the skilled addressee, in light of that person’s knowledge, would have regarded as technically possible in terms of mechanics and also as practical. These are matters within the knowledge of relevant witnesses and a court cannot substitute its own deduction or proposition for that objective test. The simplicity of the idea of combining integers does not make it obvious.
- Admissions can be made in a specification. However, admissions on matters of mixed fact and law, i.e. what forms part of the common general knowledge, need to be weighed with all the other evidence presented to the court.
- Secondary evidence, such as commercial success, satisfying a long felt want, the failure of others to find a solution to a problem and copying of the invention, is relevant to the determination of inventive step and Australian courts should be slow to ignore such evidence.
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The court also analyzed the operation of s7(3) of the Patents Act 1990. This section allows the prior art base for considering inventiveness to be enlarged by permitting prior art that the skilled address would have ascertained, understood and regarded as relevant to be combined with the common general knowledge.
The validity of the patent has over a series of five separate hearings been considered by seven judges of the High Court leading to two separate judgments of the High Court on two crucial requirements for a valid patent. This level of judicial scrutiny for a single patent is most likely unprecedented. The latest High Court decision can be considered generally favourable to patentees in Australia.
The matter has been referred back to the Full Federal Court to consider issues of costs, amendments to the patent, delivery up, a validity certificate and damages or an account of profits.
Lockwood was acquired by ASSA ABLOY, a listed Swedish group, in 1999. ASSA ABLOY is the global leader in door opening solutions.
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Chronology
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February 1996 - Provisional patent filed
February 1997 - Standard patent filed for Lockwood (application number 15850/97)
June 1999 - Standard patent No 702534 sealed by IP Australia
October 2000 - Doric commences proceedings in the Federal Court
December 2001 - Single judge finds for Doric
March 2003 - Full Federal Court finds for Doric on fair basis and does not consider inventive step
November 2004 - High Court finds for Lockwood on fair basis and remits to Full Federal Court to decide inventive step
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December 2005 - Full Federal Court finds for Doric
June 2006 - High Court grants leave to appeal
May 2007 - High Court finds for Lockwood |
