When does prior public use of an invention become novelty destroying?

The recent decision of the Federal Court of Australia in Damorgold Pty Ltd v JAI Products Pty Ltd [2014] FCA 150 has provided some useful guidance as to when prior public use of an invention constitutes prior art for the purposes of assessing the novelty and inventiveness of a patented invention. The decision also sets a relatively low evidentiary standard for proving prior public use by a party seeking to invalidate a patent.

The patentee Damorgold Pty Ltd (‘Damorgold’) sued JAI Products Pty Ltd (‘JAI’) for infringement of their Australian patent no. 760547. The patented invention was a roller-blind control mechanism whereby the user could manually raise and lower the blind, such as with a manually operated chain drive mechanism, and wherein an internal clutch and spring assist mechanism would render the blind easier to lower and to raise.

The Court found, without much difficulty, that JAI had sold a product in Australia that infringed many of the claims of the patent. Accordingly, the case turned primarily on whether the claims, that were infringed, were invalid for lack of novelty.

Section 7 of the Patents Act provides that assessing whether or not a claimed invention is novel (and involves an inventive step) involves a comparison of the claimed invention against prior art information ‘made publically available’ in a document or through doing an act (i.e. use) before the priority date of the claimed invention. The ‘prior art base’ against which ‘novelty’ of the patent in suit was to be assessed included information disclosed in a document made publicly available anywhere in the world or information made publicly available by the doing of an act (i.e. use) in Australia.

In the present case, the alleged infringer put forward evidence that before the priority date of the patent, they had imported into Australia a product referred to as the ‘RollaShades’ product that embodied the claimed invention. They had also offered the product for sale by displaying the product in a showroom and listed it in a catalogue. The alleged infringer led evidence from two of their employees that in or about 1996, around 6 to 10 RollaShades products were purchased from overseas and were delivered to their offices in Australia. Upon receipt of the RollaShades products, they were assembled into complete blinds which were then mounted for display. Further evidence from the witnesses included that the products on display were demonstrated to potential customers both in the mounted form (i.e. enclosed within the blinds) and separately. Evidence was also led that the RollaShades product was included in JAI Pty Ltd’s 1996 catalogue and that these catalogues were mailed to approximately 200 of their Australian clients and handed out to customers.

The patentee Damorgold argued that the evidence of the witnesses regarding prior public use of the RollaShades products should not be accepted as it was not corroborated by any documentary evidence and was based purely on recollections of the witnesses. In any event, the patentee argued, even if the evidence was to be accepted the information that was said to destroy the novelty of the claimed invention had not been made ‘publicly available’. The patentee relied on authorities which provided that for an allegation of prior public use of an invention to be successful in attacking the novelty of an invention, any evidence that is not corroborated, such as with documentary evidence, ‘is undoubtedly suspect and should be scrutinized with particular care’.

Damorgold argued that JAI had not provided any documentary evidence in support of their contentions such as documentation in relation to the purchase of the RollaShades blinds from overseas, customs or shipping documentation or any copies of the 1996 catalogue. Furthermore, JAI did not lead any evidence by any independent witnesses who could verify any of JAI Pty Ltd’s evidence. Furthermore, one of JAI Pty Ltd’s witnesses was a director and beneficial owner of part of the business and the other witness was a former employee.

Nevertheless, the Court found the witness evidence to be credible and, as such, made findings of fact in favour of the alleged infringer, namely that the RollaShades products were brought into Australia before the priority date of the claimed invention, were displayed and shown to customers as described by the witnesses and were shown in a catalogue in 1996 (i.e. before the priority date of the claimed invention).

There was no evidence that any of the RollaShades products were actually sold by JAIor that any samples were actually given to anyone to retain. The Court considered that the real issue in the proceeding was whether, based upon the circumstances, the showing of the RollaShades product in Australia to some potential customers with a view to making it available for sell amounted to making the RollaShades product ‘publically available’. The Court found that the display of the RollaShades product and the description of how it worked to customers, although not displaying the internal componentry of the system, was sufficient to make it ‘publically available’.

The Court found that it would have been relatively easy for someone to pull apart the RollaShades products and that customers would have a general idea of how the mechanism worked upon observing the RollaShades product in use. Although no evidence that the RollaShades products were supplied to customers to hold or that any customers disassembled the product to examine its mechanical workings, the Court found that the act of displaying the RollaShades product to various customers, with a view to offering them for sale, amounted to making the RollaShades product ‘publically available’.

The Court further stated that ‘it does not matter that only a few, or perhaps only one, potential customer was approached and had the opportunity to examine the RollaShades product. It does not matter that the RollaShades product was not actually disassembled. Each potential customer… had the opportunity of a complete examination of the internal componentry of the RollaShades product’. Furthermore, ‘it is of no importance that no actual sale took place… That conduct of displaying and offering for sale the RollaShades product…. made available the necessary information to find anticipation’.

Accordingly, the Court found that although many of the claims of the patent were infringed by JAIa number of those infringing claims were found to be invalid for lack of novelty. Fortunately for the patentee, some of the claims were found to be novel and infringed.

The Decision

This decision provides useful guidance in relation to the practical considerations of what constitutes prior public use of a claimed invention that may render an invention lacking novelty and/or an inventive step. The decision affirms the principal that prior public use of an invention need not involve an explicit disclosure of all of the integers of the invention for it to deprive the invention of novelty and/or an inventive step.

Notwithstanding the 12 month ‘grace period’ which, in certain circumstances, excludes prior self-disclosure from invalidating an Australian patent this decision serves as a reminder for inventors against publicly disclosing their inventions before filing a patent application even if the inner workings of the invention are kept hidden. If an expert in the relevant field of technology could perceive, understand and practically apply the invention and make inferences about the likely inner workings of the invention from a public display of the invention then this would be enough to destroy the novelty of the invention.

The Court’s reliance in this case on uncorroborated evidence of alleged prior public use of an invention is surprising and would seem to be setting a relatively low standard of proof for future patent revocation proceedings. Whilst acknowledging the inherent difficulties associated with proving the occurrence of events, such as public use of an invention, many years after the fact previous decisions of the Courts have stressed that any such evidence should be corroborated. Accordingly, it may be best to consider the present case as an anomaly and to assume that the Courts will not take such a generous approach to uncorroborated witness evidence in future cases.



For more information on this issue, please contact Daniel McKinley on daniel.mckinley@pof.com.au