Patentee Blindsided By Partially Uncorroborated Evidence

by FPA Patent Attorneys
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Evidence of what occurred over 15 years ago was ultimately accepted despite being only partially corroborated. As a result, many of the claims from Damorgold’s patent have been held invalid for lack of novelty based on that prior use. Here, we summarise the key points of this case.

Damorgold Pty Ltd v JAI Products Pty Ltd [2014] FCA 1501

Background Facts

The first applicant, Damorgold Pty Ltd, is the owner of AU patent 760547 for a spring assisted blind mechanism. The patent has a priority date of 25 August 1999 and was published 22 March 2001. The second applicant, Vertilux Corporation Pty Ltd is a licensee of the patent and both applicants will be referred to jointly as ‘Damorgold’.

From July 2007, JAI offered for sale, sold and supplied several models of roller blind spring assist mechanisms in Australia. The JAI spring assists are used with other components to form a mechanism for extending and retracting roller blinds. These components were advertised and offered for sale on the JAI website. JAI admits that this was the only reasonable use of the JAI spring assist mechanisms and that customers who purchased them were likely to use them in that way.

Infringement

Damorgold alleged that the respondent, JAI Products Pty Ltd (‘JAI’), infringed the patent by offering to sell and selling components of a roller blind system. Damorgold did not allege that JAI infringed by making or selling a whole product but alleged that JAI infringed through contributory infringement. 

From expert evidence, the JAI roller blind system was considered to embody all of the integers in almost all of the claims from the Damorgold patent. Based on section 117 of the Patents Act 1990 and established common law principles discussed in Ramset Fasteners2 and Roadshow Films3 for example, Middleton J concluded that if the evidence of the experts was accepted, then JAI would have infringed the patent as a result of:

  1. JAI’s advertising and promotion of its spring assists; 
  2. the nature and design of the JAI spring assist mechanisms which meant that there was only one reasonable use (which was not contested by JAI); and
  3. the supply of such spring assists to customers.

Cross-claim of invalidity

JAI alleged that the invention claimed in the Damorgold patent was invalid for lack of novelty and that it was not a manner of manufacture. It was asserted that the invention was a mere collocation and that certain claims lacked ‘any desirable functional result’. The cross-claim of invalidity on the ground of not being a manner of manufacture failed and we will not discuss this further.

In claiming that the patent was not novel, JAI relied on prior use and several prior art disclosures - a sales catalogue, a drawing and a patent.

RolaShades product

JAI led evidence from a director of JAI, Mr Horner, and a former employee, Ms Payne, that JAI had imported several RolaShades products before the priority date, and offered these for sale, displayed them in a showroom and included them in a catalogue in late 1996. The RolaShades products were alleged to include the essential integers of the claimed invention. 

Although Mr Horner had a direct interest in the outcome of the proceedings, and did not produce any contemporaneous documentation to support JAI’s claims, his evidence of what had occurred 15 years prior to his affidavit was ultimately accepted by the Court.4 The evidence given by Ms Payne on behalf of JAI partially corroborated the evidence given by Mr Horner. Ms Payne gave evidence that the RolaShades product was imported by JAI in 1996, and that the product imported did embody the relevant features. His Honour found Ms Payne to be a credible witness, and that she “had no desire or motive to help out her long term former employer”.5  The availability of the RolaShades products before the priority date was also partially corroborated by a third witness, Mr Jackson, despite some “vagueness and lack of detail.” 

Interestingly, although Middleton J held that the evidence of JAI’s witnesses did not establish precisely when the disclosure occurred, his Honour was satisfied that there was a disclosure and that it did occur before the priority date.  

There was no evidence that any RolaShades products were actually sold or provided to anyone, however, Middleton J accepted that the product was demonstrated and available for sale.6  It was found that each customer had the opportunity to inspect and dis-assemble the product while it was on display, and that a person skilled in the art would have observed sufficient to enable them to comprehend the complete invention without further experimentation. 

Middleton J also distinguished the present situation from other cases as physical examples of the allegedly novelty destroying product were available at the time of the hearing and evidence was not restricted to photos or witnesses’ recollections.7  This may have been of particular importance, given the large number of integers identified in the claims.8

As a result, many of the claims were held to be invalid.

Catalogue and drawing

JAI also contended that there was prior disclosure in a sales catalogue. However, as the internal components could not be seen, the Court held that all of the integers had not been disclosed. Similarly for the RolaShades drawing, it was held that “the skilled addressee could not ‘at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments’ and that no version of the RolaShades drawing itself provides ‘clear and unmistakable directions’ to carry out the claimed invention”.9

Prior patent 

Damorgold’s expert gave evidence that only two device combinations were disclosed in the prior patent, neither of which disclosed all the essential integers of the claimed invention. 

JAI led expert evidence that the prior patent also disclosed other combinations which did disclose the missing integers. However Middleton J found that JAI’s expert had been influenced by hindsight and familiarity with the patent, and the evidence of Damorgold’s expert was preferred. The prior patent was held not to anticipate any claim of the patent.

Conclusion

Middleton J held that many claims were anticipated by the prior use of the RolaShades product. This judgment shows that under certain circumstances it is possible to prove a novelty defeating prior use by relying on witness accounts, without any contemporaneous documentation, and without establishing exact dates.

Several claims were, however, upheld as valid and JAI was held to have infringed two of these claims. The Court is yet to determine the consequences of JAI’s liability to Damorgold in respect of the infringement.  

1  Damorgold Pty Ltd v JAI Products Pty Ltd [2014] FCA 150 ('Damorgold').

2  Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd [1999] FCA 898.

3  Roadshow Films Pty Ltd v iiNet Limited [2012] HCA 16.

4  Damorgold, above n 1 [123], [124] and [129].

5  Ibid [141].

6  Ibid [149].

7  Ibid [148].

8  Claim 1 was characterised by 27 integers.

9  Ibid [172].

This article was written by Matthew Lay and Greg Noonan of Freehills Patent Attorneys; Mark McLennan, Solicitor and Patrick Sands, Special Counsel of Herbert Smith Freehills.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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