The Federal Court has delivered judgment in DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd  FCA 132 (28 February 2013), a patent case where the Court found that the relevant claims of the patent lacked an inventive step in which Spruson & Ferguson successfully represented the applicant.
Briefly put, the case concerned infringement of a patent over an apparatus and method for the manufacture of multi-strand rock bolts, formed with spaced apart bulbs. The bolts are used as a support structure in mines. The bulbs along the bolt allow it to wedge into a bore hole, which is then filled with grout. The invention disclosed by the patent allowed for the creation of long lengths of the cable, which wound around reels, and which periodically stopped at the second reel to allow ‘coaxial compression’ to create the bulbs.
It was asserted by Garford, the patent owner, that DSI had infringed this patent by production of a similar apparatus, albeit with certain differences. DSI challenged the validity of the patent on various grounds and while each was dealt with by the court, the decision turned principally on lack of inventive step.
As to infringement, the court was of the opinion that the DSI apparatus did infringe the relevant claims of the Garford patent. Amongst other things, it was asserted by DSI that the infringement could not be sustained by a “substantially new and different combination” of which its machine was an example. However this was rejected by the Court, as the modern approach to construction of patents places greater emphasis on the essential features of the invention, and whether they are present in the infringing apparatus.
On the question of novelty, DSI asserted there were three pieces of prior art that destroyed novelty. One of those (a whole of contents citation) was found to invalidate certain of the claims of the patent as it contained a “real and reasonably clear disclosure in the body of the specification of the invention that is notionally claimed”.
However, the case was primarily decided on lack of inventive step. The DSI parties asserted that, in light of the common general knowledge, that the invention would have been obvious to a person skilled in the relevant art as it existed before the priority date of the relevant claims.
The evidence variously spoke to what would have been in the common general knowledge as at 1999. However, in addition to this evidence, an expert witness (Dr Fuller) was asked to independently design an apparatus to manufacture bulbed cable for use as rock bolts in continuous form suitable for loading onto a reel (as he would have done in 1999). Dr Fuller designed (in a two-dimensional drawing) a basic combination of standard manufacturing equipment components, to come up with an apparatus that was very much like the invention claimed by the patent.
This evidence, together with the other evidence on the common general knowledge, was sufficient for the Court to find that the “scintilla of invention” had not been met. Garford asserted that the evidence given by Dr Fuller was lacking, as several features of his design did not share the same features as the patented invention. The court held however that the fact that Dr Fuller did not replicate the “precise mechanical feature referred to in the claims does not mean that the presence of that feature in the claims provides an inventive step that is otherwise missing”.
In light of this evidence, the court found that the patented invention was obvious and did not involve an inventive step. The court also discussed principles surrounding secret use, manner of manufacture, and patent construction.
The case is noteworthy, as it involved the rare circumstance where the inventiveness of the patent was successfully challenged with the significant assistance of expert testimony.