Patents

IPSANZ and patent amendments

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One of the interesting sessions at the IPSANZ conference was David Catterns QC and the 2 Gregs talking about amending patent specifications – before and after grant.

I certainly wouldn’t disagree with the view that, all other things being equal, you should amend before litigation rather than during (although how often are all other things equal, especially for patents in multiple jurisdictions). Australian law, at least insofar as it concerns amendments before the Commissioner, however, may be moving closer to the New Zealand situation.

The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 includes in Sch 1 at item 31 an amendment to s 102:

(2D) An amendment of a patent request or a complete specification is not allowable if it is of a kind prescribed by regulations made for the purposes of this section.

For some reason I have a (vague) recollection that this provision may be used to confer on the Commissioner through the Regs a discretion similar to that which the Court has under s 105. I am afraid I have not been able to re-locate wherever it was that I read or heard this.

Does anyone know any better or differently?

It doesn’t seem to be what the EM contemplates as the role for item 31 and one might have thought that there might be scope to expand the regulations made for the purposes of s 104 to effect that goal (if it were intended to be achieved) as it is the “narrowness” of those regulations which leads to the present situation.

One might question the constitutional desirability of putting such ‘substantive’ matters in the Regs rather than expressing them in the Act itself. However, that fight seems, sadly, to have been well and truly lost. In any event, if the introduction of such a discretion in the Commissioner be intended, it would surely be in everyone’s interests to amend the terms of s 104 itself to track the terms of s 105(1) rather than bury it away in the Regs.

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ACIP reviews innovation patents

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On 28 February, the Minister directed ACIP to report on the innovation patent system.

On 17 August, ACIP published an issues paper (pdf) and now seeks your comments by 14 October 2011.

According to the announcement of the issue paper’s release:

In recent years a variety of concerns have been raised about the innovation patent system and whether it is meeting its original objectives. A key concern is that an innovation patent is overly difficult to invalidate and the remedies for infringement are overly generous. Another concern is that innovation patents are being used to obtain a form of quick protection for higher level inventions while a standard patent is being pursued. Also, the innovation patent system has never been reviewed to assess whether it remains effective and appropriate for Australia now and in the future.

Innovation patents (which are not for business schemes) are difficult to invalidate after Dura-Post? The Full Court confirmed that the test of ‘innovative step’ does not involve a sort of obviousness penumbra over common general knowledge. Rather, the patent is innovative unless it can be shown that the difference between the patent and the prior art do not make a substantial contribution to the working of the ‘invention’. This was apparently derived from Griffin v Isaacs. As the trial judge explained with the apparent approval of Kenny and Stone JJ at [70] and [79]:

Be that as it may, the feature of what Dixon J said was the disjunctive nature of the concepts – one was ‘make no substantial contribution to the working of the thing’; the other was ‘involve no ingenuity or inventive step’. The first alternative has been taken by Parliament virtually verbatim from the judgment. The focus is upon working of the invention (as claimed) not to the degree or kind of variation from the kinds of information set out in s 7(5). In other words, the variation from the kinds of information might be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step. … In my view the provenance of the phrase ‘make no substantial contribution to the working of the invention’ indicates that ‘substantial’ in this context means ‘real’ or ‘of substance’ as contrasted with distinctions without a real difference.

Rather than a modified inventive step test, it is a modified novelty test.

The Issues Paper runs to some 28 pages.

Interestingly, just over 11,000 innovation patents have been granted and 1,790 certified.Over 80% are to Australian inventors and around half are to Australian individuals as opposed to corporations (the proportion of certifications falls to 41%). The proportion of Australian grantees vs foreign appears to be falling over time.

1,011 of the grants are divisionals from applications for standard patents. For the first few years, that was about 5% of all divisional applications, but it has been at least 10% since 2006 with a couple of years getting closer to 14%. This leads to concerns that innovation patents are being used to get ‘quick’ rights.

There are also concerns that the pharmaceutical industry is using the system to ‘evergreen’ its patent portfolios.

The questions (although ACIP would like to take this opportunity to provoke discussion generally):

  1. Effectiveness in stimulating innovation
  2. Does Australia need a utility model?
  3. Does it cost too much?
  4. Is the cost of certification dissuading people from seeking certification?
  5. How do (people in) other jurisdictions jurisdictions perceive the innovation patent?
  6. Are there concerns about the uncertainty arising from the delays in getting certification?
  7. Are the current remedies appropriate?
  8. If the available remedies are reduced (e.g. you couldn’t get an injunction) would costs of (getting) an innovation patent be justified?
  9. How do you think the use of divisionals is working (and why did you do it)?

ACIP announcement

Issues paper (pdf)

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Apple v Samsung DownUnder

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At (Foss Patents‘) last count, the war between Apple and Samsung now ranges across 4 continents and 11 different courts in 9 countries. (For the start of the war, start here.)

As of yesterday, one of those countries is Australia where, on Apple’s application for an interlocutory injunction, in return for an undertaking as to damages Samsung gave undertakings:

  1. Until the determination of this proceeding or further order of the Court, the respondents and each of them, by themselves, their servants or agents or otherwise, without admission of liability will not without the licence of the first applicant, import, promote, offer to supply, supply, offer for sale or sell in Australia the Galaxy Tab 10.1 device the subject of paragraph 3 of the affidavit of Reginald Leones affirmed 28 July 2011.
  2. Until the determination of this proceeding or further order of the Court, the respondents will on the provision of suitable confidentiality undertakings, provide to the solicitors for the applicants 3 samples of the version of the Galaxy Tab 10.1 device intended for launch in Australia at least 7 days prior to the date of intended distribution to sales channels for the purpose of review and analysis.
  3. Until the expiration of the 7 day period referred to in paragraph 2 above, without any admission of liability, the respondents and each of them, by themselves their servants or agents will not:
(a)     advertise;
(b)	seek expressions of interest from consumers in relation to;
(c)	sell;
(d)	authorise or facilitate the advertisement by third parties of; or
(e)	otherwise supply to consumers,
the device referred to in paragraph 2 above.

At least as reported in the media here, Apple’s claim doesn’t appear to be relying on trade dress but, rather, the more concrete rights conferred by patents. According to the Sydney Morning Herald, the patents in dispute are:

Standard Patents
- 2008201540: List scrolling and document translation, scaling, and rotation on a touch-screen display
- 2005246219: Multipoint touchscreen
- 2007283771: Portable electronic device for photo management
- 2009200366: List scrolling and document translation, scaling, and rotation on a touch-screen display
- 2007286532: Touch screen device, method and graphical user interface for determining commands by applying heuristics
Innovation Patents
- 2008100283: List scrolling and document translation, scaling, and rotation on a touch-screen display
- 2008100372: Electronic device for photo management
- 2009100820: Unlocking a device by performing gestures on an unlock image
- 2008100419: Unlocking a device by performing gestures on an unlock image
- 2008101171: Portable electronic device for imaged-based browsing of contacts

The Court would have required an undertaking as to damages as part of the price for awarding an interlocutory injunction pending trial if it had been pressed to decide the application.

Samsung subsequently issued a press release claiming in effect that it’s all a misunderstanding and it was never going to release the US version of its Galaxy Tab 10.1.

From the perspective of a US patent lawyer, Samsung’s position looks pretty weak. On the other hand, Patentology thinks Samsung hasn’t conceded much and has the upper hand.

Samsung is making a special version of the Galaxy Tab for Australia?

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A business method patent (not yet)

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RPL applied for an innovation patent of a method entitled ‘Method and System for Automated Collection of Evidence of Skills and Knowledge’.

The applied for innovation relates to a method for people to obtain recognition for their prior learning. Apparently, there are some 35,000 qualifications and 34,000 units in the vocational educational and training sector in Australia. Hence it can be difficult for people to identify a particular qualification which they have qualified for as there is no single point of access to the system. The applied for innovation claimed methods for using technology, particularly the internet, to automate the process of identifying relevant criteria and applying for the relevant recognition.

Claim 1 claimed:

1. A method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard, including the steps of:

  • a computer retrieving via the Internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
  • the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
  • an assessment server presenting the automatically-generated questions via the Internet to a computer of an individual requiring assessment; and
  • receiving from the individual via said individual’s computer a series of responses to the automatically generated questions, the responses including evidence of the individual’s skills, knowledge and/or experience in relation to each of the elements of competency and performance criteria,
  • wherein at least one said response includes the individual specifying one or more files stored on the individual’s computer, which are transferred to the assessment server.
Myall opposed alleging lack of novelty based on prior use. The applicant didn’t even need to file evidence to defend this allegation which failed on the evidence submitted by the opponent.
However, it appears that the delegate hearing the opposition raised the objection that the innovation claimed was not a manner of manufacture (see [62]).
The delegate noted (at [45]) that the Full Federal Court’s decision in Grant had qualified NRDC so that a manner of manufacture required
‘an artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect’
and
A physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required.
This had been further explained by the Deputy Commissioner in Invention Pathways:
I do not take [Grant] to suggest that patentability is merely determined on the presence of a physical effect. Rather it clearly must be an effect of such substance or quality that the method considered as a whole is “proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies”.
Accordingly, the Deputy Commissioner considered:
… the “concrete effect or phenomenon or manifestation or transformation” referred to must be one that is significant both in that it is concrete but also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of steps of the method in a substantial way. Consequently while the step of building a house involves a concrete physical effect it is peripheral to the method of acquiring a house and indeed could hardly be said to characterise the subject matter of the method such that it is considered an artificially created state of affairs. I consider the same to apply to a business scheme implemented in some part by computer and do not believe the patentability of such a method can arise solely from the fact that, in a general sense, it is implemented in or with the assistance of a computer or utilises some part a computer or other physical device in a incidental way.
In this case, the delegate considered at [54]:
54. It is clear that the claim relates to gathering information where the internet is used for transmitting and receiving data, and a computer is used for data retrieval, processing, presentation and storage of information in a well known manner. The process of automatically generating questions based on assessable criteria, as stated in the description, includes applying a question template into which the text of the relevant assessable criteria may be merged. In a simple form, a question may be generated from the criteria by prepending the text such as ‘How can you show evidence that’.
and so found at [55]:
55. The claimed invention defines a method for gathering information where the data retrieval, processing and storage of information appear to have no physical effect other than that would arise in the computer with standard software in conventional use. Furthermore, there is no substantial effect or transformation in generating the questions by concatenating text matters. While the internet and the computer facilitate the operation of the claimed method by retrieving, generating and conveying information, they are not central to the purpose of the claimed invention. [So unlike the loyalty card in Welcome-Catuity], the claimed invention simply monopolises a scheme where the internet and the computer are used for mere convenience for operating the scheme.
Accordingly, the delegate rejected the application in that form. However, at [59], the delegate considered there could nonetheless be patentable subject matter:
the description of the opposed patent contemplates generating the questions automatically based upon the identification of particular keywords within the assessable criteria, and upon additional contextual information obtained from Evidence Guides, Range Statements and Employability Skills associated with Qualifications and Units of Competency without requiring human intervention.
and so allowed 60 days for amendments to be brought in (the delegate also flagged a potential fair basing problem for the proposed amendment).
Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48 (link to be provided when available)
Lid dip: Patentology

			

		
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Streamlining patent applications
		

			
			
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Back in February, the Prime Ministers of Australia and New Zealand issued a statement about harmonising IP laws (and procedures) between their countries.


Today, the Minister for Innovation, Industry and Science and the New Zealand Commerce Minister issued a further statement “revealing” that:


    

  1. there will be a single application process for seeking patents in both countries from 2013; and
    2. 

  2. a single examination of the application for both countries will be introduced from 2014.
    3. 



The two countries’ patent laws will continue to be different but, when these steps are introduced, there will be an integrated application and examination process to get a patent in both countries.




According to the Australian Minister:


The savings in professional costs alone could be as high as $2,000 to $5,000 per invention — money that should and will stay in the pocket of the innovator.




Not entirely clear from the information released officially how things have progressed since February. Press Release here; Fact Sheet there (pdf).

			

		
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Scope of disclosure in an innovation patent
		

			
			
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Patentology has a nice summary of the innovation patentee’s successful appeal in Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2011] FCAFC 83.


One point: it seems like the disclosure in the body of the specification supporting the broadest claim was at a level of generality similar to that upheld by the High Court in the first round of Lockwood. Wonder how that will hold up for future application under the (proposed) Raising the Bar legislation?


Secondly, the (now) infringer’s best line of defence (apart from invalidity) seems to have turned on trying to argue (now unsuccessfully) that incorporating additional integers in the accused gutting machine to those specified in the claim. Bennett J gave it short shrift.

			

		
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Raising the bar – some differences between the Exposure draft and the Bill
		

			
			
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As noted previously, the Intellectual Property Laws (Raising the Bar) Amendments Bill was introduced earlier this week, following fairly extensive consultations on an exposure draft of the Bill.


Patentology has now looked at some of the differences in the proposed changes to the Patents Act between the exposure draft and the Bill as introduced here. His earlier post looked at the different transitional regime for the new standards for patentability.

			

		
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Will unsuccessful opponents be estopped?
		

			
			
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As noted previously, the “Raising the Bar” bill aims to change the standard of proof required for acceptance of a patent application and for successful opposition from the prevailing “practically certain” or “clear” standard to a balance of probabilities.


Currently, an unsuccessful opponent is not estopped from bringing revocation proceedings, largely because of the difference in onus applying at the opposition versus revocation stage: Genetics Institute v Kirin-Amgen at [17] and note Clinique at [13] (trade mark). At [17], the Full Court in Kirin-Amgen said:


17       During the hearing there was some discussion as to the possibility of the owner of a patent the grant of which was unsuccessfully opposed, defending a revocation proceeding instituted by the pre-grant opponent by raising an issue estoppel in respect of the findings of fact of the single judge. In the present case, however, the respondent has conceded that no issue estoppel would apply to the findings of fact of Heerey J in any revocation proceeding instituted by the applicant in respect of the patent. In any event, the difference between the issue determined by his Honour in the pre-grant opposition proceeding, and the issue that would arise for determination in any revocation proceeding instituted by the applicant, is in our view sufficient to preclude the operation of issue estoppel principles in that second proceeding. The overriding issue in the pre-grant opposition proceeding before Heerey J was whether it was practically certain that the patent to be granted on the specification would have been invalid on the ground that the content of the specification was not in accordance with the requirements of s 40 of the Patents Act 1952 (Cth) (Genetics Institute Inc v Kirin-Amgen Inc (No 3) (1998) 156 ALR 30 at 39-41). Even if revocation of the patent was subsequently sought by the applicant on the virtually identical ground of non-compliance with subs 40(2) or subs 40(3) of the current Act (see par 138(3)(f) of the Act), the issue for determination by the judge hearing that revocation application would be whether the patent should be revoked for the specification’s non-compliance with subs 40(2) or subs 40(3). The decision of Heerey J that it was not practically certain that the patent should be so revoked would be inconclusive of this issue. Accordingly, there would be no scope for the operation of an issue estoppel in relation to the decision of Heerey J in any post-grant revocation proceeding instituted by the applicant in respect of the current patent. (emphasis supplied)


What the Full Court said in the emphasised passages was obiter as the point was conceded. Given the reason why the Court accepted the concession, however, it may well be that an unsuccessful opponent will be estopped from from bringing revocation proceedings in those cases where the “practically certain” standard no longer applies.


The absence of discovery and, usually, cross-examination and, possibly, the very nature of opposition proceedings may however lead to a contrary conclusion: see the Court of Appeal’s ruling in Special Effects v L’Oreal (commentary by IPkat and Birds), albeit


(a) involving an opposition in the Registry and not the Court; and


(b) recognising the possibility that the revocation proceedings may be stayed as an abuse of process.


The fact the earlier UK proceeding was in the Registry and did not involve discovery or cross-examination could be a highly important point of distinction as cross-examination and, sometimes, discovery do occur when opposition proceedings are appealed to the Court.


When the change takes effect, prospective opponents would still be very well advised to consider carefully whether to oppose, or keep their powder dry, and, if they do oppose, do it properly right from the start. Of course, even under the current standard, a half-hearted opposition can seriously prejudice the outcome of both the opposition and subsequent revocation proceedings.


 

			

		
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The Raising the Bar Bill
		

			
			
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Senator Carr introduced the Intellectual Property Laws (Raising the Bar) Bill 2011 into Parliament today.


Press release


Download the text of the Bill and EM from here (choose your own format).


You will remember that (according to the Press Release) the main objects of the Bill include:


    

  • raising patent standards to ensure Australian innovators are well placed to take their inventions to the world;
    • 

  • increasing penalties for trade mark counterfeiters;
    • 

  • improvements to border security measures for goods that infringe copyright and trade marks;
    • 

  • providing free access to patented inventions for researchers; and
    • 

  • cutting red tape and delays when seeking an IP right.
    • 



While there have no doubt been modifications to the text of the Exposure Draft (and Patentology flags a big change to the transitional provisions for the new patentability standards), you can get a very good feel for what the various parts of the Bill are trying to achieve:


in relation to patents from Dr Summerfield’s 8 part series over at Patentology:


    

  1. Part 1: inventive standard
    2. 

  2. Part 2: usefulness
    3. 

  3. Part 3: provisional specifications
    4. 

  4. Part 4: enablement
    5. 

  5. Part 5: claims supported by description
    6. 

  6. Part 6: experimental use
    7. 

  7. Part 7: miscellanea including standard of proof
    8. 

  8. Part 8: transitional
    9. 



Kim Weatherall also commented on a number of aspects, exploring in particular the (proposed) trade mark criminal offences.


You do need to bear in mind that these commentaries were on the text of the Exposure Draft and it was intended that anomalies identified through the Exposure Draft would be corrected in the Bill so, as I have already noted, there will be changes. Nonetheless, these comments should give you a good fell for what was being intended and issues that might be thrown up.


As you will see from the commentaries on the exposure draft, there are a host of issues to be considered. Time doesn’t permit anything but a cursory attempt on a couple of points here:


Item 113 of Sch 6 will replace the current s 41 of the Trade Marks Act (requiring a trade mark to be capable of distinguishing) with a new provision intended to reverse Blount and ensure that there is a presumption that a trade mark is registrable. It does this by requiring the Registrar to be satisfied that the trade mark is not capable of distinguishing before the Registrar can reject the application on this ground.


So clause 41(2) says “A trade mark is taken not to be capable of distinguishing … only if ….”


(Now I look at it, I wonder how long before it will be before someone tries to argue that “taken not to be capable of distinguishing” means something different to (and less than) “is not capable of distinguishing”. Oh well. Surely that one would be dispatched over the fence for six?)


While the Bill does seek to change the standard of proof against patent applications and patent oppositions from the existing “practically certain to fail” or “clear” type standard to the usual “balance of probabilities (see e.g. items 14 and 15 of Sch 1), no such amendment is proposed for trade mark oppositions. Therefore, the current state of uncertainty on this issue will continue (contrast e.g. Hills v Bitek at [43] – [55] to Sports Warehouse v Fry at [26] – [40]) , even though the school of thought favouring the “practically certain” or “clear” standard was imported from the Patents Act.


The bill will also introduce a whole new regime of oppositions to the registration of trade marks.


Item 18 of Sch. 3 will replace s 52 so that there is an obligation to file a Notice of Opposition which the Registrar, not the opponent, will serve on the applicant. Item 19 will introduce a new s 52A. This will require an applicant to file a notice of intention to defend or the application will lapse.


According to the EM, the regulations (when they are promulgated) will include power for the Notice of Opposition to specify the particulars of the grounds of opposition. The EM explains:


Opponents are currently required to state the grounds on which they intend opposing an application when they file their notice of opposition. However, they are not required to set out the particulars of those grounds. Frequently, this means that the opponent sets out all possible grounds, whether or not they have any intention of relying on them. As a result, the trade mark applicant may be faced with a number of grounds to deal with and no indication of which are key to the opposition until late in the opposition proceedings and sometimes not until the hearing


makes it difficult for the applicant to prepare their case. It also increases costs as the applicant is obliged to prepare a case in response to all grounds raised in the statement of grounds, including those on which the opponent may no longer rely.


The amendment addresses this problem by allowing for regulations to be made to require the opponent to file a statement of particulars of the grounds on which they intend to oppose. This will help focus oppositions earlier, reducing costs and unnecessary effort for the applicant.


The EM talks of the regulations conferring a power to require particulars. Whether this will be a discretionary power to be exercised on a case by case basis or an obligation on all opponents will need to await the terms of the regulations themselves. For example, the EM on items 24 and 25 states that opponents will be required to file both statements of grounds and particulars and  the last paragraph of the EM on item 17 states that the particulars will be required to be filed within 1 month of the filing of the Notice of Opposition.


The regulations will also apparently include a power to amend the statement(s) of grounds and particulars. However, the EM on items 24 and 25 states:


The regulations will only permit the opponent to amend the statement of grounds and particulars under tightly controlled circumstances.


The Federal Magistrates Court will get original jurisdiction in matters under the Designs Act and the Trade Marks Act alongside its existing original jurisdiction in copyright and (what used to be called) trade practices matters.


 


 

			

		
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A problem of expert evidence
		

			
			
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VIP Plastics has successfully sued BMW Plastics for infringing its patent for a “Variable-length Dip Tube for a Fluid Transfer Container”. The most interesting point to emerge is why the expert evidence on one side prevailed and, on the other, failed – even so far as being rejected as inadmissible.


How the battle was won


As is typically the case, much of the battle turned on whether applicant’s expert evidence or the respondent’s was accepted. Kenny J denied that the respondent’s expert’s evidence was not admissible and, even if it were, would have preferred the applicant’s witnesses. The applicant’s witnesses were the named inventor and his assistant.


In construing a patent (whether for deciding its validity or if it has been infringed), it has to be read through the eyes of the (non-inventive) person skilled in the art.


Who is the person skilled in the art


Kenny J found at [20] that the relevant field or art in this case was:


the manufacture and use of dip tubes, particularly in chemical transfer drums or like containers used in the agricultural and veterinary fields.


The named inventor gave evidence about the attributes of the person skilled in this art at [21]:


these attributes included a good working understanding of the processing of plastics and the manufacture of plastic products (involving, amongst other things, an understanding of varying grades and types of plastics and manufacturing processes such as extrusion and blow, injection and vacuum moulding, as well as the economies of such processes). According to Mr Mandile, it was also necessary to have some experience and understanding of the manufacture of large plastic fluid containers (of a size more than 20 litres in volume) incorporating some sort of extraction system. Further, it was necessary to have an understanding (of the kind that a chemical engineer would have) of the environmental stress effects on plastics and the performance characteristics of varying grades of polymers under stress and when interacting with the types of chemicals solutions used in agriculture and likely to be stored in the drums. Finally, it was necessary to have some familiarity with the various products and solutions that had been tried in the industry. In Mr Mandile’s opinion, knowledge of this kind was generally confined to people working in the plastics industry, who had experience in the design and processing of plastic containers of larger sizes and the manufacture of plastic packaging and transfer of chemical fluid to and from such packaging. In cross-examination, Mr Mandile stated that he regarded himself as a person skilled in working in the field of dip tubes for agricultural and horticultural purposes.


Kenny J noted that Aickin J had accepted that evidence about the experiments undertaken by an inventor leading up to the invention could be relevant even if “not always likely to be helpful”. As a result, Kenny J considered at [22] that the inventor could also give evidence about the characteristics of a the person skilled in the relevant art, albeit such evidence needed to be assessed carefully. On the other hand, the respondent contended that “just about any engineer with a basic knowledge of manufacturing techniques and a basic knowledge of mechanics of devices could be classified as a skilled addressee”. Kenny J rejected this on the evidence.


Accordingly, her Honour accepted at [23] that:


the skilled addressee is a person with practical knowledge of and experience in the manufacture of plastic products, particularly large fluid containers incorporating some kind of extraction system. That is, such a person would have practical knowledge and experience in the manufacture of plastic packaging for the storage of fluid and the transfer of such fluid from the packaging. Such a person would also have an understanding of the environmental stress effects on plastics.


Why the professor was not a psa


There were a number of problems why Kenny J considered that the evidence of the professor advanced by the respondent was not relevant (and so not admissible). The chief reason was that he had no relevant or special expertise and was unable to give evidence about what those in the art would know or do.


Section 76 of the Evidence Act generally rules opinion evidence inadmissible. One important exception is provided by s 79 for “expert” opinion (about a relevant issue). The opinion is “expert” for this exception where it is evidence from a person if the person “has specialised knowledge based on the person’s training, study or experience” and the opinion “is wholly or substantially based on that knowledge” (emphasis supplied).


In this case (and will not necessarily be true in every case), the professor had worked in the wool industry “for 10 years in the 1980s” and, since then, he had “mainly been an academic, teaching in the area and consulting in minor ways for engineering” when the priority date for the patent was in 2000. Then at [60]:


Of course, in a case such as this, a court may receive expert evidence from persons other than skilled addressees if it is otherwise relevant. There was, however, a serious difficulty with [the professor’s] evidence in another respect: it was not just that he was not a skilled addressee but that he had no history of working in the fields of dip tubes or plastics, or some related field. Without this specialised knowledge, based on training, study or experience, [the professor] was not in a position to give relevant evidence to the court bearing on the meaning of the VIP Patent or a prior publication, the issue of novelty and the issue of obviousness:


Then, so far as the professor gave evidence about the innovation process based on his specialised knowledge, it was not knowledge relevant to the art in question.


There were other problems too: opinions were expressed about questions of mixed fact and law – e.g. it was obvious – based on misunderstanding of key legal concepts; there was also a problem of hindsight.


The use of relative terms


The infringer’s attack on the patent as lacking clarity because it used relative terms such as “inhibits bending” and “just below the end” were dismissed. Kenny J accepted that they were not precise, but found they applied Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95 to find they provided a workable standard.


VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd [2011] FCA 660


An earlier round in the dispute where Kenny J refused to refer the matter to the Commissioner by a direction under s 97(3) of the Patents Act.

			

		
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