29 July 2011

Re-examination Limits Rights to Flexible Roadside Posts

Delnorth Pty Ltd [2011] APO 55 (27 July 2011)

Re-examination – initiated by Commissioner following withdrawal of opponent – whether prior art documents would have been ascertained, understood and regarded as relevant by a person skilled in the art – whether claims involve an inventive step – partial revocation of patent

In what may be the final chapter in a long-running saga – which has, incidentally, provided essential guidance regarding the ‘innovative step’ standard applicable to innovation patents – Hearing Officer Xavier Gisz has issued a decision revoking 26 out of 36 claims of Australian patent no. 2004249786, in the name of Delnorth Pty Ltd.

The patent relates to a flexible roadside post made of spring steel.  Such posts are generally of the type having reflective strips, and installed alongside a road to provide guidance to motorists, particularly at night, as to the varying contours and directions of approaching sections of road.  Wayward vehicles occasionally impact with these posts, and it is therefore beneficial that they be resilient, as well as robust in the presence of harsh environmental conditions.  It is also advantageous that roadside posts should be installable with a minimum of manual labour, particularly in a country the size of Australia.

The Delnorth posts are designed to satisfy these requirements.  This design was presumably effective, because it was imitated by a competitor, Dura-Post (Aust) Pty Ltd, resulting in an extended dispute regarding the infringement and validity of various patent applications, and innovation patents, which seemingly ended only when Dura-Post was placed into receivership – an event no doubt due in no small part to Delnorth’s successful enforcement of its patent rights. 

Ultimately, Delnorth has been largely successful in excluding the Dura-Post competitor and in defending its patent rights, although with some reduction in scope as a result of this decision.  Whether this has been worth the time, energy and expense involved is a question that only Delnorth could answer.  We can only assume that the market for flexible and durable roadside posts in Australia is extremely lucrative!

BACKGROUND

Australian patent application no. 2004249786 is derived from international application no. PCT/AU2004/000772, filed on 10 June 2004 and claiming priority from provisional application 2003903188 filed on 23 June 2003.

The application was advertised as accepted on 5 January 2006.

In parallel, four innovation patents were divided from the application, three of which (nos. 2005100978, 2006100297, 2006100696) were the subject of court action in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225, the outcome of which was that claims 1 and 2 of 2006100297 and 2006100696 were found to lack an innovative step, while various valid claims were found to have been infringed.  The decision was upheld on appeal by the Full Court of the Federal Court of Australia in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81.

Dura-Post opposed the grant of a patent on application no. 2004249786, and the opposition was ultimately heard in Canberra on 21 August 2008.  The decision issued in the opposition found that all claims were clear, fairly based, novel and directed to a manner of manufacture, but did not involve an inventive step over prior disclosure in patent documents, together with a product brochure and common general knowledge in the art before the priority date (Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2009] APO 6).

Soon after the opposition decision was issued, Dura-Post was placed in receivership and withdrew its objections to the application.  Delnorth appealed the decision to the Federal Court and requested that the Court order that the application proceed to grant.  Because there was no opponent to the appeal the Court made these orders in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (Administrator Appointed) [2010] FCA 465 (see Well-Known Innovation Patent Takes the Next Step... Just!).  The orders set aside the Commissioner’s decision and consequently the patent was granted on 27 May 2010.

On 28 May 2010 the Commissioner informed the Patentee that the patent would be re-examined on the basis of compelling prior art raised in the opposition.  In a re-examination report issued on 29 July 2010, the examiner found that all claims lacked an inventive step.  Following further examination reports, and amendments proposed by Delnorth, objections based on lack of inventive step remained outstanding, and the Commissioner advised Delnorth of her intention  to decide the outcome of the re-examination, and provided it with an opportunity to be heard by way of written submissions.  No submissions were made.

The present decision is the final outcome of the re-examination before the Patent Office.

BASIS FOR THE DECISION

In our view, the most interesting aspect of this decision is the very substantial amount of evidence available to the Hearing Officer as a result of the litigation between Delnorth and Dura-Post.  Additionally, while the Federal Court decisions related to the innovation patents, and therefore are not binding upon the Patent Office in relation to an assessment of inventive step, they nonetheless  provide a great deal of guidance regarding matters such as the correct interpretation of various terms appearing in the specification and claims.

The prior art documents considered pertinent to inventive step consisted of four US patents.  Section 7(3) of the Patents Act 1990 requires, in order that a document be available for consideration in relation to inventive step, that the person skilled in the art could reasonably be expected to have ascertained, understood, and regarded the document as relevant.  An examiner within the Patent Office will often lack the necessary evidence to establish the common practices of persons skilled in a particular field, and in some areas of endeavour it may not be reasonable to conclude that the skilled person would routinely consult (i.e. ‘ascertain’) the patent literature (see, e.g., Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26, in which ‘it could not be reasonably expected that a Rugby League or Australian Rules coach, referee, umpire or administrator would conduct a search in the United States patent office’).

In this case, the evidence available as a result of the court proceedings established that the US patent documents would have been ascertained by the skilled person (at [41]-[44]):

In contrast to the Emperor Sports case where there was no evidence that persons skilled in the art reviewed the patent literature, in this case there is evidence that some people skilled in the art reviewed patent literature while others did not.

In the Emperor Sports case the person skilled in the art was considered to be a relatively ‘non-technical’ person such as a referee, coach or umpire whereas in the present case the person skilled in the art has been determined to be an engineer.  I consider it reasonable to expect that an engineer would review patent literature in seeking existing solutions to a particular problem since patents are widely known to be a comprehensive source of technical information.

Furthermore, the evidence … suggests that roadside posts have a reasonable level of associated patenting ‘activity’ thus these patents should provide a good source of information about the state of the art in this field. Consequently a person skilled in the art would have further impetus to review the patent literature for relevant information.

On balance I find that a person skilled in the art could have been reasonably expected to review patent literature at the priority date of the invention.

OUTCOME

The Hearing Officer found claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 of the Delnorth patent to be lacking inventive step in light of two of the four prior art US patents.

The inventive features of the surviving claims may be summarised as follows:
  1. claims 11, 12, 22 and 23: the post having a rigid base adapted to be driven into the ground;
  2. claims 29 and 31: the post having a base that is affixed to one side;
  3. claim 30: the post including longitudinal ‘concertina-type’ ribs; and
  4. claims 33, 34 and 35: the post having longitudinal ribbing, wherein each rib has an apex and adjacent ribs separated by a trough.
As the Hearing Officer concluded (at [100]):

Where an adverse finding is made in a re-examination Section 101 of the Act allows for the patent to be revoked either wholly or so far as it relates to a particular claim.  It is appropriate that all claims that have been found to be invalid due to lack of an inventive step are revoked.

COMMENT

It is perhaps curious that after such a long battle maintaining and enforcing its patent rights, Delnorth elected not to make further submissions in support of the patent when invited to do so.

We note, however, that Delnorth is the proprietor of a corresponding US patent no. 7,585,127, the broadest claim of which is of comparable scope to claim 33 of the Australian patent, i.e. including the feature of ‘longitudinal ribbing, wherein each rib has an apex and adjacent ribs separated by a trough’.  A number of alternative combinations of novel features have also survived re-examination in Australia. 

Delnorth may therefore have felt sufficiently confident that some commercially useful claims would be found valid, without the need for further submissions.

As a final observation, assuming all annual maintenance fees are paid, Delnorth’s innovation patents will remain in force until 10 June 2012, while the surviving claims of the standard patent have a potential final expiry date of 10 June 2024.  We therefore cannot assume that the Federal Court has heard the last of Delnorth, although the fate of Dura-Post suggests that only the most courageous competitor would ignore a cease-and-desist letter from Delnorth!

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