Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225

Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225

Delnorth Pty Ltd (“Delnorth”) issued proceedings against Dura-Post (Aust) Pty Ltd (“Dura-Post”) for infringement of three of their innovation patents directed to a flexible steel post for lining of roadsides, paths and boundaries (known as the “Steel Flex” post).  Dura-Post had been manufacturing and offering for sale a flexible steel post known as the “Flexi-Steel” post. 

Dura-Post counter-claimed for revocation, on the basis that all three innovation patents were invalid for lack of fair basis, novelty, innovative step, clarity, utility and that the inventions claimed did not constitute a manner of manufacture.

Infringement

The judge, Gyles J, found that the issue of infringement turned on the question of whether or not the Flexi-Steel post was “elastically bendable through 90^o from an unbent state”.  That is, the post is capable of returning to its original position after being bent by, for example, impact from vehicles.  His honour highlighted that the objective of the invention as stated in the specification was not to have a perfect result in which no visible permanent deformation occurred (such as folding or creasing).  Rather, the only requirement was that the post be effective in exhibiting elastic properties such that it would return to its original position after impact.  The elastic bendability of the Flexi-Steel post was shown to be adequate to allow the post to return to its original position within a reasonable time, and was therefore found to infringe claim 1 of all three innovation patents.

Validity

The case for validity of each of the innovation patents turned on the determination whether or not the invention as claimed contained an innovative step, as Dura-Post was unsuccessful in establishing lack of novelty, clarity, fair basis, utility and manner of manufacture.  

Innovative step is defined in the Patents Act 1990, which states at Section 7(4):

For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would...make no substantial contribution to the working of the invention.

This differs from the concept of “inventive” step for standard patents in that it does not require that an invention not be obvious to a person skilled in the area.  Rather, the requirement is that the advance over the prior art must constitute a substantial contribution to the working of the invention.  The issue of whether or not the advance would have been obvious to a skilled person is, Gyles J noted, irrelevant for the purposes of innovative step.

In determining whether or not an invention contained an innovative step His Honour stated:

“The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences.  The next step is to look at those differences through the eyes of a person skilled in the relevant art...and ask whether the invention as claimed only varies...in ways that make no substantial contribution to the working of the invention.”

What then constitutes a “substantial” contribution to the working of the invention?  His Honour stated that in some situations “substantial” may mean “great” or “weighty”.  However, in other cases it could simply mean “more than insubstantial”.  That is, the degree of variation from the prior art is largely irrelevant, provided the contribution to the working of the invention is significant. 

In comparing the invention as claimed with known PVC posts, His Honour highlighted that the issue is not whether flexible sheet steel is better than PVC, the issue is whether flexible sheet steel was considered to make a substantial contribution to the working of the invention.  His Honour concluded that the use of flexible sheet steel contributed directly to the way the invention performs and therefore constituted an innovative step. 

When comparing the invention to the disclosure of US Patent 3312156 (“the US Patent”), His Honour found that the invention claimed in Innovation Patent #2 did not provide a substantial contribution to the working of the invention over what was disclosed in the US Patent.  Specifically, the US Patent disclosed a road marking device which is attached to or on the surface of a roadway to signal the location of traffic lines, and which is flexible upon impact from vehicles travelling along the roadway.  The US Patent also disclosed the use of “resilient sheet material, such as thin spring steel” for this purpose. 

The invention as claimed in Innovation Patent #3, which included the integer of a surface coating, also did not satisfy the innovative step requirement.  His Honour clarified that he was not suggesting the surface coating did not have a functional purpose, rather, it did not provide a contribution that was significant enough to constitute and innovative step.

However, Innovation Patent #1 included the integer of a [depth] marker (in the form of a hole, barb or taper).  His Honour agreed that the marker provided a real contribution to the working of the invention as “the embedding of the post in the ground is a significant aspect of the operation of a roadside post and the marker hole undoubtedly assists in that regard”.

Conclusions

His Honour concluded that infringement of Innovation Patent #1 was established, but that Dura-Post’s counter-claim of invalidity in respect of claims 1 and 2 of Innovation Patents #2 and #3 had been made out.

Implications

This case provides some clarity with regard to what may, or may not, constitute an innovative step.  It has clearly established that the contribution need not be “great” when compared with the prior art base, although it must be significant enough to contribute to the working of the invention.  Whether or not the advance is obvious is irrelevant.

However, as with inventive step considerations for standard patents, the determination of what constitutes a “substantial” contribution to the working of the invention is subject to interpretation and will be heavily reliant on evidence put forward by and on behalf of the parties involved.

Innovation patents can be granted and certified much more quickly than standard patents (often within 6 months).  As in this circumstance, an innovation patent can be filed as a divisional of a standard patent application (thereby retaining the same priority date) before the standard patent application proceeds to grant.  This case has also shown that the use of innovation patents, to obtain quick grant and certification in order to pursue infringing parties, is a valid strategy.  However, it must be emphasised that, in light of the fact that innovation patents are granted without examination, an innovation patent must be examined and certified before infringement proceedings can be issued or threatened against a party.  Failure to obtain certification of a granted innovation patent prior to this can leave the patentee vulnerable to an action on the basis of “unjustified threats”. 

It is advisable that patentees consult their patent attorneys to determine the best strategy for their commercial needs and before taking any action against suspected infringers.

Author: Cherie van Wensveen

Patent and Trade Marks Attorney

cheriev@wrays.com.au