Firebelt Pty Ltd v Brambles Australia Ltd & Ors [2000] FCA 1689

FEDERAL COURT OF AUSTRALIA

Firebelt Pty Ltd v Brambles Australia Ltd & Ors [2000] FCA 1689

INTELLECTUAL PROPERTY – patents – inventive step – where invention claimed constituted a combination of well-known integers – consideration of test for inventive step, and distinction from test for novelty – consideration of extent to which prohibition of 'mosaicing', of various pieces of documentary or other prior disclosures for the purpose of determining common general knowledge, is relaxed by s 7 of the Patents Act 1990 – whether, having regard to prior disclosures and common general knowledge of a non-inventive skilled worker in the field, combination of known integers constituting the claimed invention was obvious INTELLECTUAL PROPERTY – patents - whether complete specification discloses "best method known to the applicant of performing the invention", pursuant to s 40(2) of the Patents Act 1990 – consideration of the nature and purpose of 'best method' requirement, and importance of its limitation to the invention itself Patents Act 1990, ss 7, 18, 40, 138, 162, 163; schedule 1 Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 - applied Tidy Tea v Unilever (1995) 32 IPR 405 - cited Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 - cited Vidal Dyes Syndicate Ld v Levenstein Ld (1912) 29 RPC 245 – applied Blanco White, T.A., Patents for Inventions,4th ed, 1974

FIREBELT PTY LIMITED (ACN 054 417 739) v BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY (ACN 000 164 938) and COOLOOLA SHIRE COUNCIL Q 190 OF 1999 SPENDER, DRUMMOND, MANSFIELD JJ 22 NOVEMBER 2000 BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY Q 190 of 1999

On Appeal from the Orders of a single Judge of the Court

BY ORIGINAL ACTION

BETWEEN: FIREBELT PTY LIMITED (ACN 054 417 739)

APPELLANT

AND: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY (ACN 000 164 938)

AND: FIRST RESPONDENT

COOLOOLA SHIRE COUNCIL

SECOND RESPONDENT

BY CROSS-CLAIM

BETWEEN: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY (ACN 000 164 938)

AND: THIRD RESPONDENT/CROSS-CLAIMANT

FIREBELT PTY LIMITED (ACN 054 417 739)

APPELLANT/CROSS-RESPONDENT

BY FURTHER CROSS-CLAIM

BETWEEN: FIREBELT PTY LIMITED (ACN 054 417 739)

AND: APPELLANT/SECOND CROSS-CLAIMANT

AND: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY (ACN 000 164 938)

AND: FOURTH RESPONDENT/SECOND CROSS-RESPONDENT

COOLOOLA SHIRE COUNCIL

FIFTH RESPONDENT/THIRD CROSS-RESPONDENT

STATE OF QUEENSLAND

SIXTH RESPONDENT/FOURTH CROSS-RESPONDENT

JUDGE: SPENDER, DRUMMOND, MANSFIELD JJ

DATE OF ORDER: 22 NOVEMBER 2000

WHERE MADE: BRISBANE

THE COURT ORDERS THAT:

1. The appeal be dismissed.

2. The appellant pay the respondent's costs of and incidental to the appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY Q 190 of 1999

On Appeal from the Orders of a single Judge of the Court

BY ORIGINAL ACTION

BETWEEN: FIREBELT PTY LIMITED (ACN 054 417 739)

APPELLANT

AND: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY (ACN 000 164 938)

AND: FIRST RESPONDENT

COOLOOLA SHIRE COUNCIL

SECOND RESPONDENT

BY CROSS-CLAIM

BETWEEN: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY (ACN 000 164 938)

AND: THIRD RESPONDENT/CROSS-CLAIMANT

FIREBELT PTY LIMITED (CAN 054 417 739)

APPELLANT/CROSS-RESPONDENT BY FURTHER CROSS-CLAIM

BETWEEN: FIREBELT PTY LIMITED (ACN 054 417 739)

AND: APPELLANT/SECOND CROSS-CLAIMANT

AND: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY (ACN 000 164 938)

AND: FOURTH RESPONDENT/SECOND CROSS-RESPONDENT

COOLOOLA SHIRE COUNCIL

FIFTH RESPONDENT/THIRD CROSS-RESPONDENT

STATE OF QUEENSLAND

SIXTH RESPONDENT/FOURTH CROSS-RESPONDENT

JUDGE: SPENDER, DRUMMOND, MANSFIELD JJ

DATE: 22 NOVEMBER 2000

PLACE: BRISBANE

REASONS FOR JUDGMENT

THE COURT: 1 This is an appeal from orders made by a single judge of this Court (Dowsett J) on 10 June 1999 in proceedings involving an invention which is the subject of Australian Letters Patent No 657082. The patentee is Firebelt Pty Ltd (Firebelt). The description in the provisional specification for the invention is: "This invention relates to a refuse vehicle and in particular, to a side loading refuse vehicle and more particularly, but not limited to, an automated side-loading refuse vehicle for simultaneous collection, but separate storage of garbage and/or recyclable wastes in the one vehicle." 2 Firebelt brought proceedings QG 92 of 1995 against Brambles Australia Limited trading as Cleanaway (Brambles), and Cooloola Shire Council alleging infringement of the petty patent. That application was filed on 22 June 1995. By a defence and further amended cross-claim filed 16 November 1998, Brambles denied infringement, and by the cross-claim alleged that the invention defined in claims 1, 2 and 3 of the petty patent is not a patentable invention within the meaning of s 138(3) of the Patents Act 1990 (the Act). Five grounds were alleged: want of novelty, want of inventive step, that the invention was not a manner of manufacture within s 18(1)(a) of the Act, that the specification did not comply with ss 40(2) and (3) of the Act, and the invention was not useful within the meaning of s 18(1)(c) of the Act. In the cross-claim, Brambles sought, inter alia, revocation of the petty patent. Brambles, in its defence in that document, alleged that the Cooloola Shire Council was and is an authority of the State of Queensland within the meaning of s 162 of the Act, and if the invention the subject of the petty patent has been exploited, that exploitation has been as a person authorised in writing by the State of Queensland within the meaning of s 163(1) of the Act, and for the services of the State within the meaning of the same section. 3 By Firebelt's reply and defence to Brambles' defence and amended cross-claim, which reply and defence was filed on 4 September 1998, Firebelt denied the claims made concerning the status of Cooloola Shire Council and that any exploitation was for the services of the State of Queensland as alleged in Brambles' defence. 4 After a lengthy trial, the primary judge gave reasons for judgment on 24 December 1998. On that day his Honour made the following findings: "(a) The specification describes the claimed invention fully. (b) The specification does not describe the best method known to the applicant of performing the invention. (c) The claims are clear and succinct and fairly based on the matter described in the specification. (d) The claimed invention is an invention which is a manner of manufacture within the meaning of s 6 of the Statute of Monopolies. (e) The priority date of the claims in the petty patent is 10 February 1992. (f) As at the priority date, the claimed invention was novel. (g) As at the priority date, the claimed invention lacked an inventive step. (h) The claimed invention is useful. His Honour indicated that he would stand the matter over for the parties to consider his reasons, to make such requests for further findings as they may consider appropriate and to prepare a proposed form of order; and his Honour indicated that he would also hear submissions as to costs. 5 His Honour heard the applicant and the first respondent on 26 February 1999, but neither the Cooloola Shire Council nor the State of Queensland was present on that occasion. His Honour made orders on that date. Those orders did not fully give effect to his Honour's findings. They were not taken out. As a consequence, on 10 June 1999, his Honour made further orders as follows: "1. with respect to the Cross-claim by Brambles Australia Limited: (a) the Australian Registered Petty Patent No 657,082 be revoked; (b) the Registrar serve an office copy of this order upon the Commissioner of Patents; (c) the orders made 26 February 1999 be vacated; (d) the Cross-Respondent pay the Cross-Applicant's costs of and incidental to the cross-claim including reserved costs, to be taxed but with the costs of trial limited to four days; 2. with respect to the original action: (a) Application QG 92 of 1995 be dismissed; (b) the Applicant pay the Respondents' costs of and incidental to the Application, including any reserved costs to be taxed; 3. with respect to the further Cross-claim by Firebelt Pty Ltd: (a) the further Cross-claim be dismissed; (b) the second Cross-claimant, Firebelt Pty Ltd, pay the Cross-Respondents' costs of and incidental to the further Cross-claim, including reserved costs to be taxed." 6 On 30 June 1999, Firebelt filed a notice of appeal appealing from so much of the judgment of the primary judge as relied on the findings that Firebelt's petty patent lacked an inventive step and that the complete specification of the patent did not describe the best method of performing the invention. The appeal is thus from the judgment that held that the Australian Registered Petty Patent No 657082 be revoked, and from the orders 1(a), (b) and (d), 2(a) and (b), and 3(a) and (b) made on 10 June 1999 set out immediately above. 7 By a Notice of Contention filed 29 July 1999, the Respondents contend that the primary judge erred in finding that the claims of the petty patent were fairly based on the matter described in the specification of the petty patent; and that his Honour erred in finding that the priority date was 10 February 1992 (the filing date of the provisional specification for the parent patent) - asserting that his Honour should have found that the true priority date was 21 October 1994 (the filing date for the divisional petty patent). The Notice of Contention further asserted that the primary judge erred in finding that the invention claimed in the petty patent was novel, it being said that if the true priority date was 21 October 1994, the invention was anticipated by a number of published patent specifications as well as by other earlier disclosure, trialling and publication. If the true priority date was 10 February 1992, the Notice of Contention asserted that the primary judge erred in finding that disclosures in July 1991 and November 1991 did not anticipate the invention. 8 When the appeal was called on, Cooloola Shire Council and the State of Queensland made submitting appearances and were given leave to withdraw. As to the orders made on 26 February 1999, which orders were vacated by the orders of 10 June 1999, both Firebelt and Brambles are agreed that the costs associated with those orders and the earlier notice of appeal will abide the outcome of the costs of the present appeal. 9 On the conclusion of submissions by the parties on the appeal, Mr A. Crowe, senior counsel for Brambles, indicated that he had obtained instructions not to seek determination by the Court of the matters raised by his Notice of Contention or other matters if the Court were to uphold the primary judge's finding as to obviousness.

Lack of Inventive Step 10 It is common ground that this petty patent is governed solely by the Act. The lack of inventive step depends upon a consideration of s 18 of the Act and related definitions. The appellant's submissions on this ground accept that the trial judge was correct in his conclusion that the relevant priority date is 10 February 1992, and further was correct in holding that the patent is fairly based on the matter described in the specification. 11 Section 138 of the Act relevantly provides: "(1) The Minister or any other person may apply to a prescribed court for an order revoking a patent. … (3) After hearing the application, the court may, by order, revoke the patent, either wholly or as far as it relates to a claim, on one or more of the following grounds, but on no other ground: … (b) that the invention is not a patentable invention; … (f) that the specification does not comply with subsection 40(2) or (3)." Section 18 relevantly provides: "(1) Subject to subsection (2), a patentable invention is an invention that, so far as claimed in any claim: … (b)when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an inventive step; …" By schedule 1, which is the dictionary for the Act, "prior art base" is defined to mean: "(a) in relation to deciding whether an invention does or does not involve an inventive step: (i) information in a document, being a document publicly available anywhere in the patent area; and (ii) information made publicly available through doing an act anywhere in the patent area; and (iii) where the invention is the subject of a standard patent or an application for a standard patent – information in a document publicly available outside the patent area; and (b) in relation to deciding whether an invention is or is not novel: (i) information of a kind mentioned in paragraph (a); and (ii) information contained in a published specification filed in respect of a complete application where: (A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and (B) the specification was published after the priority date of the claim under consideration; and (C) the information was contained in the specification on its filing date and when it was published." 12 So far as lack of inventive step is concerned, subparagraphs (a) (i) and (ii) are the relevant considerations. 13 The learned primary judge held that there had been certain disclosures in July and November 1991 by a company TWT Formark Pty Ltd (TWT Formark), a company associated with an inventor called Mr Colin Joseph Hickey. At that time Mr Hickey had filed, but there had not been published, a provisional specification for a Hickey invention, which invention was entitled "A System for Collecting Recyclable Products". The proposal on which Mr Hickey was working was very similar in effect to that of the claimed invention. It will be necessary to make detailed consideration later as to the nature of the disclosures and of the differences between what was known by a skilled but non-inventive worker in the field as a result of those disclosures, together with the common general knowledge of such a person, and the claimed invention. The complete specification into which Mr Hickey's provisional specification matured was filed after the 1992 priority date, and so is not an anticipation within subparagraph (a) (i) of the definition of "prior art base" in the Act unless, of course, the contention as to a later priority date is made good. 14 Section 7(1) of the Act deals with novelty, and provides: "For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately: (a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act; (b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information; (c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1." Subsection (2) deals with want of inventive step: "For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately." Subsection (3) provides: "For the purposes of subsection (2), the kinds of information are: (a) prior art information made publicly available in a single document or through doing a single act; and (b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area." 15 The extent to which the prohibition of "mosaicing" various pieces of documentary or other prior disclosures for the purpose of determining common general knowledge, as established by the High Court in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 (the 3M case), has been relaxed by the provisions in s 7 of the Act, may be a matter of some interest. Burchett J in Tidy Tea v Unilever (1995) 32 IPR 405 suggested that the provisions in s 7 seemed to be designed to overcome the rejection in the 3M case of the availability, when obviousness is being considered, of specifications of prior patents not actually proved to be part of the common general knowledge at the relevant time. Burchett J noted that before mosaicing might be carried out, the mosaic has to be one that can be put together by a skilled worker with no inventive capacity. The extent to which evidence is necessary is a matter of some debate, and the issue is by no means determined. 16 The contention for the appellant here was that there was insufficient evidence to enable his Honour to conclude what was within common general knowledge in respect of the skilled or notional addressee. This issue has to be determined on the basis of the provisions of s 7(2) of the Act. 17 It is necessary to have regard to the patent in respect of which want of inventiveness is alleged. The patentee is shown as Firebelt Pty Limited. The actual inventor is Mr Idwall Charles Richards. The title of the invention is "A Side Loading Refuse Vehicle". The text of the patent states: "This invention relates to a refuse vehicle and in particular, to a side loading refuse vehicle and more particularly, but not limited to, an automated side loading refuse vehicle for simultaneous collection, but separate storage of garbage and/or recyclable wastes in the one vehicle." Under the heading "Background Art" is a statement concerning the necessity of "new, convenient and economical approaches to garbage collection and recycling". It says that "sorting of recyclables from domestic garbage after collection is generally uneconomical", and as an "Outline of the Invention" it is said that: "The present invention has, as its primary object, to provide a useful alternative to the aforementioned prior art." In summary, the contention is that the invention permits the collection and separate storage of pre-sorted garbage and recyclables. 18 The consistory clause of the invention is as follows: "In one aspect, the present invention resides in a side loading refuse vehicle having a cab, the combination of an elongate refuse storage tank divided into longitudinally extending tank sections, a loading mechanism adjacent a side of the refuse vehicle and a refuse transfer mechanism for delivering refuse or other material emptied into the vehicle by the loading mechanism to the respective tank sections, the loading mechanism having a lid opening device and the loading mechanism being adapted to engage a bin of the type having a pivoting lid by remote control from the cab, raise the lid and empty the bin into the vehicle, the bin holding recyclable waste separately from other waste in the bin and upon being emptied into the vehicle, the recyclable waste and the other waste are separately delivered by the transfer mechanism to respective onesof the said tank sections." Annexed to his Honour's judgment was a list indicating the essential features of the combination patent: "(a) In a side loading refuse vehicle (b) having a cab (c) the combination of an elongate refuse storage tank divided into longitudinally extending tank sections (d) a loading mechanism adjacent to the side of the refuse vehicle and (e) a refuse transfer mechanism for delivering refuse or other material emptied into the vehicle by the loading mechanism to the respective tanks (f) the loading mechanism having a lid opening device and (g) the loading mechanism being adapted to engage a bin of the type having a pivoting lid by remote control from the cab (h) raise the lid and (i) empty the bin into the vehicle (j) the bin holding recyclable waste separately from other waste in the bin, and (k) upon being emptied into the vehicle, the recyclable waste and other waste are separately delivered by the transfer mechanism to the respective ones of the tank sections. (l) the combination in claim 1 wherein the tank sections are located one above the other. (m) The combination of claim 1 or claim 2 wherein the transfer mechanism is an active transfer mechanism." It should be said that features (f), (g) and (h) identify three features of the loading mechanism. 19 As the consistory clause in the claim makes clear, there is no particular type of lid-opening device claimed. 20 It is important, particularly in this case, not to ignore the true nature of a patentable combination. A patentable combination involves, as a matter of language in the claims, a co-operation of features, each of which may be known, to produce a new result or a known result in a more useful way. In Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30, Dixon J said at 73: "…the characteristic which a combination of known integers must possess in order to afford subject matter is mutual relation in the operation of such integers." And at 75: "…the combination contained in the patentee's machine falls outside the class where the integers continue, so to speak, their independence and within that where a new co-operation is established so that by an adaptation of each integer to the working of every other integer an entirety is provided which is new and implies invention. In saying this, I am speaking of the machine described in the specification as distinguished from the combination or combinations stated in the various claims. This actual machine does, I think, bring the integers sufficiently into relation in the production of the one article as an entirety." 21 In a well-known passage in the 3M case, Aickin J said at 292: "The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge. I do not with respect think that it is correct to describe that process as the making of a mosaic although it has often been so described, a usage which however may be misleading. The process of applying such common general knowledge to the solution of a problem is not a process of picking out individual pieces of information and combining them, including inferences from known facts and known principles, as well as the application of such principles. The making of a mosaic prohibited in the case of an allegation of want of novelty is the picking out of individual items of information from prior publications or prior objects and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed. That is an understandable, though not a permissible, process. In the case of alleged lack of an inventive step the question of making a mosaic must operate (if at all) in a very different matter. An allegation of want of inventive step is not made out by saying you may take one or two, or twenty-one or twenty-two, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so, there could never be a valid patent for a new combination of old integers. The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious." (Emphasis added) We have set out this extensive passage, because it is particularly apposite to the present issue. 22 It was submitted on behalf of the appellant that the primary judge failed to appreciate the essence of a combination patent and, as a consequence, failed to apply the proper test on the issue of want of inventive step. 23 Despite the usual industry and learning of the submissions by Mr Garnsey QC, senior counsel for Firebelt, those submissions and the criticisms made of the primary judge's dealing with, and conclusion on, the issue of inventiveness fail properly to recognise that the test for want of novelty is not the same as the test for want of inventive step. The test for want of inventive step, which is expressed in s 7(2) of the Act, is not by any means the same as whether there has been infringement of one invention by another, nor is it appropriate to approach the matter on the basis of any "reverse infringement". Yet the submissions on behalf of Firebelt appear to fall into this type of error. The error into which the primary judge fell, according to the appellant, is "the error of saying you can take some of the features of Hickey, which were known, exclude others, add on two of the features of Richards, and say therefore there is no invention to the Richards' combination." It was submitted for the appellant: "It is impermissible … to say out of a different combination we take these bits of known features, and if I tried to do this I would have added these other two bits in just as a matter of course …." In the course of submissions it was put by Drummond J to Mr Garnsey: "What you've done is devised a combination that does exactly the same thing but you've addressed something that Mr Hickey didn't address, namely, how are you going to open the lid. Why does that make the whole of your combination inventive? I can see why you might be able to get a patent – indeed I think you've applied for a patent for the device that will open the lid, but why does that step, against a background of Hickey's combination, make the whole of your combination inventive?" The answer to this question, according to the appellant, was: "…we say what the law says one must compare is this combination as a whole with all its essential features as against that combination as a whole with all its essential features." 24 When one looks at what the primary judge did and what test he applied, it is clear that his Honour approached the issue of inventiveness correctly, and his conclusion on want of inventiveness was open to him on the evidence. 25 It is trite, of course, that where one has an invention that is a combination of well-known integers, the inventive step in the invention lies in the combination. The primary judge was fully alive to this central question on the issue of obviousness. His Honour said: "It is not disputed that each of the integers of the petty patent claims was known in the patent area before the priority date. The issue of absence of an inventive step requires an examination of the obviousness or otherwise of the combination." 26 The primary judge correctly observed: "Section 7(2) dictates a consideration of what would have been obvious to a person skilled in the relevant art in the light of two matters, namely common general knowledge as it existed before the priority date, and prior art information made publicly available, being information that the skilled person in question could, before the expiry date, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art. A person skilled in the relevant art is said to be a 'non-inventive skilled worker in the field'. See Minnesota Mining & Manufacturing Co & Another v Beiersdorf (Australia) Limited (1979-80) 144 CLR 253 at 293 per Aickin J." 27 The contention by Brambles, both at trial and before us, is that when one has regard to the disclosures at two presentations made by TWT Formark in July and November of 1991, and common general knowledge of a non-inventive skilled worker in the field, the Firebelt invention was obvious, applying the test imposed by s 7(2) of the Act. His Honour found that what was disclosed on each of those occasions had the consequence that such information was publicly available for the purposes of ss 7 and 18. His Honour found: "It seems clear that such disclosures would be widely distributed in the waste management industry. It is also reasonable to infer that this would include distribution to the relatively small number of companies engaged in building trucks for waste collection." 28 Dealing with the issue of novelty, his Honour found that the disclosure at those presentations did not extend to a disclosure of each of the integers of the combination patent of Firebelt. What his Honour did find was that, having regard to what was disclosed on those earlier occasions, and having regard to the evidence of witnesses concerning not only the features in the TWT Formark proposal as revealed at the two presentations in 1991, but also concerning the common general knowledge of a skilled worker in the field about those features which were not part of the TWT Formark proposal, the combination of the old integers which constitutes the claimed invention of Firebelt was obvious. 29 By 1991 Mr Hickey, on behalf of TWT Formark, was working on a proposal very similar in effect to that of the claimed invention. 30 The first disclosure of the TWT Formark proposal occurred in Sydney at the Holroyd Council Auditorium. There were about 100 people at that meeting, mostly from local government. Mr Eric Love, a former director of TWT Formark, described the TWT Formark system in his affidavit as follows: "14. The concept which was launched on 10 July 1991 involved the collection of waste in divided streams from divided bins emptied into a divided truck. 15. The division of the streams of waste from the divided bin to the truck was maintained by the use of a butterfly or retractor type lid connected to the loading mechanism of the truck. 16. This lid covered the respective sides of the divided bin and had a pivoting point in its centre which aligned with the east west division of the bin. 17. Each side of the butterfly retractor type lid could open to the centre leaving the divided waste streams to flow into the respective parts of the vehicle storage bin. 18. The butterfly retractor type lid in itself included an opening device in that in the first instance it clamped over an open bin and then during the unloading stage the sides of the butterfly were automatically opened to allow the separate streams of waste to empty from the bin." 31 Mr Ronald Spratt, an environmental health officer concerned with the operation of refuse collection systems by the Ashfield Municipal Council, attended the July meeting at which the TWT Formark launch occurred. Mr Spratt said that the TWT Formark system was called the "SORT" system, and involved a horizontally split truck with a side loading hydraulic mechanism for the "auto-pick" of divided garbage bins, all of which occurred by remote control operated by one operator from the cabin of the vehicle. It is not clear from his affidavit whether he was swearing that the features were disclosed at the meeting, or merely giving his understanding of the system. He recalled that a feature of the system was the use of a retractor plate to maintain separation of the different categories of waste. The plate was placed in position at the beginning of the lifting cycle and operated when the bin was in place over the hopper. He inferred that for the plate to operate, it was necessary that the bin lid be first moved out of the way. 32 The meeting in November 1991 at which the TWT Formark proposal was again disclosed was the 18th National Environmental Health Conference. Mr Raymond John O'Dwyer attended that presentation, and his recollection was that the TWT Formark proposal was for an east-west divided bin, coupled with a divided truck operated by a driver who could also control a robotic arm. The vehicle had a transfer mechanism. No detailed explanation of the loading mechanism was given on the November 1999 occasion. 33 There was important evidence concerning the July disclosure of the TWT Formark proposal by Mr Idwall Richards, the inventor of the Firebelt invention. Mr Richards agreed that the TWT Formark proposal related to the use of mobile garbage bins (MGBs), or "wheelie bins". The effect of Mr Richards' evidence is that the only aspects of claim 1 of the Firebelt invention which he says were not disclosed at the July 1991 presentation of the TWT Formark proposal were integers (f), (g) and (h) - that is to say the use of a loading mechanism having a lid opening device, the loading mechanism being adapted to engage a bin of the type having a pivoting lid by remote control from the cab, and raising the lid. The trial judge held that the TWT Formark presentations in July and November 1991 were concerned with collection from MGBs. His Honour said: "The use of such a device [as the butterfly plate] necessarily implied the prior opening of the lid of such a bin to permit its insertion". 34 In the context of common general knowledge, the evidence of Mr Idwall Richards concerning the state of the industry prior to 10 February 1992 is relevant. Mr Richards said "…in the early 1980s …[the MGB came into use and was] … promoted almost universally by local Government for the collection of domestic refuse",which "necessitated the development of purpose built loading mechanisms which were fitted to side loading and rear loading refuse collection vehicles …". Subsequently, side loading vehicles were developed to a stage where it was possible for them to be operated by one person. This was described by Mr Richards as "the automated collection of MGBs". He described the "industry transition from semi-automated collection to fully-automated collection", apparently meaning the establishment of equipment and practices pursuant to which bins were picked up and unloaded by remote control from the cab. Thereafter there was a demand for recycling of domestic refuse, which led to his investigating the prospects of separate bin storage and handling. 35 Having noted this history, the primary judge said: "The use of a single operator system apparently dictates the use of a side loading vehicle, presumably because of the need to observe the operation." 36 As to the prior art information, his Honour found that the TWT Formark proposal "…certainly contained each of the integers of petty patent claim 1, other than the location of a lid opening device on the loading mechanism and its operation." 37 The appellant alleges that the trial judge erred concerning a number of findings on the issue of inventiveness, and in particular was in error in finding that: (a) Prior to 10 February the content of the disclosures of the TWT Formark presentation had passed into common general knowledge; (b) Prior to 10 February 1992 the content of the disclosures at the TWT Formark presentation was prior art information that a person skilled in the industry (presumably equated with the relevant prior art) could reasonably be expected to have ascertained, understood and regarded as relevant to his or her work in that area; (c) The occasions on which the disclosures at the TWT Formark presentation occurred must inevitably have led to their content being widely disseminated amongst persons having the relevant skills and interests in that area; (d) The use of the system for collection of refuse and recyclable materials or for separation of recycled materials was obvious; and (e) The inventive step which is claimed is simply use of a lid opening device of any kind located on the loading mechanism, and this invention does not demonstrate any inventive step. 38 The criticisms in (a) to (c) above really cannot stand against the evidence of the Firebelt patent inventor, Mr Idwall Richards. The trial judge was entitled to accept that Mr Richards correctly conceded that the TWT Formark presentation in June disclosed all the integers of the Firebelt petty patent, save for integers (f), (g) and (h). 39 The primary judge, correctly in our view, concluded that a skilled non-inventive worker in the field, knowing what was disclosed at the TWT Formark presentations, and knowing further that it was obvious that an MGB which was referred to in those proposals had a pivoting lid, and that it would be necessary before the process revealed by the TWT Formark proposals could come about that the lids of the MGBs somehow be opened, would also know that a loading mechanism incorporating a lid opening device was a solution to that problem. 40 The addition of this last feature was said, both at first instance and on appeal, to constitute the inventive step of the combination patent. The primary judge accepted that a loading mechanism incorporating a lid opening device was well known prior to February 1992, and that in the context of the need to open a lid for the purposes of the TWT Formark process, the solution of a loading mechanism incorporating a lid opening device would be obvious by reference to previous experience in the industry. 41 Of this claimed inventive addition to what was revealed at the TWT Formark presentations in July and November 1991, the primary judge held: "…the need to open the lid was obvious from the TWT Formark provisional specification and, I infer, from the 1991 presentations. As to the suggested solution, the applicant did not identify a particular lid opening device. The claim is wide enough to encompass all such devices. Although the specification identifies one type and speaks of others, there is nothing to suggest that the generality of the claim should be so read down. Thus the inventive step which is claimed is simply use of a lid opening device of any kind located on the loading mechanism. At least if the lid is to be opened at an early stage in the process, Mr Idwall Richards considered that location to be obvious. The expert evidence establishes that such a location was already known in the industry. Once geographical proximity is established between the lifting mechanism and the bin, it is, in my view, obvious that it is a possible location for the lid opening mechanism. This is the effect of much of the expert evidence which I accept." 42 The Firebelt invention does not require the use of a butterfly plate, which, his Honour found, was featured in the 1991 TWT Formark proposals. This finding was erroneous, according to the appellant. Of the absence of a butterfly plate in the Firebelt invention, the primary judge held: "There was no suggestion that dispensing with the butterfly plate, by itself, was an inventive step, nor was there any basis in the evidence for such a claim." The only other basis on which it was suggested that the claimed invention was not obvious, having regard to common general knowledge and the disclosures in 1991 of the TWT Formark proposals, was that those proposals involved the separation of recyclable materials, whereas the Firebelt proposal was directed to the storage in and collection from one bin, of both refuse and recyclable material. However, what was revealed at the two 1991 TWT Formark proposals can be deduced from the provisional specification filed by TWT Formark, although that filing was after the relevant priority date. His Honour noted that: "It is clear from the provisional specification filed by TWT Formark that the Hickey system was not limited to pre-sorted recyclable material." And: "The proposal …is wide enough to include the simultaneous collection of refuse and recyclable material." 43 Further, an article by Mr Love (which, although published after the relevant date, was said to reflect the content of the presentations in 1991) makes reference to an alternative use internationally of "wet/dry collection", where "bio-degradables are placed on one side and selected dry recyclables on the other". 44 The primary judge said: "… although people in the industry may have understood the proposal to be primarily designed to deal with pre-sorted recyclable materials …it seems to me beyond argument, and consistent with the expert evidence, that if sorted recyclable material could be held in different compartments and separately handled, then the same process would be broadly appropriate to the handling of refuse and recyclable material …" 45 The primary judge approached the issue of inventiveness correctly, and his conclusion that claim 1 of the Firebelt invention was obvious has not been shown to be attended by error.

Non-disclosure of Best Method of Performing the Invention 46 Section 40(2)(a) provides that a complete specification must: "describe the invention fully, including the best method known to the applicant of performing the invention". 47 Of this requirement, his Honour's findings were particularly terse: "There is no indication of which of the contemplated lid opening devices was considered to be the best at the relevant time, nor of the preferred timing. The specification indicates that different methods had been considered and that, at least in some embodiments, timing was thought to be of importance in determining the quality of outcome, that is the degree of maintenance of separation of waste. In view of the importance of this matter, it cannot be said, in the absence of such information, that the best method of performing the invention as a whole has been disclosed." (Emphasis added.) 48 This holding by the primary judge involves, in our respectful view, a misunderstanding of what is required by s 40(2)(a) of the Act concerning a description of the best method known to the applicant of performing the invention. In Vidal Dyes Syndicate Ld v Levenstein Ld (1912) 29 RPC 245 in the Court of Appeal, Fletcher Moulton LJ said at 269: "It is settled law that a patentee must act towards the public uberrima fide, and must give the best information in his power as to how to carry out the invention. He is therefore bound to tell the public all the steps that can advantageously be taken in carrying out the invention. But he is not limited to claiming only the best way of carrying it out." This requirement is to ensure good faith on the part of the patentee, and to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention. 49 Blanco White in Patents for Inventions (4th Ed) at paragraph 4-502 notes: "To be proper and sufficient, the complete specification as a whole (that is, read together with the claims [Evans v Hoskins and Sewell (1907) 24 R.P.C. 517 at 522 (C.A.)], and in the light of the drawings, if any [Bloxam v Elsee (1827) 1 C.&P. 558 at 564]) must in the first place contain such instructions as will enable all [Knight v Argylls (1913) 30 R.P.C. 321 at 348 (C.A.)] those to whom the specification is addressed to produce something within each claim 'by following the directions of the specification, without any new inventions or additions of their own' [R v Arkwright (1785) 1 W.P.C. 64 at 66; Otto v Linford (1882) 46 L.T. 35 at 41 (C.A.); No-Fume v Pitchford (1935) 52 R.P.C. 231 at 243 (C.A.)] and without 'prolonged study of matters which present some initial difficulty'. [Valensi v B.R.C. [1972] F.S.R. 273 at 311 (C.A.)]." 50 Of the objection based on the provisions of the United Kingdom legislation, Blanco White says at paragraph 4-516: "There would seem to be no obligation under this provision to include information not strictly relating to 'the invention', however necessary to anyone needing to work the invention. The learned author continues: "Thus it would seem unnecessary to disclose how starting materials for a process are to be obtained [American Cyanamid's (Dann) Patent [1971] R.P.C. 425, ante, § 4-507]; whilst it has been held that the patentee of a new article need not disclose the best method of making it, 'performing' here going only to the design of the article and not to techniques for manufacturing it. [Illinois Tool Works v Autobars [1972] F.S.R. 67 at 71-72. But cf. ante, § 4-502] 51 It is relevant in this case to recognise that the statutory obligation is an obligation to disclose the best method of performing the invention known to the applicant. 52 The invention claimed is not of a particular type of lid opening device operating at any particular time. There is therefore no statutory obligation to describe which of the contemplated lid opening devices was considered to be the best, nor the preferred timing, contrary to his Honour's understanding of the section. 53 The requirement of s 40(2) of the Act is that the patentee is required to give the best information in his power as to how to carry out the invention. That requirement is ordinarily satisfied by including in the specification a detailed description of one or more preferred embodiments of the invention offered, with reference to drawings of specific mechanisms or structures or examples of specific process conditions or chemical formulations, depending on the field of the invention and the nature of the instruction to be conveyed. It is necessary to have regard to what is the invention claimed in the petty patent. The invention here claimed is not a particular type of lid opening device operating at any particular time. It is only if it were such a claim that there might be a failure such as the primary judge found. 54 The text of the complete specification of the petty patent leaves no doubt that the figures 4, 5 and 8 referred to in that specification depict an embodiment of the lid opening device, and the description of figures 4 and 5 includes: "… a jet of water shown at 30 fired from nozzle 31 on the loading mechanism 19 opens the lid 32 of the bin 20 prior to the contents of the bin 20 being discharged. This will be slightly delayed due to the inertia of the bin being raised through its arc of movement to the final stop position illustrated in figure 5. In other words, the combined effect of the movement of the bin through its arc followed by the jet of water discharged from nozzle 31 followed by raising of the ramp into the aligned position illustrated in Figure 5 will ensure that minimum recyclables from compartment 27 end up in the wrong tank section. As an alternative to the jet of water, other mechanically equivalent contrivances can be employed including air jets or directly acting mechanical lid openers." 55 In our respectful view there has been no failure of the duty to disclose the best method of performing the invention known to the applicant, as required by s 40(2) of the Act. 56 However, in the light of our finding on the issue of lack of inventive step, and having regard to the position of Brambles as indicated by its senior counsel, it is unnecessary to consider the issues in the Notice of Contention. 57 The appellant has been successful on the issue of disclosure of the best method of performing the invention, but has failed on the issue of want of inventive step. The appeal should therefore be dismissed and the appellant should pay the costs of and incidental to the appeal of the respondent, those costs being understood to include any costs associated with the orders made on 26 February 1999 and the filing of a notice of appeal prior to 10 June 1999. I certify that the preceding fifty-seven (57) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Spender, Drummond & Mansfield.

Associate: Dated: 22 November 2000 Counsel for the Appellant: Mr J. Garnsey QC, with Mr C. Carrigan

Solicitor for the Appellant: Xavier Kelly & Co

Counsel for the 1st Respondent: Mr A. Crowe, with Mr R. Lilley

Solicitor for the 1st Respondent: Deacons Graham & James

Counsel for the 5th Respondent: Ms A. Philippides

Solicitor for the 5th Respondent: Baldwin Conroy

Solicitor for the 6th Respondent: Ms Pollard

Date of Hearing: 23 & 24 August 1999

Date of Judgment: 22 November 2000