30 January 2006

Lockwood Wrapped Up?

On 8 December 2005, the Full Federal Court handed down Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2005] FCAFC 255 .

Background


This matter has had a turgid past. The appellant, Lockwood, is the proprietor of Australian Patent No. 702534. The respondent, Doric, is a rival manufacturer and supplier of door locks.

Doric sued Lockwood for making unjustified threats of patent infringement. Lockwood cross-claimed, alleging infringement, and Doric cross-claimed seeking revocation of the patent.

A single judge of the Federal Court held that 32 of the 33 claims were invalid for lack of fair basis. That judge also held that a number of the claims were invalid as they lacked novelty. According to the judge, the Doric products infringed some claims, but not others. On appeal, a Full Court upheld the fair basis finding, but did not conclude on the others.

In the well-known case, Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 , the High Court upheld Lockwood's appeal and remitted all other matters to the Full Court.

Summary of Issues

Lockwood contended that the primary judge erred in rejecting the allegation of infringement in respect of a number of claims. Doric, on the other hand, maintained that a number of the claims were both obvious and insufficient.

The Patent

The patent relates to a latch assembly known as a deadlock. It can be locked from the inside to prevent intruders from gaining entry by smashing a panel. It also prevents intruders from leaving with bulky items if they have happened to have made entry. This does have drawbacks, however. If the door slams shut with the key left in outside, the householder is trapped inside. Also, if the key is misplaced, the householder can be trapped inside. The patent covers an improvement in which the outside key renders the deadlock inactive.

Claim 1 reads as follows: "A latch assembly including, (i) a casing, (ii) a latch bolt mounted on the casing so as to be movable relative thereto between an extended latching position and a retracted release position, (iii) a first actuator operable from an inner side of the assembly to cause movement of the latch bolt to said release position, (iv) locking means operable from said inner side of the assembly to adopt an active condition and thereby render said first actuator inoperable, (v) a second actuator operable from an outer side of the assembly to cause movement of the latch bolt to the release position, and (vi) lock release means which is responsive to said operation of the second actuator so as to thereby render said locking means inactive."

It is really integer (vi) that provides the allegedly inventive feature. In other words, the lock release means is the feature that distinguishes the invention from a typical latch assembly.

Infringement

The primary judge held that the Doric products infringed claim 1 and a number of other claims. Doric did not dispute that there was an infringement of claims 1 to 6, but disputed that there was an infringement of claim 7. Claim 7 is based on claim 1 or any one of the intervening claims and reads as follows: " A latch assembly according to any preceding claim, wherein said (vii) locking means includes a cam member which is movable between first and second positions at which said locking means is inactive and active respectively, (viii) cam biasing means urges said cam member towards said first position, and (ix) a retaining member is engagable with said cam member to thereby prevent movement of said cam member out of said second position when said locking means is in the active condition." The primary judge identified the dispute as centring on the presence of integers (viii) and (ix).

It was apparent that the Doric products had not taken the idea that movement towards the unlocked position from the locked position that would otherwise result from the urging of the spring is restrained by the retaining member. In the Doric products there is no effect of the cam biasing means when the cam is in the locked position. Manual rotation of the cam is required for the cam to clear the recess and for the spring to have practical effect.

Lockwood held that claim 7 does not say anything about the form of lock release means (referring back to claim 1), the form of cam biasing means or the form of the retaining member. They emphasized that claim 7 is not limited by the description in the specification of the preferred embodiment.

The court cited Shave v HV McKay Massey Harris Pty Ltd (1935) 52 CLR 701, in which the High Court cited the famous British case of Marconi's Wireless Telegraph Co v Phillips Lamps Ltd [1933] RPC 287, where it was stated: "It is not sufficient for the inventor to discover his gold mine - he must also peg out his claim. Outside the pegs, the gold, if it be there, is free to all ." The court held that Doric's products were not obvious mechanical substitutes for the mechanism of claim 7 but involve a change in design and a different mechanism of action. In other words, as in Shave , the ideas that flowed from the claimed invention are not entirely included within the claim.

The court held that the Doric product replaces the essential integer of a cam biasing means urging the cam member out of the second, locked position with the lock release means moving the cam out of the locked position after which the cam biasing means moves it to the unlocked position.

Thus, all the essential features of claim 7 were not taken and there was no infringement. The court's dealings with some of the other claims is instructive, but the above indicates the importance of understanding the scope of protection afforded by a claim and the need to draft claims accurately and clearly.

Obviousness

The requirements for inventive step or non-obviousness have been described in previous posts, for example, see 1 September 2005.

Claim 1 was considered, since it is the broadest claim. The court discussed the views of the primary judge, of the Full Court and of the High Court. These make useful reading.

The court made the important point of first identifying the problem sought to be solved by the invention. In this they supported the primary judge's finding that the problem sought to be cured by the invention was the fact that operation of the key from the outside of the door did not release the inside lock. Identifying this problem allows the obviousness question to be properly put forward: "Would it be obvious to an ordinary skilled but not inventive worker that the problem created by integer (iv) (see claim 1 above) could be resolved by making the inside handle operable from outside the door?"

Lockwood claimed that obviousness is a question of fact, and that Doric called no obviousness evidence. Doric accepted this, but stated that it relied on admissions in the specification. Admissions in a specification as to matters such as common general knowledge or the state of the prior art are admissible against the patentee on a claim of lack of inventive step.

Doric contended that the specification admits that it was common general knowledge that, in the typical lock, the outside key did not release the inside lock. Thus, Doric submitted that there was no inventive step merely to conceive of remedying that defect by any means using an outside actuator.

This was a relatively lengthy discussion. The court concluded that claim 1 was indeed obvious. The reasons for this can be found in the evidence. Bearing in mind that the allegedly inventive step is to be found in integer (vi) of claim 1, points made by the court were:

1. The witnesses from Lockwood must have done more than simply moan about the problems associated with the existing locks. For example it was recorded at a product development meeting before the priority date of the patent that one of the witnesses said: "What if I could do auto-unlocking in the 001 project?" The court held that he was not referring to the concept as described in claim 1, but to the "nitty-gritty" of effecting that concept. When one of the others said "I don't think you can do it", he too was directing his mind to the "mechanics of nitty-gritty".

2. When one of the witnesses saw the prototype that embodied the invention, he regarded as ingenious the manner in which the key operation of the outside lock released the inner lock, not the idea of somehow making that operation release the lock.

3. A record of the minutes, dated prior to the priority date of the patent, set out that it is "possible that the design could be such that operating exterior cylinder will automatically unlock the interior knob". Later minutes record that "design concept for unlocking inside knob from external cylinder completed by ...".

Based on the above and other points the court was of the view that claim 1 was obvious.

Sufficiency

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." Non-compliance is a ground for revocation.

Doric held that Lockwood had failed to identify the inventive step.

The court held that the function of s40(2)(a) is directly related to the principle underlying our patent system that in return for disclosing the invention, the inventor obtains a monopoly for a specified period. It is not the inventor's decision whether or not certain subject matter is an invention. Rather, it is up to the Commissioner or a court to decide. The court relied on a number of precedential cases to state that an applicant for grant of a patent is not obliged to identify an inventive step.

It follows that Doric failed on this ground.

Concluding Points

Unfortunately for Lockwood, there appears to be insufficient disclosure in the specification to support a claim specifically directed to integer (vi). It follows that Doric is free to exploit a lock assembly with a deadlock release operable with the key. Given the size of the market and the clear desirability of such a feature the implications are enormous.

Developers need to ensure that patent attorneys are provided will ALL technical information. Patent attorneys must in turn make sure that their clients understand the implications of leaving out any technical information. Let this case be a lesson to us all.

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