JUDGMENT No. wunct3 Sp 24. CATCHWORDS PATENTS - method claims - product claims - infringement - authorisation - supply by defendant to third party - validity - fair basing - novelty - alleged prior publication in 1907 - effect thereof - obviousness - double claiming - lack of title - false suggestion. Patents Act 1952, ss. 40, 69, 100, 158 Patents Act 1990, ss. 13, 18, 64, 117, 128, 138 Glaverbel SA v British Coal Corporation [1994] R.P.C. 443 Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 122 A.L.R. Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 A.L.R. CCOM Pty Ltd v Jiejing Pty Ltd (1993) 27 I.P.R. 577, (1994) 122 A.L.R. 417 Australian Tape Manufacturers Association Ltd v The Commonwealth (1993) 176 C.L.R. 480 Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 C.L.R. 228 Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd (1980) 144 C.L.R. 253 The Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Proprietary Limited (1981) 148 C.L.R. 262 SAR TAS NO. ] PTY LIMITED v PARTN PTY LIMITED ANOR ne Naeis of 1991 BEFORE: GUMMOW J. ~2 DEC i994 PLACE: SYDNEY. FEDERAL COURT oF DATE: 2 DECEMBER 1994. AUSTRALIA FRINGIPAL REGISTRY IN THE FEDERAL COURT OF AUSTRALIA ) NEW SOUTH WALES DISTRICT REGISTRY ) No. NG815 of 1991 GENERAL DIVISION ) BETWEEN: ART, NO. 1 PTY LIMITED . Applicant AND: Ri PART PTY LIMITED First Respondent NICOLA LEONARDIS Second Respondent BEFORE: GUMMOW J. PLACE: SYDNEY. DATE: 2 DECEMBER 1994. MINUTE OF ORDERS THE RT _ ORDERS THAT: The proceeding stand over to a date to be fixed for the bringing in of short minutes to give effect to the Reasons for Judgment delivered today. Note: Settlement and entry of orders is dealt with by Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA ) NEW SOUTH WALES DISTRICT REGISTRY ) No. NG815 of 1991 GENERAL DIVISION ) BETWEEN: ART. NO. 1 PTY LIMITED Applicant AND: K Ri PAR' Y LIMITED First Respondent NICOLA LEONARDI Second Respondent BEFORE: GUMMOW J. PLACE: SYDNEY. DATE: 2 DECEMBER 1994. REASONS FOR JUDGMENT This proceeding concerns the infringement and validity of patents for inventions which are put to use in the building industry, particularly in South Australia. They relate to devices used in the construction of building foundations by methods using poured concrete. It is appropriate first to say something of the conditions in Adelaide and surrounding areas which present a particular problem for building construction. Active or expansive soil reacts to changes in moisture content by swelling or _ shrinking, whereas stable soil undergoes negligible movements under load or by reason of changes in moisture content. Stable soils include rock and compact sands and silts; reactive soils are generally clay. The movements -2- in reactive soils as a result of changes in moisture content may be so significant as to cause damage to buildings. The most common soil type found in Adelaide is clay soil of medium to high reactivity, which undergoes shrinkage and swelling movements. This reactivity has a more significant effect on housing in Adelaide, in comparison to most parts of Australia, due primarily to the combination of reactive clays and the arid climate. The arid climate results in significant variations of soil moisture due to long hot dry summers and wet cooler winters. The waffle pod footing to which reference will be made hereafter was developed in an attempt to provide an economical solution to the problem of differential movements of reactive clay soils detrimentally affecting footing systems and, as a result, the buildings themselves. Some reference should be made to certain technical terms. The "foundation" 1s the soil that supports the "footing", namely that part of the structure which supports the walls and floors and transmits the load to the ground; in types of construction where the footing beams and floors are structurally integral, the footing can include the floor. A "footing beam" 1s that part of the footing which resists the forces induced by the mass of the building and by soil movement; a "slab" is a thin flat reinforced concrete element which may be in contact with, or suspended above, the ground. A "raft slab" is a footing system where the beams and slab are - 3 - integral, both being in contact with the ground and acting compositively; typically there are two to four steel reinforcing bars in the top and in the bottom. A "waffle slab" is a slab of concrete with integral concrete beams in grid formation on its underside, where the beams are relatively close together; typically, such slabs are formed by placing void formers, of various types, on a level supporting surface and pouring concrete over the top. The evidence indicates that the waffle slab has been well known since the turn of the century and has been commonly used as floors in buildings; what was said to be new was the development by Mr Peter Koukourou of the use of the waffle Slab as a raft for the footings for a building. Before turning to consider the advances claimed by Mr Koukourou, I should refer to the patents of the second respondent ("Mr Leonardis"). Mr Leonardis was the proprietor of petty patent No. 562334 for an invention entitled "IMPROVEMENTS RELATING TO FOUNDATION FORM WORK" ("the Petty Patent"). The Petty Patent was granted under the Patents Act 1952 ("the 1952 Act"), with the priority date of 23 October 1986. It was sealed on 23 June 1987 and expired, after the institution of the present proceeding, on 23 October 1992. The Patents Act 1990 ("the 1990 Act") commenced on 30 April 1991. The second respondent alleges infringement by the applicant during the currency of -4- the term of the Petty Patent, but after 30 April 1991. The claim of the Petty Patent was a method claim. The second respondent also is registered proprietor of standard patent No. 591816 for an invention entitled "IMPROVEMENTS RELATING TO BUILDING FOUNDATION FORM WORK" ("the Patent"). It was upon this, rather than the Petty Patent, that the trial principally turned. Application for the Patent had been made whilst the 1952 Act was in force but the Patent was sealed on 14 September 1991. This was after the coming into force of the 1990 Act. The result of the operation of s. 234 of the 1990 Act is that no claim of the Patent is invalid on any ground that would not have been available under the 1952 Act. The applicant ("Sartas") has manufactured and sold devices ("the Sartas spacers") which Mr Leonardis alleges infringed the claim of the Petty Patent and continue to infringe certain claims of the Patent. Examples are Exs. Dl and D2. These were identified in evidence respectively as the three-way and four-way Sartas spacers. It is necessary to say something as to the relationship between the respondents. The first respondent ("Koukourou") is proprietor of standard patent No. 584769 ("the Koukourou Patent"), in respect of an invention by Mr Peter Koukourou entitled "BUILDING FOUNDATION". The invention includes a method of forming a building foundation using what in Claim 1 -5- is described as "a plurality of box-like hollow members in rows on the levelled ground .. .". In practice, these members are constructed of cardboard, although polystyrene foam has been proposed. The problem with which the Koukourou Patent seeks to deal are described in the following passages from the complete specification in that patent: "The usual practice for construction of foundations is to excavate a plurality of trenches, position reinforcing rods and reinforcing mesh in and over the trenches, and pour concrete to envelope [{Sic] the reinforcing rods, to be contained within the trenches, and to overlay the intermediate areas. Not only is this arrangement expensive, but when unstable soil is required to support the foundation there is a high degree of probability of the foundations cracking if the effective volume of soil varies upon variation of moisture content. In this invention, the method of forming a building foundation comprises levelling the supporting ground, forming peripheral shuttering walls, positioning a plurality of box-like hollow members in rows on the velle ground between the shuttering walls, placing concrete spacers on the ground between the hollow members to separate the hollow members into rows, laying lower reinforcing rods on the said spacers and between the hollow members, in a plurality of rows which intersect at right angles to each other, placing reinforcing bar spacers on the hollow members, and positioning a mesh of upper reinforcing rods on _ the spacers, and pouring concrete to envelope [sic] said concrete spacers reinforcing bar spacers, reinforcing rods, mesh, and hollow members and thereby form a foundation with a reinforced slab and a plurality of intersecting reinforced beams." {Emphasis supplied] The reference to spacers made of concrete is significant for consideration of the Patent of Mr Leonardis, which is in suit. -6- It deals with spacers which are more closely crafted for use with the hollow members. In the complete specification of the Koukourou Patent, the "hollow members" are further described as: "formed from a stiff waterproof cardboard containing internal baffles for strength, or a rigid foamed polymeric material, either of which has a characteristic of providing good heat insulating properties, and is sufficiently rigid to support fluent concrete when poured over the reinforcing members and the hollow members." The application date for the Koukourou Patent was 24 December 1986. The application date for the Patent in suit is 23 October 1986, when provisional specification No. PH8650 was filed. This was followed on 16 January 1987 by a second provisional specification (No. PH9915) and on 15 May 1987 by a third provisional specification (No. P1I1931). Each respondent opposed the application of the other. The opposition to the application for the Koukourou Patent was withdrawn by Mr Leonardis after an application for amendment under s. 77 of the 1952 Act was made by Koukourou. The opposition by Koukourou by the Leonardis application was then withdrawn on 20 August 1991. Both patents proceeded to sealing. The first and second provisional applications filed 23 October 1986 and 16 January 1987 may be relied on, in -7- combination, to provide the priority date of the claims of the Patent. The circumstances in which this may be done are set down in reg. 3.12 (1) of the Patents Regulations ("the Regulations") in force under the 1990 Act. This states that subject to other provisions not immediately material, the priority date of a claim of a specification is the earliest of the date of filing the specification and, if the claim is "fairly based" on matter disclosed in "1 or more relevant applications", the date of making the relevant application in which the matter was first disclosed. A "relevant application" includes a provisional application which is associated with a complete application (reg. 3.12 (2) (a)). In address, counsel for Mr lLeonardis conceded that' the earliest priority date his client properly could claim was 16 January 1987, the date of the second provisional application; 23 October 1986 was not appropriate because of the need for fair basing to rely on the combination of the first and second provisional applications. It should be noted that by 14 March 1987 there had been sales of spacers by Mr Leonardis. The evidence of Mr Graham Beales establishes this. It is accepted that the result is that by 14 March 1987 the invention now claimed in the Patent was no longer novel. The invention had been published by the patentee himself; spacers had been sold and applied in building foundation form work as claimed in the Patent. Therefore, it is essential for Mr Leonardis to make good a claim to a priority date before March 1987, namely 16 January -g- 1987. Hence the importance of "fair basing", and reliance upon the first and second provisional applications. The third, filed 15 May 1987, came too late to be of assistance now in this regard. The complete specification for the Patent alludes to the invention claimed in the Koukourou Patent, and then goes on to deal with the advance claimed in respect of spacers. The complete specification includes the following: "More recently a cardboard box has_ been proposed which has considerably reduced the potential cost of this part but there has been a major problem in respect of holding such cardboard boxes in relation one to the other in such a way that the boxes will retain with sufficient integrity their relative position especially during the pouring of concrete, and secondly such that any means that might be used to hold the boxes in a relative position do not of themselves unreasonably reduce the integrity of any foundation that is subsequently poured. The problem in particular arises because of the inherent constructional characteristics of a cardboard box and the extremely high forces that result when concrete is being poured in a channel on one side of a box where there is no equivalent material on the opposite side of the box. After considerable investigation I have found that cardboard boxes of the type being discussed can be sufficiently held against such lateral pressures if there are means which engage against respective sides in the vicinity of the corner of the box. This is achieved by providing a spacer therefore which engaged against both sides of a corner of a first box, and at the same time against both sides of a corner of a second box adjacent the first, where the two boxes define therebetween a channel shape, and accordingly -9 - provide substantive resistance to such distortional pressures." Later it is said that the spacers may be made of plastic or other compatible materials such as steel sheet which can be cut and folded into an appropriate shape. On 25 September 1991, Mr Leonardis and Koukourou & Partners Investments Pty Limited ("Koukourou Investments") registered the business name ""Podlock Distributors". On 1 October 1991, (that is to say, since a date after the commencement of the 1990 Act), these parties, trading as Podlock Distributors, began to distribute and sell a system known in the building trade in South Australia as the Podlock foundation form work system. It was suggested from the bar table that by the time of the trial, this business association had ceased. The evidence includes a promotional video (Ex. 13) showing the employment of this system at a particular building site. The video was made in October 1993 and runs for about 6 minutes. It involves the use of a plurality of cardboard boxes, spacers and bar chairs. It is appropriate at this stage to refer to bar chairs in a little more detail. In any concrete slab construction, it is usual to embed steel mesh within the slab to reinforce it. The plastic "bar chairs" are employed to support the mesh and are usually located at the intersection of the rods or wires of the mesh. Examples of bar chairs in operation are illustrated as Item 15 in Figures 3 and 4 of the drawings to - 10 - the Koukourou Patent. A copy of these is Schedule 1 to these reasons. he su Sartas instituted this proceeding under s. 128 of the 1990 Act in response to what it maintains were unjustified threats by Koukourou and Mr Leonardis to builders using the Sartas spacers. Sartas alleges that threats based upon alleged infringements of the Petty Patent and the Patent were unjustified because the Sartas spacers do not infringe, and, in any event, the claims of both patents are invalid. On 30 December 1992, the application was dismissed as against Koukourou, with no order as to costs. What remains is the litigation between Sartas and Mr Leonardis. In that litigation, the live issues are (1) a cross-claim by Mr Leonardis under s. 120 of the 1990 Act asserting infringement of the Petty Patent and of claims 1-5, 8, 9 and 12-17 of the Patent, and (2) a cross-claim by Sartas under s. 121 asserting invalidity of the Petty Patent and the Patent on the grounds ef (a) prior publication and lack of novelty, (b) obviousness, (¢) non-compliance with the requirements of s. 40 of the 1990 Act, including assertions that the claims are not clear and succinct and are not fairly based, (d) false suggestion, and (e) double claiming. It is also asserted, though the grounds for this fluctuated in the course of the trial, that Mr Leonardis is not entitled to the Patent, and that there is no claim to an invention. -11- At the trial, most attention was directed to issues of infringement, fair basing, novelty and obviousness. The construction of the Patent plainly 1s a matter of primary importance in the litigation. In Glaverbe Av British Coal Corporation [1994] R.P.C. 443 at 485-486, Mummery J. set out a number of what his Lordship said were uncontroversial propositions as to construction. Some of these are certainly applicable here, as being in accordance with the development of the law in Australia. From what was said by his Lordship useful guidance, in particular, is to be derived from the following propositions. Some of them were applied in rulings on evidence in the course of the trial. They are: (1) "It is for the court, not for any witness, however expert, to decide the question of construction in accordance with the Meaning of the language used. Evidence can be given by experts to enlighten the judge on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning." [C£ Agfa~Gevaert Ltd v Collector of Customs (1994) 124 A.L.R. 645.] (2) "The specification should be construed without reference to the prior documents relied on as a ground for invalidity with a view to avoiding the effect of the prior documents. A fortiori, documents Subsequent to the complete specification -~ 12 - are inadmissible in aid of its construction." (3) "{I]t is not permissible to construe the claims by reference to the subjective thoughts, " intentions, purposes and opinions of the patentee or his witnesses or by reference to his actions before or after the grant of the patent." (4) "In reading the specification as a whole the different functions of the claim and the rest of the specification should be observed. The claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent: and 'what is not claimed is disclaimed'. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that. Although the claims are construed in the context of the specification as a whole, it is not permissible to restrict, expand or amend the clear language of a claim by reference to a limitation or gloss in the language used in the earlier part of the specification, but not repeated in the claim itself. It is legitimate, however, to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of the technical terms and resolve ambiguities in the construction of the claims." The passage which I have emphasised is better understood by reference to the remarks of Taylor J. in Martin v Scribal Pty Ltd (1954) 92 C.L.R. 17 at 97 (affd. 95 C.L.R. 213 (P.C.)): "Plain language must be given its' plain meaning, and clear words in a claim must not be tortured into an unnatural meaning by importing passages from the body of the specification (See Lord Russell's speech in Electrica] & Musical Industries Ltd v Lissen Ltd (1939) 56 R.P.C. at 41, 1. 34). The claims must also be construed without an eye on the alleged See also Melbourne v Terry Fluid Controls Pty Ltd [1994] A.I.P.C. 91-058 at 38,214; CCOM Pty Ltd v Jiejing Pty Ltd - 13 - infringer's acts. (So said Greene L.J. in RCA P opho Ltd v Gaumont British Picture Corporation (1936) 53 R.P.C. at 202, 1. 16). On the other hand, it is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work - this is an application of the old doctrine ut res magis valeat quam pereat - and is illustrated in Nobel's Case (1894) 11 R.P.C. at 524; and, where the language of a claim is obscure or doubtful, the doubt may sometimes be resolved by referring to words in the body of the document to explain it. This is known as the dictionary principle. (See Lord Haldane's speech in British Thomson-Houston Coy Ltd v Corona Lamp Works Ltd (1921) 39 R.P.C. at 67, 1. 44)." (1994) 122 A.L.R. 416 at 424. The Claims I turn to set out the text of the relevant claims in the Patent. directly in suit, because they are drawn in by, I include claims 6 and 7, although they are not Claim 9 which is then relied upon in these applications. text of the relevant claims is as follows: "1. A building foundation form work arrangement in which a plurality of boxes are located on a supporting level surface and are kept apart to leave channels between each side of each of the boxes by spacers within the channels between the boxes, at least one spacer engaging against both sides adjoining a corner of a first box, and at the same time against both sides adjoining a corner of a second box adjacent the first box. A building foundation form work arrangement as in claim 1 further characterised in that the Spacer engages against each of the two sides in particular, 10. - 14 - adjoining each of the corners of four adjacent boxes with corners at a common location. A building foundation form work arrangement as in either of the preceding claims further characterised in that each of the boxes has vertical reinforcing partitions within each of the boxes. A building foundation form work arrangement as in any preceding claim in which the boxes are each of cardboard. A building foundation form work arrangement as in any one of preceding claims 1 or 2 in which each of the boxes has four sides, a top and a bottom, is comprised of cardboard and has extending in crossing interlocking relationship cardboard planar strips acting as vertical reinforcing partitions extending from a bottom of a respective box to a top of a respective box, and each from a first side to an opposite side of the box. A building foundation form work arrangement as in preceding claim 2, further characterised in that the spacer is of a cruciform shape in plan and includes for each of eight sides of the respective boxes, an outermost engaging surface that is planar. A building foundation form work arrangement as in any one of the preceding claims further characterised in that the spacer' includes outermost planar surfaces engaging against the sides of respective adjacent boxes, and frame members holding such outermost engaging surfaces which frame members have a lowermost edge which is substantially above the supporting level surface. A building foundation form work arrangement as in any one of the preceding claims in which the spacer includes means to support and locate a reinforcement rod within a channel. A building foundation form work arrangement as in the last preceding claim wherein the means of providing support for a reinforcement rod includes a portion of the spacer that has an upwardly open slot. A building foundation form work arrangement as in any one of the preceding claims further characterised in that there is at least one box located above another box and there is a 11. 12. 13. 14. 15. 16. - 15 - joining spacer engaging against adjacent sides of a corner of a first of the boxes where there is a lowermost box, and against adjacent sides of the corner of a second of the boxes which is above the first of the boxes and wherein the said corner is above the corner of the first said box. - A building foundation form work arrangement as in the last preceding claim wherein the joining spacer includes two spikes a first engaging within a first of the boxes and a second within @ second of the boxes so as to hold thereby engaging surfaces against the respective sides of the respective boxes. A spacer for a building foundation form work arrangement wherein a plurality of boxes are located in spaced apart relationship to define therebetween channels, the spacer including outermost engaging surfaces adapted to engage against both sides adjoining a corner of a first box, and at the same time against both corners {sides} adjoining a corner of at least a second box adjacent the first box, the spacer being characterised in that each of the outer most engaging surfaces is held by a frame member extending between at least one other of the outermost engaging surfaces each of the frame members having a lowermost surface which is substantially above a lowermost edge of each of the engaging surfaces such that concrete can extend continuously beneath each of the said frame members. A spacer as in the last preceding claim further characterised in that the spacer is of cruciform shape in plan having thereby eight engaging outermost surfaces adapted to engage respectively against both sides adjoining a corner of each of four adjacent boxes with the corners at a common location. A spacer as in the last preceding claim further characterised in that there is included an upwardly extending medially positioned part having an upwardly open U-shape slot therein adapted to support and hold a reinforcing rod thereby. A spacer as in any one of the last three preceding claims further characterised in that the spacer is moulded from plastics material. A method of preparing a form work arrangement for the pouring of a foundation for a building ~ 16 - which comprises the steps of locating within a boxed area and over a substantially level area of supporting surface, a plurality of boxes each of which are kept apart one from the other to leave channels between the respective sides of the boxes, locating within the respective channel shapes a spacer such that the spacer engages against both sides adjoining a corner of a first box, and at the same time against both sides adjoining a corner of a second box adjacent the first box, and effecting support within the channels, on the spacer, of a reinforcement rod. 17. A method of preparing a form work arrangement as in the last preceding claim further characterised in that each of the boxes are comprised of cardboard, and the spacer is such that it engages against both sides adjoining a corner of each of four boxes with the corners at a common location. 18. A building foundation form work arrangement Substantially as described in the specification with reference to and as illustrated by the accompanying drawings." The drawings are comprised in figures 1 - 12. Claims 19, 20 and 21 are for a spacer "substantially as described in the specification with reference to and as illustrated by" figures 3, 4 and 6 respectively. Figure 3 is for a four-way spacer, figure 4 a three-way spacer, and figure 6 a one-way spacer. Infringement - Claims 12 - 1 As I have indicated, infringement is alleged of claims 1, 2, 3, 4, 5, 8, 9, 12, 13, 14, 15, 16 and 17. I turn first to consider claim 12 and the dependent claims 13, 14 and 15. One preliminary point should be mentioned. It concerns the 5lst word in claim 12. This reads "corners". If the claim is read in this form it is clear that ~17- there is no infringement. At the trial, in the end it was accepted by ali counsel that "corners" should read "sides". If the significance of the discrepancy concerned no more than the parties presently before the Court, then there might be scope for application of a principle that no formal amendment was necessary because the true meaning was apparent as a matter of construction; cf Fitzgerald v Masters (1956) 95 C.L.R. 420 at 426-427, Watson v Phipps (1985) 60 A.L.J.R. 1 at 3. But, of course, the specification operates to confer rights in rem and the legislation makes specific provision for amendment. Further, I was told that infringement litigation concerning the Patent is on foot in another court against the parties identified as Theta Developments Pty Limited, Reinforcement Bar Spacer Pty Limited and Podfix Pty Limited. Accordingly, on the last day of the trial, 2 September 1994, I gave directions for the advertisement of a motion seeking amendment of claim 12. The notice of motion will be made returnable no earlier than 14 days after delivery of these reasons for judgment. In the meantime, it was accepted that I should proceed to determine this case on the footing that claim 12 uses the term "sides" rather than "corners". Claim 12 is a claim for an object identified as "a spacer" which has certain characteristics. First, it is "for", that is to say adapted for use in, a _ building - 18 - foundation form work arrangement in which a plurality of boxes is so located and spaced apart as to define channels between the boxes. Next, the spacer has "outermost engaging surfaces". These are adapted to engage at the same time against both sides "adjoining" a corner of a first box and again both sides "adjoining" a corner of at least a second box "adjacent" to the first box. The term "adjacent", in contrast to "adjoin", serves to emphasise that whilst the boxes are part of the one form work arrangement, the spacer serves to keep a channel between them to facilitate the flow of concrete. Each of the outermost engaging surfaces of the spacer is "held by a frame member" which extends between it and at least one of the other outermost engaging surfaces of the spacer. Each frame member is characterised by the relationship between (a) its lowermost surface, and (b) "a lowermost surface edge" of each engaging surface of the spacer. This relationship is claimed in terms of result, namely, (a) must be so substantially above (b) that concrete can "extend continuously" beneath the frame member. The ordinary reader skilled in the art would understand that the building foundation form work was for use in the pouring of concrete for a building foundation, and that the phrase "continuous extension" or flow of the concrete beneath - 19 - the frame member was concerned with flow which resulted from the pouring of the concrete. The importance of facilitating the continuous flow of concrete in the construction of concrete beams was undisputed. What was in contention were several points of construction of claim 12 which turned upon the particular form of words used in the claim. To these I turn. The outermost engaging services must be adapted "to engage against both sides adjoining a corner of a first box" and also, at the same time, to engage "against both sides adjoining a corner of at least a second box adjacent to the first box". Further, each of the outermost engaging surfaces 1s "held" by a frame member. One issue concerns, in this context, the meaning of "engage against". That which are subjected to the engagement are certain sides "adjoining", in each case, a corner of a box. One meaning of "engage" is to interlock, as where one piece of machinery fits into a corresponding part, such as a cog wheel. One surface may also engage against another surface, such as that adjoining a corner of a box, if it bears upon it and supports it. One meaning of "engage" given in "Webster's Third International Dictionary" is to make an architectural member fast; another is to cause parts to come into contact each with the other. - 20 - In the present case, claim 12 speaks of the surfaces of a spacer engaging against sides adjoining corners of boxes. This suggests that the engagement is achieved by something less than the interlocking involved with one portion of machinery engaging another, as a cog wheel. In my view, "engage" is used more in the senses discussed above with reference to the treatment in Webster. It is necessary now to turn to the alleged infringement. Schedule 2 to these reasons is a diagrammatic representation on reduced scale of the four-way Sartas spacer, Ex. D2. Exhibit Dl has three rather than four elements radiating from the central circular portion. Nothing for present purposes turns upon that difference in the two varieties of the Sartas spacer, save that it is conceded that the three-way spacer does not infringe claim 13. Mr Leonardis alleges infringement, within the terms of claim 12, asserting that the outermost engaging surfaces 7 and 8 are adapted to engage against both sides adjoining a corner of a first box, and that the surfaces 4 and 6 are likewise adapted to engage the sides adjoining a corner of a second box. This would be true also respectively of items found in corresponding places on the other projections, with the result that the spacer would engage with, and keep separate, the corners of four adjacent boxes. This would define a channel between them at their cross-roads, for the flow of concrete. -~21- It should be noted that the claim does not require the surface of the spacer to engage the corners themselves of the boxes. Counsel for Sartas submitted that there could be no infringement because the spacer did not, as she put it, engage "yight up to" and "directly adjoining" the corners. However, the claim speaks of surfaces of the spacer which are adapted to engage "against" certain "sides" of boxes. Those sides are identified as the sides "adjoining" the corners. In a loose sense, any side of a box will adjoin corners of the box. However, what is involved in Claim 12 is an engagement against sides which "adjoin" a corner, in the sense that the engagement occurs at an area on the side of the box which lies close by the corner. The ordinary skilled addressee of claim 12 would, on the evidence, perceive that each of the plurality of boxes spoken of was an object, in comparison to the size of Ex. D2, of significant proportions. Whether the engagement occurs against the side of such a box lying close to a corner is a matter for assessment in each case. My conclusion in the present case is that the engagement which would occur using Ex. D2 would fall within the terms of claim 12. In reaching this conclusion as to this aspect of the construction of claim 12, I have had regard to, though I have derived no decisive assistance from, the contextual evidence provided by the various experts including Mr J. Goldfinch, Mr T.G. John and Mr D. Combe. - 22 - I turn to the next point concerning construction and infringement of claim 12. The requirement of claim 12 that the relationship between the lowermost surface of the frame members and the lowermost edge of each engaging surface of the spacer be such that the first is so substantially above the second that concrete can flow continuously beneath the frame member, plainly 15 an essential integer. Sartas submits, and I accept, that this integer is lacking in the Sartas spacers and for this reason there is no infringement of claim 12, nor of the subsidiary claims 13, 14 and 15. The relevant portion of claim 12 uses the expression "frame member". A "frame" may have the meaning of a structure which serves as the underlying or basic support, here holding, and thus separating, the engaging surfaces of the spacer. A "member" may be any constituent portion of a more complex structure, in this case the spacer. These senses of the terms "frame" and "member" have been taken from the second edition of "The Oxford English Dictionary". Given these meanings, which have common elements, the composite term "frame member" as used in claim 12 indicates a portion of the spacer which serves as a basic or underlying support to hold and thus separate the engaging surfaces of the spacer; by this means the engaging surfaces are kept in their relative respective positions in the overall structure. - 23 - There may be other elements in the Sartas spacers which are frame members in an unspecific sense. However, claim 12 is concerned with those frame members which serve a particular function. This is to hold an outermost engaging surface of the spacer and to extend between it and at least one other of those surfaces. Furthermore, this frame member must bear the specified relationship to the lowermost edge of each of those engaging surfaces. Counsel for Mr Leonardis submits that the Sartas spacers contain two frame members which, within the meaning of claim 12, hold an outermost engaging surface, and are "extending between" it and at least one other of the outermost engaging surfaces. In the representation of the Sartas spacer Ex. D2, these are marked 1 and 2. He contends that the upper frame member 1 has a lowermost surface 9 which 1s substantially above a lowermost edge of the engaging surfaces 3 and 4. Counsel submits that the lower of the two frame members, item 2, is an additional element not required by the claim; the necessary elements are constituted by the two vertical members which provide or hold the engaging surfaces 3 and 4 and the top member item 1; merely to add to an integer, which corresponds with the claimed integer, a further element which does not have a material effect on the way the invention works 18 to include an addition which does not result in escaping infringement. Counsel further submitted that the Court should infer that the addition of item 2 to the structure which - 24 - contains item 1 was an immaterial variation or minor variant adopted to avoid infringement. In that regard, he referred to authorities such as Minneso inin Manufacturin Oo. v Beiersdorf (Australia) Ltd (1980) 144 C.L.R. 253 at 286, and Prestige Group (Australia) Pty Ltd v Dart Industries Inc. (1990) 26 F.C.R. 197 at 208. Counsel for Sartas met those submissions in several ways. First, she contended, with considerable cogency, that if one eliminated the bottom frame member 2 from Ex. D2 there would be a real question as to the efficacy of the Sartas spacer, the top frame member 1 being supported by items 3 and 4 which themselves would be connected to the central portion 10 only by two of the three connecting arms. Further, the relevant integer in claim 12 1s limited by relationship between the frame member and the engaging surface which produces a particular result, namely the continuous flow of concrete beneath the frame member. Any difficulties in construction are to be approached bearing in mind that desired result. What is required is that each of the outermost engaging surfaces be "held by a frame member" which extends to at least one other of those surfaces. If an engaging surface is held by more than one frame member then, consistently with claim 12, each frame member must extend in the manner claimed and have a lowermost surface with the specified relationship to a lowermost edge of each of the engaging surfaces. In Ex. - 25 - D2, item 1 has that necessary relationship but item 2 does not. I accept these submissions. I accept that the term "a frame member", as used in claim 12, identifies what counsel for Sartas called the structure supporting and connecting the outermost engaging surfaces, the frame member being "substantially above" in the sense so as to achieve the result that the concrete may be poured continuously beneath the frame members. The skilled addressee would not read claim 12 as claiming an outermost engaging surface which was held by a plurality of frame members one of which did not, as to a lowermost surface, bear the necessary relationship to a lowermost edge of an engaging surface so as to _ permit attainment of the desired result. Put another way, if claim 12 were read as claiming a plurality of frame members, it would be the lowermost edge of the lower frame member which would have to be substantially above a lowermost edge of each of the engaging surfaces. This is not a case of a mere addition of an element where the infringing integer already is present; nor is it a case of an immaterial variation or minor variant which the Court should infer was devised to avoid infringement. There is no infringement of claim 12. It follows that there is no infringement of the dependent claims which are narrower because they claim further integers. - 26 - These claims are 13, 14 and 15. I should, however, deal with particular submissions made by Sartas as to construction and infringement of claim 14. Claim 14 requires a further integer by specifying that (a) the spacer include an upwardly extending medially positioned part and (b) this part have an upwardly open U-shape slot to support and hold a reinforcing rod. It is (a) which is to be medially positioned. Sartas accepts that item 5 in Schedule 2 may answer the description of "an upwardly open U-shape slot" which is "adapted to support and hold a reinforcing rod"; but the question is whether the frame containing item 5 is "medially positioned" in the spacer. Sartas submits that this slot, item 5, is not an element of "an upwardly extending medially positioned part" within the meaning of claim 14. Item 5 may be in the middie of the upper surface 1 of the frame. However, none of the frames containing an extension from the upper surface occupies a position in Ex. D2 which is in a medial relationship to item 11, at the middle of the spacer. Counsel for Sartas concedes that such a medial position is apparent in the spacer claimed in claim 19. Claim 19 was abandoned at the trial. It is for a spacer substantially described in the specification with reference to and as illustrated in figure 3 of the drawings. Figure 3 is Schedule 3 to these reasons. Item 34 is described in the body of the specification in the following passage: - 27 - "There can be crossing rods and the height of the upwardly open U-shape slots both at 33 and in the centre raised portion at 34, are of sufficient height so as to indeed support in either way rods in one direction and then second rods in a crossing direction lying above a first rod." Be that as it may, the immediate issue turns upon the meaning in claim 14 of the phrase "medially positioned part", to identify that which is included so as further to characterise the spacer. It is this "part" which must have the U-shaped slot. Each of the four frames in the Sartas four-way spacer could be such a part, if it were "medially positioned". The frames are positioned at the extremes or limits of the spacer. They are not so located as to answer the description "medially positioned" i.e. situated so as to be in or to pertain to the middle of the spacer, item 11. It follows that for these further reasons there is no infringement of claim 14. Claims 1- 5, 8, 9 - The Arrangement Claims Each of these claims is concerned each with what is identified as a "building foundation form work arrangement". The claimed arrangements are laid out on the ground of a construction site. The claimed arrangements use a spacer. However, the evidence indicates that the Sartas spacers are adapted for use not only in footing construction laid out on the ground of a construction site, but also in the construction of suspended floor systems. It follows that the - 28 - Sartas spacers are not such that one can say that a purchaser of them almost inevitably will use them in a _ building foundation form work arrangement as claimed, for example, in claim 1. Claim 1 is the widest of the arrangement claims. It characterises the arrangement as involving a plurality of boxes located on a supporting level surface and kept apart by spacers so as to leave channels between each side of each of the boxes; there must be at least one spacer which engages against both sides adjoining a corner of a first box and at the same time against both sides adjoining a corner of a second box which is adjacent to the first box. Mr Leonardis claims that Sartas is luiable for infringement of these arrangement claims on two bases. The first is provided by sub-s. 13 (1) of the 1990 Act. This states: "13 (1) Subject to this Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention." This section thus discards the traditional description, used in s. 69 of the 1952 Act, of the patent monopoly as one "to make, use, exercise and vend the invention". - 29 - Instead, the terms "to exploit" and "to authorise" are used. There is a definition of "exploit" in Schedule 1 of the 1990 Act, to which I refer later. Counsel invites attention to the use in this sub-section of the term "to authorise" and to the authorities dealing with the term "authorises" in sub-s. 36 (1) of the Copyright Act 1968. These show that to authorise may mean to "sanction, approve, countenance" that which is done, or to purport to grant to a third person the right to do the act of which complaint is made: Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 A.L.R. 205 at 243. Counsel for Mr lLeonardis refers to two pamphlets, together Ex. 11, which are apparently put out by Sartas. One bears on the title page the words "Ribbed Raft, The New, Economical Way to Build Concrete Raft Slabs", and the other "Easy Steps for Ribbed Raft Slab Construction". The pamphlets are in colour with diagrams and photographs. The first is of S1x pages and the second of four pages. I accept the submission that each brochure, by words, drawings and photographs or a combination thereof provides information for the making of building foundation form work arrangements. I further accept that the information includes the use of Sartas spacers to keep the cardboard boxes or void formers apart, by holding them evenly in place so as to -~ 30 - provide channels which effectively become concrete beams after the concrete is poured. Thus, in the "Ribbed Raft" brochure, the following appears under the heading "Slab Preparation": "Form work is set up on a levelled building site, termite proofed and plastic sheeting is laid out. Then the void formers are put down in a grid pattern. The void formers may be cut across their full width, or cut to accommodate any exposed plumbing before being sealed with tape. The spacer system, developed by SARTAS is used to hold the void formers evenly in place. Reinforcing rods and mesh are then fitted to SARTAS spacers and bar chairs. This system ensures that all the reinforcing materials are in the correct position, conforming to the relevant Australian standards. The concrete is poured, and vibrated into the rib spaces between the void formers. " On the back page of the same brochure, there appears: "Construction takes place on cleared levelled surfaces, allowing work to continue uninterrupted in inclement weather conditions. The environment friendly system uses cardboard void formers arranged on the levelled building area in a grid pattern with reinforcing between and above the void formers. Concrete fills the spaces between and across the Ribbed Raft to form a slab over the entire area. The spaces between the void formers effectively become concrete beams on ribs resulting in a slab which is a structural element of immense strength." Counsel for Mr Leonardis refers to the distinction drawn in copyright law, but now applicable in patent law, between liability for infringement as a joint tortfeasor and liability - 31 - for authorisation of the acts of another: WEA International Inc. v Hanimex Corporation Ltd (1987) 17 F.C.R. 274 at 282- 288. The submission is that whilst the supply of the brochures with the information they contain may not establish a common design which renders Sartas a joint tortfeasor with the person or persons who later act upon that information by preparing building form work arrangements, nevertheless Sartas has, in the necessary sense, sanctioned, approved and countenanced such activity and thereby authorised it within the meaning of s. 13 of the 1990 Act. Counsel for Sartas responds with a number of formidable submissions. She says that there is no evidence to show that her client uses or has itself used a spacer of any type in making a building foundation form work arrangement. Nor, as she emphasises, is it suggested that Sartas constructs for others such arrangements using any type of spacer. Certainly Sartas produces and sells the Sartas spacers. It uses promotional material in marketing them, but the only detailed evidence of this is in Ex. 11. Further, counsel submits that the mere supply of instructions, with or without one component of a claimed combination, is insufficient to constitute infringement. In that regard, counsel refers to CCOM Pty Ltd v Jiejing Pty Ltd (1993) 27 I.P.R. 577 at 625-627, where the authorities were reviewed by Cooper J. Nothing said by his Honour on that subject was affected by the appeal, (1994) 122 A.L.R. 417. ~ 32 - Counsel for Sartas also emphasises the exiguous nature of the evidence put forward by Mr Leonardis and to the lack of evidence of any particular instance of an act of infringement of claim 1 or related claims by the builder of any foundation form work arrangement; there has been a failure to establish the doing of an act of primary infringement consequent upon the supply by Sartas of Sartas spacers: RCA Corporation v John airfax ons Ltd [1981) 1 N.S.W.L.R. 251 at 256-258. Finally, counsel refers to evidence which indicates that the plastic spacers are adapted for uses other than in on-ground form work arrangements. The evidence includes that of Mr Beales that since the commercial introduction of plastic spacers in 1987, he has seen them used in applications other than the construction of waffle slabs as footings for buildings; in particular, he has seen them used in the form work for construction of waffle slabs for suspended floors. It follows, counsel for Sartas submits, that this is not a case where her client can be said to be responsible for placing in the hands of another materials which by their nature must almost inevitably be used for the purpose of infringement of claim 1 and the other arrangement claims: RCA Corporation, supra at 259-260, CSB Songs Ltd v Amstrad Consumers Electronics Pic [1988] A.C. 1013 at 1052-1055, stralian e anufacturers Association Ltd v The Commonwealth (1993) 176 C.L.R. 480 at 497-498. The spacers, counsel submits, were capable of substantial use which did not involve infringement of claim 1 or the other arrangement claims. - 33 - Each of these submissions should be accepted. It follows that the allegation of infringement based upon authorisation within the meaning of s. 13 is not made out. Counsel for Mr Leonardis also relies upon s. 117 of the 1990 Act. This states: "117 (1) If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent. (2) A reference in subsection (1) to the use of a product by a person is a reference tos: (a) if the product 18 capable of only one reasonable use, having regard to its nature or design - that use; or (b) if the product is not a _ staple commercial product - any use of the product, if the supplier has reason to believe that the person would put it to that use; or (c) in any case - the use of the product in accordance with any instructions for the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier." The operation of s. 117 1s limited in cases where reg. 23.11 applies, but because the supply by Sartas did not pre- date the commencement of the 1990 Act on 30 April 1991, nothing for this case turns on reg. 23.11. - 34 - I should refer also to the definition in Schedule 1 of "exploit", the term used in sub-s. 13 (1). The new definition draws a careful distinction between those cases where the claimed invention is a product, and those where it is a method or process. Claims 12 - 15, already considered, are for a product, namely a spacer. The claims of the Patent now under consideration are (and the claim of the Petty Patent was) for a method or process for arranging building foundation form work. The definition of "exploit" is as follows: ""'Exploit', in relation to an invention, includes: (a) where the invention 1s a product - make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or (b) where the invention is a method or process - use the method or process or do any act mentioned in para. (a) in respect of the product resulting from such use." It would follow that where the invention was a chemical process, it would be an exploitation and therefore an infringement within the meaning of s. 13, either to use the process or to do any act mentioned in para. (a) in respect of the chemical substance which was the product resulting from the use of the process. - 35 - Section 117, in its application to method rather than product claims, was considered in Rescare both at first instance (111 A.L.R. at 242-243) and on appeal (122 A.L.R. 141 at 164). The submission for Mr Leonardis 1s contrary to the tenor of what was there said. The submission is to the effect that paras. (b) and (c) of sub-s. 117 (2) apply to any use of the Sartas spacer by the builder; therefore, it is said, supply by Sartas itself is an infringement, Sartas not being 4 patentee or licensee of Mr Leonardis. However, for s. 117 to apply to the present case, there must be a product the use of which by a Sartas customer in one or more of the ways described in sub-s. 117 (2) would infringe. It follows from what I have held earlier in these reasons that there could be no infringement, at any level, of any of the product claims. Further, where, as with claim 1 and the subsidiary claims, what relevantly is claimed is a method or process, exploitation occurs, other than by use of the method or process, only by the doing of an act mentioned un para. (a) of the definition of "exploit". There must be an act done "in respect of a product resulting from such use". Here, unlike the situation with the chemical process example, there is no such product derived from the activity of the customer, still less any such product supplied by Sartas so as to attract the operation of s. 117. - 36 - In my view, s. 117 has no application to the claims in question. These are the arrangement claims, Nos. 1-5, 8 and 9. The same reasoning, in relation both to "authorisation" within the meaning of s. 13, and the application of 117, applies to the method claims 16 and 17. It applies also to the claim of the Petty Patent. It follows that the case for infringement, both as regards the Petty Patent and those claims of the Patent relied upon, fails. I turn to consider the issues of validity. Fair Basing - Principles As I have indicated, by 14 March 1987 there had been sales of spacers by Mr Leonardis. The consequence is that it is essential for Mr Leonardis to make good a claim to a priority date before March 1987. In particular, the issue is whether the claims of the Patent are fairly based on matter disclosed in the first two provisional applications filed 23 October 1986 and 16 January 1987. The applications may be taken together for this purpose. If the claims are not fairly based, they will lack novelty. There is also an issue as to whether claims 1, 12, 16 and in each case the respective dependent claims, are "fairly based on the matter" described in the complete specification - 37 - of the Patent, within the meaning of sub-s. 40 (3) of the 1990 Act. The questions of fair basing thus arise both in the consideration of the interrelation between the claims and the body of the specification, that is to say from a comparison between different parts of the one document, and of the interrelation between the provisional and complete specifications. The issue does not concern the relationship between the claims in an Australian complete specification and matter disclosed in a basic application which has been made in a Convention country. This case concerns those two aspects of the doctrine of fair basing which stem from the introduction both of provisional specifications and of claims in their modern form; see CCOM Pty Ltd v Jiejing Pty Ltd (1994) 122 A.L.R. 417 at 433-435. The first is that the claimed monopoly should not be wider than warranted by the disclosure to the public made in the body of the complete specification. The second is that the novelty of a claim should not be protected by a priority date given by the provisional specification if the claim 1s not fairly based on the disclosure in the provisional specification. CCOM discusses the authorities which provide support for various propositions in this field. These propositions include: (i) a claim may be fairly based on matter in the specification, which is not verbal (ii) (iii) - 38 - description but the accompanying drawings, or on matter which is a combination thereof; it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the specification "essential integers" or "essential features" of an invention disclosed therein and ask whether they correspond with the essential integers of the claim in question, so that a claim which is silent as to such an essential feature is bad because not fairly based; likewise, it 18 not a question of whether the earlier provisional specification "fairly described" what are the "essential features" of the invention disclosed in the later specification; the answer to an issue of "fair basing" is not resolved by application of an over- meticulous verbal analysis; thus, where the issue concerns a provisional specification, the fundamental question is whether there has been a_ ereal_ and reasonably clear disclosure so that the claim was "plainly foreshadowed" by the disclosure relied upon; - 39 - (iv) some generality of expression in the provisional application is accepted because where the holder of the provisional specification proceeds with the complete specification greater definition, as a result of further experimentation or otherwise, may _ be achieved before the latter step is taken and the result expressed in the complete specification; (v) if the question concerns the matter disclosed in the provisional specification it would be senseless to require that the subject matter of the claims of the complete specification have been actually claimed in the earlier document; (vi) the analysis of "fair basing" in terms of particular '"tests", such as the Mond Nickel tests, should not distract attention from the necessary width of the inquiry in ascertaining whether the claims travel beyond the matter disclosed in the provisional specification or in the body of the complete specification. Fair Basing - body of complete specification The issues as to fair basing, insofar as they turn upon the matter described in the body of the complete specification -~ 40 - for the Patent, may be disposed of fairly shortly. The particulars of these objections to validity are set out in para. 3.4.2 (a)-(e) of the Further Amended Second Cross-Claim, filed 10 June 1994. Particular (c) complains that claim 1 does not claim a combination of features which are claimed as being essential in claim 12; therefore, it is said, claim 1 is not fairly based "on the specification as a whole". The lack of co- extensive operation of the two claims cannot be a ground of objection that either of them is not fairly based on matter described in the specification. Particulars (b), (d) and (e) in substance each take from what 1s said to be a fair reading "of the specification" what are identified as particular "features". It is then said that one or more of the claims is "silent" as to this feature with the result that the claim in question 1s not fairly based. To approach the matter in that way is to fall into the error identified in proposition (ii) of the six propositions identified earlier in these reasons when dealing with CCOM. As counsel for Mr lLeonardis points out, it is no objection to any particular claim that it claims a monopoly for less than every feature described in the body of the specification. It cannot be the case that, for example, a claim is restricted to the precise embodiment which is depicted in the body of the specification. = 41 - A claim may be narrow in the sense that by reason of its inclusion of a large number of integers, a potential infringer may escape; but it may be a strong claim in the sense that there is a lesser likelihood of anticipation. If the patentee draws a claim which has less integers, the patentee may be in a stronger position as against an infringer, but in a weaker position to withstand an attack on novelty. That in a sense is a classical dilemma for the person drafting a patent claim. But it does not turn upon the law as to fair basing in the way that Sartas would have it in the submissions under consideration. That leaves particular (a). Claims 1, 12 and 16 are said to be "speculative". This term is usually used in relation to the objection that a claim should not include an "unexplored field" as to which it is impossible to predict how much of what is within it will be useful and will incorporate the discovery of the inventor; it 1s used particularly when dealing with claims in chemical patents. See, for example, Blanco White "Patents for Inventions", 5th ed., §4-805, §4- 806. The complaint is sometimes treated as involving a lack of fair basis; e.g. Re General Electric Co. Ltd's Application [1961}) R.P.C. 21. On the other hand, an objection that a claim is speculative in the sense of broad and indeterminate may more readily be seen as an objection that the claim does not define the invention (sub-s. 40 (2) (b)), or that the claim is not clear and succinct within the meaning of sub-s. 40 (3). ~ 42 - The complaint in particular (a) appears to proceed on the footing that claims 1, 12 and 16 define the invention by reference to a result; it then appears to be said that claims 1, 12 and 16 are speculative because they are not limited to the specific means given in the body of the specification as that by which the result is to be obtained. As I have indicated, claim 12 is limited by result in the particular sense that those integers being the frame members are required to have a lowermost surface which 15s substantially above a lowermost edge of each of the engaging surfaces, such that concrete can extend continuously beneath the frame members. The body of the specification points out that one particular problem associated with locating spacers in the manner described in the specification is that in some cases the spacers may aggravate a weakness in the structural strength of the foundation which 1s poured. It is said that this problem can be avoided by ensuring that the concrete extends to form an integral portion of concrete below the main body of any spacer. The reader of the specification is told that if the directions given are followed, "much concrete is allowed to flow and set below such frame members thereby maintaining as much as possible the structural integrity of the concrete". A specific illustration is given (p. 9, lines 27-32). This is not a case where the patentee has given to the addressee skilled in the art inadequate or no directions - 43 - by which the invention could be performed. Accordingly, claim 12 may, in the manner described, define the monopoly by reference to the result to be achieved: Pottier's Application [1967] R.P.C. 170 at 172. Claims 1 and 16 do not involve any definition of the monopoly claimed by reference to the result to be achieved, in the sense in which that expression is understood in the authorities which stem from No-Fume Ltd v Frank Pitchford & Co. Ltd (1935) 52 R.P.C. 231. The hypothesis upon which particular (a) rests thus is not made true. Objections to claims 1, 2, 6, 7, 12 and 13 also is made on the footing that they are not clear and succinct. I will return to this objection later in these reasons. Fair Basing - Provisional Specifications I turn now to consider the other aspect of fair basing, that concerned with the relationship between the claims and the provisional specifications. The objective of the patentee is to make good a priority date earlier than 14 March 1987 when there commenced the sale of spacers by or with the authority of the patentee. The first two of the three provisional specifications were lodged before 14 March 1987 but, as I have indicated, the third was lodged after that date and thus came too late to be of assistance in the present regard. The priority date which Mr Leonardis seeks to support and must retain is 16 January 1987, the date of the second provisional specification. - 44 - The text of the third provisional specification did refer to a problem which it said had been found to arise when bricks had been used as spacers. This was that when left in place during the concrete pouring process, the bricks did not integrate with the poured concrete; the result was a very significant weakening of the structural strength of the concrete. The third provisional specification went on to describe an arrangement using spacers stating that it will be preferable to have the arms so constructed as to have a lower edge higher than a lower edge of the face bearing against the boxes, thereby allowing concrete to pass and indeed form and set below the spacer arms. It was said that this would provide both for additional strength and for a sealing barrier against entry of moisture from below into an area surrounding the reinforcing rods. Similar statements are made in the body of the complete specification for the Patent. Further, as already indicated, claims 7 and 12 (with, in each case, dependent claims) speak, though in different terms, of frame members having a lowermost edge or surface which is "substantially above" a lowermost edge of each of the engaging surfaces (claim 12) or "the supporting level surface" (claim 7). Counsel for Sartas submits that whilst those claims might be said to be fairly based upon matter disclosed in the third provisional application, that is not so of what are the essential applications, the first and second applications. -~ 45 - Counsel for Mr Leonardis responds that the second provisional specification has in figure 4 a drawing of a four-way Leonardis spacer closely resembling figure 3 in the drawings of the Patent itself. Counsel also seeks to get some support from figures 1 and 3 of the second provisional application. But, as he says, figure 4 is his best case. In the body of the complete specification for the Patent, there is emphasis upon the need to ensure that the concrete for the foundation extends to form an integral portion of concrete below the main body of any spacer; it is said that this may be achieved by providing that each spacer has frame members which have a lowermost edge substantially above a lowermost edge of each outermost engaging surface of the boxes and, as such, above any supporting ground level surface (p. 4, lines 25-32). There is no dasclosure of this nature in the body of the first or second provisional specifications. The first specification describes a method of preparing form work for the pouring of a foundation with the location of a plurality of box elements and the use of spacing members adapted to hold the respective corners of the box elements a selected distance apart. The second specification is in respect of a further alleged invention whereby one box might be placed upon another to provide form work of twice the height, and securing means, a stake or spike, would be provided to secure respective corners of the boxes and keep them in place whilst concrete was being poured. The second - 46 - specification goes on to describe a plastic moulding which not only holds the box elements but which supports and locates the reinforcement rods. The figures 1 - 4 are then described. Figure 4 is described as "a full perspective view of a location member according to the embodiment". This is important, with the other text, in evaluating that which is disclosed to the reader who studies figure 4. There is nothing to suggest any significance, of a purposive nature, in the relative locations of the integers in figure 4 upon which Mr Leonardis relies. In the second specification, what is said is that the concrete is poured "as appropriate and all of the spacing units are left in position to be integrated in the final cast foundation" (p. 6, lines 12-13). It may be that there is some disclosure in figure 4, and perhaps figures 1 and 3, to the second provisional specification. But what is required is "a real and reasonably clear disclosure" so that it can be said that claims 7 and 12 were "plainly foreshadowed". In my view, that cannot be said of the disclosure in the_ second specification, in particular in the figures as introduced by the text. It follows that claims 7, 8, 9, 10, 11, 12, 13, 14 and 15 are not fairly based upon matter disclosed in the first and second provisional applications. This has the result that these claims are invalid by reason of the anticipation arising - 47 - from the activities of Mr Leonardis himself commencing in March 1987. Sartas does not attack, for lack of fair basing, claims 1, 2, 4, 6, 16 and 17. It does attack claims 3 and 5, each of which is dependent upon claims 1 or 2. The second provisional specification contains no disclosure in terms of the use of vertical reinforcing partitions in the cardboard boxes, as claimed in claims 3 and 5. It does, however, specify that the box elements shall include "such internal reinforcement as is necessary to provide for lost form work for the pouring of concrete foundations for buildings". Reinforcement of containers such as the cardboard boxes is ae fairly conventional matter, and I do not find a lack of fair basing in respect of claims 3 and 5. There remain for consideration on this branch of the case claims 18, 19, 20 and 21. Claim 18 is for a building foundation form work arrangement substantially as described in the specification with reference to and as illustrated by the accompanying drawings. In view of the finding as to lack of fair basing of claim 7, and the importance attached in the specification to the allowance for the full flow of concrete beneath the frame elements, I hold that claim 18 also is not fairly based. I turn to claims 19, 20 and 21. Each is for a spacer "substantially as described in the specification" and with - 48 - reference to and as illustrated by figure 3, 4 or 6 as the case may be. I have referred to the importance attached in the specification to the structure of the spacer so as to permit the free flow of concrete as described. Claims 19, 20 and 21 are for a spacer substantially as so described and the figures are to be read accordingly. But the first and second provisionals do not disclose in the relevant sense the free flow of concrete, despite the importance attached to this feature in the specification. It follows that claims 19, 20 and 21 are not fairly based in the necessary sense. That leaves the only claims which escape, at this stage, from anticipation by the activities of Mr Leonardis himself, claims 1, 2, 3, 4, 5, 6, 16 and 17. These are arrangement or method claims. Novelty I turn now to consider the other grounds upon which these remaining claims 1-6, 16 and 17 are said to lack novelty within the meaning of para. 18 (1) (b) of the 1990 Act. The foreign patent specifications upon which reliance is placed as anticipations all were published in Australia well before 1986. In particular, United Kingdom patent No. 1,407,699 ("the U.K. Patent") dated 19 June 1973 was published in this country on 16 March 1976. The prior publication must disclose all features of the invention in the patent in suit and must do so in clear, - 49 - unequivocal and unmistakable terms, to use the language of Lockhart J. Nicaro Holdings Pty Ltd v Martin Engineeri O. (1990) 91 A.L.R. 513 at 517. His Honour continued: "The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication . . . [TJhe prior publication must disclose all of the integers with the possible exception of the substitution of 'mechanical equivalents to perform analogous purposes': Sunbeam Corporation v Morphy- Richards (Aust.) Pty Ltd (1961) 35 A.L.J.R. 212 per Windeyer J. at 220 . . . [T]he term 'mechanical equivalents' is properly used in cases of want of novelty and the term 'workshop improvement' is essentially a term applicable to cases of obviousness .. . The essential point is that it 1s the combination which must be disclosed in the case of a combination patent .. ." Sartas also relies upon the Koukourou Patent as an anticipation. However, it was not published until 25 June 1987, that 1s to say until several months after the commencement of Mr Leonardis' own commercial activities. The remaining claims 1 ~- 6, 16 and 17 hold a priority date of 16 January 1987. Therefore, nothing turns upon the Koukourou Patent in this regard. However, Sartas also relies upon evidence of actual user of the Koukourou system before 16 January 1987. Before October 1986, Mr Koukourou formed a waffle raft by a series of boxes which were located in a grid formation and held apart by bricks which supported and located the steel reinforcing bars. - 50 - The bricks used were Celltex bricks. This is a commercially available brick widely used and has a longitudinal central channel. Schedule 4 to these reasons is a sketch of a Celltex brick provided by Mr John as an annexure to his affidavit evidence. The bricks did not affect the structure of the footings whilst supporting the reinforcement. One difficulty was that the boxes were apt to rotate during the pouring of the concrete; this was sought to be solved in this period by placing a brick near each corner of each box in the channel between the boxes. Another inconvenience was the weight and difficulty of handling the bricks when using them as spacers. The Celltex bricks often were split into shorter lengths with one piece being used at each end. Mr Beales in 1986 was a director of a company which distributed and supplied concrete form work components. On 4 June 1986, he was present at the erection of form work for the construction of a waffle pod footings system at a property in South Australia. He saw hollow boxes placed in a regular pattern on levelled ground to form straight channels between them. Steel reinforcing bars were placed in the channels and supported above the ground by Celltex bricks. The Celltex bricks held the boxes a fixed distance apart. These procedures were supervised at the site by Mr Peter Koukourou. The footings system was on display to passers by and not erected for experimental purposes. - 51 - Further, as a result of his dealings with Mr Koukourou, by October 1986 it was known to Mr John that a waffle slab could be and was used as footings by using (i) polyurethane or cardboard boxes as void formers, (ii) spacers which supported the boxes at each end and prevented the boxes from rotating during the pour of concrete, and (iii) which spacers supported reinforcement bars. A steel wire or plastic bar chair was used to support steel mesh and the bar chairs were located at the intersection of the perpendicular rods or wires of the mesh. A Celltex brick was placed near the corner of each box in the channel between the boxes. An example of what was done in practice is represented in figure 3 of the Koukourou Patent. Schedule 1 to these reasons is that figure 3, item 12 of which shows the use of a Celltex brick, and item 15 the use of the bar chair. One inconvenience of this system, appreciated by Mr John, was the weight and difficulty of handling the Celltex bricks used as spacers. The submission for Sartas 1s, in effect, that the brick, used as described above, was a "mechanical equivalent" of the spacer claimed in the Patent, so as to result in anticipation of the remaining claims 1 - 6, 16 and 17. Counsel for Mr Leonardis submits that the Celltex brick was lacking various elements of the Leonardis spacér so as to render it much less than a mechanical equivalent in the necessary sense. Thus, Sartas submits there is no anticipation of claims 1 - 6, because the brick does not act as a "spacer engaging - 52 - against both sides adjoining a corner of a first box and at the same time against both sides adjoining a corner of a second box adjacent to the first box"; it is, in my view, no answer that during the period before October 1986 in which Celltex bricks were used as spacers, for about 20 footings in South Australia, they were broken in half each half to bear against different sides adjoining a corner. What is required is that there be one article described as a spacer which has the characteristics of engagement claimed in claim 1; it might be added that it is not surprising that once on the market the Plastic spacers rapidly replaced the _ bricks. These conclusions produce the result also that there is no anticipation of claims 16 and 17. I should comment on some additional reasons dealing with claim 6. This requires a spacer of a "cruciform shape in plan" which includes an outermost engaging surface that is pianar for each of the eight sides of the respective boxes. The brick may be a spacer but it is not of a cruciform shape. Making full allowance for the doctrine of mechanical equivalents, there is lacking the necessary strength in the submission for Sartas that a cruciform shape may be achieved by placing four spacers in such a relationship. It follows that the user of the Celltex brick did not provide anticipation of any of the remaining claims said by Sartas to be rendered invalid, namely claims 1 - 6, and 16, 17. - §93 - I turn to consider the U.K. Patent. The U.K. Patent appears to use the term "locator" in a sense similar to that in which "spacer" is used in the Patent. It states: "One known form of building structure, and particularly a floor structure, is constituted by a plurality of relatively light-weight hollow or cellular concrete blocks which are arranged in such a position that more concrete can be poured into gaps between biocks to form in effect concrete beams. Steel reinforcement is normally incorporated in these concrete beams while they are being formed. In order to facilitate the regular positioning of the blocks and thereby to ensure regular thicknesses for the concrete beams to be poured between the blocks it is desirable that the relative positions of the blocks should be defined accurately. For this reason, it is known to lay a location member on the shuttering between blocks in order to ensure the correct relative positions of the blocks. The known locators are cast concrete slabs approximately 25 millimetres thick for a floor with a series of blocks and poured beams approximately 250 millimetres deep. An object of the present invention is to provide an improved form of locator to replace the concrete locator. Accordingly to the present invention there is provided a location member for blocks of a building structure comprising a cruciform member having four elongated arms of equal length radiating from a central boss, the outer end of each arm having two flanges formed at right angles to each other for locating the corner of a block. Preferably, the boss is adapted to receive a plug for the reception of a screw or like fixing means. The cruciform construction of the location member results in a reduced weight and facilitates handling of the location member. It - 54 - also enables the location member to be formed economically from a plastics moulding." Schedule 6 to these reasons comprises figures 1 and 3 to the U.K. Patent. The specification includes the following passage which should be read against figures 1 and 3: "The outer end of each leg 11 incorporates a right-angled location portion 21 which has an internal right-angle oriented in an outward direction. In use, the location member complete with a plug is mounted by means of nails through the holes 17 on flat shuttering arranged to support a floor. Further location members are also positioned appropriately in a similar way. A series of light-weight hollow or cellular blocks of concrete are then laid on _ the shuttering in appropriate positions with the corners of at least some blocks engaged in the right-angled portions 21 of the location members. Steel concrete reinforcement 1s then laid between the blocks along spaces between the blocks into which concrete is to be poured. The concrete 1s then poured. After the concrete has cured, the shuttering may hbe removed to leave a_= structurally complete floor." Claim 1 reads as follows: "1. A location member for blocks of a building structure comprising a cruciform member having four elongated arms of equal length radiating from a central boss, the outer end of each arm having two flanges formed at right angles to each other for locating the corner of a block." U.K. Patent does not satisfy the "reverse infringement" Counsel for Mr Leonardis submits that the teaching in the test - 55 - explained by Aickin J. in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 C.L.R. 228 at 235. This 1s said to be because there is lacking a number of essential integers of various central claims in the Patent. In particular, counsel for Mr Leonardis contends: 1. The U.K. Patent does not refer to the use of cardboard boxes. Rather, it refers to hollow or cellular concrete blocks. 2. There is no specification of a frame member extending between and separating the outermost engaging surfaces of the spacer or location member. 3. Nor is there any specification that the location member be so placed as to permit the ready flow of concrete around and beneath it; there is no such phrase as "substantially above the supporting level surface". 4. There is no integer such as the U-shaped slot for the support by the spacer of reinforcement rods. 5. There is no disclosure of a building foundation form work arrangement, nor a method of preparing such an arrangement. As I have indicated, the claims which, after the finding as to fair basis, still stand as novel are claims 1, 2, 3, 4, 5, 6, 16 and 17. fThe first six of these claim "a building foundation form work arrangement" and the last two claim a method of preparing a form work arrangement. Of the points - 56 - made by counsel for Mr Leonardis, points 2, 3 and 4 bear upon claims which are not still in the ring. As to point 3, I should add that, allowing for the evidence upon the issue, I do not accept the submission of counsel for Sartas that the drawing figure 3 accompanying the U.K. Patent does disclose a spacer in which the engaging surfaces are joined by a frame member which 1s, on visual inspection, "substantially above" the lowermost surface to be perceived in figure 3. As to point 4, I do not accept that although the U.K. Patent does not disclose the U-shaped slot found in the Patent, it is sufficient that it does state that steel reinforcements can be laid directly on the spacers (i.e. the location members) if the spacers be positioned at a sufficient depth within the poured concrete beam. That leaves points 1 and 5 of those made by counsel for Mr Leonardis. I would not accept the submission of counsel for Sartas that the use of hollow or cellular blocks is the application of a mechanical equivalent to the cardboard boxes referred to in these claims. Weight and ease of handling are obvious and significant advantages possessed by the cardboard boxes in preparing a form work arrangement. This is made apparent in the evidence, strikingly so in the promotional video made in October 1993 (Ex. 13). Further, I accept the evidence of Mr John, in cross-examination, that the U.K. Patent describes location members for blocks of building structures, in particular location members for suspended -~57 - slabs, and that it does not disclose, nor indeed make any mention of, any method of preparing building foundation form work. Nor a building foundation form work arrangement of any particular description. It follows that there is no anticipation of claims 16 and 17, nor of the other remaining claims 1, 2, 3, 4, 5 and 6. Old Publications Counsel for Sartas described the U.K. Patent as the main piece of prior art upon which she relied as a paper anticipation. Counsel also relied upon two foreign patents first published in Australia more than fifty years before any priority date advanced in respect of any claim of the Patent. The first of these was French patent 371,049 dated 3 November 1906 and published in Australia on 1 July 1907. Counsel made no submissions in support of the reliance placed upon this patent. She did, however, rely upon Norwegian patent 24422. The patent was effective in Norway from 23 November 1912 and appears to have been published in Australia in 1914. Sub-paragraph 158 (1) (a) (ii) of the 1952 Act states: "158 (1) Objection shall not be taken to an application for a patent, so far as the invention is claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, and a patent, so far as the - 58 - invention is so claimed, is not invalid, by reason only of - (a) the invention, so far as so claimed, having been published in Australia - (i) 2... (ii) in a specification describing the invention for the purpose of an application for protection in a country outside Australia made not less than 50 years before that date; As indicated earlier in these reasons, the result of the operation of 234 of the 1990 Act in the present case is that no claim of the Patent is invalid on any ground that would not have been available under the 1952 Act. Accordingly, counsel for Mr Leonardis submits that objection cannot be taken that any claim of the Patent is invalid by reason only of the publication in Australia of the Norwegian patent. He submits that (a) s. 158 of the 1952 Act in conjunction with s. 234 of the 1990 Act renders the Norwegian patent irrelevant on the question of novelty, and (b) the Norwegian patent can, on the facts of this case, have no relevance on any other ground. He concedes that the disclosure in the Norwegian patent could be relevant if it had become part of common general knowledge but, on that hypothesis, the impact on validity would not be the result simply of the publication in Australia of the Norwegian patent, its disclosure and teaching having been assimilated into common general knowledge before the relevant priority date. These submissions should be accepted. ~ 59 - Counsel for Sartas fixes upon the words in para. 158 (1) (a) "is not invalid,- by reason only of . . . the invention, so far as so claimed, having been published in Australia .. ." She submits that although the publication of the foreign specification could not be relied upon as an anticipation, nevertheless the terms in which s. 158 was expressed had the consequence that the publication was "admissible as evidence" and "relevant" for any other ground upon which a patent might be held invalid. The evident purpose of the various paragraphs in sub-s. 158 (1) is to take a miscellany of activities (including exhibition of the invention at certain exhibitions and public use thereof at such an exhibition, and the public working of the invention in Australia for reasonable trial) and to make it clear that these activities, contrary to what otherwise might have been their consequence, do not render the patent invalid. For example, para. 151 (1) (h), dealing with the public working of the invention for the purpose of reasonable trial, put in statutory form the general law position as to when experimental public use would not amount to publication by prior user. The general law had been explained in Longworth v Emerton (1951) 83 C.L.R. 539. Limited statutory protection also previously had been made by s. 124 of the Patents Act 1903, also discussed in this case. - 60 - I accept the submission for Mr Leonardis that s. 158 specifies various acts of publication or user so as to confirm or make it clear that a claim is not invalid by reason only of that activity. Publication, by itself, amounts to anticipation and thus is part of the law as to novelty. In my view, nothing follows from the submission for Sartas that s. 158 refers to publication (and use), "not novelty per se". Publication and public use are the essence of the law as to novelty. Nor do I accept that even in a case, such as the present, where para. 158 (1) (a) operates, it is nevertheless possible to say of the publication that it renders the manner of manufacture claimed a manner of manufacture which is not new. Double Claiming The allegation here is that claims 16 and 17 of the Patent and the claim of the Petty Patent claim an invention that is the same, and that both patents were in force during the period 14 September 1991 to 23 October 1992. Claims 16 and 17 of the Patent have been set out earlier in these reasons. The claim of the Petty Patent as follows: "A method of preparing form work for the pouring of a concrete foundation which comprises the steps of locating within an area and over a substantially level area of ground, a plurality of spaced apart cardboard box elements, and locating at, at least one junction of such box elements, a spacing member adapted by reason of location and shape to abut adjacent sides of each corner of each box element forming the junction and thereby hold these within a selected location and a selected minimum distance apart." - 61 - Double claiming or prior claiming was a ground of revocation under the 1952 Act (para. 100 (1) (f)). It is not one of the grounds of revocation which are permitted under s. 138 of the 1990 Act. Section 138 states that revocation may be ordered on six specified grounds, "but on no other ground". Nevertheless, Sartas relies upon what it says is the operation of s. 64 of the 1990 Act in the present case. This provides: "64 (1) Subject to this section, where there are 2 or more applications for patents for identical, or substantially identical, inventions, the granting of a patent on one of those applications does not prevent the granting of a patent on any of the other applications. (2) Where: (a) a patent application claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor; and (b) the relevant claim or claims in each of the complete specifications have the same priority date or dates; @ patent cannot be granted on the application." Section 64 is directed to the Commissioner who otherwise would be obliged by s. 61 (standard patents) and s. 62 (petty patents) to make a grant. As a general proposition, the concurrent existence of two or more applications does not prevent a grant on both of them where the applications are for identical or substantially identical inventions. A somewhat different situation applies where the application before the - 62 - Commissioner claims an invention the subject of a patent already granted. A grant on the application is not to be made (i) if the invention claimed in the application is "the same as" the subject of the existing patent, and (ii) if there is the same inventor, and the same priority date of the relevant claim or claims. The phrase in sub-s. 64 (2) "the same as" may be contrasted with that in sub-s. 64 (1) "identical, or substantially identical". In my view, whilst the same common concept is conveyed by the notions of a claim for an invention that is the same as another invention, and patents for adentical inventions, the notion of "substantial identity" falls outside that which 1s conveyed by the phrase "the same" in sub-s. 64 (2). Substantial identity will not be sufficient to render one invention the same as another. The Petty Patent claims "cardboard box elements" whereas claim 16 claims "boxes"; the point is not insignificant because there is evidence that void formers used before the priority date were made of materials other than cardboard. Further, whilst the spacer in claim 16 is to "engage against" both sides adjoining a corner of a first box and against both sides adjoining the corner of a second box adjacent to the first box, in the Petty Patent the spacer is adapted by reason of location and shape "to abut adjacent sides of each corner of each box element". To "engage - 63 - against" a side adjoining a corner is not necessarily to abut adjacent sides of each corner. ""Abut" ordinarily means to end at or to lean upon at one end. Finally, the claim of the Petty Patent lacks an essential integer of claim 16, namely the requirement that the spacer effect support within the channels of a reinforcement rod. A method which complied with the claim in the Petty Patent thus would not infringe claim 16. Nor would claim 16 infringe the claim of the Petty Patent if, consistently with claim 16, the boxes were constructed other than of cardboard. In those circumstances, and whatever the result of debate as to the different between "engage against both sides adjoining a corner .. ." and "abut adjacent sides of each corner . . ." it cannot be said that, within the meaning of sub-s. 64 (2), the application for the Patent claimed an invention which was the same the subject of the Petty Patent. Therefore, sub-s. 64 (2) did not oblige the Commissioner to deny a grant on the application for the Patent. The same conclusion follows if reliance be placed upon claim 17 of the Patent. In argument, Sartas sought to broaden the point, without seeking prior leave, by going beyond the Particulars given in the Further Amended Second Cross~-Claim filed 10 June 1994. It was sought to draw in also claims 1 - 5 of the Patent. I would not grant leave for this to be done. It is important ~ 64 - that patent trials be fought on the basis of particulars of objection of which notice has been given well in advance of the commencement of the trial. In any event, the reasoning which leads to an adverse conclusion as regards reliance upon Claims 16 and 17 would defeat reliance upon the other claims. I should refer briefly to a further point. I do not accept that the consequence of the Commissioner making a grant where he should not have done so by reason of s. 64 is to render the patent void. Questions of avoidance are dealt with through the statutory mechanism of revocation. Various grounds of revocation are provided in Chapter 12 of the 1990 Act, s8. 133-140. Grounds of revocation for want of compliance with the requirements for grant contained in the Act are spelled out in s. 138. Non-compliance with s. 64 18 not one of them. Remaining Section 40 Grounds In addition to the complaints as to fair basing of the claims of the Patent upon the matter described in the complete specification of the Patent, Sartas contends that in various respects the claims are not clear and succinct within the meaning of sub-s. 40 (3) of the Act. These bear upon claims some of which are not still in issue because of the conclusion I have reached as to lack of fair basis. Nevertheless, it is convenient to take all the objections together. - 65 - It is contended that claim 1 is not clear as to the meaning or scope of the term "boxes" or "spacers", and that this is true also of the term "planar" in claim 6, "substantially" in claim 12, and ""thereby" in claim 13 in relation to the phrase "cruciform shape in plan". In addition, complaint is made as to claim 7 in two respects. The first that is that the term "holding" does not state what the frame members hold with respect to the outermost engaging surfaces; the second again concerns the use of the term "substantially". Finally, it is said it is not clear whether the term "outermost planar surfaces" in claim 7 is the same as the phrase "outermost engaging surface" in claim 6, upon which claim 7 is dependent. It is, as explained earlier in these reasons, legitimate to refer to the body of the specification to explain the background of the claims which, in general, are to be construed with a view to making the invention work. In my view, the skilled addressee would have no difficulty in understanding from claim 1 that the boxes referred to were square or rectangular void formers made of light-weight material and arranged in the building foundation form work; the spacers referred to in claim 1 are objects which act to keep the boxes apart. Claim 6 is to be read with claim 2. The spacer is to engage against each of two sides adjoining each of the corners - 66 - of the boxes and the outermost engaging surface of the spacer is to be "planar"; in that context, "planar" indicates that the engaging surfaces are flat in contrast to the sharp edge formed at the relevant corner of the box. Claim 7, which is in respect of a building foundation form work arrangement as in any one of claims 1 - 6, claims a spacer which includes "outermost planar surfaces" which engage against the sides of the respective adjacent boxes; the claim goes on to claim a particular characteristic of frame members holding the outermost engaging surfaces. Claim 7 is to be read with the earlier claims; thus the "outermost planar surfaces" which engage against the sides of the respective boxes are those surfaces identified in claim 6 as "outermost engaging surface that is planar". Claim 7 also stipulates that the outermost engaging surfaces be held by frame members. The skilled addressee would readily understand, as appears from the evidence of Mr John, that it is important that in performing their function the engaging surfaces be kept apart and in a rigid relationship each to the other such that the frame would hold them in that relationship or position. Claim 13 requires that the spacer be "of cruciform shape in plan"; this would readily be understood as meaning that the overall shape of the spacer be cruciform. Claims 7 and 12 use the phrase "substantially above" in the first case "the supporting level surface" and in the - 67 - second "a lowermost edge of each of the engaging surfaces". The evidence indicates that "substantially" would be understood in a qualitative sense and as such be susceptible to variation. The skilled addressee would understand, from the background of the claim drawn from the body of the specification, the necessity for the lowermost edge of the frame not only to be above but to be substantially above the supporting level surface, so as to allow for concrete to flow fully beneath the frame. Further, as regards claim 12, the notion of substantiality is directly limited by the result claimed. It follows, in my view, that none of the allegations that the claims are not clear and succinct is made out. Non-Entitlement and False Suggestion or Misrepresentation Paragraph 138 (3) (a) of the 1990 Act follows upon para. 100 (1) (a) of the 1952 Act. A patent may be revoked on the ground that the patentee "is not entitled to the patent". Paragraph 138 (3) (d) of the 1990 Act follows para. 100 (1) {k) of the 1952 Act. A patent may be revoked on the ground that it was "obtained by fraud, false suggestion or misrepresentation"; here reliance 1s placed upon false suggestion or misrepresentation. The false suggestion or misrepresentation is said to arise by failure to disclose two matters said to go to the lack of title of Mr Leonardis. These two matters are as - 68 - follows. It is said that Mr Vaughan Sage who swore an affidavit in this proceeding, but who was not cross-examined, was the inventor of the invention claimed in claims 7 - 9, 12, 13 and 15 - 17 of the Patent. Further, it is contended that Mr lLeonardis 1s not entitled by reason of the existence and use, at least after 24 December 1985, of a form work arrangement by Koukourou as described in the Koukourou Patent. It could not, in my view, be maintained within the meaning of the authorities, that the claims of the Patent are anticipated by the Koukourou Patent. The allegation of non-entitlement and then of false suggestion and misrepresentation, insofar as 1t is based upon the contrary conclusion, must fail. I turn to the first point. Again I will deal with it in its application to all the claims put forward here, although of them only claims 16 and 17 remained after the attack on novelty connected with lack of fair basing. Relevantly, a patent for an invention may only be granted to a person who is the inventor or who would, on the grant of a patent, be entitled to an assignment of the patent. This is provided by paras. (a) and (b) of sub-s. 15 (1) of the 1990 Act. The first provisional application for what became the complete patent was lodged on 23 October 1986. So also was the application for the Petty Patent. The first provisional application states that the preferred type of spacer is made of galvanised iron sheet. At a date in late 1986, after 23 - 69 - October, Mr Leonardis approached Mr Sage, an experienced dye maker, for products made by injection-moulding of plastics. Mr Leonardis engaged Mr Sage, and worked with him over a two week period, in developing a plastic version of the spacer. Mr Sage applied his skills as a dye maker to modify the spacer in a manner appropriate for an item made from plastic. Mr Sage was told by Mr Leonardis and says he understood from his general knowledge, that it was important that the spacer provide as little resistance as possible to the flow of concrete through and around the spacer so as to ensure that the concrete beams of the waffle slab were continuous. The affidavit evidence of Mr Sage was not subject to cross- examination. It falls far short of rendering him an inventor or co-inventor, with Mr Leonardis, of the spacer, as involved in claims 7-9, 12, 13, and 15 - 17 of the Patent, as alleged by Sartas. The only other ground urged for invalidity which I should consider is obviousness. Qbviousness The issue is whether the remaining and otherwise valid claims 1 - 6, 16 and 17, or any of them, and the claim of the Petty Patent was bad for obviousness or, as 1t is sometimes put, want of subject matter. It may be that there would be a serious question as to the invalidity on this ground of certain of the other claims, but it is unnecessary to decide the point, they being invalid on other grounds. - 70 - I was referred to various authorities which lay down the relevant principles. They include the judgments of Aickin J. in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 C.L.R. 228, Minnesota Mining & Manufacturing Company v iersdo us ia td (1980) 144 C.L.R. 253, and The We co Fo ion dv V.R. Laboratories (Aust.) Proprietary Limited (1981) 148 C.L.R. 262, and the decisions of the Full Court in Allsop Inc. v Bintang Ltd [1989] A.I.P.C. 90-605, Elconnex Pty Ltd v Gerard Industries Pty Ltd [1993] A.I.P.C. 90-984, and Winner v Ammar Holdings Pty Ltd (1993) 41 F.C.R. 205. There are reminders in these authorities (i) against the "seductive clarity of hindsight", (11) that a scintilla of inventiveness is sufficient and that simplicity does not prevent a patent being inventive, and (iii) the invention may be for something "stumbled upon by accident, remembered from a dream or imported from abroad" (Wellcome at 286). As Aickin J. put it in Wellcome at 286: "What is important is that the patent itself should involve an inventive step, whether or not it was consciously taken by the patentee and whether or not it appeared obvious to the patentee himself. The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not." In the body of the Complete Specification, the inventor refers to several problems which the invention is said to overcome. -71- The first is the need to hold the cardboard boxes in relation one to the other in such a way that they retain with sufficient integrity their relative position, particularly during the pouring of concrete. The second is that the means which are used to hold the boxes in their relative positions, that is to say the spacers, do not of themselves unreasonably reduce the integrity of the foundation which is poured by not allowing concrete to flow and set around them. There is acceptance as to certain matters which were common general knowledge before the priority date of the Petty Patent of 23 October 1986, and the priority date in respect of the remaining claims of the Patent of 16 January 1987. These matters are (a) the use of waffle slabs as suspended slabs and as footings, (b) the use of steel reinforcement mesh and bars, (c) the need to ensure that concrete extended continuously along the beam and under the reinforcement bars to minimise the infiltration of air and water, (d) the necessity for the design of a concrete system to take account of the characteristics of concrete such as tensile strength, (e) the particular characteristics of the expansive soils of the Adelaide area, and (f) the use of bar chairs to provide for the holding of two reinforcement rods at right angles to each other. There is disagreement as to whether the use of internally reinforced cardboard boxes as void formers for use in a waffle raft system, and the use of Celltex bricks to act as spacers - 72- for void formers and to support and locate reinforcement bars, were within the relevant common general knowledge. In this regard, counsel for Mr Leonardis says that these matters were known only to "a few specialists in Adelaide". However, as I have indicated, the particular characteristics of the soil in the Adelaide have presented particular problems in the construction of residential buildings there. The evidence is that over the last 20 years at least practising engineers in South Australia have actively considered what Mr John called the soil-footing interaction. The state of the art in South Australia therefore may be properly expected to set the pace for the rest of the country. I have referred to evidence of what took place in 1986, including some evidence of Mr John and Mr Beales. Further, in April 1986, Mr Beales' company had been appointed distributor by Koukourou of the components for the construction of waffle pod footings, being the system described in the Koukourou Patent. His company immediately started promotion of the waffle pod system and supplied building contractors with the necessary components, including cardboard boxes as_ void formers, plastic bar chairs and Celltex bricks. In addition to the observations made by him on 4 June 1986 (to which I referred earlier in these reasons) this witness was present on 28 November 1986, that is to say before the relevant priority date of the claims of the Patent, when a sheet metal spacer, as described in the first provisional specification, was - 73- publicly used in footings constructed on a site at North Haven in South Australia; the spacer was used to space the void formers and support reinforcing bars. The first provisional describes a spacer of cruciform shape. The evidence of Mr Ivan Samarzia, a building and footing contractor, is that the prototype made by Mr Leonardis from sheet metal worked well when first used on the house at North Haven; the boxes were held tight and there was no movement thereof when the concrete was poured. Mr John is a chartered professional engineer, and Mr Beales is a director of a company which distributes and supplies concrete form work components. Mr Theo Agelis is a concreter by trade and is involved on a daily basis in arranging for the construction of concrete footings. This has been his primary occupation for 23 years. He began in 1986 to construct waffle raft footings in the Port Lincoln area; he used both cardboard and foam void formers. In the issue of the "South Australian Builder" for January/February 1986, and the "Adelaide News" of 12 August 1986, Mr Peter Koukourou received publicity in the form of articles describing the new waffle pod system for stronger, cheaper slabs on reactive soils. In "Housing Victoria" for March 1986, it was said that the first house to be constructed on a waffle pod slab had recently been erected on a site at Redwood Park in South Australia. - 74 - Upon all of the evidence, I accept that at the relevant priority dates for the Petty Patent and the Patent, common general knowledge included the use of Celltex bricks to act as spacers for void formers, including cardboard boxes, for use un a waffle raft system, and to support and locate reinforcement bars. Mr Goldfinch is associated with Koukourou. Together with Mr John, he is a member of a group of engineers involved in the design of footings in South Australia. The group met three or four times a year and did so in 1986. He was not cross-examined upon his affidavit evidence that after the waffle pod system came into use on a day to day basis, which I infer was after April 1986, it was discovered that the Celltex brick was rather cumbersome and difficult for contractors to handle quickly and easily. Concreting contractors also told Mr Goldfinch that the Celltex brick allowed the boxes to move by slipping and by rotation over the polythene damp-proofing membrane which covered the substantially levelled ground surface. The matter was discussed with Mr John and a Celltex brick was placed near each corner of each box in the channel between the boxes. At this time, Mr Leonardis was a concreting contractor dealing with Koukourou. The problems encountered in the field with the construction of waffle pod footings led to meetings between Mr Peter Koukourou and Mr Leonardis. It was after this that Mr Leonardis devised a metal spacer then disclosed - 75 - in the first provisional specification lodged 23 October 1986. The subsequent development of the plastic spacers has been a commercial success. It has displaced the Celltex brick. This is so even though, as Mr John said, he regarded the previous arrangement as generally more satisfactory than that method of constructing footings using conventionally dug trenches. Commercial success is a factor to be taken into account in assessing issues of obviousness. I was referred to many authorities on the point suggesting on the one hand that the factor should not be disregarded, and on the other that it should not be given too great a weight. Even with the commercial success of the new system, the evidence suggests that only about 10% of new houses in Adelaide are erected with waffle raft footings; this is at least partly because waffle rafts cannot be used on the most extremely reactive soils. There was some criticism that Mr Leonardis was not called to reveal his mental processes and practical procedures in devising the Leonardis spacers, or the time these consumed before the solutions he claims were reached by him. I was referred to authorities in this Court in which there was to some degree an express or implied criticism of failure to call the inventor on such issues. They include Elconnex at 39,329, and Winner at 213. On the other hand, it is well established that it is no ground for attack on his invention that the - 76 - inventor did not labour intensively to devise it: Wellcome at 286, Re I.G. Farbenindustrie A.G.'s Patents (1930) 47 R.P.C. 289 at 322 per Maugham J., Fox, "Canadian Patent Law and Practice", 4th ed., 1969, pp. 85-89. As the Wellcome litigation illustrated, it took a decision of the High Court to determine that upon an issue of obviousness the records of development work by the inventor even were discoverable. Maugham J. said that patents may be granted for inventions "which have been the result of profound research or of some sudden and lucky thought or of mere accident . . .". Accordingly, I place little weight upon the absence of evidence from Mr Leonardis. Mr L.D. Appleyard, like Mr John, is a_ chartered professional engineer. However, while Mr John practises in South Australia, Mr Appleyard practises in New South Wales. Mr John's affidavit evidence is that had he been approached by a building contractor in 1986 who expressed a problem or concern in using Celltex bricks as spacers, his reaction would have been to take various steps involving the application of known techniques to come up with a solution to the same effect as that provided by Mr Leonardis in the Patent. In cross- examination, he adhered to the critical paragraphs, 119 and 121, of his affidavit sworn 13 June 1994. Mr Appleyard gave evidence in his report (paras. 2.2.7 - 2.2.15) to similar effect as that of Mr John, and adhered to it in cross-examination (Transcript 230-233). -77 - As I have indicated, Mr John is of the view that the problem with slipping and rotation of the boxes was met adequately by the use of the Celitex bricks near the corners. But I accept also as following from the evidence of Mr Samarzia that the Leonardis spacer in its metal prototype acted in a way that the Celltex bricks could not by tightly holding the boxes so as to permit no movement when the concrete was poured. Further, the metal and then plastic spacers had obvious advantages in ease of handling in the course of construction. Mr Leonardis correctly perceived that it was important that any means which might be used to hold the boxes in their relative positions did not reduce the integrity of the foundation and permit fracturing. The evidence indicates a general acceptance in the building industry of the advantages of the Leonardis spacers. But the question remains whether the hypothetical addressee, presented with the problems as perceived by Mr Leonardis in 1986 would have taken as a matter of routine the steps which led from the prior art, including the use of the Celltex brick, to the invention claimed in claims 1 - 6, 16 and 17. The question of obviousness is an objective one and is not for the determination of the witnesses. Nevertheless, both Mr John and Mr Appleyard gave impressive and extensive evidence to which I have had close regard. - 78 - It is clear from this evidence that, putting aside the integer in claims 1 - 6, 16 and 17 of the particular spacer, all the other elements, being the use of cardboard void formers held in place by some form of spacer so as to define channels, the placement of reinforcing rods on spacers in the channels, and the placing of bar chairs on top of the void formers to hold reinforcing mesh in place, were known and used prior to the relevant priority dates. With respect to the spacers claimed in these method claims, the elements are (i) a cruciform shaped spacer, (ii) with eight planar surfaces, (iii) to engage each side of four boxes, (iv) such engagement to be on the sides adjoining the corners of the boxes. Having regard to what was known or used in Australia on or before the relevant priority date, 16 January 1987, was the invention claimed in these claims obvious and did it lack an innovative step? An acceptance of the evidence of Mr John and Mr Appleyard provides a foundation for the Court to reach the conclusion that the response to be expected in 1986 by the hypothetical addressee would have been to take as a matter of routine the steps which led Mr Leonardis along the path he took. In the result, I hold that the claim of the Petty Patent was bad for obviousness. The Petty Patent has, of course, expired and I will hear the parties as to any declaratory or other relief which ought be granted on this aspect of the case. - 79 - It is important to bear in mind that what is accepted as having been obvious is the claim, broadly drawn, of the Petty Patent, in particular the use of a spacing member adapted to abut adjacent sides of each corner of each box element so as to hold them within a selected location and at a selected minimum distance. Likewise, claims 1-6 are concerned with broadly claimed building form work arrangements. The same is true of the method claims 16 and 17. It is in relation to these that I hold that there was no inventive step. Conclusions The result is that the claim of the Petty Patent was invalid and all the claims of the Patent should be revoked. However, this should be after the Court has disposed of the pending motion to amend claim 12. The cross-claim by Mr Leonardis asserting infringement should be dismissed, and the cross-claim by Sartas seeking revocation of the claims of the Patent should be allowed. I will hear the parties upon costs before making final orders. All that is necessary today is to stand the matter over to a date to be fixed for the making of further orders to give effect to these reasons for judgment. - 80 - I certify that this and the preceding seventy nine (79) pages are a true copy of the reasons for judgment of the Honourable Mr Justice Gummow. ra Associate: [Aer SOLE Date: 2 December 1994. Counsel and solicitors Mrs A.C. Bennett instructed for the applicant: by Freehill Hollingdale & Page. Counsel and solicitors Mr D.K. Catterns Q.C. and for the second respondent: Miss S.J. Goddard instructed by Stratford & Co. Dates of hearing: 18, 19, 20 July, 31 August, 1, 2 September 1994. Date of judgment: 2 December 1994. SCHEDULE 1 SCHEDULE 4 TI-5 TREVOR JOHN AND ASSOCIATES PTY. LTD. CONSULTING ENGINEERS PROJECT 29783 SHEET 2 | Lo i] ' H 110 0! Se oe ISOMETRIC VIEW — CELLTEX BRICK.