Root Quality Pty Ltd v Root Control Technologies Pty Ltd [1998] FCA 1778

FEDERAL COURT OF AUSTRALIA

PATENTS – amendment of claims – whether amendment of complete specification of patent should be allowed – factors relevant to the court's exercise of discretion Patents Act 1990 (Cth) ss 40, 102, 105 Joseph Lucas (Batteries) Ltd v Gaedor Ltd [1978] RPC 297 cited Farbwerke Hoeschst A.G. Vormals Meister Lucius & Bruning v Commissioner of Patents (1971) 124 CLR 654 cited Rescare Ltd v Anaesthetic Supplies Pty Ltd (Gummow J, 4 March 1993, unreported) cited Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 561 cited Wilkinson Sword Ltd v Gillette Industries Ltd and Warner Lambert Co [1975] RPC 101 cited Mabuchi Motor KK's Patent [1996] RPC 387 cited ROOT QUALITY PTY LTD & ANOR v ROOT CONTROL TECHNOLOGIES PTY LTD & ORS NO. VG 314 OF1998 JUDGE: FINKELSTEIN J DATE: 11 JANUARY 1999 PLACE: MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VG 314OF 1998

BETWEEN: ROOT QUALITY PTY LTD and

R & R OWEN NOMINEES PTY LTD

Applicants

AND: ROOT CONTROL TECHNOLOGIES PTY LTD

MARK STYAN and

JAMES TROWBRIDGE

Respondents

JUDGE: FINKELSTEIN J

DATE: 11 JANUARY 1999

PLACE: MELBOURNE

REASONS FOR JUDGMENT 1 On 9 December 1998, upon the application of Root Control Technologies Pty Ltd (Root Control), the proprietor of Australian Patent No. 629067 (the patent), I directed the amendment of the complete specification of the patent in certain respects stating that my reasons for judgment would be published in due course. What now follows are my reasons for giving that direction. 2 Root Control is one of a number of respondents in this proceeding which was commenced on 10 July 1998 by Root Quality Pty Ltd (Root Quality) and R & R Owen Nominees Pty Ltd seeking relief in relation to certain conduct said to be in contravention of s 52(1) of the Trade Practices Act 1974 (Cth) and s 128 of the Patents Act 1990 (Cth). By its cross-claim Root Control alleges that Root Quality has infringed the patent. That claim is defended on a number of grounds, some of which go to the validity of the patent. A notice of motion to amend the patent was issued in the proceeding and I ordered that it be heard and determined before the trial. 3 The complete specification of the patent is entitled "Plant Growth Container" and concerns a container suitable for growing plants which are later to be transplanted. In the body of the specification the invention is given the following description: "A container according to the invention is comprised of the flexible strip of material having a length greater than its width and having an inner and outer surface, said inner surface being formed in part by a lattice of root guiding recesses, at least some of said recesses being of substantially truncated conical form having a wall which converges towards a hole through the strip, said outer surface being formed in part by a lattice of protruberances (sic) at the same relative positional arrangement as the recesses, said strip arranged in a cylinder with its opposite ends overlapping and the protuberances on the outer surface of one end nesting within the recesses on the inner surface of the other end at the overlap, fastening means being provided to hold the strip in said overlapping, nested engagement." 4 The main aim of the invention is to provide a container that guides the primary roots of plants radially towards the holes in the container walls. As the roots approach the holes they are "air pruned" causing secondary roots to branch from the primary roots forming a cohesive root ball which is said to be ideal for planting. 5 It is an object of the invention to provide a container which is easily adaptable in diameter. According to the specification the size of the container can be increased as is desired by disconnecting the end of the strip that overlaps with and nestles within the recesses of the opposite end, adjusting the degree of overlap by either increasing or decreasing the area of overlap and then reconnecting the ends. 6 The specification states that it is necessary to provide a fastener to hold the overlapping ends in their engaged and overlapped condition. It continues: "The fastener may comprise a rivet but if it is desirable to reuse, or expand the diameter of the container, a releasable fastening means may be provided. For example a strap or tie which passes through aligned holes at the overlap could be used, or an adjustable strap or belt which extends around the circumference of the container could be used for this purpose." 7 The claims in the complete specification are of four kinds. First there are claims to a container for growing plants (claims 1, 2 and 3). The principal and the broadest claim is to be found in claim 1 and it follows the description of the invention set out in the body of the specification. According to that claim the container has the following features: (i) it is formed from a flexible strip of material that has a length greater than its width; (ii) the inner surface is formed in part by a lattice of root guiding recesses; (iii) some root guiding recesses have a substantially truncated conical form having a wall which converges towards a hole; (iv) the outer surface is formed by a lattice of protuberances; (v) the protuberances are at the same relative position or arrangement as the recesses; (vi) the strip is arranged in a cylinder with the opposite ends overlapping; (vii) the protuberances on the outer surface of one end nest within the recesses on the inner surface of the other end at the overlap; and (viii) the container has a fastening means to hold the strip in the overlapping nested engagement. 8 Claims 2 and 3 depend upon claim 1. Claim 2 provides for the flexible strip of material to be formed of a relatively thin sheet of plastic and that the formation of the root guiding recesses in the inner surface produce the protuberances on the outer surface. Claim 3 provides for each recess to lead towards a hole through the strip. 9 Secondly there are claims for a strip of material for forming an open topped container within which a plant can be grown (claims 4, 5, 6 and 7). Claim 4 describes the features of the strip of material and they comprise the same features as are to be found in claim 1 with one additional feature namely that the "strip [be] formed of a material which is sufficiently flexible so that strip can be rolled into a cylindrical form". The means of fastening the overlapping ends is not mentioned. Claims 5 and 6 repeat the features described in claims 2 and 3 and claim 7 is for a strip according to the features of claims 4 to 6 but where the material is made of foamed polystyrene. 10 Thirdly there is a claim for a method of growing a plant which is intended to be transplanted (claim 8). The method is by use of the strip of material according to claim 4. 11 Finally there are three "as described" claims (claims 9, 10 and 11), one for a container, one for a strip of material and one for a method of growing plants. The claims are for a container, strip of material and method as described in the body of the specification and as illustrated in the drawings which form part of the complete specification. 12 It is convenient to set out the amendments in an appendix to these reasons. They comprise both deletions that are indicated by square brackets and additions that are indicated by underlining. 13 The provisional application for the patent was filed on 20 November 1989 by Ronneby Tree Farm Pty Ltd (Ronneby). Before the provisional specification had been drawn Ronneby was aware of another expandable container that was being used for the growing of plants. Searches disclosed that this container was the subject of a United States patent 4716680 and an Australian patent application that corresponded to the United States patent. Also discovered was an Australian patent application 18331/88 for an expandable container. The inventors named in the United States patent and the Australian patent application 18331/88 were Carl Whitcomb and Harold Stephens. Ronneby also had a brochure concerning the container the subject of Australian patent application 18331/88 that was written by Dr Whitcomb and Mr Stephens. 14 The patent attorney acting on behalf of Ronneby, Mr Paul Savage of Phillips Ormonde & Fitzpatrick, Patent Attorneys (Phillips Ormonde), considered the complete specification of the United States patent and an abstract of the Australian patent application 18331/88 and formed the opinion that the "SpringRing" container (the name given to the Ronneby invention) was different from and had certain advantages over the container described in those documents. With regard to the container described in the United States patent, Mr Savage formed the opinion that it did not appear to be possible to vary the size of the container in the same manner as the SpringRing, that the SpringRing container employed a simpler means of connecting the ends and that it would be cheaper and simpler to manufacture the material used to make the SpringRing container as it could be formed in a continuous roll whereas the container described in the United States patent required the use of panels that would need to be individually moulded. There were other differences that he noticed. 15 Mr Savage's examination of the Australian patent application 18331/88 and the brochure that described the container the subject of that application led him to the opinion that the containers there described also differed from the SpringRing container. The differences included the following. The root guiding recesses of the SpringRing container also functioned to act as the means to join together the ends of the material to form the container. The container disclosed in the Australian patent application and the brochure was comprised of panels of a pre-determined length that had special joints that were more complicated to engage and that the panels would be more difficult and expensive to manufacture than the material in the SpringRing container. He also formed the view that the SpringRing container could be easily varied to alter the size of the container whereas the size of the container disclosed in the Australian patent application and the brochures could only be altered by adding or removing panels. 16 After reviewing the material Mr Savage drafted the provisional specification for the SpringRing container and in 1990 he prepared the complete specification that was subsequently accepted. 17 On 15 May 1998 the business and assets of Ronneby were sold to Root Control and an associated company and the patent was assigned to Root Control. 18 In late March 1998, Mr M Styan, a former employee of Ronneby and now employed by Root Control as its general manager, located in his garage a number of panels for forming an air root pruning container. Each panel had a series of recesses extending across its surface with holes in each recess. At the ends of the panels there were arrangements of tongues and grooves and buttons and rings for securing one panel to an adjacent panel. At one end of each panel there was also an additional two rows of recesses. Each recess led to a hole. 19 It appeared to Mr Styan that the panels that he had located had been developed by Dr Whitcomb and were the panels the subject of Australian patent application 18331/88. At the time Mr Styan did not consider that the panels were of any particular relevance to the validity of the patent. However on 1 July 1998, during the course of a conversation concerning the institution of proceedings against Root Quality for infringement of the patent, Mr Styan mentioned that he had located the panels in March 1998 and that he understood that those panels had been produced by Dr Whitcomb in accordance with those illustrated in Australian patent application 18331/88. He arranged to send the panels to Phillips Ormonde, which had been engaged by Root Control to prosecute the claim against Root Quality. 20 In this way the panels came into the possession of Mr T Collins, a patent attorney with Phillips Ormonde. He first viewed the panels on 2 July 1998. He formed the opinion that the panels were a modified version of the panel disclosed in Australian patent application 18331/88. He noticed that when the panels were joined to form a container the two rows of recesses located at the end of the panel nested within the protuberances of the adjacent end. Accordingly Mr Collins decided that it would be appropriate to amend the claims of the patent to clarify the invention defined by the claims, in particular to clarify that the SpringRing was distinguishable from the features of the panel, to better describe the invention and finally to correct a minor clerical error that had been noticed. The amendments