Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21

HIGH COURT OF AUSTRALIA

GLEESON CJ,

McHUGH, GUMMOW, HAYNE AND CALLINAN JJ

FIREBELT PTY LTD APPELLANT

AND

BRAMBLES AUSTRALIA LIMITED RESPONDENTS

(trading as Cleanaway) & ORS

Firebelt Pty Ltd v Brambles Australia Ltd

[2002] HCA 21

23 May 2002

B52/2001

ORDER

Appeal dismissed with costs.

On appeal from the Federal Court of Australia

Representation:

J J J Garnsey QC with C J Carrigan and D H Katter for the appellant (instructed by Xavier Kelly & Co)

D F Jackson QC with A B Crowe SC and R I M Lilley for the first respondent (instructed by Deacons Lawyers)

No appearance for the second and third respondents

Notice: This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

CATCHWORDS

Firebelt Pty Ltd v Brambles Australia Ltd

Patents – Petty Patent – Revocation – Inventive step or obviousness – Combination patents – Proper construction of ss 7(2) and 7(3) of the Patents Act 1990 (Cth) – Whether evidence supported conclusion that it had been shown to be obvious to place known integers in the interactive combination claimed in the Petty Patent – Whether trial judge and Full Court, in focusing upon the incorporation of particular integers, gave inadequate weight to whether the selection in combination of the integers was obvious at the priority date – Relevance of commercial success of Petty Patent to question of obviousness.

Patents Act 1990 (Cth), ss 7(2), 7(3).

GLEESON CJ, McHUGH, GUMMOW, HAYNE AND CALLINAN JJ.

The parties

1. The appellant ("Firebelt") was incorporated in 1992. It holds the intellectual property utilised by companies which are controlled by two branches of the Richards family and which carry on refuse collection and related businesses in New South Wales and Queensland. The Richards family had established a refuse collection business in 1932 in the Tweed District of northern New South Wales. 2. Firebelt was the grantee of Petty Patent No 657082 which was granted under the Patents Act 1990 (Cth) ("the Act") on 23 February 1995 for an initial term of 12 months from that date and in respect of an invention entitled "A Side-Loading Refuse Vehicle" ("the Petty Patent"). The inventor is identified as Mr Idwall Richards. 3. At all material times, the first respondent ("Cleanaway") carried on business under that name using a side-loading refuse and recycling collection vehicle. Cleanaway did so in the region of the second respondent, the Cooloola Shire Council ("the Council"), which is a body incorporated pursuant to the Local Government Act 1973 (Q). In particular, in August 1994, the Council awarded to Cleanaway a contract for the collection, removal and conveyance of refuse.