449

WINDSURFING INTERNATIONAL INC and ANOTHER v PETIT and ANOTHER WINDSURFING INTERNATIONAL INC and ANOTHER v BORSIMEX PTY LIMITED
SUPREME COURT OF NEW SOUTH WALES

10

WADDELL

15

18-22, 25-29 July, 2-5, 10-12, 15, 16, 18, 19, 22-25 August 1983- Sydney
Patent - Infringement - Construction of claims - Sale in kit form - Drawings claim - Lack of novelty - No inventive step over prior pubiication - Proof of prior public use - Obviousness - Prior public use not part of common general knowledge - Lack of utility - Fair basing - Patents Act 1952 (Cth) ss 40, 69,

20

100.
The first plaintiff was the proprietor and the second plaintiff (Sailboards Australia Pty Ltd) claimed to be the exclusive licensee in Australia of a patent dated 14 March 1975 and entitled "Wind Propelled Apparatus". The patent was for a combination of various known integers. Claim 10 of the specification was for a particular embodiment of the invention described by reference to drawings which depicted a sailboard. The defendants, Madowind Pty Ltd and Borsimex Pty Ltd, imported and sold in Australia sailboards in an unassembled kit form which was the way in which sailboards were invariably sold. The defendants' sailboard differed from that illustrated in the patent in several respects including the type and placement of the joint connecting the mast to the board and the way in which the two booms were attached at either end. The plaintiffs alleged infringement by the defendants of the patent and sought an injunction and damages. The defendants denied infringement and cross-claimed for revocation of the patent on the grounds of Jack of novelty, obviousness, Jack of utility and lack of fair basing. The defendants relied on an article by S N Darby entitled "Sailboarding; Exciting New Water Sport" (published in 1965) as a prior publication. The defendants also relied on the prior use in public of "home made" sailing craft by various persons including Mr Eastaugh. Mr Eastaugh's evidence as to craft he built and sailed in Western Australia in the 1940's was challenged by the plaintiffs. Held: The patent was invalid and the plaintiffs' claim failed because (i) Although the craft described in the Darby publication did not contain all the integers of claims 1, 3, 4 and 9: (a) the addition of the joint absent in Darby but referred to in claim 1 would not involve any ingenuity or inventive step; and

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INTELLECTUAL PROPERTY REPORTS

SC (NSW)

(b) the various steps necessary to move from a craft of the kind described in the Darby article to a craft coming within claims 3, 4 and 9 were obvious at the time and did not involve any ingenuity or inventive step. Claim 10 merely involved an embodiment of claims l to 9 with no added inventive elements. Accordingly, the whole of the claims of the patent were anticipated by the Darby publication.

Griffin v Isaacs (1942) 12 AOJP 739, applied.

(ii) Claims I to 9 were anticipated by Mr Eastaugh's craft. It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinized with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation. (iii) The ground of obviousness was not made out. A prior public use cannot be relied upon to support an objection of obviousness unless it has become part of common general knowledge and in this regard there is no distinction between a prior public use and a prior publication. (iv) Claims 1 to 9 caught apparatus which would not produce the results mentioned in the specification and would not be practical for sailing purposes. Accordingly, claims 1 to 9 were not useful and contrary to s 40 of the Patents Act 1952 (Cth) were not fairly based on the matter described in the specification. (v) The defendants' sailboards would otherwise have infringed claims 1 to 9 but not claim 10. Principles of construction of claims, discussed. (vi) The sale of an unassembled sailboard in kit form infringed the right given by s 69 of the Patents Act 1952 (Cth) because of the ordinary course which vending the invention took. (vii) The type and location of the joint and the method of attachment of the two booms depicted in the drawings referred to in claim 10 were essential features of the claim not present in the defendants' craft and accordingly there was no infringement of that claim.

Statement of claim In these proceedings the plaintiffs claimed an injunction and damages for infringement of patent and the defendants crossclaimed for revocation of the patent. The facts appear sufficiently in the judgment.

K R Handley QC and A J L Bannon, for the plaintiffs.

J F Lyons QC and J D Heydon, for the defendants.

Cur. adv. vult.