The patent dispute between Lockwood Security Products Pty Ltd ("Lockwood") and Doric Products Pty Ltd ("Doric") has been running since 2000 and has now been the subject of two decisions of the High Court of Australia. In the second decision handed down by the High Court in May this year,1 the High Court has reiterated the legal principle that a "scintilla of invention" remains sufficient in Australian law to support the validity of a patent. The High Court’s decision also provides guidance in relation to other factors that may be taken into account when assessing whether or not an invention is obvious.
Lockwood was the owner of a patent for a deadlock with a safety release mechanism, which caused the locking latch on the inside of a door to release when the lock was unlocked with a key from the outside. By the addition of a safety release mechanism, the patented lock overcame the problem associated with an earlier lock, the Lockwood 001. The Lockwood 001 required the locking mechanism on the inside of the door to be separately released with a key and, as a consequence, a person could be accidentally locked inside. This could be particularly dangerous in the event of a fire, or when a person otherwise needed to exit the door in a hurry.
Lockwood threatened to sue Doric for infringement of its patent, and Doric subsequently commenced proceedings against Lockwood on the grounds that Lockwood had unjustifiably threatened Doric and its two distributors with infringement proceedings. Lockwood cross-claimed for infringement of its patent, and Doric, in turn, sought revocation of the patent on the basis that it was invalid.
Through a series of proceedings in the Federal Court of Australia, Lockwood’s patent was held to be invalid by the Federal Court on the ground of fair basis. However, that decision was later overturned by the High Court, who remitted the matter to the Full Court of the Federal Court to make findings in relation to infringement, insufficiency and obviousness. It was the reasons of the Full Court dealing with obviousness or lack of inventive step that were the subject of the latest High Court decision.
Was Lockwood’s Patent Obvious?
The key question for the High Court was whether the addition of the safety release mechanism to the existing Lockwood 001 constituted an inventive step, such that Lockwood was entitled to patent protection.
In deciding this question, the High Court reiterated that only a "scintilla of invention" is required to support a patent, and cautioned against the use of the problem-solution approach to obviousness, stating that:
" … it is worth repeating that the ‘problem and solution’ approach may be particularly unfair to an inventor of a combination, or to an inventor of a simple solution, especially as a small amount of ingenuity can sustain a patent in Australia. Ingenuity may lie in an idea for overcoming a practical difficulty in circumstances where a difficulty with a product consisting of a known set of integers is common general knowledge."
In the present circumstances, the Court held that while the problem associated with the Lockwood 001 was well known, it did not follow that the solution arrived at by Lockwood, regardless of how apparently simple, was obvious. In this regard, the Court repeated the warnings of earlier cases against the misuse of hindsight, particularly in cases that involve a combination of existing integers. It also emphasised the importance of technical evidence from witnesses who are able to inform the Court as to what was considered technically possible and practical at the relevant time.
Admissions Made In The Patent Specification
In reaching its decision, the Court also dealt with the issue of admissions that might be made in the specification of a patent, particularly admissions relating to the prior art and common general knowledge. Doric had sought to rely on a statement in Lockwood’s patent to the effect that, in earlier locks, the outside key did not release the inside lock. According to Doric, with whom the Full Federal Court agreed, this constituted an implicit corollary admission that the obvious solution was to use the key to release the inside lock.
The High Court, however, emphasised that admissions in a specification are made from the vantage point of knowing the solution, and so are not determinative of the question of obviousness. Instead, they should be weighed together with the evidence from people skilled in the relevant art of their perception of the problem and their exposure to any possible solutions.
With respect to so-called "secondary indicators" of inventiveness, Lockwood relied on evidence such as commercial success, satisfaction of a long-felt want or need, the failure of others to find a solution to the problem at hand and copying by others such as competitors, as supporting the conclusion that its lock was inventive. The High Court agreed that Australian courts should not ignore secondary evidence or rely on their own assumed technical expertise to reach conclusions. Secondary evidence may therefore be relevant, although it will not necessarily be determinative on the question of obviousness.
Section 7(3) – Prior Art Not "Regarded As Relevant"
A final issue for consideration for the High Court was whether it was permissible to take into account evidence relating to certain storeroom locks, which had a similar safety release mechanism to the Lockwood lock. Under section 7(3) of the Patents Act, additional information can be taken into account when considering the question of obviousness, where it can be shown that the person skilled in the art would have ascertained, understood and regarded it as relevant.
However, contrary to Doric’s urgings, the High Court held that storeroom locks would not have been regarded as relevant by a person skilled in the art who was attempting to overcome the identified problem. In reaching this conclusion, the Court was particularly guided by the evidence of experts filed in the case, which failed to demonstrate that those skilled in the art regarded storeroom locks as relevant.
The Effect Of The Decision
Overall, the High Court reached the conclusion that Lockwood’s lock was inventive and so was deserving of patent protection. As a result of this decision, a would-be challenger will need to bear in mind, and be prepared to deal with, the High Court’s findings that:
- a "scintilla of invention" is sufficient to support a valid invention;
- admissions contained in the specification of a patent are not determinative of inventive step;
- secondary evidence may be relied upon by the patentee to support their invention; and
- only information that can shown to be of the type that a person skilled in the art would have regarded as relevant may be relied upon under section 7(3) of the Patents Act.
1 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2)  HCA 21
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