Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2]

Intellectual property – Patents - Invalidity - Lack of inventive step - Obviousness - The respondent challenged the validity of the appellant's patent on the grounds of lack of inventive step - The patent concerned a key operated door lock combining known integers - The patent included both a broad claim (a bare combination of integers) and a narrow claim (a "preferred embodiment" of those integers) - Whether the claimed combination of integers was obvious to a person skilled in the relevant art - Whether some of the patent claims were invalid for lack of inventive step.

Patents – Invalidity - Lack of inventive step - Whether inventive step is to be judged by reference to the claimed combination as a whole, or by reference to the addition of an integer to a known combination - Relevance of "idea" or "problem" underlying patent to the determination of inventive step.

Patents – Invalidity - Distinction between want of novelty and lack of inventive step.

Patents – Invalidity - Prior art base - Meaning of "common general knowledge" - Meaning of "prior art information" in s 7(3) of the Patents Act 1990 (Cth) - Whether "prior art information" differs as between a narrow claim and a broad claim in the one patent when assessing obviousness - Meaning of "regarded as relevant" - Meaning of "ascertained" - Meaning of "understood".

Patents – Invalidity - Amendment - Construction of, and relationship between, dependent claims following determination of invalidity - Whether order for amendment should be made.

Evidence – Patents - Lack of inventive step - Whether the patent specification contained an "implicit corollary admission" regarding common general knowledge - Whether that admission constituted evidence of obviousness and lack of inventive step.

Evidence – Patents - Prior art base - Relevance of "secondary evidence" - Weight to be given to the failure of other skilled persons (both inventive and non-inventive) to arrive at the invention.

Words and phrases – "common general knowledge", "lack of inventive step", "obvious", "person skilled in the relevant art", "prior art base", "prior art information".

Patents Act 1952 (Cth) – s 100.

Patents Act 1990 (Cth) – ss 7, 18, 22, 105, 128, 138, Sch 1.