Case: General Tire and Rubber Company v Firestone Tyre and Rubber Company Limited [1972] RPC 457
Outcome: referred to
In the well known case of General Tire and Rubber Company v Firestone Tyre and Rubber Company Limited [1972] RPC 457 (" General Tire "), the Court of Appeal said (at 486): "If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented: Flour Oxidizing Co Ltd v Carr &amp; Co Ltd ((1908) 25 RPC 428 at 457, line 34, approved in B T H Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 R P C 1 at 24, line 1). A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee." 101 In ICI Chemicals v Lubrizol Corporation Inc [2000] FCA 1349 ; (2000) 106 FCR 214, the Full Court of this Court (Lee, Heerey and Lehane JJ) referred to the metaphor involving the flag and said (at 230 [51]): "In those circumstances, and in the absence of relevant expert evidence, we think that the primary judge was correct to conclude that Williamitis did not anticipate the claims of the patent in suit. A familiar metaphor illustrating the concept of anticipation is that the prior inventor must clearly be shown to have planted his flag at the precise destination before the patentee: General Tire at 485-486. In the present case, the appellants' argument involved the skilled addressee rummaging through the Williamitis flag locker to find a flag which Williamitis possessed and could have planted." 115 A number of witnesses gave evidence as to whether the claims in the Patent were novel in light of the prior art referred to above. The construction of documents is for the Court but it seems clear that if appropriate the Court can be assisted by a person skilled in the relevant art at the relevant date. In General Tire the Court of Appeal said (at 485): "The earlier publication and the patentee's claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of knowledge in such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date." 116 In his second affidavit Dr Franklin expressed the opinion that the Patent lacks novelty or inventiveness having regard to prior art and he refers to the Kennedy and Hitchen patent, the Ogawa patent, a patent called the Kordon patent, the Groom patent and the Sapsford patent. He also expressed the opinion that the patent is not useful. The applicants submitted that I should not receive Dr Franklin's second affidavit. He had not complied with the practice note relevant to experts' reports and, moreover, he would be giving expert evidence in a case in which he was a party. I would waive compliance with the practice note. The applicants have had an adequate opportunity to respond to Dr Franklin's affidavit. As to the other point raised by the applicants, unless it is a particularly serious case of bias which might enliven the discretion to exclude, the fact that Dr Franklin is a party goes to the weight to be accorded to his evidence, not the admissibility of the evidence: J D Heydon, Cross on Evidence (7 th Australian ed, 2004) (at [29080]) and cases cited therein; Ian Freckelton and Hugh Selby, Expert Evidence (3 rd ed, 2005) (at 26 and 315-16) and cases cited therein. 117 Dr Franklin's area of expertise is chemistry, although I accept that he has acquired some knowledge of termite barrier systems by reason of his association with Mr Hannay. He had never installed a termite barrier system either physical or chemical or both before the priority date. It seems that he received the prior art from Mr Geoffrey Habel, an experienced patent and trademark attorney, and it is likely he has been influenced by his discussion with Mr Habel about the prior art. I am not suggesting that there is anything improper about that; simply that it is unlikely he has any real expertise in the interpretation of the prior art. In those circumstances, I do not think Dr Franklin's evidence as to a lack of novelty because of prior art is of any assistance. As to lack of an inventive step or obviousness his evidence is of no assistance because it relies on material (that is, paper anticipations) which, for reasons I will give, was not part of general common knowledge within s 7(2) of the Act .