Assa Abloy New Zealand Limited v Allegion (New Zealand) Limited


High Court

Whata J

18-22, 26-29 April, 2-4 May, 29 July 2016

[2016] NZHC 1738

Patent infringement – construction

Patent validity – novelty – obviousness – fair basis – insufficiency – inutility



The plaintiff, Assa Abloy New Zealand Limited, designed and patented a latching mechanism (“the Latch”). The Latch was a sliding door lever locking mechanism that could both daylatch and deadlock, and be used with the plaintiff’s predecessor range of locksets and the latest key cylinder technology. The daylatch was non-handed so that the lever or snib could always be positioned in the up position when locked and therefore signify to the homeowner that the door was locked. The Latch had dominated the sliding lock market for 15 years. The plaintiff had applied for a patent for the Latch in 2001.

The defendant, Allegion (New Zealand) Limited, had a locking mechanism called the Stella locking mechanism (“the Stella”). The Stella was developed in 2007. It performed the same functions as the Latch, but was not non-handed. The Stella and the Latch looked different but worked in identical ways in key respects.

The plaintiff claimed that the Stella infringed a number of claims of the Latch patent. The defendant responded that the Latch patent claims did no more than combine known uses and components to address a too broadly framed object of universal configurability. The defendant also claimed that the Stella did not infringe the Latch patent.

Held, finding the patent valid but not infringed:

A         Construction of the patent

            Interpretative framework

  1. The patent had to be construed as it would be understood by the skilled addressee in the sliding lock art. The skilled addressee was a person possessing the common general knowledge on the art available in New Zealand as at the priority date, but was uninventive [16]. While experts could identify the common general knowledge and tell the court why the patent had a particular object and why claims in the patent had a particular meaning, construction of the patent was for the court alone [17].

    Raychem Corp’s Patents [1999] RPC 497 (EWCA); Technip France SA’s Patent [2004] PRC 46 (EWCA); SmithKline Beecham Plc v Apotex Europe [2005] FSR 23 (EWCA) applied.

  2. The principle frame for the interpretation of the patent was as set out in Lucas v Peterson Portable Sawing Systems Ltd [22]. The first step in terms of an allegation of infringement was to construe the claim and define the monopoly. This required identification of each of the integers of the claims. The second step was to identify whether the Stella contained those integers. If the Stella contained every integer, then the patent would be infringed. The issues of infringement and construction were interwoven [23].

    Lucas v Peterson Portable Sawing Systems Ltd [2006] NZSC 20, [2006] 3 NZLR 721; Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183 (HL); Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL, [2005] RPC 169 applied.

  3. The interpretative framework was not to be confused with the “doctrine of equivalents”. However, functional equivalence could be an important part of the background facts known to the skilled addressee affecting what he or she understood the claims to mean. Functional equivalence could inform construction where the variant had no material effect on the invention, would have been obvious at the priority date, and strict compliance with a restricted meaning was not intended. It might then be said that the patentee intended that the monopoly extend to the variant, but the central focal point was always the language of the patent in the light of its purpose and context [24].

    Object of patent

  4. The object of the invention was to provide a latching mechanism which could be configured to end-use requirements [34], [35], [44]. The patent expressly referred to configurability to suit a range of well-known locking options [38]. The object of the patent need not be coextensive with the advantages of the invention [44].

    Smale v North Sails (NZ) Ltd [1991] 3 NZLR 19 (HC) adopted.

B         The Stella did not infringe the Latch patent

  1. It was agreed that some of the Stella features could be found in the Latch patent, including a latch mechanism with dead locking and daylatching functionality, a snib/manual lever to lock and unlock, the use of a tailbar/key shaft to activate the deadlocking function, and the co-axial movement of the drive mechanism and the receiver/cap [62].

  2. The defendant contended that as the patent referred to “a” drive member, the patentee had attached significance to singularity, and the Stella had “two drive spigots” not “a drive member” [64]. This was not accepted. “Drive member” was a generic concept broadly referring to the mechanical element that transferred or imparted force from one element to another. The two spigots of the Stella performed this function, either as drive members or as drive elements. While the patentee was assumed to have placed some significance on singularity, a drive member could logically consist of more than one part or driving element and the spigots of the Stella could be fairly described as “the drive member” [66]. A person skilled in the art would therefore consider that the Stella contained “a drive member” [67].

  3. To be infringing, it was necessary that the Stella contain a drive member “coupled” to the snib. The Stella’s spigots were moulded to the snib. Claim 18 of the patent envisaged two separate components coming together. This meaning was consistent with the syntax of the Claim and by reference to the specification as a whole. However, a purposive approach supported a broad meaning of “coupled” to include any final combination that achieved the Latch patent’s object [71]. While the form of coupling should not be allowed to obscure the patent’s purpose or function, the evidence showed that integrally forming the snib and driver in the manner used by the Stella inherently reduced the potential configurability of the latching mechanism which was contrary to the object of the patent [72]. Therefore the Stella did not contain “a driver, coupled to the snib” [73]. This difference was not simply a matter of form. The coupling process was the key to the configurability of the Latch to meet end-use requirements. Integrally forming the spigots to the snib, rather than coupling the spigots to the snib, was a marked departure from the Latch patent’s basic feature and was not anticipated by Claim 18 of the Latch patent [91].

  4. The Stella did contain a drive member rotatable by the snib about the first axis [78]. It also contained the integer of a selector together with a receiver [82].

  5. The defendant argued that the patent referred to “a lock bolt”, which was a single lock bolt, but the Stella had two pins, not a single lock bolt. The proper inquiry was whether Claim 18 anticipated the use only of “a” lock bolt and not two lock pins [84]. The language of “lock pin” and “lock bolt” could be used interchangeably depending on context [86]. Claim 18 did not purport to circumscribe the exact method by which a lock bolt was to lock the snib and the defendant’s design choice should not obscure the inference that a skilled addressee in the art would have little trouble exchanging the lock bolt for a lock pin [87]. While the reference to “a” lock bolt suggested that the patentee had attributed some significance to the number of bolts, the addition of another lock bolt/pin added nothing to the invention and would have been obvious [88]. A skilled addressee would consider that the Stella pin locks were anticipated by the reference to a lock bolt [89].

  6. Because the Stella did not contain a “driver, coupled to the snib” it did not infringe the Latch patent [90].

C         Invalidity

            (1)        Novelty

  1. The defendant had claimed that the Latch had been anticipated by another locking mechanism, the Sentry. There were at least two key differences between the Latch and the Sentry – the Sentry had no drive member “coupled” to the snib and there was no separate drive member in the sense used in the plaintiff’s patent; and the Sentry did not have back-to-back tailbars [100]. The Sentry did not display all the features of the Latch [102].

  2. The other prior art identified by the defendant did not contain all of the features of the Latch. The Latch patent was not invalid for lack of novelty [104].

    (2)        Obviousness

  3. In order to assess whether the Latch represented a simple collocation or combination of known integers, it was helpful to follow the first three steps of the Windsurfer case. If the Judge found that there was a synergistic interaction between the integers so as to render the Latch a “single invention” in terms of Sabaf Spa, then he would address the ultimate issue of obviousness [106].

    Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (EWCA); Sabaf SpA v MFI Furniture Centres Ltd [2004] UKHL 45, [2005] RPC 10; Huhtamaki Australia Pty Ltd v SEDA SpA HC Auckland CIV-2010-485-509, 19 April 2011 followed.

  4. The core theme of the patent was configurability [112]. The purported inventive concept of the patent was claimed in the Latch patent [114].

  5. From a survey of the common general knowledge, two integers of Claim 18 of the Latch patent emerge as different from the prior art – coupling the driver to the snib and the dual receiver area with back-to-back tailbars [138]. All of the integers of Claim 18 could be found in the known art, either as individual elements or combinations of known elements [139]. However, the particular configurability of the Latch to a wide range of lock sets marked a material improvement on the status quo [140]. The configurability outcome reflected the effect of combining the elements in a new way, rather than being the product of each element performing its usual task [140].

    Lucas v Peterson Portable Sawing Systems Ltd [2006] NZSC 20, [2006] 3 NZLR 721;and Sabaf SpA v MFI Furniture Centres Ltd [2004] UKHL 45, [2005 RPC 10 distinguished.

  6. The Court was not satisfied that the particular combination of the prior lock art, including variants specially relating to the coupling of the driver to the snib and the back-to-back tailbars, would have been obvious to the skilled addressee.   The Latch marked a significant improvement over the status quo which was very clever [146].

    (3)        Lack of fair basis

  7. The claims of the patent did not overreach [151].

    (4)        Insufficiency and inutility

  8. The insufficiency argument was not successful [152]. The inutility argument was also unsuccessful [153].

  9. The Latch patent was valid [154].


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