## Facts

- Delnorth Pty Ltd owned three Australian innovation patents covering flexible roadside marker posts made from sheet spring steel with specified structural features.
- The posts were designed to deflect on vehicle impact and return upright, with durability and installation advantages.
- Prior art included flexible plastic roadside posts and other known post configurations and features.
- Dura-Post (Aust) Pty Ltd manufactured and supplied competing roadside posts alleged to fall within Delnorth’s patent claims.
- Delnorth sued for infringement; Dura-Post denied infringement and cross-claimed for revocation, principally alleging lack of novelty and lack of “innovative step” under the Patents Act 1990 (Cth).

## Issues

1. Whether Dura-Post’s products infringed one or more asserted claims of Delnorth’s three innovation patents.
2. Whether the asserted claims lacked an “innovative step” because the differences from the prior art base made no substantial contribution to the working of the invention.
3. Whether any other validity objections (including novelty and related grounds) required revocation of any claims.

## Decision

- The court held that Dura-Post infringed at least claim 1 of Delnorth’s first innovation patent and infringed various other surviving claims.
- The court upheld the validity of the patents overall, but found claims 1 and 2 of two of the patents invalid for lack of innovative step.
- The court rejected an approach that reduced the inventions to merely “using spring steel,” and instead assessed the claimed combinations of material and structural features.
- Relief followed on the basis of infringement of the valid claims; invalid claims could not support liability.

## Legal Principles

- An innovation patent requires an “innovative step,” satisfied where the claimed invention differs from the prior art base in a way that makes a substantial contribution to the working of the invention.
- The “innovative step” threshold is lower than the “inventive step” (obviousness) standard; the inquiry is not whether the claim represents a technical advance, but whether the difference materially affects how the invention works.
- Even relatively small or obvious variations may satisfy innovative step if they make a real, substantial functional contribution.
- Validity can be claim-specific: broader claims may fail innovative step even where narrower claims directed to particular feature-combinations survive.
- Infringement is assessed by comparing the accused product to the essential features of each valid claim; invalid claims are disregarded.

## Conclusion

The court treated “innovative step” as a functional, contribution-based test and held that many claims covering spring-steel roadside posts with specified features were valid and infringed, while certain broader claims failed because their variations over the prior art did not substantially contribute to the invention’s working.


Delnorth Pty Ltd v. Dura-Post (Aust) Pty Ltd, [2008] FCA 1225 (Fed. Ct. Aust. 2008)