ACIS and Reel SA v Aluminium Pechiney and ECL

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 61780/99 in the name of Reel SA and Acis

Title: Method of managing the operation of a plant for the production of aluminium by igneous electrolysis and aluminium production plant for implementing this method.

Action: Request for a determination under section 32 and application for a declaration under section 36 in relation to the entitlement to the invention, both by Aluminium Pechiney, Societe Anonyme and ECL (Electrification Charpente Levage), Societe Anonyme.

Decision: Issued .
Abstract

Aluminium Pechiney and ECL filed a request under section 32 and an application under section 36 alleging that they, and not the named applicants, were entitled to the invention described in the patent specification.
One of the principles of Acis, Serge Huon, was a former employee of ECL. It was argued that Aluminium Pechiney had conceived a concept they called ‘organisation tournante’ (translated as ‘turnaround operation’) in 1986 and that this was communicated to Mr Huon in his role at ECL.
The legal burden of proof in matters such as this rests with the requestors. However, the evidentiary burden may shift according to the state of the evidence from time to time. This will depend on the circumstances of the case and the likelihood of the facts being within the knowledge of, or more readily available to, one side or the other. The Commissioner is not bound by the rules of evidence but is entitled to act on any material that is “logically probative” of the issues under decision. The standard of proof required is the normal standard of proof required in civil litigation, that is the balance of probability.
Decided that the requestors had not proven on the balance of probabilities that they had conceived the same or similar process to what is described. No declaration made under section 36. Determined under section 32 that the application continues to proceed in the names of Acis and Reel SA.
Costs awarded against the requestor. As the matter was not an opposition, but proceedings under sections 32 and 36, many of the cost items in schedule 8 of the Patent Regulations do not apply.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 61780/99 by Reel SA and Acis; and a request for a determination under section 32 and an application for a declaration under section 36 in relation to the entitlement to the invention, both by Aluminium Pechiney, Societe Anonyme and ECL (Electrification Charpente Levage), Societe Anonyme

BACKGROUND

Reel SA and Acis jointly filed patent application 61780/99 on 30 November 1999.
On 16 May 2002, Aluminium Pechiney, Societe Anonyme (hereafter "Pechiney") and ECL (Electrification Charpente Levage), Societe Anonyme (hereafter "ECL") jointly filed both a request for determination of a dispute under section 32 and an application for a declaration of an eligible person under section 36. Section 32 provides a mechanism for the Commissioner to determine whether, or in what manner, the application should proceed. Section 36 allows the Commissioner to make a declaration that the nominated person is not an eligible person, but that some other person is an eligible person. The respective grounds put forward by Pechiney and ECL under both sections 32 and 36 were identical.
Briefly put, Pechiney and ECL allege that Mr Serge Huon, a former employee of ECL, started a small company named Acis and together with Reel SA (a competitor of ECL) filed the patent application using information that Mr Huon had obtained during his employment with ECL.
The Patent Request filed with patent application 61780/99 does not include the names of the inventors and the applicants have not filed a notice of entitlement. However, I note that regulation 3.1 only requires these to be filed "before acceptance". The applicants filed a request for examination on 8 January 2003. A first examiners report has not issued as examination has been placed on hold pending resolution of the current dispute.
Alu Conseil Ingenierie Service (who I understand to be the same company as Acis) and REEL SA have also filed a European patent application, EP 1,101,838. The European application was filed on 19 November 1999 and, although no claim to priority has been made under the Paris Convention, is for the same invention as the Australian application. The European application names Gerard Piron and Serge Huon as inventors. Mr Piron is an employee of Reel SA.
Following service of evidence in support and evidence in response by both parties, the matters were set for a hearing. I heard the parties in Canberra on 24 February 2004. Fred Schilling, patent attorney of Davies Collison Cave, Sydney, represented Reel SA and Acis. Pechiney and ECL were represented by Shanaz Irani, patent attorney of Spruson & Ferguson, Sydney and Franck Barrere, an employee of ECL. At the hearing on 24 February 2004 I identified deficiencies in the evidence from both parties. As the deficiencies were such that it would have been difficult for me to come to an informed decision on the evidence, I allowed both parties an opportunity to file further evidence. Both parties took advantage of this opportunity and the hearing was resumed on 5 July 2004 to consider the further evidence. Mr Schilling and Ms Irani both appeared at the resumed hearing in person.
THE FRENCH PROCEEDINGS
There are also proceedings before the French Courts between the parties in relation to the invention. As part of their evidence, Pechiney and ECL filed a copy of a document (together with a translation of the document) titled "Summons to the Superior Court of Lille". Part of this document includes a request to the French Court to "proceed to declare the companies ALUMINIUM PECHINEY and ECL to be the co-owners of said application as well as of all corresponding foreign patent applications and patents, namely application AU 99-61780 filed in Australia, …". I note the French court has now made its decision and has come to the same conclusion that I have reached.
THE DISPUTED INVENTION
The requestors’ claim to entitlement is succinctly put in the statements accompanying the application under section 36 and request under section 32:
“The invention disclosed in above Australian patent application 61780/99 relates to a method of managing the operation of a plant for the production of aluminium by igneous electrolysis. Such a plant typically includes two parallel pot rooms, each pot-room comprising a linear series of electrolysis pots. Handling operations (such as changing of anodes) are regularly performed on the pots to keep them going. These operations are performed by using special machines that can be moved back and forth above and along the series of pots.
According to the methods of prior art, the various handling operations in the two pot-rooms are performed separately.
According to the invention, the handling operations in the two pot-rooms are linked. More precisely, the operations follow a continuous circular path that goes along a series of pots, from one pot-room to the neighbouring one, backward along the second series of pots and then back to the first pot-room. For that purpose, the machines can move in a closed loop (ie along one series and then backward along the other series).
The invention was conceived around 1986 by employees of Aluminium Pechiney within the framework of a project called ‘Design to Cost’. The possible embodiment of the basic concept was then examined by employees of both Aluminium Pechiney and ECL. Mr Serge Huon, who was marketing director for ECL at the time, was aware of this development.
Mr Huon was not an inventor of the invention, he did not contribute in any way to it and he was simply involved with marketing for ECL at that time. Mr Huon is not entitled in any way to be named as an inventor or co-inventor in respect of this invention.
Mr Serge Huon left ECL in 1998 and started a small company named Alu Conseil Ingenierie Services (ACIS).
ACIS and REEL (the co-applicants of application 61780/99) have strong working links through Mr Huon and both are competitors of ECL.
This invention was put aside by both ECL and Aluminium Pechiney for various reasons, but not abandoned. It was not at any time disclosed publicly by them. The interest in this new method was revived in the last few months by the development of larger plants comprising a larger number of electrolysis pots per potline (the amperage of each pot being typically around 300 KA or more) and the development of electrolysis pots with much higher amperage (around 500 kA).”
According to the specification, aluminium plants generally include tank rooms having a number of tanks or pots in series. There are generally two tank rooms in parallel, with a central passageway between the tank rooms. In a typical plant each tank room may be up to one kilometre long and the two tank rooms may comprise 288 tanks. The tanks in each room are serviced by what the specification calls multifunctional machines. These are basically large cranes carrying multiple tools for various operations such as feeding alumina and tapping produced aluminium, breaking surface crust, changing anodes, etc. In the prior art plant exemplified in the specification, eight identical multifunctional machines serve each of the tank series.
In the known plants, the multifunctional machines operate in a "slide-wise" manner. That is, each machine starts from a first tank in the series and moves progressively to tank number n, before returning back to the first tank. For the prior art plant described having 288 tanks, eight machines carry out forward and return movements in order for the various tasks to be accomplished.
In the described invention, the machines move in a closed loop rather than back and forth. That is, the machines move from the beginning of one series of tanks to the end and are then transferred to the adjacent tank room where they move back along the second series of tanks, before being transferred back across to the start of the first series. In this manner, the machines rotate through all tanks in both tank rooms in a continuous loop, rather than moving back and forth over a number of tanks in the one room.
An advantage of this is said to be that instead of having eight large and, by necessity, over-designed machines, the invention allows the use of smaller specialised machines carrying out a smaller number of functions. The specification describes a process having four pairs of specialised machines, with one machine in the pair carrying out anode handling and the other handling the tapping ladle.
SUBMISSIONS AND EVIDENCE
The requestors have argued that the invention was developed from ideas conceived by Mr Bernard Langon’s team and developed by engineers of Pechiney in collaboration with ECL. Mr Langon is an employee of Aluminium Pechiney. Aluminium Pechiney started research in 1986 relating to a study called ‘Design to Cost’ with the objective of designing a new generation of innovative plants termed “Electrolysis plant of the Future”. The aim of the ‘Design to Cost’ study was to decrease costs involved in the operation of aluminium electrolysis plants. According to the requestors, the concept of operating the pot-tending machines in a continuous loop was referred to as “organisation tournante” (translated as ‘turnaround operation’) within Aluminium Pechiney.
I note that there are a number of documents filed by the requestors in support of their claim, but which are not exhibited with any declaration as required by regulation 22.12 of the Patent Regulations. Deane J., sitting in the Federal Court of Australia, issued a judgement including the following paragraph (Minister for Immigration and Ethnic Affairs v. Pochi 31 ALR 666):
"These technical rules of evidence, however, form no part of the rules of natural justice. The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant. It means that he must not spin a coin or consult an astrologer, but he may take into account any material, which as a matter of reason, has some probative value in the sense mentioned above. If it is capable of having any probative value, the weight to be attached to it is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue."
While I am not bound by the rules of evidence and am entitled to act on any material that is logically probative of the issues under decision, the lack of any declaration attesting to what certain documents are presents some difficulties on occasions and must be weighted accordingly.
The legal burden of proof in matters such as this rests with the requestors. In the present case that is Pechiney and ECL. However, the evidentiary burden may shift according to the state of the evidence from time to time. This will depend on the circumstances of the case and the likelihood of the facts being within the knowledge of, or more readily available to, one side or the other. (Dunlop Holdings Ltd’s Application [1979] RPC 523).
Further, and as stated above, the Commissioner is not bound by the rules of evidence but is entitled to act on any material that is “logically probative” of the issues under decision. The standard of proof required is the normal standard of proof required in civil litigation, that is the balance of probability (Dunlop Holdings Ltd).
Requestor’s case
At the heart of the dispute appears to be the question as to what information, if any, was transferred to Mr Huon while he was an employee of ECL. The requestors have provided declarations by a number of employees of Aluminium Pechiney in support, namely Bernard Langon, Christian Duval, Jean-Claude Terrier and Frederic Chaldjian. All of these declarants state that Mr Huon attended meetings or received information in which the ‘turnaround operation’ was discussed.
Mr Langon declares that he is “now unable to recall in detail the information provided to one or the other persons of the group because the information is very voluminous and dates a long time ago (15 years).” Despite this reference to “very voluminous” information, the only document exhibited to the Langon declaration is what appears to be a copy of a page from a notebook. I assume the “very voluminous” information refers to the ‘Design to Cost’ study in general. The exhibit includes sketches of what the requestor says is a continuous loop operation and is dated 2/10/86. The page also lists a number of names, who appear to be employees of Pechiney. Huon is not listed. Although exhibited to his declaration, Langon does not explain or even refer to the sketches. Langon also states that “Mr Pierre, manager of ECL, had ordered that our studies go through Mr Huon.” It is not clear if this statement is based on Langon’s personal recollection or otherwise.
Mr Duval declares that during the study he “met Mr Serge Huon repeatedly and, in particular, during particular meetings with ECL in Lille”. Huon, in his evidence in response, has provided documentary evidence that he was out of the country on at least some of the dates Duval says they met. In further evidence, the requestors filed a document that appears to be selected pages from Duval’s 1986 diary, corresponding to the dates on which Duval declares he met with Huon. Each of the entries for the days Duval says he had meetings has a reference to ECL. However, apart from 20 May 1986, there is no reference to Huon in the diary entries. It is more probable, as put forward by Mr Schilling, that Duval met someone from ECL other than Huon on those dates. Huon could not have been met Duval on at least some of the dates Duval suggests, because the evidence shows Huon was out of the country on those dates. I give little credit to the Duval declaration insofar as it relates to meetings with Huon.
Mr Terrier states that ‘I recall particularly a presentation of the Research & Development program of Aluminium Pechiney (with B. Langon and C. Duval) where we expounded our research topics to Mr. B. Pierre (General Manager) and S. Huon (General Manager).” Terrier gives no further information regarding that meeting or as to what research topics were discussed. Attached to the Terrier declaration is a document containing notes and sketches relating to the ‘turnaround operation’. The document appears to be dated 30-12-86. The document also lists a number of names, who appear to be employees of Pechiney. Huon is not listed. I note that the sketches refer to a rotation of shifts. The sketches show two types of machines: MVC (‘machine of various changes’) and ACM (‘anode changing machines’). While there is reference to rotation of ACMs with respect to “upstream” and “downstream”, it is not clear if this is within halls or between halls. Similarly to Langon, Terrier does not explain or refer to the sketches. Terrier does, however, refer to a lack of enthusiasm by ECL towards their concepts.
Mr Chaldjian makes the following comments regarding the participation of ECL:
“ECL was regularly informed about the progress of the studies (B. Pierre and S. Huon were the addressees of work papers) and participated (with Messrs. Huon and Boinet) in:
Ú Work meetings pertaining to “specialised machines” and their cost (machinery supplied by them)
Ú Meetings on the synthesis of the subject (time period from 1986 to 1988).”
Chaldjian does not exhibit any copies of the work papers he refers to in his declaration. Although Chaldjian refers to the ‘turnaround operation’, he does not elaborate on what this means other than a brief reference to “the specialisation of handling machines for operating the electrolysis series”. I note here that Gerard Hudault, another employee of Pechiney, declares that specialised machines per se are not new, having been in use at the beginning of the 1980’s.
All of the declarants for the requestor declare that information regarding the ‘turnaround operation’ was passed on to Mr Huon. However, the declarations are somewhat vague about the nature and extent of what was passed on to Mr Huon. To an extent, this is not surprising given the passage of time. However, the lack of any detail as to what the “turnaround concept” involved is not helpful. Although the requestors’ declarants frequently referred to the term, none explain what they understand the term to mean or what it encompasses.
In addition to the declarations, the requestors have also provided a number of undeclared documents in support of their case.
The first document that mentions Mr Huon is an Aluminium Pechiney letter dated 21 April 1986 “Re: Participation of ECL in the study ‘Design to Cost’”. This letter states:
“Could you contact B. Pierre as soon as possible or, in the case of his absence, Mr. Huon who will give you the name of the ECL participant for each of the topics.”
The applicant pointed out that this letter does not say that Mr Huon was a participant himself, merely that he could provide names in the absence of Mr Pierre. The letter was also addressed generally regarding the ‘Design to Cost’ project. As I understand it, the ‘turnaround operation’ was only one of the ideas arising out that project.
There are then some documents relating to a meeting on 20 May 1986 referred to in the Duval declaration. This alleged meeting appears to be a point of much contention between the parties. As stated earlier, Duval declared he met with Huon on a number of dates, including 20 May 1986. Duval’s diary entry for 20 May 1986 include notes to the side which the requestors submit translate as “Huon = topics list on which ECL accept to work. Turnaround operation calendar.” The requestor made certain assumptions about abbreviations used in the notes in providing this translation, although Duval made no comment in his declaration on the notes or what they meant.

Also provided is what is said to be a telex from Huon at ECL to Langon at Pechiney dated 27 May 1986. The telex refers to the meeting of 20 May 1986. It was submitted at the hearing that Huon has taken action against Duval and Pechiney in France on the basis that this document is a false or fraudulent document. In any case, while the telex refers to the ‘Design to Cost’ study, it does not refer to the ‘turnaround operation’. In fact, as Mr Schilling pointed out, it pre-dates all other references to the ‘turnaround operation’ provided by Pechiney. At best, the documents relating to the May 20 meeting indicate Huon had some involvement in the ‘Design to Cost’ project. Given the considerable uncertainty and the lack of declaratory evidence on the point other than the Duval declaration, which itself appears to have little credibility, I place no weight on the meeting of 20 May or the documents said to relate to that meeting.
Regardless of whether or not Huon attended any meeting in May 1986, there follows a series of documents that appear to have been copied to Huon, amongst other employees of ECL and Pechiney, starting with what appear to be minutes of meetings between Aluminium Pechiney and ECL dated 21 July 1986.
The minutes dated 21 July 1986 are signed by Mr Langdon and are addressed (notification to) to certain people, including a Mr Boinet of ECL. The letter is also copied to certain other people, including Messrs Pierre and Huon of ECL. It is not clear from the letter who attended the meeting discussed therein. The minutes include a report on the main points discussed at the meeting. Attached as an annex is a “rough calculation of the number of overhead cranes”, which includes a sketch of a “loop-type series”.
This is followed by a further document from Langon dated 22 July 2004, again directed to Boinet but also copied to various others including Huon. This document provides further detail regarding working times and the organisation of tasks in the “exploitation tournante”, or rotary operation. The document has 4 annexes discussing working times and organisation of tasks, as well as synchronisation of tapping and of anode changes. The document also refers to “synchronisation of tasks in a series”. There are also attached sketches that outline the organisation of work. The document states that “transfers can be made at the ends of the hall (rotation of gantry cranes) or at the middle of the halls while disturbing for a short time the hall complex.”
Further documents signed by Langon and addressed to the same recipients dated 25 July 1986 and 6 October 1986 also provide further detail of aspects of the rotary operation. The 25 July document suggests “separating the operations on the anode and of the tapping by allowing their crossing.” The 6 October document discusses “the rate of rotation in the work area”. This document is principally concerned with shift times and numbers of shifts. The document discusses using two types of gantry cranes, for the transfer of anodes and for the transfer of the ladles with metal. However, the report concludes that using “one special gantry crane for lifting must not be ruled out because it is probably more economical”.
The next relevant document appears to be minutes of a meeting dated 24 January 1991. The minutes indicate that Mr Huon was one of a number of participants. Item 4 on page 3 of the minutes include a statement that “ECL indicates that the cost of two pairs of mobile beams is similar to that of the transfer gantry crane and that in some cases, it may be interesting to install two transfer gantry cranes without mobile beams on the end.” The requestors state this indicates knowledge by Mr Huon of a plant arrangement having a pair of transfer cranes. The patent applicants assert this is without further qualification.
It is not clear from the evidence what happened in relation to the project between 1986 and 1991. It appears that Mr Pierre and ECL were not enthusiastic about the ‘turnaround operation’. This was apparently because ECL were in the business of selling cranes, and the smaller specialised cranes used would generate less revenue for ECL than the existing multifunctional cranes. However, the requestors assert the evidence shows that Pechiney had not abandoned the concept altogether.
Applicant’s case
Huon declares that he was an employee of ECL from 1962 until he was fired in April 1998. Huon occupied a number of positions within ECL and in 1983 was promoted to “chief of the supervision service and was in charge of technical assistance for the whole building sites both in France and abroad”. He was then promoted to sales manager in 1989. Huon declares that he was never a member of any research team with ECL or Aluminium Pechiney.
In May 1998, Huon “set up his own company, ACIS, working as a consultant in the field of aluminium production.” ACIS (and a related company ASMI) developed a partnership with Reel, a French company involved in handling equipment and cranes. Huon declares that Acis and Reel developed a close technical collaboration to develop new specialised gantries that would allow the building of low frame structures. According to Huon, a problem was encountered in certain aluminium production plants with low ceilings where the tools offered by ECL were unsuitable. Huon states that the aim of Acis and Reel was to work in market sectors that ECL had deliberately abandoned rather than competing with ECL, fully aware of Pechiney and ECL’s technical superiority.
Piron states that Reel commenced an aluminium development program in October/November 1998. As part of this program, Huon and his partner Roger Boinet provided training to the Reel engineers, particularly the technical director Gérard Piron and his deputy Cédric Schmuck, who were inexperienced in aluminium production. Mr Piron declares that the presentation given to the Reel engineers included discussions of the anode baking plant, which operates on a continuous basis.
According to the applicants, they concentrated on developing modifications to the specific tooling for servicing pots. This resulted in a number of patent applications for specialised tools by Reel SA, ACIS and a related company ASMI. These tools required a much smaller clearance which made them suitable in plants with low ceilings. This was achieved “by adopting an approach that consisted in separating the various functions from one another and then developing specialised tools” (Huon declaration dated 17 April 2004). While the development of specialised machines provided advantages, it also presented a number of problems. The inability of machines to intersect on a single runway and the servicing requirements of the machines presented difficulties.
Huon, in his declaration in support, provided a summary of the general development of equipment in pot rooms in the industry. This included a discussion of the use of transfer gantries in various ways to transfer a machine from one pot room to another or to and from the garage for servicing. The purpose of this discussion appears to be to show that the development of the continuous rotation of pot tending machines was a logical development following on from previous developments in electrolysis plants. The applicants contended that the standard practice of using transfer gantries together with knowledge of the existence of circular operation in the anode baking furnace led to the development of continuous rotation of the machines, thus solving the problems involved in using specialised machines.
Piron, in his declaration dated 5 February 2003, states that the presentations given by Huon and Boinet to the Reel employees covered most aspects of the electrolysis plant. Piron states that “there was therefore very early awareness that the baking plant could operate in rotating mode”. He goes on to state that the idea for the continuous rotation of pot tending machines came about by analogy with the circular operation of the carbon anode baking plant. That is, the use of transfer gantries to transfer machines between pot rooms was known. Once specialised machines were developed, operating these specialised machines in continuous rotation was “the most obvious and rational solution”.
Huon states in his first declaration dated 4 February 2003 that “It was while studying the optimisation of investment costs and the number of machines and their functions that we hit upon the possibility of using equipment in continuous rotation to meet the continuous requirements of electrolysis pots.” In a later declaration dated 17 April 2004, Huon states that it was only after the specialised tools had been developed, during a meeting in St Cyr in August 1999 that the possibility of using continuous rotation was raised. The suggestion here is that the idea for the rotary operation came about in the process of educating personnel from Reel in the basic knowledge, and while collaborating with Reel to develop tools that required a much smaller clearance.
I note that Piron has provided a list of meetings held between 28 October 1998 and 12 September 2000. The list provides the dates, venue, people present and the subject of some 41 meetings in this period. Piron has also provided his own notes from these meetings. This evidence indicates that a there was a meeting at St Cyr on 9 August 1999. The evidence indicates that “RBo – CC” were present, which I assume refers to Roger Boinet and Cédric Schmuck. There is no indication that either Huon or Piron were present at that meeting. There was a further meeting on 31 August 1999 at Douai in which “SH-RBo-GP-CS” were present. I assume SH is Serge Huon and GP is Gérard Piron. Neither the subjects nor the notes for these meetings, or for that matter any other meetings, indicate that continuous rotation was a topic of discussion. Given the level of detail in Piron’s notes and drawings taken from these meetings, it is somewhat surprising that there is no reference to the “continuous rotation” method of operation.
According to Piron, Schmuck also drew up a number of reports of these meetings, but these were not provided in evidence because they contained “confidential information concerning technical developments that have not yet been patented”. If these notes contain subject matter that assists the patent applicants’ case, the burden is on them to provide the notes in evidence. Given that I provided the patent applicant an opportunity to provide further evidence that directly evidenced their development of the invention, I can only assume that these reports do not discuss the continuous rotation method and do not assist the applicants’ case.
In his declaration dated 17 July 2003, Huon distinguishes the invention in the patent application from that in the Pechiney exhibits. Firstly, Huon states that the function of the tools in the specification is different to the function of the tools in the Pechiney drawings. Secondly, in reference to the organisation of the tools, a preferred embodiment of the invention described in the specification has the components moving in pairs. Huon contends that these differences “make it clear that the means used by the device of the pending Australian patent application to embody the idea of cyclic operation are completely different from those contained in the diagrams submitted by Aluminium Pechiney”.
Huon refers in his declaration dated 4 February 2003 to six patent applications that he says result from the development of “specialised and adapted tools to continuous rotation”. In response, Hudault declares for the requestors that the majority of those patent applications post-date the present application. Hudault also declares that none of them specifically relate to specialised pot tending machines but describe devices that may equip any type of machine, specialised or not. I note that neither party filed these patent applications in evidence.
DECISION
The requestors have argued that this is a classic obtaining case. They submitted that “while Mr Huon was not involved in the day-to-day R & D activities regarding the development of the turnaround operation invention, Mr Huon was copied with memos regarding the same, because equipment such as pot tending machines (cranes) to be used in the closed loop operation were an integral part of ECL’s role in optimising production from electrolysis plants. … In short, because of Mr Huon’s position at ECL, he was copied various memos and important confidential information regarding the closed loop operation invention was disclosed to him in that capacity.”
Ms Irani submitted that the invention claimed in patent application 61780/99 is at most a ‘colourful variation’ of the invention created by Pechiney and ECL and was created with the benefit of the knowledge of the invention derived from the Pechiney/ECL collaboration, per Re Application by CSIRO 31 IPR 67. Ms Irani said that a common theme from preceding decisions is that “a person has entitlement to an invention if that person’s contribution, either solely or jointly with others had a material effect on the final concept of the invention”. I note this view is supported by a number of decisions, particularly Row Weeder v Nielsen 39 IPR 400; Re Upham and Commissioner of Patents (1998) 28 AAR 276; and Falkenhagen v Polemate Pty Ltd [1995] APO 32.
In order to discharge their burden of proof, the requestors need to show that the process they had conceptualised and referred to as the ‘turnaround operation’ was the same as that described in the patent specification, and secondly, that their idea was communicated to or obtained by Mr Huon. But before determining those issues, a separate question arises as to the entitlement of ECL. The requestors submitted that ECL had entitlement to the invention as a result of the collaboration between Pechiney and ECL. The evidence and arguments put are not altogether consistent or conclusive on this point. On the one hand, the requestors are adamant that Mr Huon is not entitled in any way to be named as an inventor or co-inventor in respect of the invention. On the other hand, the requestors do not positively identify anyone else from ECL who is regarded as a co-inventor. As was pointed out by the patent applicant, there is no evidence from anyone within ECL as to what role any employees of ECL played or as to who from ECL was involved in developing the invention.
I note here that the evidence contains frequent reference to Mr B. Pierre, General Manager of ECL. Although ECL is a party to the requests under sections 32 and 36, there is no evidence from Mr Pierre or, for that matter, from anyone else from within ECL. Evidence from employees of ECL regarding knowledge within ECL of the ‘turnaround operation’, the part ECL played in the development of the ‘turnaround operation’, and the role of Mr Huon in relation to the ‘turnaround operation’ would have been particularly helpful (and perhaps expected) in the circumstances.
The requestors argued that ECL gained entitlement by way of collaboration with Aluminium Pechiney. In Re Application by CSIRO 31 IPR 67, it was held that when looking at entitlement to an invention, one must have regard to the “invention” as a whole as well as the component parts, and the relationship between the participants. The fact that the parties were in collaboration is a major consideration. In that case, the collaboration between the parties was based on a sharing of all “advantages” arising from their collaboration. It was also held that the consequence of collaboration is that entitlement to any inventions associated with the collaboration is shared between the parties of the collaboration.
The Summons to the Superior Court of Lille filed by the requestors states:
“The participation of ECL provided special knowledge complementing that of Aluminium Pechiney and helped to carry out a joint project in regard to the design of the plant of the future in all its technical and economic aspects.”
It is clear from the evidence that there were a number of meetings between Pechiney and ECL where the ‘Design to Cost’ study and ‘turnaround operation’ project were discussed and the development of the idea was progressed as a result of these meetings. However, rather than showing ECL contributed to development of the ‘turnaround operation’, the evidence suggests that ECL were cool on the idea due to their own commercial interests. While the evidence shows that Pechiney developed an idea called the ‘turnaround operation’, there is no evidence as to what input ECL had in developing that idea.
In relation to what Pechiney had communicated to Huon, it is necessary to compare Pechiney’s concept of the rotary operation with the process described in the specification. There are three aspects to the invention described and claimed in patent application 61780/99. The first is the broad aspect of operating an electrolysis plant by carrying out the various handling operations in a closed loop, the members needed for the operations being moved over all the tanks of the two tank rooms in continuous cycles. The Pechiney documents indicate the ‘turnaround operation’ involves the use of transfer gantries at each end. However, there is no further technical detail as to how the ‘turnaround operation’ works or what it involves. Mr Schilling argued that while the documents dated 22 and 25 July 1986 concerned the use of separate machines for anode changing and tapping, this was in the context of those separate machines being able to move past each other in the same pot room. The term “rotary operation” referred to a concept of rotating the functions of the cranes and not to a transfer of cranes from one pot room to another. I note that the 22 July document states that “transfers can be made at the ends of the hall (rotation of gantry cranes) or at the middle of halls while disturbing for a short time the hall complex.” In my view, transfer at the middle of the hall is not consistent with the invention described in the specification. Duval declares that the breakdown of costs of rotary cranes lead to Pechiney requesting special anode and special tapping overhead cranes from ECL. He further declared that the idea envisaged cranes rotating in dependence upon the operations carried out during electrolysis. This appears to be different to the described invention, where the cranes do not rotate in dependence upon the operations, but travel continuously around the two pot rooms in a closed loop. Ms Irani submitted that the evidence showed Pechiney had developed the concept of a closed loop operation always travelling in the same direction containing specialised cranes and using a transfer system at the end of each pot room to transfer the cranes from one pot room to the other. In one view, and possibly with the benefit of hindsight, the drawings do appear to show such a process. However, there is no other evidence in the documents themselves or in the declaratory evidence that describes or supports this view. The requestors have not discharged the onus on them to show that the process they conceptualised from 1986 is the same as the process described in the patent specification.
The second aspect limits the invention to the use of specialised machines, which may be either monofunctional or multifunctional. In particular, there is described a method involving two types of machines. An anode-handling machine performs the functions of breaking the crust on the electrolysis pot and picks up the pieces of the crust, removes spent anodes and fits fresh anodes. A second machine for handling the tapping ladle lifts the anode frames, pours alumina into the tanks, and carries out various ancillary operations. The Pechiney documents describe machines having different purposes, for example pot tending machines and service cranes, and even suggests the possibility of separating the operations on the anode and of the tapping by allowing their crossing. However, the arrangement and functions of the anode handling machines and the tapping ladle machines as described in the specification do not appear to have been set out in the Pechiney documents copied to Huon.

The third aspect relates to the operation of the pot tending machines in relationship to each other. In particular, the machines are described as operating in pairs, such that alumina can be fed to one tank while liquid aluminium is tapped simultaneously from an adjacent tank. This allows for a machine to be in the tapping position at one tank, while the filling mouth of the adjacent tank coincides with an alumina hopper. Filling a tank with alumina can thereby occur while the longer operation of tapping occurs in the adjacent tank. The requestors’ documents describe simultaneous tapping and anode changing with the same gantry crane. The 21 July 1986 minutes show 6 pot tending machines and 2 overhead service cranes. This is quite a different arrangement to the paired operation described in the specification.
Therefore, Pechiney and ECL have not established, on the balance of probabilities, that the concept developed by engineers within Pechiney of the turnaround or rotary operation was the same as the arrangement described in the patent specification. While the sketches provided by Pechiney may show such an arrangement, there remains uncertainty over exactly what the sketches show and what the ‘turnaround operation’ involved.
In relation to whether information was passed on to Huon as an employee of ECL, the requestors have established that there were a series of meetings between Pechiney and ECL. While it has not been clearly established that Huon was present at any of those meetings, the minutes and other documentation were addressed to, and more likely than not, received by Mr Huon. Although Huon spent much of 1986 travelling out of the country, it is likely given his position and from the detail in documentation addressed to him that he would have been at least generally aware of the ‘Design to Cost’ project and the ‘turnaround operation’. The requestors have presented a number of documents relating to the ‘turnaround operation’ that were addressed to Mr Huon, among others at ECL. Although Huon states that he “never participated either to the project ‘Design to Cost’ or to any projects regarding new Aluminium Production Plant”, the evidence suggests that he was at least copied information on the progress in the project.
Mr Schilling submitted that it was more likely that Roger Boinet was the contact within ECL dealing with the ‘Design to Cost’ study, as he was the primary addressee on a number of the documents. Boinet, like Huon, is a former employee of ECL but was later employed by Acis. As an employee of Acis, it appears that Acis were in a position to present evidence from Mr Boinet. However, the applicant’s have not filed any evidence from Boinet or given any explanation as to why such evidence may not be available. If Boinet was the key contact within ECL as asserted by Mr Schilling, he would have been well placed to give evidence as to what role he had at ECL and what information was passed to him and others within ECL. This is clearly a case where the facts relating to Boinet’s involvement are within the knowledge of Acis. In any case, as I have pointed out above, while information was communicated to Huon, the requestors have not established this information was the basis for the described invention.
One aspect of some concern to me is that the patent applicants have not provided documentary evidence of any independent development of the invention by themselves. The requestors scoffed at the suggestion that the anode baking operation is analogous to the aluminium smelting operation and suggested that any linkage is far-fetched. Mr Schilling said in response to this Huon had never stated that there was a direct correlation between the “rotating fires” technology of anode baking and the present invention, but that the principle could be extended to electrolysis. He argued that that invention often arose from a spark and that sometimes with invention there is a leap in logic.
I understand the point Mr Schilling is making, but I would expect at least some record of the invention to have been created. There may not exist any record of the original idea or “spark’, as Mr Schilling called it, but the patent applicants have not been able to produce any documentation evidencing any subsequent discussion or development of that idea. This is despite reasonably detailed records of meetings made by Piron and, apparently, Schmuck. The only direct evidence is the patent specification itself. As I have noted above, aside from any doubt as to what the ‘turnaround operation’ involves, the specification sets out some significant differences between the described embodiments and what is taught by the Pechiney documents.
In any case, all the requestors have established is that some information relating to a concept referred to as “organisation tournante”, (or as they have translated it, ‘turnaround operation’), was passed on to Mr Huon as part of the “very voluminous” information relating to the ‘Design to Cost’ study. This included some differing sketches, two of which showed a transfer at the end of the pot rooms. None of the Pechiney declarants have provided any technical detail on what the concept involved and the evidence suggests ECL did not support the idea. Therefore, the requestors have not proven on the balance of probabilities that they have developed the same or similar process to what is described and communicated such a process to Huon. They have not discharged their burden. The failure of the patent applicant to provide further documentary evidence of independent invention, other than what is declared and what is provided in their patent specification, does not disentitle them to the invention.
Ms Irani referred to my decision in Sunstrum & Payette v Boland [2003] APO 16 where I observed that the section 36 applicant had a background in making improvements and advances in the relevant area of technology whereas the patent applicant in that case did not. Ms Irani said the circumstances here were the same. I disagree. Huon may have not been involved in product development while at ECL, but his role changed once he set up his own company to that where he needed to consider and address the needs of potential customers. Further, there is no suggestion that Piron did not have a background in development. The patent applicants referred in evidence to a number of patent applications they had filed. While these applications were not put in evidence, and several appear to post-date the present application, my observations in Sunstrum are not relevant to the present case.
CONCLUSION
I have found that the requestors, Aluminium Pechiney and ECL, have not established that the ‘turnaround operation’ concept was the same as the arrangement described and claimed in patent application 61780/99.
Therefore, it is not appropriate to make any declaration under section 36.
I determine under section 32 that the application is to continue to proceed in the names of Reel SA and Acis.
COSTS
Both parties submitted that costs should follow the event. I agree that this is appropriate. I note that these proceedings were under sections 32 and 36 rather than an opposition under the Patents Act, so that many of the cost items in schedule 8 of the Patent Regulations do not apply (Thomas & Stohr v Chappell & Yates [1993] APO 6 (28 January 1993)). The only costs applicable are those relating to the hearings.
I award costs against Aluminium Pechiney, Societe Anonyme and ECL (Electrification Charpente Levage), Societe Anonyme.
Brendan Bourke
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Sydney
Patent attorneys for the opponent : Spruson & Ferguson, Sydney

[2004] APO 35

22 December 2004