Aspirating IP Limited v Vision Systems Limited
[2010] FCA 1061
•30 September 2010
FEDERAL COURT OF AUSTRALIA
Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061
Citation: Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 Parties: ASPIRATING IP LIMITED v VISION SYSTEMS LIMITED File numbers: VID 1042 of 2008
SAD 59 of 2005Judge: BESANKO J Date of judgment: 30 September 2010 Catchwords: INTELLECTUAL PROPERTY — PATENTS — appeals under s 60 of the Patents Act 1990 (Cth) (‘the Act’)— opposition to grant of standard patent for smoke detection system using bypass arrangement — what was priority date of claim — whether claim fairly based on earlier patent application filed in United Kingdom pursuant to s 43 of the Act and Patents Regulations 1991 (Cth) r 3.12 — construction of claims — whether description of claim in specification ‘main duct means in the form of sampling duct means of a smoke detection system’ included air conditioning duct or only dedicated sampling pipe — whether alleged invention was novel pursuant to ss 7(1) and 18(1) of the Act — what was prior art base for purpose of Schedule 1 of the Act — whether prior use of relevant information had been ‘publicly available’ pursuant to Schedule 1 of the Act — whether information made publicly available where only disclosed between members of company — whether smoke detection system made publicly available on secured site where public access restricted — whether smoke detection system made publicly available via patent filed in 1965 — whether 1965 patent should be read at date of its issue or at priority date — whether alleged invention involved an inventive step pursuant to ss 7 and 18(1)(b)(ii) of the Act — what were attributes of person skilled in the relevant art — what was common general knowledge at the priority date — whether alleged inventive step was obvious — whether witnesses for respondent who knew of claims in specification before giving opinion on inventive step able to give evidence as to whether alleged inventive step was obvious — whether applicant entitled to grant of patent for the invention pursuant to ss 15 and 59 of the Act — whether applicant had derived title to the invention from the inventor
HELD: Priority date of claim was date of filing of patent application in United Kingdom because United Kingdom application contained real and reasonably clear disclosure of relevant bypass arrangement. Proper construction of ‘main duct means in the form of sampling duct means of a smoke detection system’ included air conditioning ducts, and therefore major claims in specification lacked novelty because smoke detection systems using air conditioning ducts to draw air were in common use before priority date. Claims 1-18 inclusive in specification did not involve an inventive step.
Legislation: Evidence Act 1995 (Cth) s 56, s 135
Federal Court Rules O 58 r 5A
Patents Act 1990 (Cth) ss 3 (Schedule 1), 7, 15, 18, 40, 43, 59, 60
Patents Amendment Act 2001 (Cth)Cases cited: Aktiebolaget Hässle v Alphapharm Pty Limited (2002) 212 CLR 411, considered
Alphapharm Pty Ltd v H Lundbeck A/S (2008) 76 IPR 618, considered
Airsense Technology Ltd v Vision Systems Ltd (2007) FCA 828; (2007) 73 IPR 65, referred to/cited
Austal Ships v Stena RederiAktiebolag (2005) 66 IPR 420, cited
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260, cited
Commissioner of Patents v Sherman (2008) 172 FCR 394, cited
Commissioner of Patents v Microcell Limited (1958) 102 CLR 232, cited
Commonwealth Industrial Gases Ltd v M.W.A. Holdings Pty Ltd (1970) 180 CLR 160, cited
Delnorth Pty Ltd (ACN 051 954 977) v Dura-Post (Aust) Pty Ltd (ACN 101 287 512) (2008) 78 IPR 463, considered
Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [2001] FCA 1877, cited
Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81, (2009) 177 FCR 239, cited
EI Dupont De Nemours and Co v Imperial Chemical Industries Plc (2002) 54 IPR 304, cited
Esco Corporation v PAC Mining Pty Ltd [2008] FCA 640; (2008) 76 IPR 191, cited
F Hoffman-La Roche AG v New Zealand Biolabs Inc (2000) 99 FCR 56, cited
Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning v Commissioner of Patents (1971) 124 CLR 654, cited
Federal Commissioner of Taxation v Peabody (1994) 181 CLR 359, cited
Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331, cited
Flour Oxidizing Company Ltd v Carr & Co Ltd (1908) 25 RPC 428, cited
Futuris Corporation v Commissioner of Taxation [2010] FCA 935, cited
General Tire and Rubber Company v Firestone Tyre and Rubber Co Ltd [1972] RPC 457, considered
Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106, cited
Grove Hill Pty Ltd v Great Western Corporation Pty Ltd (2002) 55 IPR 257, referred to
Harwood v Great Northern Railway Co (1865) 11 HLC 654; 11 ER 1488, cited
Hill v Evans (1862) 4 De GF & J 288; 45 ER 1195; 6 LT 90; 31 LJ Ch 456, cited
Insta Image Pty Ltd v KD Kanopy Australia Pty Ltd [2008] FCAFC 139; (2008) 78 IPR 20, considered
Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1, cited
Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178, cited
JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68, cited
Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86, cited
Lockwood Security Products Pty Limited v Doric Products Pty Limited (2004) 217 CLR 274, considered
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] (2007) 235 CLR 173, considered
Lux Traffic Controls Ltd v Pike Signals Ltd [1993] RPC 107, cited
Martin and Biro Swan Ltd v H Millwood Ltd (1956) 73 RPC 125, cited
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, cited
Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited (1980) 144 CLR 253, cited
Minnesota Mining and Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248, discussed
Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593, [1972] RPC 639, cited
Multiform Displays Ltd v Whitmarley Displays Ltd (formerly Reay and Davis Ltd) [1957] 74 RPC 260, cited
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545, cited
Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236, citedPAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18; (2009) 80 IPR 1, cited
Polwood Pty Ltd v Foxworth Pty Ltd (2008) 165 FCR 527, cited
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79, cited
Re ICI Chemicals & Polymers Ltd v Lubrizol Corporation (2000) 106 FCR 214, cited
Re Stauffer Chemical Company’s Application [1977] RPC 33, (1) not followed, (2) followed
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289, cited
Sachtler GmbH and Co KG v RE Miller Pty Ltd (2005) 65 IPR 605, cited
Sigma Pharmaceuticals (Australia) Pty Ltd (ACN 004 118 594) v Wyeth (2009) 81 IPR 339, followed
Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1959) 100 CLR 5, cited
Stack vDavies Shephard Pty Ltd (2001) 108 FCR 422; (2001) 51 IPR 513, cited
Stamp v W J Powell Proprietary Ltd (1918) 24 CLR 339, cited
The Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, cited
Welch Perrin and Company Proprietary Limited v Worrel (1961) 106 CLR 588, cited
Windsurfing International Inc v Petit (1983) 3 IPR 446, cited
Wood v Westaflax(Aust) Pty Ltd (1990) 20 IPR 387, followed
Woolworths Ltd v WB Davis & Son Ltd Inc (1942) 16 ALJ 57, citedPatent Cooperation Treaty. Opened for signature 19 June 1970. [1980] ATS 6 (entered into force 24 January 1978)
Terrell T, Terrell C, Jones JR, Terrell on Patents (8th ed, 1934)
Stewart AJ, Griffith P and Bannister J, Intellectual Property in Australia (4th ed, 2010)
Concise Oxford Dictionary of Current English (11th ed, 2006)
Macquarie Encyclopedic Dictionary (2nd ed, 2010)Dates of hearing: 5, 7-9, 12-16, 19-23, 26-29 October 2009
25, 26 February 2010Date of last written submissions filed with leave: 12 March 2010 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 577 Counsel for the Applicant: Mr BJ Hess SC with Dr LJ Duncan Solicitor for the Applicant: Griffith Hack Counsel for the Respondent: Mr BN Caine SC with Dr WA Rothnie Solicitor for the Respondent: Davies Collison Cave
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 1042 of 2008
BETWEEN: ASPIRATING IP LIMITED
Applicant
AND: VISION SYSTEMS LIMITED
Respondent
JUDGE:
BESANKO J
DATE OF ORDER:
30 SEPTEMBER 2010
WHERE MADE:
ADELAIDE (VIA VIDEO LINK WITH MELBOURNE)
THE COURT ORDERS THAT:
Each party has leave to make submissions as to the final orders to be made having regard to these reasons.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
SAD 59 of 2005
BETWEEN: ASPIRATING IP LIMITED
ApplicantAND: VISION SYSTEMS LIMITED
Respondent
JUDGE:
BESANKO J
DATE OF ORDER:
30 SEPTEMBER 2010
WHERE MADE:
ADELAIDE (VIA VIDEO LINK WITH MELBOURNE)
THE COURT ORDERS THAT:
Each party has leave to make submissions as to the final orders to be made having regard to these reasons.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 1042 of 2008
SAD 59 of 2005
BETWEEN: ASPIRATING IP LIMITED
Applicant
AND: VISION SYSTEMS LIMITED
Respondent
JUDGE:
BESANKO J
DATE:
30 SEPTEMBER 2010
PLACE:
ADELAIDE VIA VIDEO LINK WITH MELBOURNE
REASONS FOR JUDGMENT
INTRODUCTION
Before the Court are two appeals and a cross appeal under s 60 of the Patents Act 1990 (Cth) (“the Act”). In the case of each appeal the applicant is Aspirating IP Limited and the respondent is Vision Systems Ltd. The appeals relate to an opposition to the grant of a standard patent. The respondent has also filed a notice of contention in one of the appeals.
On 1 August 1994, Airsense Technology Limited (“Airsense Technology”) filed International Application No PCT/GB 1994/001680 with the United Kingdom Patent Office as receiving office. The Application claimed priority from the filing date of British Patent Application No GB 93157790 being 30 July 1993. The patent application was advertised accepted on 2 April 1998. On 1 July 1998, the respondent filed a notice of opposition. A statement of grounds and particulars of the opposition were filed on 1 October 1998. That document was amended on several occasions. On 4 August 1999, Airsense Technology made a request to amend the application. There was no opposition to the proposed amendments which involved the substitution of all the claims with new claims 1-7. Allowance of the request was advertised on 6 April 2000. Airsense Technology’s invention involved a smoke detection system and the seven claims were as follows:
“(1)A method of detecting content of an impurity in a stream of air flowing through main duct means in the form of sampling duct means of a smoke detection system, comprising causing only part of said stream to flow into secondary duct means, filtering said part of said stream through a particles filter disposed in said secondary duct means, and detecting, by detecting means downstream of said filter, the content of said impurity in the air in said secondary duct means.
(2)A method according to claim 1, wherein the whole of said stream passes through a detection module through which extends said main duct means and which contains said secondary duct means, said filter and said detecting means.
(3)Apparatus for detecting content of an impurity in a stream of air, comprising main duct means in the form of sampling duct means of a smoke detection system and through which said stream can flow, secondary duct means communicating with said main duct means for receiving only part of the said stream, detecting means serving to detect the content of the impurity in the air in said secondary ducts means, and a particles filter disposed in said secondary duct means and upstream of said detecting means for said part of said stream to flow through said filter.
(4)Apparatus according to claim 3, wherein said main duct means extends through a detection module through which extends said main duct means and which contains said secondary duct means, said filter and said detecting means.
(5)Apparatus according to claim 3 or 4, wherein said powered means is located upstream of said secondary duct means.
(6)A method of detecting the content of an impurity in a stream of air, substantially as hereinbefore described with reference to the accompanying drawings.
(7)Apparatus for detecting the content of an impurity in a stream of air, substantially as hereinbefore described with reference to the accompanying drawings.”
The Patent application No 689484 and the opposition thereto under s 59 of the Act were considered by a delegate of the Commissioner of Patents. On 2 March 2, the delegate published his decision. The delegate reached the following conclusions:
1.Airsense Technology was not disqualified from entitlement to the invention by reason of the association of its staff with IEI (UK) Pty Ltd (“IEI (UK)”), a company which was a subsidiary of IEI (Aust) Pty Ltd (“IEI (Aust)”).
2.The invention in claims 1 and 3 did not involve an inventive step.
3.There was a problem with the fair basis and clarity, and consequent entitlement to the claimed priority date, of claim 5. An amendment to bring the description of the invention in line with the claim would not remedy the situation. Claim 5 was clearly flawed as it stood.
4.There was patentable subject matter in the specification and a period of 60 days from the date of the decision would be allowed for Airsense Technology to claim that subject matter in the claims. If suitable amendments were not proposed within that time, the application would be refused.
Airsense Technology appealed to this Court against those parts of the delegate’s decision which were unfavourable to it (SAD 59 of 2005). The appeal was brought pursuant to s 60(4) of the Act and Airsense Technology sought orders that the decision of the Commissioner through her delegate be quashed or be set aside, that the appeal be allowed, and that the opposition be dismissed, and the opposed application be allowed to proceed to grant.
Vision Systems Limited (“Vision Systems”) filed a Notice of Cross-appeal and Notice of Contention pursuant to O 58 r 5A of the Federal Court Rules. This document was amended on more than one occasion and the document before me was a Further Amended Notice of Cross-appeal and Notice of Contention dated 23 September 2009.
In addition to its appeal to this Court, Airsense Technology sought to amend its claims. On 2 May 2005 it sought the Commissioner’s leave to amend pursuant to s 104 of the Act. In that request, Airsense Technology sought to amend claim 5, but it did not seek to amend claim 1 or claim 3. In addition, Airsense Technology sought to introduce a number of additional claims that had not been considered by the delegate in the hearing leading to his decision under s 60(1) of the Act. The amendments as then proposed were not allowed by the Commissioner. The applicant made further requests for leave to amend under s 104 of the Act and, in the result, on 26 September 2006, the amendments in their then form were allowed.
The claims for the invention, as allowed by the Commissioner on 26 September 2006, were as follows:
“1.A method of detecting content of an impurity in a stream of air flowing through main duct means in the form of sampling duct means of a smoke detection system, comprising causing only part of said stream to flow into secondary duct means, filtering said part of said stream through a particles filter disposed in said secondary duct means, and detecting, by detecting means downstream of said filter, the content of said impurity in the air in said secondary duct means.
2.A method according to claim 1, wherein the whole of said stream passes through a detection module through which extends said main duct means and which contains said secondary duct means, said filter and said detecting means.
3.Apparatus for detecting content of an impurity in a stream of air, comprising main duct means in the form of sampling duct means of a smoke detection system and through which said stream can flow, secondary duct means communicating with said main duct means for receiving only part of said stream, detecting means serving to detect the content of the impurity in the air in said secondary duct means, and a particles filter disposed in said secondary duct means and upstream of said detecting means for said part of said stream to flow through said filter.
4.A method of detecting content of a particulate impurity in a stream of air flowing through main duct means in the form of sampling duct means of a smoke detection system, comprising causing only part of said stream to flow into secondary duct means, filtering said part of said stream through a particles filter disposed in said secondary duct means and employed to remove larger particles than those intended to be detected, and detecting, by detecting means downstream of said filter, the content of said impurity in the air in said secondary duct means.
5.A method according to claim 4, wherein the whole of said stream passes through a detection module through which extends said main duct means and which contains said secondary duct means, said filter and said detecting means.
6.Apparatus for detecting content of a particulate impurity in a stream of air, comprising main duct means in the form of sampling duct means of a smoke detection system and through which said stream can flow, secondary duct means communicating with said main duct means for receiving only part of said stream, detecting means serving to detect the content of the particulate impurity in the air in said secondary duct means, and a particles filter disposed in said secondary duct means, and upstream of said detecting means for said part of said stream to flow through said filter to remove from said part of said stream larger particles than those intended to be detected.
7.Apparatus according to claim 6, wherein said main duct means extends through a detection module which contains said secondary duct means, said filter and said detecting means.
8.Apparatus according to claim 6 or 7 wherein mechanical powered means is located in said main duct means and upstream of said secondary duct means for forcing air through said main duct means, said secondary duct means, said particles filter and said detecting means.
9.Apparatus according to any one of claims 6 to 8, wherein said sampling duct means includes a plurality of sampling pipes.
10.Apparatus according to any one of claims 6 to 9, wherein said detecting means is a single detector.
11.Apparatus according to claim 10, wherein said detector includes a tubular housing.
12.Apparatus according to any one of claims 6 to 11, wherein said detecting means comprises a semiconductor optical emitter.
13.Apparatus for detecting content of an impurity in a stream of air, comprising main duct means in the form of sampling duct means of a smoke detection system and through which said stream can flow, secondary duct means communicating with said main duct means for receiving only part of said stream, detecting means serving to detect the content of the impurity in the air in said secondary duct means, and a particles filter disposed in said secondary duct means and upstream of said detecting means for said part of said stream to flow through said filter, in which apparatus said main duct means extends through a detection module which contains said secondary duct means, said filter and said detecting means.
14.Apparatus according to claim 13, wherein mechanical powered means is located in said main duct means and upstream of said secondary duct means for forcing air through said main duct means, said secondary duct means, said particles filter and said detecting means.
15.Apparatus according to claim 13 or 14, wherein said sampling duct means includes a plurality of sampling pipes.
16.Apparatus according to any one of claims 13 to 15, wherein said detecting means is a single detector.
17.Apparatus according to claim 16, wherein said detector includes a tubular housing.
18.Apparatus according to any one of claims 13 to 17, wherein said detecting means comprises a semiconductor optical emitter.
19.A method of detecting the content of an impurity in a stream of air, substantially as hereinbefore described with reference to the accompanying drawings.
20.Apparatus for detecting the content of an impurity in a stream of air, substantially as hereinbefore described with reference to the accompanying drawings.”
The Commissioner took the view that an appeal having been lodged against the delegate’s decision made on 2 March 2005, the whole matter of the applicant’s entitlement to a patent was before the Court and that the delegate should take no further action under Chapter 5 of the Act. That approach meant that Airsense Technology was in a position where the terms of the claims by reference to which it had filed its appeal differed from those which existed on the Commissioner’s file, and yet the Commissioner herself declined to proceed further with the claims on her file. In those circumstances, Airsense Technology applied by a notice of motion in its appeal for a direction that:
“… the trial and determination of the appeal in this proceeding and all evidence in this appeal be directed to the patent application with the form of the specification as amended.”
The notice of motion came on for hearing before Jessup J. On 31 May 2007, his Honour decided that the notice of motion should be dismissed. In the course of his reasons (Airsense Technology Ltd v Vision Systems Ltd (2007) FCA 828; (2007) 73 IPR 65) his Honour said (73 IPR 72-73 [15]-[16]):
“Although New England Biolabs was directly concerned with an appeal under s 104(7) of the Act, their Honours on the Full Court discussed the content and history of relevant provisions of the Act in terms which make it clear that, under s 60(4) no less than under s 104(7), the subject matter of the appeal is the same subject matter as was before the original decision maker. Their conclusion in that regard expressly took account of the different kinds of powers exercised by each (first executive, then judicial) and of the nature of such an appeal (by way of hearing de novo). It follows that, under s 60(4), an appeal is limited to the subject matter which was before the delegate under s 60(1). In the present case, I consider that the effect of granting the applicant’s motion would involve a change of subject matter, and would introduce claims in relation to which the proceeding could not be considered to be an ‘appeal’ in the sense explained in New England Biolabs.
For the foregoing reasons I propose to dismiss the motion. As will be clear, I do so because of my understanding of the nature of an appeal under s 60(4) of the Act, and not in the exercise of a discretion. However, I would add that, had some discretionary element been involved in the decision I am required to make, I would have been disposed to accept the broad thrust of the respondent’s case that it would be antithetical to the achievement of the objects of Ch 5 of the Act that appellate proceedings under s 60(4) should be used as the vehicle for the primary testing of substantive claims against such legitimate grounds of opposition as there may be, without those claims first having been dealt with by the commissioner or her delegate. The significance of that consideration is in no sense diminished by the undoubted fact that an appeal must proceed as a hearing de novo. Even in such a case, I would have considerable reservations about an approach which had the practical effect of collapsing the distinction, well-recognised in the Act, between the role of the primary decision maker and the appellate role of the court. It is not for me to opine that that is a useful distinction: the fact is that it is one which has been made by the legislation, and must be respected. Neither should I assume, in the present case, that the resumed hearing before the delegate under s 60(1) of the Act would be tokenistic. To the contrary, I am bound to treat such a hearing as the primary means established by the legislation for resolving such grounds of opposition as are raised.”
On 10 December 2008, a delegate of the Commissioner decided that Patent application No 689484 (which by that time was in the name of Aspirating IP Limited), together with each and every one of claims 1 to 20 should be refused. The delegate decided that, despite the amendments to the claims, the fact that claims 1 and 3 were in the same form as they were when they were before the delegate who made the decision on 2 March 2005, meant that the Patent application had to be refused. The delegate said that the parties had agreed that it was not necessary to consider whether there were any objections to the remaining claims, namely, claims 2 and 4-20 inclusive.
Aspirating IP Limited (“Aspirating IP”) appealed to this Court against the delegate’s decision made on 10 December 2008 (VID 1042 of 2008) and in that appeal it sought orders that the delegate’s decision made on 10 December 2008 be quashed or set aside, that the appeal be allowed, that the opposition be dismissed and that the opposed application as amended be ordered to proceed to grant.
It is fair to say neither delegate considered a number of the claims which are part of the set of 20 claims. Furthermore, there is evidence before the Court on novelty, inventive step and entitlement which was not before either delegate. Those matters are identified in a document prepared by the respondent and entitled “Evidence before the Court that was not before the Patent Office”.
Pursuant to orders made by Jessup J on 19 February 2009 the respondent, Vision Systems, filed a Statement of Grounds of Invalidity, and Particulars of the Statement of Grounds of Invalidity. On the same day his Honour made orders in both proceedings that:
“(1)the evidence in the proceedings before the Commissioner be evidence in these proceedings, saving all just exceptions; and
(2)that evidence in proceeding SAD 59 of 2005 be taken to have been filed and served in proceeding VID 1042 of 2008.”
The parties are agreed that the claim set of 20 claims as allowed by the Commissioner of Patents on 26 September 2006 should be that considered by the Court as the opposed claims and that the Court’s decision in relation to those 20 claims will determine both appeals.
The broad issues on the appeals and cross appeal are identified in the respondent’s Statement of Grounds of Invalidity and Third Further Amended Particulars of Statement of Grounds of Invalidity dated 27 March 2009 in proceeding VID 1042 of 2008. The latter document was filed in Court on 29 October 2009. The broad issues are as follows:
1.The Applicant is not entitled, or solely entitled, to the grant of a patent for the invention.
2.The alleged invention is not a patentable invention in that, when compared with the prior art base as it existed before the priority date of each claim, none of the claims:
(1)is novel;
(2)involves an inventive step.
In relation to the challenge on the ground of lack of novelty the respondent relies on prior publications and prior uses. It relies on 12 publications before 30 July 1993 and three publications between 30 July 1993 and 1 August 1994. The significance of these two dates is that the applicant contends that the priority date is 30 July 1993, whereas the respondent contends that the priority date is 1 August 1994. For reasons I will give, I hold that the priority date is 30 July 1993 and it follows that the three publications after that date are not relevant in terms of the challenge on the ground of lack of novelty. The respondent also relies on six prior uses or types of prior use to defeat novelty. All of these are said to have taken place before 30 July 1993.
In relation to the inventive step challenge, the respondent relies on common general knowledge which it pleads comprised 59 publications and in excess of 10 prior uses or types of prior use. In the alternative, it relies on common general knowledge and, pursuant to s 7(3) of the Act, one of the items of listed prior publications or prior uses.
This is a brief summary of the pleadings at the time of trial. As the trial proceeded the issues between the parties narrowed and a number of arguments raised by each party, and the subject of evidence, were abandoned.
THE HEARING OF THE APPEALS
The nature of an appeal under s 60(4) of the Act is well established. It is not an appeal in the strict sense, but is a proceeding in the original jurisdiction of the Court and is conducted as a rehearing. It is sometimes referred to as a hearing de novo (see generally the principles identified by the Full Court of this Court in Commissioner of Patents v Sherman (2008) 172 FCR 394 (“Commissioner of Patents v Sherman”) at 399-401 [18]-[24].
A number of witnesses gave evidence before me and many exhibits (including affidavits of deponents not required for cross-examination) were admitted in evidence. The respondent called Dr Martin Cole, Mr Hans Verzijl, Mr Kjell Jawerth, Mr Raymond Walsh, Mr Frank Trubshaw, Mr Michael John Scully, Mr Peter Johnson, Mr Harold Piik-Wakeling, Mr Jonathon Miles, Mr John Petersen and Mr Ronald Knox. The applicant called Mr Fox, Mr David Barrett, Mr David Mitchell, Mr Howard Bray, Mr Anthony Jennings and Mr Julian Whitta.
The respondent presented its case first and its first witness was Dr Cole.
There was a strong challenge by the applicant to Dr Cole’s credit, particularly in relation to his evidence of his thoughts about a bypass arrangement in 1992 or 1993 and his evidence of the smoke detection system at the European Centre for Nuclear Research (“CERN”). I consider those challenges below. In the result, I have reached the conclusion that Dr Cole was an honest and reliable witness. Furthermore, he is highly qualified in the area of fluid dynamics and the design and operation of smoke detection systems.
There was also a strong challenge by the applicant to Mr Miles’ evidence. That challenge is dealt with below. In the result, and for the reasons I will give, I have decided not to act on Mr Miles’ evidence on certain key issues.
For the most part the applicant did not challenge the credit of the other witnesses called by the respondent. It certainly suggested that aspects of evidence of those witnesses was unreliable or should not be accepted for various reasons. It made a strong attack on the inventive step evidence of Messrs Jawerth, Johnson and Piik-Wakeling. I will deal with the particular challenges in the context of the issue to which the evidence was directed.
Mr Fox was the first witness called by the applicant. Twenty-two affidavits sworn by Mr Fox were tendered in evidence and he was cross-examined at length.
Mr Fox holds an 85 per cent interest in the applicant. He has a significant financial interest in the outcome of these proceedings. He believes that Xtralis has sold a product which falls within the claims of the Patent application and that if the Patent proceeds to grant he will be entitled to a very significant sum of money.
It seems that there was a close friendship between Mr Fox and Dr Cole before the former’s dismissal from his employment by IEI (UK). It seems that Dr Cole made serious allegations of misconduct against Mr Fox at the time of dismissal and that led to a complete breakdown in their friendship. For some time after October 1992 Mr Fox had an intense personal dislike of Dr Cole.
Mr Fox has spent his working life in the United Kingdom. Before and after the priority date he has worked in the fire and smoke detection industry. He has a knowledge of smoke detectors and how they work, although he is not a technician in the sense that Mr Girling was when Mr Girling worked for IEI (UK) and Airsense Technology. Mr Fox has no tertiary qualifications in engineering or fluid dynamics.
I do not understand Mr Fox to have worked at any time in Australia. However, he had some knowledge of the industry in Australia by reason of the relationship between IEI (Aust) and IEI (UK) and visits to Australia from time to time. His employer before IEI (UK) also had a commercial relationship with an Australian company. It was not always made clear during his evidence when he was purporting to give evidence of common general knowledge of the industry in Australia.
In general, I accept Mr Fox’s evidence on factual matters and I mean by that his evidence as explained and qualified in cross-examination. For reasons I will give in the section dealing with entitlement, I am not satisfied that he was aware of Mr Scully’s prototype. On technical matters such as the Venturi effect, I accept Dr Cole’s evidence in preference to that of Mr Fox. In terms of the fire and smoke detection industry in Australia before the priority date I do not think that there was a great deal of difference between Mr Fox’s evidence on that topic and the evidence of Dr Cole and Messrs Jawerth, Johnson and Piik-Wakeling. In so far as there were differences, I accept the evidence of the latter group of witnesses because their knowledge was superior to that of Mr Fox.
Mr Fox believes strongly that an air-conditioning duct is not a main duct means in the form of sampling duct means of a smoke detection system within the claims. He gave evidence on that topic, various pieces of prior art, inventive step and the Brown, Moores and Birkby article. As with the other witnesses who gave evidence on those topics I have carefully considered Mr Fox’s evidence. Ultimately, however, the questions raised are questions which I must determine.
The respondent did not mount an attack on the credit of any of the applicant’s other witnesses. Certainly it asked me to reject aspects of the evidence of each of the witnesses, but it did so on the basis that the witness lacked expertise or had made an appropriate concession in cross-examination or the evidence, when closely analysed, was no more than argument.
THE ONUS ON THE RESPONDENT
It is well established that an opposition will be upheld only where it is practically certain that the patent, if granted, would be invalid (Commissioner of Patents v Microcell Ltd (1958) 102 CLR 232 at 244-245; Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 at 112 [17]). Other formulations of the relevant test have been used, but they are to similar effect: Austal Ships v Stena RederiAktiebolag (2005) 66 IPR 420 (“Austal Ships”) at 422 [6] per Bennett J and Commissioner of Patents v Sherman at 399 [18] “clearly satisfied”; F Hoffman-La Roche AG v New Zealand Biolabs Inc (“F Hoffman-La Roche AG”) (2000) 99 FCR 56 at 70 [67] per Emmett J “appear clear to the Court”; Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning v Commissioner of Patents (1971) 124 CLR 654 at 664 per Gibbs J (as he then was) “unless it clearly appears”.
The respondent accepts that the relevant test is one of practical certainty. It does not suggest that, because a large volume of evidence has been put before the Court and there has been extensive cross-examination of witnesses, a lower or less demanding test should be applied. Such a submission would have encountered difficulties in light of the authorities (for example, Austal Ships at 423 [9] per Bennett J; F Hoffman-La Roche AG at 70 [67] per Emmett J).
The primary facts are to be established on the balance of probabilities, but the ultimate facts – the facts leading directly to a conclusion of a lack of novelty or a conclusion of obviousness – must be proved to the level of practical certainty. In Austal Ships, Bennett J said (at 423 [12]):
“I can accept that a lower standard may apply to proof of evidence such as whether a document has been published or, indeed, whether a prior art vessel was well-known. I do not accept that it properly applies to the factual question that itself is the test for obviousness or lack of inventive step. Where the factual question is itself the legal test, as set out in s 7(3) of the Act, it seems to me that it should be determined at the higher standard. That means that where there are two opposing expert views that are conclusive on obviousness, both presented bona fide by witnesses of accepted expertise, unless one set of views can be rejected on proper grounds, the legal burden to establish a ground of opposition is not discharged; the court cannot be practically certain that obviousness or lack of inventive step is established.”
THE PARTIES
The respondent admits, for the purposes of these proceedings, that Aspirating IP Limited holds the rights previously held by Airsense Technology.
Mr Peter Fox began his working life in the smoke detection industry in the early 1970s. He undertook an apprenticeship in mechanical engineering with Graviner Limited, an English company which was a market leader in aircraft fire detection. In 1977, Mr Fox joined the then family business of Fire Fighting Enterprises (UK) Ltd (“FFE-UK”). That company was a partially owned subsidiary of Fire Fighting Enterprises Australia Ltd. The company was primarily involved in the development of gaseous fire extinguishers and automatic fire detection and suppression systems. FFE-UK also developed and manufactured a range of smoke detection devices at its premises in Stevenage, Hertfordshire, United Kingdom. The designer of those detectors was Mr Christopher Girling who later became engineering manager of IEI (UK) and later still a partner in Airsense Technology.
In late 1987 or early 1988, Mr Fox was approached by Dr Martin Cole (then Mr Cole), who proposed to Mr Fox that a new company be formed and that that company be a partially owned subsidiary of IEI (Aust). IEI (UK) was formed, and Mr Fox held 40 per cent of the shares in the company. Mr Fox became the managing director of the company.
In October 1992 Dr Cole dismissed Mr Fox from his employment by IEI (UK). The reasons for the dismissal of Mr Fox are not an issue in the proceedings and, although there was some evidence on the topic, it is not necessary for me to make any findings with respect to the topic. It appears that one of the matters leading up to Mr Fox’s dismissal was a disagreement between Mr Fox and Dr Cole about whether a smoke detection system called the E7 AZ PYR should be offered on a large project known as the Glaxo project. This particular issue is dealt with in more detail below in the context of the issue of entitlement.
Mr Fox brought a claim for unfair dismissal against IEI (UK). That claim was eventually settled without the need for a trial. Mr Fox spent a good deal of time preparing his claim for unfair dismissal in the latter part of 1992 and the early part of 1993.
For some time prior to July 1993 Mr Fox was aware of a problem with the filters used in the smoke detection systems sold by IEI (UK). The problem was that over time the filter became clogged and that prevented the particles to be detected, that is, smoke particles, from reaching the detector. The problem came to a head in 1992 when the “Spanish problem” arose. Further details of the “Spanish problem” are set out below (at [362])
Mr Girling resigned from his employment by IEI (UK) in about February 1993. At about that time, Mr Fox and Mr Girling decided to incorporate a company to engage in the business of designing and marketing products in the smoke detection industry. The company which was acquired for that purpose was Airsense Technology.
Mr Fox assembled a team of engineers to work under Mr Girling. A smoke detection system was designed and it became known as the “Stratos-HSSD” system.
The Stratos-HSSD system contained several new features. Mr Fox developed the idea of a bypass system which he described as a system “so that only a small proportion of the air in the smoke detection system flowed for detection through the filter and detector, rather than the whole stream of air as in the then existing VESDA systems”.
In August 1993, Airsense Technology supplied a single Stratos-HSSD detector to a fire protection company in the United Kingdom called Fire Detection and Extinguishing Systems Limited.
The bypass arrangement is at the heart of the alleged invention. It is embodied in the Stratos-HSSD system. Mr Fox said that many thousands of Stratos-HSSD systems have been sold worldwide and that it has been commercially successful for Airsense Technology. In 1999, Airsense Technology received a Queen’s Award for Technological Achievement for the technological advances embodied in the Stratos-HSSD system.
Mr Girling died in 2002. Prior to his death he had sworn a number of affidavits. Those affidavits were admitted in evidence at the trial. I have taken them into account, noting at the same time that there was no cross-examination on them.
I turn now to the respondent. It acquired IEI (Aust) in about 1995. In more recent times (the precise date was not identified in the evidence) the section of the respondent which manufactured the Very Early Smoke Detection Apparatus smoke detection system (“VESDA”) and the “security side” (as Mr Knox put it) was sold to a private equity company called PEP which subsequently changed its name to Xtralis.
IEI Pty Ltd was established by Dr Martin Cole in 1970. The company later changed its name to IEI (Aust). It is convenient if I refer to it as if its name has always been IEI (Aust). Dr Cole was the chief executive officer of IEI (Aust). The principal business of IEI (Aust) was the manufacture and sale of smoke detectors. Although Dr Cole was the chief executive officer, he also had a close involvement in the design, manufacturing and marketing of the smoke detectors made and sold by IEI (Aust). At the priority date of 30 July 1993 and it seems, for some time both before and after that date, IEI (Aust) was a major manufacturer and supplier of smoke detectors in Australia.
A successful product manufactured and sold by IEI (Aust) was a smoke detection system called a VESDA E700. Various models of the VESDA E700 were manufactured and sold by IEI (Aust) and they were referred to as the Mk I, Mk II and Mk III. IEI (Aust) considered that the VESDA E700 Mk II was an advance on the Mk I in terms of the features it offered and that the Mk III was an advance on the Mk II. The VESDA Mk I was first sold in the market in 1979, the Mk II in about 1982 and the Mk III in 1993. In some parts of these reasons it will be necessary for me to refer to the particular model of the VESDA on other occasions it will be sufficient for me to refer to all three models as simply the VESDA E700 units.
Other smoke detection systems manufactured and sold by IEI (Aust) or IEI (UK) were the subject of evidence and they include the Locator and the VESDA LaserPlus. When appropriate, I will describe the features of those systems to the extent that the evidence permits me to do so.
Other smoke detection systems were manufactured and sold by other companies. Of importance in this case is a smoke detection system sold by Wormald International (Aust) Pty Ltd (“Wormald (Aust)”) called an Olsen D51B. I will describe the features of this system later in these reasons. It appears that part of the business of Wormald (Aust) was taken over by Tyco International Ltd in August 1990.
Dr Cole has substantial expertise in the area of fluid dynamics and the design and operation of smoke detection systems. In 1972 he was awarded a Diploma of Electronic Engineering by the Royal Melbourne Institute of Technology. In 1991 he was awarded a Master of Engineering degree by Monash University. The topic of his thesis for that degree was “Optimisation of Aspiration Techniques for Air Pollution Monitoring”. He then undertook further research and study and was awarded a PhD in fluid dynamics by the Victoria University of Technology. He has spent a good part of his working life working in the area of fluid dynamics and the design and operation of smoke detection systems.
For some years after the sale of IEI (Aust) to the respondent Dr Cole continued to work for the respondent. In about 1999 he ceased to have any involvement with the respondent and he established his own business, Cole Innovation and Technology Pty Ltd.
Dr Cole is and has been named as the inventor in a number of patents and patent applications. I mention that because I think Dr Cole was an inventive skilled worker in the field of fire or smoke detection systems.
When IEI (UK) was established in 1988, IEI (Aust) was the majority shareholder of the company. In 1991 and 1992 Dr Cole, as the chief executive officer of IEI (Aust), had regular contact with employees of IEI (UK). He was regularly consulted and he became involved in major projects in which IEI (UK) was involved, or in which it sought to be involved. During those years IEI (UK)’s premises were at Stevenage, Mr Fox was the managing director of the company and Mr Michael Scully was the technical manager, Mr Christopher Girling was the design engineer and Mr Frank Trubshaw was the sales manager.
SMOKE DETECTORS IN AUSTRALIA BEFORE JULY 1993
There was general evidence before me about the fire or smoke detection industry in Australia before July 1993 which was not in dispute. It is convenient to recount that evidence at this point.
The products of fire are gas, particulate smoke, heat and flames. A smoke detector detects airborne products of combustion and is to be distinguished from a heat detector or a flame detector.
Smoke detectors operate by reference to one of the following three principles: ionisation, photoelectric obscuration and photoelectric light scattering. This case is not concerned with smoke detectors which operate by a process of ionisation.
Photo-electric smoke detectors have a light source and photosensitive cell. The cell operates so as to detect a decrease in the intensity of light received by it in the event that aerosols are between the cell and the light (obscuration) or a reflection of light by the aerosols (light scattering).
Prior to July 1993, the main type of smoke detectors were standard “point type” detectors and incipient very high sensitivity detectors.
Point type detectors were commonly used in domestic and industrial environments. Such detectors passively sampled air as it was circulated around a room or other protected area. Point type detectors were only able to protect a small volume of air and were relatively less sensitive because they were only triggered when smoke levels were high. A fire could be fairly well developed before the alarm signal was triggered.
Incipient detectors detect incipient smoke; they are capable of detecting smaller airborne products which are produced before flaming. Incipient smoke detectors are typically aspirated in that the air is drawn in from the area to be protected and delivered to a remotely positioned smoke detector. Incipient smoke detectors are triggered much earlier than point type detectors.
THE VESDA SMOKE DETECTION SYSTEM
Mr John Petersen is the executive director of a company which carries out business in Western Australia. He started his working life in the early 1960s as an electrical apprentice and between 1981 and 1985 he worked for IEI (Aust). He was called as a witness by the respondent. He was a credible and reliable witness and I accept his evidence. Based on his evidence, I provide the following overview of the development of the VESDA smoke detection system and of the products sold by IEI (Aust).
In the 1960s the Postmaster General’s Department and Commonwealth Scientific and Industrial Research Organisation (“CSIRO”) Department of Atmospheric Research worked on the research and development of a smoke detection product which was capable of detecting the smoke from the very early stage of the development of a fire, that is to say, the early stage of combustion. A number of prototypes were built and given the name VESDA. This name was registered jointly by the PMG and the CSIRO.
At some stage the further development and manufacture of the VESDA smoke detection system was transferred to IEI (Aust).
By 1979 IEI (Aust) was manufacturing and selling the VESDA E700 Mk I. That system had three main applications: commercial and industrial premises, residential premises and stand alone valuable assets such as computer units.
It was necessary for the system to draw a sample of air from a protected area. The three ways in which that might be done were as follows:
1.installing the system on a pre-existing air conditioning duct and drawing a sample of the air passing through that duct through the detection unit;
2.installing the system on a dedicated network of sampling pipes and drawing either the whole or a sub-sample of the air passing through that network of pipes through the detection unit; or
3.installing the system with a single sampling pipe, connected to a confined space, such as a computer cubicle, and drawing a sample of air from that confined space through a detection unit.
The VESDA E700 Mk I consisted of a tube with two box type structures attached to it. The tube contained an optical sensing chamber. One box contained a Xenon light source which flashed across the chamber thereby illuminating any airborne particles present, which in turn scattered light into the path of the sensing device. The other box contained a photomultiplier sensing device which detected the light scattered off particles that may be present in the optical chamber at the time of each flash of the Xenon light. There was also a display and control panel. The VESDA E700 Mk I could be attached to an air-conditioning duct where it drew and expelled air through two small tubes attached to the duct; to a dedicated network of sampling pipes consisting of branch pipes, a trunk pipe and an outlet fan; or to a single sampling pipe in a confined space such as a computer cubicle.
As I have said, IEI (Aust) manufactured and sold the VESDA E700 Mk II from about 1982. The advances over the Mk I were in part prompted by IEI (Aust)’s major customers (which for the most part were fire protection companies) asking IEI (Aust) to supply all the major components of a complete system. For example, a fan should come with the system rather than having to be purchased separately. At about this time, Dr Cole was considering the inclusion of a filter with the unit. This would allow the passage of smoke particles, but filter out the passage of unwanted contaminants such as dust.
When first sold in the market the components of the E700 Mk II were in a metal box and included an aspirator. A short time after it was introduced a filter was included in the VESDA E700 Mk II. The filter was a folded paper cartridge type, similar to oil filters used in the automotive industry and it was placed upstream (that is, before) of the detection unit.
A DESCRIPTION OF THE CLAIMS
I refer to the 20 claims set out in [7] above.
The respondent provided a convenient summary of the features of each of the claims. It is as follows:
Claims 1 and 3 are independent claims which have the following features:
·a method of, or apparatus for, detecting the content of an impurity in a stream of air;
·the stream of air which contains the impurity flows through a main duct means in the form of a sampling duct means of a smoke detection system;
·a secondary duct means which communicates with the main duct means;
·part only of the stream of air flows from the main duct means into the secondary duct means;
·a particles filter is disposed in the secondary duct means to filter the air in the secondary duct means; and
·an impurity detector in the secondary duct means and downstream of the particles filter which is used to detect the impurity in the air in the secondary duct means.
Claims 2 (a dependent claim) and 13 (an independent claim) have the following features:
·the main duct passes through a detection module; and
·the detection module contains said secondary duct means, said filter and said detecting means.
Claims 4 and 6 are independent claims which have the following features:
·the impurity that is to be detected is a particulate impurity; and
·the particles filter in the secondary duct means removes particles larger than those intended to be detected from the said air stream.
Claims 5 and 7 are dependent claims and have the following feature, namely, the addition of the detection module feature to claims 4 and 6.
Claims 8 and 14 are dependent claims which have the following feature, namely, a mechanical powered means (for forcing air to flow through the main duct means, the secondary duct means, the particles filter and the detector) is located in the main duct means and upstream of the secondary duct means.
Claims 9 and 15 are dependent claims which have the feature that the sampling duct means includes a plurality of sampling pipes.
Claims 10 and 16 are dependent claims which have the feature that the detecting means is a single detector.
Claims 11 and 17 are dependent claims which have the feature that the detector has a tubular housing.
Claims 12 and 18 are dependent claims which have the feature that the detecting means or detector comprises a semiconductor optical emitter.
Claims 19 and 20 are omnibus claims being the method and apparatus for detecting the content of an impurity in a stream of air, substantially as described in the specification.
THE PRIORITY DATE OF EACH CLAIM
The Australian complete application No 689484 is entitled to an earlier priority date than would otherwise be the case if it was made pursuant to the Patent Cooperation Treaty and ss 88-93 of the Act. The complete application was based on an application under the Patent Cooperation Treaty ([1980] ATS 6) filed in the United Kingdom on 1 August 1994. That application was in turn based on the British Patent Application No GB 931 5779 filed on 30 July 1993. The Australian complete application No 689484 claims a priority date of 30 July 1993 based on the British Patent Application No GB 931 5779 as the Basic Application. I will refer to the latter as the UK Basic.
The respondent disputes the applicant’s entitlement to a priority date of 30 July 1993. It contends that the priority date is 1 August 1994. In the alternative, the respondent submits that the priority date of claims 2, 5, 7, and 13 (and their dependent claims) and claims 8 and 14 is 1 August 1994.
The priority date is important in this case because the respondent alleges that there was prior art information which was made publicly available between 30 July 1993 and 1 August 1994 and that this means the alleged invention lacks novelty. That prior art information consists of an article by Mr Fox and Mr Girling entitled “A New Generation of High Sensitivity Smoke Detectors”, published in a journal or magazine called Fire Surveyor, (August 1993, pp 22-29) and the technical manual for the Stratos-HSSD published in or about April 1994 by Airsense Technology. Those publications were said by the respondent to anticipate a number of the claims in the specification of the Patent application.
The priority date of a specification is dealt with in s 43 of the Act which, at the relevant time, was in the following terms:
“43 Priority dates
(1) Each claim of a specification must have a priority date.
(2) The priority date of a claim is:
(a) the date of filing of the specification; or
(b)where the regulations provide for the determination of a different date as the priority date—the date determined under the regulations.
(3)Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.
(4)The priority date of a claim of a specification may be different from the priority date of any other claim of the specification.”
There were regulations which provided for the determination of a different date as the priority date. Regulation 3.12 was in the following terms, relevantly:
“(1)Subject to regulations 3.13 (‘priority dates: certain persons and applications’) and 3.14 (‘priority dates: certain amended claims’) and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:
(a)the date of filing of the specification;
(b)if the claim is fairly based on matter disclosed in 1 or more relevant applications, the date of making the relevant application in which the matter was disclosed; …
(2)In paragraph (1)(b), ‘relevant application’ means”
…
(c)if the application is a PCT application that claims priority under Article 8 of the PCT of an earlier application that is:
…
(ii)a basic application that is:
(A)the first application made in a Convention country in respect of the invention; and
(B)made not more than 12 months before the international filing date of the PCT application; or
(iii)a basic application made after a basic application referred to in subparagraph (ii); that earlier application; or…”
The applicant claims that the priority date is 30 July 1993 because the claims are fairly based on the UK Basic.
Each party made a submission that the other party bore the onus of proof on the question of the priority date; the applicant claimed that the respondent must negate the earlier priority date and the respondent claimed that the applicant must prove the earlier priority date.
I have already referred to the onus which lies on an opponent in opposition proceedings. For its part, the respondent referred to English authority which suggested that the onus was on the applicant for a patent to prove an earlier date of priority than the date of the filing of the specification: Re Stauffer Chemical Company’s Application [1977] RPC 33 (“Re Stauffer”) at 54 per Buckley LJ; 54-55 per Roskill LJ. There is certainly dicta in the reasons for judgment of Roskill LJ which supports the respondent’s contention.
The applicant referred to Sigma Pharmaceuticals (Australia) Pty Ltd (ACN 004 118 594) v Wyeth (2009) 81 IPR 339 (“Sigma Pharmaceuticals”), a case in which Sundberg J said that an applicant for a patent did not bear any onus in relation to the priority date. His Honour said (at 344 [21]):
“Establishing a priority date other than that claimed by the patentee is part of Sigma’s attack on validity.”
It does not seem to me that there is anything in the text or structure of s 43 of the Act which supports the respondent’s contention that the onus is on the applicant for a patent to prove an earlier priority date. One date is identified by reference to a criterion in the Act, whereas the other is identified by reference to a criterion in the Regulations. It may be that one date may be more easily ascertained than the other, but even so, the date identified in reg 3.12(1)(b) is determined by an examination of documents. There does not seem to me to be anything to suggest that the general onus on an opponent in opposition proceedings should be shifted to the applicant on the issue of the priority date. I would be disposed to follow the approach of Sundberg J in Sigma Pharmaceuticals. I should add that I have been able to decide this issue without relying on the onus of proof.
Relevant principles
The legal principles relevant to fair basing are not in dispute. Questions of fair basing may arise in a number of contexts. For example, there is the present context and there is internal fair basing referred to in s 40(3) of the Act. The test appears to be the same in both contexts (see the discussion in Stewart A, Griffith P and Bannister J, Intellectual Property in Australia (4th ed, 2010) at 424).
In Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1959) 100 CLR 5 at 11, Fullagar J said that fair basing required “a real and reasonably clear disclosure”. In Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240, Barwick CJ said that the question of whether the claim was fairly based was a narrow one and was whether the claim as expressed travelled beyond the matter disclosed in the specification. Both these ways of expressing the test were approved by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 at 295-296 [57]; at 300 [69]; and 306 [83], which was an internal fair basing case. The High Court also made the point that the fact that something is a requirement for the best method of performing an invention does not make it a requirement of all claims; nor does the fact that material is part of the description of the invention mean that it must be included as an integer of each claim. The Court cited with approval (at 300 [69]) the following passage from the reasons for judgment of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 where his Honour said (at 95):
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
In CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 the Full Court made the following important observations (at 281-282):
“In Rhone-Poulenc (supra) at 11 Fullagar J emphasised that disclosure without claim is enough. Hence, it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the complete specification, or in the provisional specification, ‘essential integers’ or ‘essential features’ of an invention disclosed therein and to ask whether they correspond with the essential integers in the claim in question: cf Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1986) 6 IPR 545 at 560-561, the decision at first instance. Nor would it be applying the statute to ask whether the earlier specifications fairly described the essential features of the invention disclosed in the later specification: cf Yamazaki (supra) at 93, 97. Fullagar J also pointed out that the requirement of ‘fair basing’ on matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification; rather, there must be ‘a real and reasonably clear disclosure’. This passage was adopted and applied by Gibbs J in Hoffman-La Roche at 537-539, where the claims were for chemical compounds forming part of a very large class disclosed in the basic application.”
(See also the summary of the relevant principles by Dowsett J in Grove Hill Pty Ltd v Great Western Corporation Pty Ltd (2002) 55 IPR 257 at 306-308 [187]-[190].)
Finally, mention must be made of the English authority of Re Stauffer which I have already referred to in the context of the issue as to which party bears the onus of proving the priority date. Buckley LJ said the following as to fair basing (at 54):
“Can these new features be regarded as developments or additions the introduction of which is justified by section 4(6)? If a new feature were a development along the same line of thought which constitutes or underlies the invention described in the earlier document, it might be that that development could properly be regarded as fairly based on the matter disclosed in the earlier document, and that the new process described in the later document which incorporates that development could as a whole be regarded as fairly based upon the matter disclosed in the earlier document. If, on the other hand, the additional feature involves a new inventive step or brings something new into the combination which represents a departure from the idea of the invention described in the earlier document, it could not, I think, be properly described as fairly based upon the earlier document.”
I turn now to apply these principles to the facts.
The issues concerning the priority date in relation to each claim
The respondent made three broad submissions. First, it submitted that the priority date for all claims was 1 August 1994. Secondly, it submitted that the claims referring to mechanical powered means (claims 8 and 14) had a priority date of 1 August 1994. Finally, it submitted that the claims referring to a detection module (claims 2, 5, 7 and 13) had a priority date of 1 August 1994.
A secondary duct means communicating with a main duct means
The respondent submits that all of the claims in the specification of the Patent application have a priority date of 1 August 1994 because in referring to a “secondary duct means” and a secondary duct means “communicating with” a main duct means, the claims in the specification travel beyond any matter disclosed in the UK Basic. The respondent refers to the fact that in Figure 2 of the specification of the patent application the secondary duct means is shown as being inside the main duct means in what was described as a co-axial arrangement. Under the claims in the specification the secondary duct means can join the main duct means or it can be inside the main duct means as shown in Figure 2.
By contrast (submits the respondent) the UK Basic refers only to branch duct means and that has the meaning and only the meaning of a duct which joins the main duct means.
The UK Basic identifies the problem the invention is designed to address in the following way:
“In order to prevent the internal parts of a transducer from becoming contaminated, an air filter is employed to remove larger particles than anticipated with products of overheating materials. The performance and renewal of this filter, with known aspirating detectors, is often a problem in maintaining a consistent performance by a detector. The problem arises in that, as the air filter becomes increasingly contaminated through usage, the effective pore size of filter medium becomes increasingly smaller. This effect is sometimes known as ‘tea leafing’ because of the similarity with the effect of tea leaves hindering passage of tea when a tea strainer is used. The effect on conventional aspirating smoke detectors is that the sensitivity of the detector decays with time as the filter becomes increasingly blocked, leaving the system in some cases significantly less sensitive after only a few months of use.
Furthermore, in existing aspirating smoke detection systems, it is desirable that the rate of air flow down the sampling pipes is at a maximum, because this minimises response time to fire situations. By reason of the high rate of flow down the sampling pipes, it is also likely that significant amounts of pollution other than smoke and having the aforementioned tendency to block filters will be drawn into the detector.”
In addressing the aspects of the invention, the UK Basic provides:
“According to a sixth aspect of the present invention, there is provided a method of detecting the content of impurity in a stream of gaseous medium flowing through main duct means, comprising causing part of said stream to branch out into branch duct means and detecting the content of the impurity in the gaseous medium in said branch duct means.
According to a seventh aspect of the present invention, there is provided apparatus for detecting the content of impurity in a stream of gaseous medium, comprising main duct means through which said stream can flow, branch duct means branching from said main duct means for receiving part of said stream, and detecting means serving to detect the content of the impurity in the gaseous medium in said branch duct means.
Owing to these two aspects of the present invention, the response time of the detecting means to the content of impurity entering the main duct means need not be dependent upon the throughflow cross-sectional area of a detection chamber and, moreover, the detecting means is not exposed to all of the impurity flowing through the main duct means, whereby the service life of the detecting means may be improved.”
In describing the apparatus and the “simple bypass arrangement” the UK Basic provides:
“The apparatus has a simple bypass arrangement, such that, as the air stream is drawn into an enclosure for the smoke detector, a large proportion of the air is vented to atmosphere or to the air return flow when such a return air passage exists, without entering the filter and thus the detector downstream of the filter. This leaves only a smaller, representative sample of the air to pass through the filter and then the detector. This has the advantages that the maximum rate of flow down the sampling pipes is obtained in order to minimise response time of the detector to a fire situation, and that, as only a small percentage of the potentially contaminating airflow is passed through the filter, the filter and detector service lives are increased.”
In my opinion, the respondent’s submission that the claims in the specification “travel beyond” the UK Basic because the terms “secondary duct means” and “secondary duct means communicating with said main duct means” in the claims in the specification are wider than the “branching out” and “branching from” referred to in the UK Basic must be rejected. The UK Basic was a provisional specification in which a general description was sufficient. Furthermore, the UK Basic must be read as a whole and that includes the passage describing the simple bypass arrangement as set out above. There is nothing in that passage which restricts the disclosure made in the UK Basic to a secondary duct which joins the main duct. I think the UK Basic contains a real and reasonably clear disclosure of a bypass arrangement which includes a second or subsidiary duct which is within a main or major duct, or is joined to a main or major duct.
Mechanical powered means
The respondent submits that the priority date for claims 8 and 14 in the specification is 1 August 1994 because each of those claims refers to mechanical powered means located in the main duct means and upstream of the secondary duct means whereas there is no mention of such matters in the UK Basic.
The following passage in the UK Basic is relevant to this submission.
“The problem of detecting a fire by means of smoke detection is not entirely solved by using a very sensitive aspirating detector.”
In this context, it is also relevant to note references in the UK Basic to conventional aspirating smoke detectors (see the first passage in [92] above) and to air being drawn into an enclosure (see the third passage in [92] above).
I think that the real thrust of the respondent’s submission is that there was nothing in the UK Basic to indicate whether the powered means was to be located upstream or downstream of the secondary duct. The respondent submits that, if anything, the UK Basic teaches that the powered means is to be located downstream of the detector because it refers to air being drawn into an enclosure.
I reject the respondent’s second submission. There are clearly references in the UK Basic to the smoke detection system being an aspirating smoke detection system and, in my opinion, that disclosure is wide enough to include powered means located either upstream or downstream of secondary duct means. If anything, claims 8 and 14 operate to narrow the matter disclosed in the UK Basic.
Detection module
The respondent submits that the priority date for claims 2, 5, 7 and 13 in the specification is 1 August 1994 because each of those claims refers to a detection module through which the main duct means extends and which contains the secondary duct means, the filter and the detecting means whereas there is no mention of a detection module of this nature in the UK Basic. The UK Basic refers to “existing aspirating smoke detection systems”, “air pollution detection unit[s]”, a detector comprising “a housing”, an “apparatus”, the detector including a “tubular housing” and the air stream being drawn into “an enclosure for the smoke detector”. The respondent submits that, although there is a reference to an enclosure for the smoke detector, there is no reference to a detection module.
I reject the respondent’s third submission. In my opinion, a detection module of the nature described in the claims is a development “along the same line of thought” as that which constitutes or underlies the invention identified in the UK Basic (see Re Stauffer at 54 per Buckley LJ) and therefore may be regarded as fairly based on the UK Basic.
Conclusion
In my opinion, the priority date for all the claims in the Specification is 30 July 1993.
Before leaving the topic of priority date, in case I am wrong in rejecting the respondent’s submission that the priority date is 1 August 1994, I should indicate my view as to whether the claims in the specification had been anticipated by the article in the Fire Surveyor. I do not need to refer to the Stratos Technical manual because counsel for the respondent accepted that of the two, the article in the Fire Surveyor was the more comprehensive.
The evidence before me establishes that the relevant volume of the Fire Surveyor was received by the University of New South Wales on 24 November 1993 and it was available to the public shortly after this date.
Mr Fox was cross-examined about the article at some length. There is no need for me to go through the details. I am satisfied that the article disclosed all of the features of claims 1, 3, 4, 6, 9, 10, 12, 15, 16 and 18. There was a dispute between the parties as to whether the article also disclosed the features of claims 2, 5, 7 and 13 (and dependent claims) and, in particular, a detection module of the nature described in those claims. Having regard to the diagrams shown in the article, I think that it did do that. Those diagrams show a main duct entering a box and the words of the article refer to a bypass arrangement which means “only a relatively small, representative sample of the air sample entering Stratos is passed through the dust separator and thence into the detector chamber”.
THE CONSTRUCTION OF THE CLAIMS IN THE SPECIFICATION
Before considering novelty and inventive step it is necessary to construe certain words in the claims.
The legal principles which are relevant to the task of construction are well established.
In Welch Perrin and Company Proprietary Limited v Worrel (1961) 106 CLR 588 (“Welch Perrin”) at 610, Dixon CJ, Kitto and Windeyer JJ identified the following principles. First, a specification is not to be read in the abstract; it is to be construed in the light of the common knowledge in the art before the priority date (see also in this regard, Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1 (“Kimberly-Clark Australia”) at 16 [24]). Secondly, in construing claims in a specification a court is not construing a written instrument operating inter partes, but rather a public instrument the validity of which depends on the instrument defining a monopoly in a way not reasonably capable of being misunderstood (see also Kimberly-Clark Australia at 19 [34]). Thirdly, a specification is made up of several parts and those parts have different functions. It is not legitimate to narrow or expand the boundaries of a monopoly as fixed by the words of a claim by reference to other parts of the specification. Similarly, where the words of a claim are clear they are not to be made obscure by reference to statements in other parts of the specification.
One may add to these principles a principle that where terms in a claim are unclear, those terms may be defined or clarified by reference to the body of the specification: Kimberly-Clark Australia at 12 [15].
The construction of claims in a specification is a matter of law and as such is a matter to be determined by the court. However, the court must by evidence be put in the position of a reader skilled in the relevant art at the relevant date: GeneralTire and Rubber Company v Firestone Tyre and Rubber Company Limited [1972] RPC 457 (“General Tire v Firestone”) at 485.
A specification will often refer to, and set out the details of, a preferred embodiment or, as the parties in this case called it, a preferred form of the invention. Unless there is express reference to the preferred form in a claim, it is not permissible to read into a claim the features of the preferred form: Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 at 298-299.
In Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178, the Full Court of this Court provided a helpful summary of a number of relevant principles. The Court’s summary was itself based on a statement of the principles by Hely J in Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at 349-350 [81]. The Full Court said (at [45]):
“Other more specific principles of construction collected in Flexible Steel at [81] are:
•a specification should be given a purposive construction rather than a purely literal one;
•the hypothetical addressee of the specification is the non-inventive person skilled in the art before the priority date;
•the words used in a specification are to be given the meaning the hypothetical addressee would attach to them, both in the light of the addressee’s own general knowledge and in the light of what is disclosed in the body of the specification;
•as a general rule, the terms of the specification should be accorded their ordinary English meaning;
•evidence can be given by experts on the meaning those skilled in the art would give to technical or scientific terms and phrases, and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning;
•however, the construction of the specification is for the court, not for the expert. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.”
(See also Sachtler GmbH and Co KG v RE Miller Pty Ltd (2005) 65 IPR 605 at 613 [42] per Bennett J; Insta Image Pty Ltd v KD Kanopy Australia Pty Ltd (2008) 78 IPR 20 (“Insta Image”) at 36 [82]; PAC Mining Pty Ltd v Esco Corporation (2009) 80 IPR 1 at 14-15 [29]; Kimberly-Clark Australia at 16 [24].)
As I have said, the hypothetical addressee of a patent specification is a person skilled in the art at the priority date. That person is a non-inventive person. The evidence of a person skilled in the art may assist the Court on the meaning to be given to technical terms or terms of art and, more generally, as to the way in which the specification would be read by a person skilled in the art at the priority date. The level of skill of such a person may vary: Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 (at 117-118 [154]); Insta Image at 38 [94]-[96].
In this case, the skilled worker is a person who has knowledge of the design, construction or use of fire or smoke detection systems.
By reason of the issues in this case, including the composition of the prior art base relied on by the respondent, the words or phrases in the claims which must be construed are the following:
·“main duct means in the form of sampling duct means of a smoke detection system”
·“particles filter”
·“detecting means”
·“detection module”
The applicant submitted in its closing written submissions that the claims in the specification were limited to high sensitivity aspirating smoke detection systems, but that alleged limitation on the claims was abandoned by counsel for the applicant at the commencement of his oral submissions.
The reason that the construction of the phrase “main duct means in the form of sampling duct means of a smoke detection system” is important in this case is that the evidence establishes that in Australia before the priority date the air drawn into smoke detection systems was drawn either from air-conditioning ducts or from a dedicated network of sampling pipes. As is perhaps obvious, as a general rule, pipes forming part of a dedicated network of sampling pipes were used only as part of a smoke detection system. The applicant’s contention is that the phrase “main duct means in the form of sampling duct means of a smoke detection system” refers to dedicated sampling pipes and does not include air-conditioning ducts. The respondent’s contention is that the phrase embraces both air-conditioning ducts and a dedicated network of sampling pipes.
This issue of construction is a major point in the case because, if the respondent’s contention is correct, then the existence and use in the market at and before the priority date of smoke detection systems such as the VESDA E700 Mk II (with filter) and VESDA E700 Mk III and the Olsen D51B (which used air-conditioning ducts to draw air) leads to the conclusion (which I do not understand the applicant to dispute) that a number of the major claims of the specification are not valid because they lack novelty.
As far as the construction of the term “particles filter” is concerned, the dispute between the parties narrowed as the trial proceeded. At the beginning of the trial, the respondent argued that the insect screen in the Olsen D51B smoke detection system was a particles filter within the claims. For its part, the applicant argued that a particles filter was a filter which prevented the passage of particles of a particular size and the applicant relied on the Australian Standard known as AS 1670-1986 “Automatic fire detection and alarm systems – System design, installation and commissioning” (“AS 1670-1986”) to support its submissions. The respondent no longer presses its argument that the insect screen in the Olsen D51B smoke detection system meets the description of a particles filter. For its part, the applicant does not argue that the foam filter in the Olsen D51B smoke detection system does not meet the description of a particles filter and I am satisfied on the evidence that it does meet that description.
The Full Court of this Court considered the issue of how a court first determines the inventive concept of a patent or patent application in Polwood Pty Ltd v Foxworth Pty Ltd (2008) 165 FCR 527. The Full Court (Finn, Bennett and Greenwood JJ) said at 543 [60]:
“The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee’s description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements. It may be that different persons contributed to that combination.”
I turn now to address facts which are not in dispute.
The facts
I can start with facts which were not in dispute.
In the early 1990s, Glaxo, a large pharmaceutical company, was planning to build a installation at Stevenage in the United Kingdom and the buildings which were to comprise the installation needed to have fire or smoke detection systems. The project was a very large one and there was evidence before me that from IEI (UK)’s point of view it was the biggest single-site project opportunity after the Channel Tunnel project.
Glaxo engaged Ove Arrup and Partners to prepare engineering drawings and specifications for the project. Wormald Britannia were Glaxo’s preferred installer as far as the fire or smoke detection systems were concerned.
At some stage, IEI (UK) was approached to tender for the supply of smoke detection systems for the project. As I understood the evidence, IEI (UK)’s usual products were not suitable for the project because they were too expensive for what was required. A smoke detection system with a lower sensitivity than normal would be adequate for the project. It was considered that a particular product would have to be developed for the project.
In 1992, there were a number of meetings between representatives of IEI (UK) and Wormald Brittania. The representatives of IEI (UK) from time to time were Mr Fox, Mr Scully and Mr Frank Trubshaw and the representatives of Wormald Brittania were (principally) Mr Raymond Walsh and Mr Michael North.
Mr Fox was very keen for a product he or Mr Girling had developed called the E7 AZ PYR to be offered to Wormald Brittania for use in the project. That product was really a composite of parts of other products that were then on the market. It included a detector chamber from Autronica A5 of Norway, being the same device which was used in the AutroSense BW 50 detector, and a control panel taken from the VESDA model E700D.
Dr Cole did not support the idea of the E7 AZ PYR being offered to Wormald Brittania for use in the Glaxo project. The product to be offered to Wormald Brittania became a matter of serious dispute between Mr Fox and Dr Cole and correspondence in October and November 1992 recording that dispute was tendered in evidence.
In October 1992, Dr Cole travelled from Australia to the United Kingdom and on 30 October 1992 he summarily dismissed Mr Fox from his employment by IEI (UK). On Saturday 1 November 1992, there was a meeting at the premises of IEI (UK) at Stevenage (“the Stevenage premises”) which was attended by Mr Fox, Dr Cole and others. The purpose of the meeting was to enable Mr Fox to put his case for reinstatement.
Some time later, IEI (UK) secured a contract to supply smoke detection systems for the Glaxo project and the product supplied under the contract was called a VESDA Scanner.
Mr Scully was employed by IEI (UK) from July 1989 to the end of 1996. For the last four years of his employment he was general manager of the company. In 1992 he was employed as the company’s technical manager.
I turn now to address those areas where there was a dispute between the parties.
Mr Scully said that with a view to developing a product which might be used in the Glaxo project he carried out modifications to an existing product called a Locator and that those modifications embodied a bypass arrangement. Mr Scully prepared a memorandum dealing with his modified Locator and he had others within the company prepare drawings of his design including a drawing marked “C”. He constructed a prototype of the modified Locator and placed it on the back wall of the Stevenage premises. That was all done, according to Mr Scully, in 1992 and before Mr Fox left his employment by IEI (UK). The respondent asks me to conclude that Mr Fox or Mr Girling saw the drawings or prototype or both and that that was the origin or source of Mr Fox’s idea of a bypass arrangement.
Mr Scully was able to produce a copy of the memorandum from the outset, but in December 1999 he was unable to produce the drawings he had had prepared. For the purposes of the opposition before the Commissioner, Mr Scully drew what he believed was shown on the drawing marked “C” and attached to his memorandum. I will refer to the original drawing as “C” and to Mr Scully’s recreation of the drawing as the 1999 drawing.
Mr Scully made a second statutory declaration for the purpose of the opposition proceedings before the Commissioner on 20 February 2001. A second recreation of the drawing marked “C” was prepared by the respondent. Mr Scully said that it showed the design of his modified Locator. I will refer to this drawing as the 2001 drawing. The 2001 drawing is similar to the 1999 drawing. It identifies the enclosure as a cabinet but, unlike the 2001 drawing, it shows an exhaust pipe out of the cabinet.
Mr Scully said that his records showed that his memorandum was saved on 27 April 1992. He said that he believed that he gave the memorandum to Mr Trubshaw on or about that date. He believed that, in accordance with usual company practice, Mr Trubshaw would have shown the memorandum and sketches to Mr Fox and to representatives of Wormald Brittania.
To test his modified Locator, Mr Scully constructed a prototype using the pipework system and VESDA detector at the Stevenage premises. His model was placed on the back wall of the premises and it was there for between a few days and about a week. It was, according to Mr Scully, visible to people working in the Stevenage premises and to visitors.
Mr Scully said that, in what he called “its final implementation”, the filter before the aspirator would be removed because there would be no need for such a filter.
It seems that some time in late 2002 or very early 2003, Mr Scully was provided with a copy of his original memorandum and the attached drawings, including the drawing that was marked “C”. There are differences between the drawing “C” on the one hand, and the 1999 drawing and the 2001 drawing on the other. The configuration of the pipework within the housing is different and, in particular, the drawing “C” shows air being piped out of the housing into an exhaust pipe rather than into the housing.
Mr Scully wrote to a Mr David Estrela by facsimile transmission on 26 February 1993. He set out a drawing of a unit he had thought of for a special application IEI (UK) had. The drawing shows air being sucked through a pipe by a fan and then some of it being exhausted into the atmosphere and some of it going through what is called a locator pipe. No filter is shown. In the course of his message, Mr Scully said:
“We did a mock-up here and it worked OK?”
Mr Scully said that the mock-up was the prototype he put on the back wall of the Stevenage premises.
In cross-examination Mr Scully said the prototype he constructed was on the bench near the back wall.
“It would be for a few days … I would have said a week or two weeks at the most.”
Mr Scully also said that the exhaust shown on the 2001 drawing should not be shown as there would be no use for it.
Mr Scully was an honest witness. However, I have reservations about his reliability. First, he did not seem to have a strong independent recollection of events at the time he gave evidence. That was understandable having regard to the time which had elapsed since the relevant events. Secondly, there were differences between the various drawings to which I have already referred. Thirdly, it is difficult on Mr Scully’s evidence to form a precise picture of the prototype on the rear wall of the Stevenage premises and I am uncertain as to how it would have appeared. Finally, it is unclear from Mr Scully’s evidence how long the prototype was on the rear wall of the Stevenage premises.
Mr Frank Trubshaw gave evidence by video link from Great Britain. He was an honest witness. In 1991 and 1992, Mr Trubshaw was employed by IEI (UK) in a sales capacity. He learnt of the Glaxo project in 1991. He saw the memorandum and sketches prepared by Mr Scully in April 1992. He showed them to Mr Walsh and Mr North in April or May 1992. He was aware of Mr Scully’s prototype which was in place in about April 1992 for about a week or two. He said the IEI (UK) premises were protected by an IEI-developed detection system and he said it was not uncommon for the fire detection system to be used “to test various configurations and to demonstrate those configurations to actual or potential clients”. The prototype was examined by the two representatives of Wormald Brittania. Mr Trubshaw does not give any direct evidence of Mr Fox or Mr Girling receiving the memorandum and drawings or seeing Mr Scully’s prototype. Importantly, Mr Trubshaw said the prototype accorded with the device shown in the first recreated sketch.
In cross-examination, Mr Trubshaw agreed that IEI (UK) was offering the Locator product after Mr Fox had left the employment of IEI (UK).
Mr Raymond Walsh gave evidence by videolink from Great Britain. He was an honest witness. Between 1991 and 1997 he was employed by Wormald Brittania as a fire systems engineer. Wormald Brittania was appointed as Glaxo’s fire protection installer in 1992. Mr Walsh and Mr North were appointed to the project and they spoke to IEI (UK) (Mr Trubshaw) and Cerberus. In May 1992, Mr Trubshaw raised with them the use of a product called a Locator. They saw a model of a modified Locator on the rear wall of IEI (UK) at the Stevenage premises. They had discussions with Mr Scully. He and Mr North also had discussions with Mr Fox about a product called the E7 AZ PYR. The product which was ultimately used in the project was called a Scanner.
In cross-examination, Mr Walsh said that Wormald Brittania was appointed the fire protection installer for the Glaxo project in October 1992. He said that his discussions about the Locator occurred before he and Mr Fox agreed on a price for the E7 AZ PYR.
Mr Walsh was adamant that his discussions about the Locator product took place in May 1992 and that after the E7 AZ PYR was withdrawn the negotiations turned to the VESDA E700 D Single Unit or Scanner. I make the point at this stage that the correspondence, particularly the IEI (UK) letter to Wormald Brittania dated 3 November 1992 and Wormald Brittania’s letter to IEI (UK) dated 26 November 1992, strongly suggests that the E7 AZ PYR was withdrawn at about the time Mr Fox was dismissed and that thereafter the parties focused on the VESDA E700D or the Scanner. For example, by 3 November 1992, IEI (UK) was writing to Wormald Brittania saying:
“4. Our primary objective is to supply the IEI VESDA Scanner system.”
Mr Christopher Girling was employed by IEI (UK) from 1988 to 1993. He was employed as an engineer. Mr Girling resigned from his employment with IEI (UK) in February 1993.
As I have said, Mr Girling died in 2002 and he was not cross-examined on his affidavits.
Mr Girling developed the E7 AZ PYR. He had partially developed it at the time he was asked by Mr Fox to develop a cheaper product which would meet the specifications for the Glaxo project. He completed work on it, but was then told it would not go any further because Dr Cole had told Mr Fox that the E7 AZ PYR was not to be used in the Glaxo project.
Mr Girling said that during his employment with IEI (UK) the Stevenage premises was protected by a VESDA smoke detection system attached to the rear wall of the ground floor of the premises. The system was never used to test new ideas or new products. Mr Girling said that the making of prototypes was his responsibility within the company and he never saw a model or test installation on the rear wall of the premises. He could not recall Mr Scully suggesting a solution for the Glaxo project which involved the Locator product. Furthermore, he never saw Mr Scully’s memorandum and sketches. Mr Girling stated that Mr Trubshaw’s recollection about the number of people who were employed by IEI (UK) in 1992 was wrong. Mr Girling said that Mr Scully’s modified Locator as shown in the 1999 drawing and in the 2001 drawing was impractical because it had a filter in a place where one was not necessary and yet no filter – other than what he called sintered bronze silencers – where one was necessary.
Mr Fox agreed with Mr Girling. He said that he would not have allowed the smoke detection system in the Stevenage premises to be used for testing purposes. Mr Fox never saw a prototype or model on the rear wall of the Stevenage premises. He was never presented with any proposal which would involve the use of a modified Locator for the Glaxo project. He would have vetoed any such proposal because he had concerns about the pump used in the Locator. Mr Fox said that the item called “filter” in each small-bore tube in the Locator product was a bronze, sintered, pneumatic silencer supplied by Norgren Martonair Ltd. Mr Fox had a diary entry showing a meeting with representatives of Wormald Brittania on 13 July 1992. He said that the first formal meeting anyone from IEI (UK) had with representatives of Wormald Brittania in relation to the Glaxo project was a meeting he attended on 13 July 1992.
There were meetings thereafter and, according to Mr Fox, Wormald Brittania, and Ove Arrup and Partners, accepted the E7 AZ PYR for the project. He made the point that there was a working VESDA smoke detection system at the premises. Mr Fox produced some pages of the specifications for the Glaxo project which are dated April 1992. Mr Fox said the Glaxo project was not finished until 1995.
I have already referred to Mr Mitchell who was employed by IEI (UK) between 1989 and 1994 as a commissioning engineer. His job was to set up and test a smoke detection system once it was installed. He also returned to sites in the event of some fault arising. There was a VESDA smoke detection system installed at IEI (UK) premises and he never saw it adapted to be part of a testing system. He never saw a prototype on the rear wall of the premises and he agreed that, if there had been one, anyone working in the premises would have seen it.
The issues
I refer to the three issues identified in [520] above.
In terms of the first issue, I have set out the respondent’s explanation of the inventive concept. I will proceed on the basis that that is an adequate description.
The second issue is whether Mr Scully’s memorandum and drawings and his prototype embodied the inventive concept embodied in the Patent application. As I understand it, it is not necessary for me to be satisfied that Mr Scully came up with his idea of the modified Locator because he considered a bypass arrangement would protect the filter. Nevertheless, I do not think that drawing “C” or the prototype embodies the inventive concept. I do not think it would occur to anyone that there was a bypass arrangement so that air bypassed the filter. Of the two possible “filters” shown on drawing “C” the most obvious one is the filter before the aspirator; there is clearly no bypass arrangement in relation to that filter. There is also a strong argument that the sintered filter is not disposed in a secondary duct means.
I turn to consider the third issue in case I am wrong in relation to the second issue.
The parties made very detailed written submissions about the evidence and the findings the Court should make. It is fair to say that there is conflicting evidence on almost every factual issue. The relevant events happened many years ago.
I have found it helpful to examine whether there is an event which is clearly established on the evidence and, if so, to examine the other issues based on the timing of that event.
The correspondence shows that in October 1992 and shortly prior to Mr Fox’s dismissal, Mr Fox was promoting the E7 AZ PYR for the Glaxo project. Dr Cole was opposed to this course and he wished to promote the VESDA scanner. The offer to supply the E7 AZ PYR was withdrawn and this caused a good deal of friction between IEI (UK) and Wormald Brittania. There is a letter from IEI (UK) to Wormald Brittania dated 3 November 1992 and a response from Wormald Brittania to IEI (UK) dated 26 November 1992. That correspondence shows that at that point Wormald Brittania was looking for IEI (UK) to supply the VESDA E700D single unit with an option to supply the scanner or AZ PYR for the Glaxo project, and IEI (UK) was looking to supply the IEI VESDA Scanner system for the Glaxo project.
IEI (UK) eventually secured the contract and the Scanner was the product which was supplied.
It seems to me that in those circumstances, it is most unlikely that Mr Scully would have been carrying out tests or experiments on a different product at that point in time. I find on the balance of probabilities that if Mr Scully carried out tests and experiments on a Locator product he did so before Mr Fox was dismissed from his employment by IEI (UK).
I find on the balance of probabilities that Mr Scully did carry out tests and experiments on a Locator product. The memorandum and sketches, his evidence and the evidence of Mr Trubshaw and Mr Walsh establishes that fact.
I am not entirely confident that that was done in April or May 1992 rather than a little later but for present purposes it does not matter.
I am not prepared to find on the balance of probabilities that Mr Fox or Mr Girling saw or were given a copy of Mr Scully’s memorandum and sketches. I accept that it is an available inference that Mr Fox did; after all this was a very large project and Mr Fox was the managing director of IEI (UK). One would have expected him to have seen it or to have received it. However, he said that he did not and there was no direct evidence that he did. I listened to Mr Fox’s cross-examination on this issue very carefully and I formed the view that I could accept his evidence on this issue.
I find on the balance of probabilities that Mr Scully prepared a prototype of his modified Locator and that he showed it to Mr Walsh and Mr North. I find that the prototype was at the rear of the workshop, but I am unable to make a finding as to precisely how it was configured in terms of the rear wall and a bench near the rear wall. I accept the evidence that it was unlikely to have been connected to the existing fire or smoke alarm system.
I am not able to make a finding as to what a person looking at the prototype would conclude in terms of the alleged bypass arrangement.
I find that the prototype was at the rear of the workshop, possibly on display, only for a short period of time being a week or less. It is not possible on the evidence to be more precise than that.
I find that none of Mr Fox, Mr Girling or Mr Mitchell saw the prototype. I accept there is an available inference to the contrary particularly having regard to the layout of the Stevenage premises and Mr Fox’s evidence. However, I listened carefully to the evidence and cross-examination of Mr Fox and Mr Mitchell and I am not satisfied that they were telling other than the truth when they said that they did not see a prototype at the Stevenage premises.
I should add that in reaching my conclusions about Mr Fox’s evidence on this topic, I have taken into account his evidence about discussing the Locator with Mr Walsh. It is by no means clear that he is referring to the modified Locator as distinct from the Locator which was one of the standard products offered by IEI (UK).
In my opinion, the respondent’s opposition based on a lack of entitlement must fail.
CONCLUSIONS
A summary of my principal conclusions is as follows:
1.The priority date of the claims in the specification is 30 July 1993.
2.The expression in the claims “main duct means in the form of sampling duct means of a smoke detection system” includes an air-conditioning duct.
3.The bypass arrangement was anticipated by the following:
(1)The published material identified earlier in these reasons in relation to the VESDA E700 units and the use of those units in association with air-conditioning ducts.
(2)The published material identified earlier in these reasons in relation to the Olsen D51B units and the use of those units in association with air-conditioning ducts.
(3)The photographs and explanations by Dr Cole in Australia of the smoke detection system at CERN.
(4) The Cerberus patent.
4.I am not satisfied that the bypass arrangement was anticipated by the following:
(1)The smoke detection systems at Billy Guyatts Moonee Ponds, Billy Guyatts Blackburn and Radio Australia, respectively.
(2)The Nohmi patent.
5.None of claims 1-18 inclusive in the specification involved an inventive step.
6.The respondent has not made out its case of a lack of entitlement.
I will give each party leave to make submissions as to the final orders to be made having regard to these reasons.
I certify that the preceding five hundred and seventy-seven (577) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko. Associate:
Dated: 30 September 2010
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