Austal Ships Pty Ltd v NorthWest Bay Ships Pty Limited
[2010] APO 7
•24 May 2010
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.770960 in the name of NORTH WEST BAY SHIPS PTY LIMITED
Title: Trimaran Construction
Action: Opposition under Section 59 of the Patents Act by AUSTAL SHIPS PTY LTD
Decision: Issued 24 May 2010
Abstract
The opposition was found to be unsuccessful under all grounds relied upon.
In particular, the claims of the opposed application were found to be fairly based, and to be patentably distinguished from the prior art information and the common general knowledge which on the evidence was in existence at that time.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 770960 in the name of North West Bay Ships Pty Limited and opposition under Section 59 of the Patents Act by Austal Ships Pty Ltd
BACKGROUND
Patent application 770960 (the present application) was filed on 4 August 1999 by North West Bay Ships Pty Limited (NWBS) under the provisions of the Patent Cooperation Treaty claiming priority from provisional application PP5025 filed on 4 August 1998. The present application was advertised accepted on 11 March 2004.
Austal Ships Pty Ltd (Austal) filed a notice of opposition to the present application on 9 June 2004 and a statement of grounds and particulars on 10 September 2004. On 8 October 2004, NWBS filed an application for dismissal of the opposition on the basis that the statement of grounds and particulars had not been served on them within the time allowed by regulation 5.4. Austal responded by filing an application for an extension of time under section 223 in which to serve the statement of grounds and particulars. NWBS subsequently withdrew the application for dismissal. Austal was granted the extension they sought under section 223, thus validating service of the statement of grounds and particulars.
The filing of evidence in support, evidence in answer and evidence in reply was completed on 12 May 2006 after both parties had been granted multiple extensions of time without objection.
An application by Austal under regulation 5.9 to amend the statement of grounds and particulars was allowed on 4 October 2006.
On 31 January 2007, NWBS filed a request for leave to amend the specification under section 104. A further statement of proposed amendments was filed on 14 January 2008. After a lengthy exchange of correspondence between the parties which was precipitated by comments made by Austal pursuant to regulation 10.2(7), leave to amend was granted and advertised on 17 July 2008. The amendments were allowed unopposed on 15 January 2009.
Meanwhile, on 21 August 2008, Austal filed an application to serve further evidence to address the specification as proposed to be amended. The application was granted and Austal filed their further evidence on 24 December 2008 after obtaining a number of extensions of time. Extensions of time were in turn granted to NWBS before they filed evidence in response to the further evidence on 21 April 2009.
The opposition was originally scheduled for hearing in Melbourne on 5 November 2009, but the hearing was unavoidably deferred until 25 February 2010. NWBS were represented by Mr Ross Macaw of counsel assisted by Mr Alfred Tatlock and Ms Barbara Van Meurs of A Tatlock & Associates. Austal were represented by Mr Tony Ward of Griffith Hack. Mr Jim Black of Austal also attended the hearing as an observer. Both parties provided me with written submissions.
THE SPECIFICATION
The specification as amended indicates that the invention relates to a trimaran construction and, in particular, to a construction which is adapted to be used in large size vessels such as those employed for vehicular and other freight and passenger ferries.
The specification describes the background to the invention as follows:
“Historically, ferries were mono-hull vessels and whilst these were satisfactory as far as stability and power usage was concerned, they suffered from the disadvantage of having a restricted beam, and thus carrying capacity.
More recently many ferries have been of a catamaran construction which provide good transverse stability, enhanced carrying capacity because of the spacing between the two hulls with a large portion of the load being carried between the hulls and limited drag because the two hulls can be made relatively narrow.
However, whilst having good transverse stability, catamarans are very ‘stiff’ which can be uncomfortable in beam seas. Also the ride control, which is often fitted to such vehicles has to produce large forces to reduce the motions.”
10. The invention seeks to provide a trimaran construction which has benefits over both mono-hulls and catamarans.
11. The specification summarises the invention as residing in a trimaran vessel having a central hull and two outer hulls integral with an upper deck, with each of the outer hulls being smaller and of less draft (which is a measure of the distance from the waterline to the bottom of the hull) than the central hull. In accordance with the specification, the arrangement of the vessel is such that the draft of the vessel lessens when the vessel is moving at speed due to dynamic lift developed by the movement, and whereby the outer hulls have little if any effect on buoyancy of the vessel when moving at speed because of the change in draft.
12. The specification next describes various embodiments of the invention with reference to some drawings. In these the central hull, whilst relatively narrow, is still substantially wider than the pair of outer hulls and also extends into the water a depth somewhat greater than the outer hulls. Lifting means in the form of foils are positioned near the longitudinal centre of flotation of the central hull and extend between the central hull and each outer hull. The lifting foils may be connected to the central and outer hulls either directly or by means of struts, and preferably do not extend below the bottom of the central hull as this would increase the draft of the trimaran vessel. The incorporation of the foils improves dynamic stability as they broaden the base from which lift and buoyancy are generated even though the outer hulls provide limited direct buoyancy when the vessel is in motion.
13. The specification explains that when the trimaran vessel is moving at speed, the foils impart a degree of lift to the vessel at the longitudinal centre of flotation. The lift imparted by the foils is designed to lift the outer hulls, but not the central hull, clear or close to clear of the water surface. The angle of attack, and hence the amount of lift, can be varied by rotating the foils.
14. The specification ends with twenty-three claims which are in the following terms:
“1. A trimaran vessel for carrying passengers, vehicular traffic or freight over a fluid having a central hull and two outer hulls integral with an upper deck, with a first outer hull of said outer hulls located leftward of said central hull and a second outer hull located rightward of said central hull, each of said two outer hulls being of a smaller length and of less draft than said central hull while extending forward of the longitudinal centre of flotation (LCF) of the central hull, with said central hull providing a majority portion of buoyancy of the trimaran vessel, and lifting means for lessening draft on movement of said trimaran vessel, said lifting means including at least one foil extending between each outer hull and said central hull such that when the vessel is moving at speed all hulls are at least partially immersed in the fluid.
2. A vessel as claimed in claim 1 wherein the lifting means includes the central hull being a planing hull.
3. A vessel as claimed in claim 2 wherein the outer hulls are also planing hulls.
4. A vessel as claimed in claim 3 wherein the foil is a single foil extending across the width of the vessel and connected to each side [sic] hull.
5. A vessel as claimed in claim 4 wherein the foil does not extend substantially below the bottom of the central hull, so as not to increase the vessel’s draft when at rest.
6. A vessel as claimed in any one of claims 1 to 5 wherein each foil is connected to the vessel by struts.
7. A vessel as claimed in any one of claims 1 to 6 wherein the angle of attack of each foil can be varied.
8. A vessel as claimed in claim 7 wherein each foil can be partially rotated about an axis of the foil.
9. A vessel as claimed in claim 8 wherein each foil has a trailing edge flap which can be partially rotated.
10. A vessel as claimed in claim 8 wherein each foil is connected to the vessel by struts and the resulting foil and strut assembly can be partially rotated about a transverse axis.
11. A vessel as claimed in any one of claims 1 to 10 wherein the foils may be provided with trailing edge flaps.
12. A vessel as claimed in any one of claims 1 to 11 wherein adjustment of the foils, and trailing edge flaps, can be effected automatically depending on the external conditions of the medium in which the vessel is moving at speed.
13. A vessel as claimed in any one of claims 1 to 12 wherein a foil is located at more than one position relative to the central hull.
14. A vessel as claimed in any one of claims 1 to 13 wherein at least one foil is dihedral.
15. A vessel as claimed in any one of claims 1 to 13 in which at least one foil is anhedral.
16. A vessel as claimed in any one of claims 1 to 15 wherein, when the vessel is moving at speed, the outer hulls only enter a short distance into the water.
17. A vessel as claimed in any one of claims 1 to 16 wherein the outer hulls are stepped to provide better hydrodynamic properties when the vessel is in operation.
18. A vessel as claimed in claim 17 wherein the steps are vertical steps.
19. A vessel as claimed in claim 17 wherein the steps are raked aft.
20. A vessel as claimed in claim 17 wherein the steps are raked forward.
21. A vessel as claimed in any one of claims 17 to 20 wherein the outer hulls are stepped both in plan and in elevation.
22. A vessel as claimed in any one of claims 1 to 21 wherein the vessel is a large sized trimaran vessel adapted to carry passengers, vehicles and freight.
23. A vessel substantially as herein described with reference to the accompanying drawings.”
GROUNDS OF OPPOSITION
15. The amended statement of grounds and particulars sets out all grounds of opposition available under section 59. The amended statement also disputes the entitlement of the claims to a priority date based on the filing date of provisional application PP5025.
THE EVIDENCE
Evidence in support
16. The evidence in support filed by Austal consists of:
- A statutory declaration made by Antony John Fowler Ward on 9 March 2005 with exhibits AJFW-1 to AJFW-4;
- A statutory declaration made by Philip C Hercus on 16 March 2005 with exhibits PCH-1 to PCH-4; and
- A statutory declaration made by Neville Anthony Armstrong on 10 March 2005 with exhibits NAA-1 to NAA-4.
17. Mr Ward appeared for Austal at the hearing. Mr Hercus is a semi-retired naval architect operating as technical consultant to International Catamaran Designs Pty Ltd (often referred to as Incat Designs), a company he founded in 1988. He has acquired more than thirty years of experience in the design of fast catamaran vessels, and is a frequent speaker at international marine conferences. In 1990, he was awarded the prestigious Hales Trophy (Blue Riband) when his design established a new record for a passenger vessel crossing the North Atlantic. Dr Armstrong is another naval architect having considerable experience in the design of large, high-speed catamarans, including several years of employment with Incat Designs. He has worked for Austal since 1998.
18. Mr Ward notes that although the present application names John Theodore Fuglsang and Stephen Geoffrey Quigley as co-inventors, the statement of devolution in the notice of entitlement refers to Mr Fuglsang alone. Mr Ward argues that it is as a consequence unclear how NWBS derived entitlement from both co-inventors.
19. Mr Hercus states that in early 1989 he became aware of a new design for fast catamarans that utilised foils to lift the hulls completely out of the water at speed and thereby reduce the resistance to travel through the water (known as “drag”). He felt that a better solution could be obtained by only partly lifting the hulls from the water, and to this end developed a concept known as a “Trifoil” in which the lifting foils were fitted to a tri-hulled vessel rather than a catamaran. Dr Armstrong was also involved in the conceptual design of the Trifoil.
20. Mr Hercus presented a paper entitled “Fast Car Ferries in the Nineties” at the 7th International High Speed Surface Craft Conference held in London on 11-12 January 1990 (the Hercus paper) (exhibit PCH-3). The Hercus paper describes the salient features of the Trifoil as being:
“As the name suggests, the Trifoil is a triple hulled vessel fitted with foils. The centre hull is extremely slender and is very deeply veed in the bottom. The side hulls are even more slender than the centre hull and are about half the length of the vessel. They are fitted to provide stability when the vessel is at rest or travelling at low speed.
As speed increases, the foils provide lift and at service speed, carry about 75% of the vessel’s weight. The remainder of the weight is supported by the buoyancy of the centre hull and the side hulls run just touching the water surface. The centre hull controls the vessel’s sea-keeping characteristics and is provided with a wave piercing form of bow to assist in this regard. In the interest of simplicity and reliability, the foils will normally be offered with no moving parts, however, if a customer requires it, the foils can be fitted with active flaps to augment the vessel’s seakeeping ability.”
21. As explained by Mr Hercus:
“The main role of the outer hulls is to provide stability at low speed with a degree of stability being provided at speed as the vessel rolls. However, for each unit of weight carried, the drag of the side hulls is generally substantially higher that [sic] the drag of the centre hull. Therefore, if there are adequate means of ensuring the vessel’s transverse stability, without the buoyancy of the side hulls, then at speed the vessel should run with its side hulls either out of the water or just in it. The difficulty is that the means of ensuring adequate transverse stability, without the buoyancy of the side hulls, usually comes with considerable mechanical complexity.”
22. A provisional application in respect of the Trifoil was filed in late 1989, but Mr Hercus acknowledges that his company has done little since 1993 to progress the development of the Trifoil due to disadvantages found to exist with this vessel design.
23. Dr Armstrong provides a brief analysis of Australian patent specification 751363 (the Ødegård specification) (exhibit NAA-4) which he says discloses all features of a number of the accepted claims.
Evidence in answer
24. The evidence in answer filed by NWBS consists of:
- A statutory declaration made by Anthony Elms on 21 November 2005 with exhibits AE1 and AE2; and
- A statutory declaration made by John Theodore Fuglsang on 17 November 2005 with exhibits JF1 to JF4.
25. Mr Elms is a naval architect who exhibits the drawings and/or abstracts (marked as AE1 “C” to “M”) of the balance of the patent specifications listed in the statement of grounds and particulars under the grounds of novelty and inventive step. Mr Fuglsang is director of NWBS which was formed by him in January 1998.
26. Mr Elms draws attention to a paper entitled “The Quest for Speed at Sea” by Dennis J Clarke, William M Ellsworth and John R Meyer, Technical Digest, April 2004 (exhibit AE2) which indicates that attempts to increase the speed of water vessels have involved lifting the hull out of the water. One of the earliest means of lifting the hull from the water utilised underwater wing-like lifting surfaces called hydrofoils. The hydrofoils were fitted to mono-hull vessels. At a given vessel speed, the hydrofoils generate enough dynamic lift to raise the hull out of the water. This results in a reduction in resistance and a corresponding increase in speed. Multi-hull vessels, specifically catamarans and trimarans, were also employed in the quest for faster water vessels. The hulls of these types of vessels tended to be long and slender and were found to provide higher stability and less wave-forming resistance when compared to mono-hulls. Mr Elms says that at the priority date there were two common forms of trimaran hull. The first was a stablised mono-hull where side hulls provided the necessary transverse stability to a central main load-carrying hull. The second was a three-hulled vessel where the side hulls carried more of the vessel weight than was otherwise necessary for static transverse stability.
27. According to Mr Elms:
“It was commonly known that in order to meet transverse static stability requirements stipulated by good design and regulation there was for a given overall ships beam, a requirement for a minimum water plane area of the side hull. Furthermore it was well known that for a given water plane area, a slender hull form would provide least resistance at speed. Yet another common understanding was that interaction between two adjacent hulls gave rise to interference wave making which contributed to the overall resistance of the ship. This wave resistance component could be minimised by appropriate placement of the side hulls relative to the centre hull. Accordingly it was reasonably understood that a trimaran hull form could take any one of a number of configurations, each representing a unique combination of side hull size and placement relative to the central hull.”
28. A comparatively recent means of increasing vessel speed involved a concept known as a hybrid hull in which the inclusion of a hydrofoil system enabled a vessel to operate as a hybrid between a mono-hull and a multi-hull. Mr Elms claims that the Hercus paper was the only known publication at the priority date of a foil assisted trimaran. He then proceeds to explain why he considers that the prior art relied upon by Austal does not lead directly to the claimed invention. In particular, he states that the claimed invention:
“… was … unique in that it blends the desirable attributes of several known design elements into a single coherent construction. Each design element simultaneously conformed to the best design practices as they were known at the time. The combination of these elements was not obvious at the time.”
29. As mentioned earlier, Mr Fuglsang and Stephen Geoffrey Quigley are named as joint inventors by the present application. Mr Fuglsang says that the absence of any reference to Mr Quigley in the notice of entitlement “was a clerical error on the part of my attorneys”.
Evidence in reply
30. The evidence in reply filed by Austal consists of a second statutory declaration made by Dr Armstrong on 1 May 2006 with exhibits NAA-1 and NAA-2.
31. Dr Armstrong refutes the evidence of Mr Elms. He points out that the Hercus paper was not the only known publication of the use of foils on trimarans as evidenced by the paper entitled “Displacement Hydrodynamic Hybrid Hull Fast Vessels” given by Clifford C Shaw at the 14th Fast Ferry International Conference held in Copenhagen on 24-26 February 1998 (exhibit NAA-1). He continues by discussing why Mr Elm’s comparison of the claimed invention with the prior art relied on in the opposition is in his opinion based on mere supposition, or features which do not appear in the claims.
Further evidence
32. The further evidence filed by Austal consists of a statutory declaration made by Nigel Ian Gee on 19 December 2008 with exhibits NIG-1 to NIG-9.
33. Mr Gee is a retired naval architect with almost forty years of experience mainly in the field of high speed vessel design. After setting out his experience with multi-hulls and the use of lifting foils on such vessels before the priority date, he states:
“… it is clear now looking at claim 1 and the subsidiary claims, that the patent application of the opposed application [sic] relates principally to a trimaran with lifting surfaces but which maintain all three hulls in the water. Whichever way you look at this, the claimed invention relates to a trimaran with lifting surfaces. Whether you lift the two [outer hulls] completely out of the water, or whether you leave all three hulls in the water, both options are very obvious steps from the body of knowledge on trimarans and lifting surfaces.”
Evidence in response
34. The evidence filed by NWBS in response to Austal’s further evidence consists of a second statutory declaration made by Mr Elms on 15 April 2009 in which he comments on a range of issues raised by Mr Gee.
35. I will return to the evidence where appropriate later in my decision.
ONUS OF PROOF
36. As submitted by Mr Macaw, the onus of proof in this proceeding rests upon Austal who must establish that it is clear that a valid patent cannot be granted (F Hoffman-LaRoche AG v New England Biolabs Inc 50 IPR 305 at 319). It is also the case that the standard of proof required is the civil standard on the balance of probabilities (Dunlop Holding Ltd’s Application [1979] RPC 523 at 543).
DECISION
Entitlement
37. Generally speaking, the principal issue for determination where the entitlement of a person to the grant of a patent is in dispute is whether that person falls within any of the categories of persons to whom a patent may be granted that are specified by section 15.
38. In the present case, however, Austal do not dispute that NWBS is a “person” within the meaning of section 15. Rather, it is contended that NWBS have not substantiated their claim to sole entitlement since the notice of entitlement omits any reference to a transfer of title from one of the named inventors, Stephen Geoffrey Quigley, to them.
39. NWBS submitted that this omission was simply the result of a clerical error. As the error has now been corrected by way of a new notice of entitlement, I will have no further regard to this ground of opposition.
Section 40
Fair basis
40. Mr Ward pursued two lines of attack against the fair basis of claim 1. First, he asserted that in requiring the central hull and the outer hulls to be at least partially immersed in the fluid when the trimaran vessel is at speed, claim 1 was effectively stating that the outer hulls were always immersed in the fluid which is in clear contradiction to the specification wherein it is disclosed that at speed the outer hulls can be in the fluid or lifted clear of the fluid. Mr Ward submitted that this disclosure did not relate to separate embodiments of the invention.
41. Second, Mr Ward asserted that the recitation in claim 1 of outer hulls extending forward of the longitudinal centre of flotation (LCF) of the central hull has no basis in the specification which fails to disclose the position of the LCF. Moreover, so the argument continues, although indicating that the lifting means are located at or close to the LCF, the specification makes no reference to the location of the outer hulls relative to the LCF.
42. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58, the High Court said that fair basis is concerned “purely with the relationship between the body and claims of the one specification”. The High Court emphasised that in assessing whether the invention as claimed is fairly based, it is necessary to take into account the construction of the specification as a whole. As stated by their Honours at [99]:
“… the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification.”
43. In the present case the general statement of the invention in the specification does not correspond to the language of claim 1. The general description merely states that the trimaran vessel is arranged “such that the draft of the vessel lessens when the vessel is moving at speed due to dynamic lift developed by the movement … whereby … the outer hulls have little if any effect on buoyancy of the vessel when moving at speed.”
44. The effect of the dynamic lift generated at speed on the operation of the outer hulls only emerges in the detailed description provided by the specification with reference to Figure 3 of the accompanying drawings. This is the portion of the specification on which Mr Ward’s initial attack against the fair basis of claim 1 principally relies.
45. The specification states that when the catamaran vessel is at rest, being the position of the static waterline shown as 15 in Figure 3, both the central hull and the outer hulls are in the water. At page 9 it is stated:
“When moving at speed, the central hull can be at one of the positions 16, 17 shown as possible dynamic waterlines in Figure 3. In each of these, the central hull shows a shallower draft than that of the static waterline shown in the figure. As can be seen, if the dynamic waterline is at 17, the two outer hulls can be effectively in the water by only a relatively small draft and if at 16 they are out of the water. Depending on the various parameters adopted, the dynamic waterline can be between, or varied from, these positions.”
46. In my opinion this passage signifies that the invention contemplates two distinct possibilities whereby the outer hulls are either lifted clear of the water at speed or remain in the water at speed dependent upon vessel design considerations. Mr Gee, Austal’s own declarant, has drawn the same conclusion from an analysis of Figure 3 which to his mind shows that “either option is open” and that the waterlines 16 and 17 “represent very different dynamic conditions”. I therefore consider that limiting claim 1 to the situation where the outer hulls remain in the water (fluid) when the vessel is moving at speed merely represents a choice from alternative embodiments of the invention described and, consequently, does not “change the direction of the invention” as contended by Mr Ward.
47. Mr Ward’s second line of attack seems more closely allied to the grounds of insufficiency and ambiguity. Nevertheless, it is to be noted that a specification “must not be read in the abstract but in the light of common knowledge in the art” (Populin v HBNominees Pty Ltd 41 ALR 471 at 476-7). The authorities have also established that the lack of precise definition in a claim is not fatal to its validity, so long as it can be understood in a practical, common sense manner.
48. During the course of the hearing, there was a recognition on the part of both Mr Ward and Mr Macaw that the LCF is commonly understood to lie somewhere to the rear (“aft”) of midships. The precise location of the LCF is not depicted in any of the drawings accompanying the specification. However, it is plainly evident from the deck plan of Figure 2 that the side hulls extend forward of midships which in accordance with the shared understanding of the parties clearly infers that they also extend forward of the LCF as specified by claim 1. This is entirely consistent with Mr Gee’s further evidence that “forward of the LCF” is “like saying that the tips of the [outer hulls] are forward of midships”.
49. In light of the foregoing I dismiss this ground of opposition.
Clarity
50. Mr Ward submitted that the failure of the specification to disclose the position of the side hulls in relation to the LCF additionally rendered claim 1 unclear. I have already discussed why I consider the reasoning behind this submission to be misconceived under the ground of fair basis. I also note that Mr Ward did not appear to experience any difficulty in deducing the relative position of the side hulls in the prior art documents on which Austal rely in this proceeding despite the lack of an express reference in those documents to the LCF.
51. I therefore dismiss this ground of opposition.
Priority date
52. Mr Ward submitted that the claims cannot properly take the filing date of provisional application PP5025 as their priority date. He said that in the absence of a disclosure of the LCF, the provisional application does not provide a basis for the claimed feature of outer hulls that extend forward of the LCF, and hence the priority date should be post-dated to a date no earlier than the filing date of the present application, namely, 4 August 1999.
53. The real point of Mr Ward’s submission is that the Ødegård specification would in his view become part of the prior art for the purpose of whole of contents novelty if the claims are not entitled to a priority date earlier than 4 August 1999.
54. I consider this submission to be misguided. The earliest possible priority date of the Ødegård specification is 29 May 1998 which is before the filing date of provisional application PP5025, and therefore the question of whether the claims of the present application are entitled to take this date as their priority date does not in this instance require further consideration.
Novelty
55. The basic test for anticipation or want of novelty has been said to be the same as that for infringement (Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 at [313]). This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v MartinEngineering Co 16 IPR 545 at 549).
56. There is no disagreement in the present case that every feature of claim 1 can be considered essential.
57. According to authority, an alleged anticipation must be the same as the claimed invention for the purposes of “practical utility”. This means that an earlier publication will only destroy novelty if it contains sufficient information to enable a person skilled in the relevant art to produce the invention. The matter was put in this way in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485-6:
“… if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if a patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.”
58. The directions must be clear and unmistakable. As stated in Flour Oxidising Co Ltd vCarr & Co Ltd 25 RPC 428 at 457:
“But where the question is solely a question of prior publication [viz. anticipation], it is not, in my opinion, enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakable directions so to use it.”
59. I now turn to the prior art documents which Mr Ward alleged anticipate the claimed invention.
The Hercus paper
60. As mentioned earlier, the Hercus paper was presented at an international conference in January 1990. Mr Macaw did not dispute that the Hercus paper had as a result become publicly available in the relevant sense before the priority date.
61. The Hercus paper discloses a tri-hulled car ferry fitted with lifting foils and was thus named the “Trifoil”. The outer hulls of the Trifoil are said to be even more slender than the central hull, and about half the length of the vessel, which in Mr Ward’s opinion implied that the outer hulls extended forward of the LCF of the central hull. However, I do not consider the position to be as clear cut as Mr Ward suggests since, as pointed out by Mr Macaw, the design concept drawing comprising Figure 8 of the Hercus paper indicates that the outer hulls may be well aft of midships. What is undoubtably clear though is the statement in the Hercus paper that the outer hulls just touch the water surface when the Trifoil is moving at speed. Mr Ward submitted that the expression “just touching the water surface” reads directly onto the claims, and in particular claim 16 which stipulates that the outer hulls only enter a short distance into the water at speed. I do not agree since as a matter of ordinary language “just touching the water surface” does not even fall within the broadest ambit of claim 1 which calls for partial immersion of the outer hulls.
62. I therefore find that the Hercus paper does not anticipate the claimed invention.
The Ødegård specification
63. The Ødegård specification discloses a hydrofoil assisted marine vessel which operates as a hybrid between a mono-hull and a trimaran. The vessel comprises at least two outer hulls arranged on each side of a central hull, and it would seem from Figure 1 of the accompanying drawings (although there is no elaboration of it) that the side hulls extend forward of the LCF of the central hull. Most relevantly, the Ødegård specification states that when the vessel is moving at speed, the side hulls “partly or entirely clear the waterline”.
64. There was considerable debate as to whether it was evident from this statement that the Ødegård specification envisaged the employment of outer hulls that are always at least partially immersed in the water. Mr Macaw argued that the Ødegård specification did not contemplate such an arrangement since the vessel it discloses is said to operate as a mono-hull at speed. This contention appears to gain support from the Ødegård specification in the abstract, and at page 11 lines 22-23 and page 13 line 6, where it is indicated that only the central hull is immersed in the water at speed.
65. However, this is not an issue I need to decide. As already stated, Mr Ward has placed reliance on the Ødegård specification for the purpose of whole of contents novelty. The “whole of contents” approach does not involve a comparison between claims as was the case with the ground of prior claiming under the 1952 Act. Rather, the whole of contents approach is embodied in the 1990 Act as information included in paragraph (b)(ii) of the definition of “prior art base” in Schedule 1. The information referred to in paragraph (b)(ii) is information contained in a published specification filed in respect of a complete application where (1) the information would have an earlier priority date than the claim under consideration if it were the subject of a claim of the specification, or the information is the subject of a claim and does have an earlier priority date; (2) the specification was published after the priority date of the claim under consideration; and (3) the information was contained in the specification on its filing date and when it was published.
66. I do not perceive the second and third requirements above to be in issue. In relation to the first requirement, the Ødegård specification claims priority from Norwegian application 19990113 filed on 12 January 1999, and Norwegian application 19982454 (exhibit JF2) filed on 29 May 1998. Only the latter date precedes the priority date of the claims of the present application. The entitlement of the information contained in the Ødegård specification to an earliest priority date of 29 May 1998 is dependent on whether the information is fairly based on matter disclosed in Norwegian application 19982454 (regulations 3.12(1)(b) and 3.12(2)(b)). This is clearly not the case since the Norwegian application does not disclose anything other than side hulls which clear the waterline at speed. There is no suggestion at all that the side hulls may only partly clear the waterline in this mode of vessel operation.
67. I accordingly find that the information contained in the Ødegård specification is not entitled to a priority date derived from the date of filing of Norwegian application 19982454. This means that the information contained in the Ødegård specification can not be assigned a priority date which is earlier than that of the claims of the present application. As a consequence, the Ødegård specification does not constitute prior art for the purpose of whole of contents novelty.
68. On the basis of the foregoing I dismiss this ground of opposition.
Inventive step
69. Broadly speaking, under section 7(2) an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the relevant art in the light of the common general knowledge within Australia either when considered alone or together with information made publicly available anywhere in the world. Section 7(3) restricts the information to that which could be reasonably expected to have been ascertained, understood and regarded as relevant by the skilled person.
70. The law on inventive step was most recently reviewed in Lockwood Security ProductsPty Ltd v Doric Products Pty Ltd [2007] HCA 21. The general principles involved were set out at [52] as follows:
“… as a basic premise, obviousness and inventiveness are antitheses and the question is always “is the step taken over the prior art an ‘obvious step’ of an ‘inventive step’”? An inventive step is often an issue “borne out by the evidence of the experts”. A “scintilla of invention” remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be “some difficulty overcome, some barrier crossed”. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which “any fool” could devise. It also accords with the requirement in the United States that for an invention to be “non-obvious” it must be “beyond the skill of the calling”.” (references omitted)
71. Moreover, where, as in the present case, the question of inventiveness arises in respect of an invention involving a combination of features, it is the inventiveness of the combination as a whole that must be examined; the “inventiveness of particular integers is irrelevant to the inventiveness of a combination of them (Lockwood vDoric [2004] HCA 58 at [78]).
The person skilled in the relevant art
72. The question of inventiveness is to be determined through the eyes of the person skilled in the relevant art.
73. As observed in Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242, the person skilled in the art is “likely to have a practical interest in the subject matter of [the] invention”. The authorities also recognise that while the skilled person against whose efforts the claimed invention is to be tested may be assumed to be well-versed in the relevant art, such a person must be taken to be non-inventive (see, for example, Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Pty Ltd 144 CLR 253 at 293).
74. There was general agreement between the parties that the person skilled in the relevant art is in the present case a naval architect. Dr Armstrong and Messrs Hercus, Elms and Gee are all experts of this kind.
Common general knowledge
75. Common general knowledge consists of the background knowledge and experience that is available to all in the relevant art (Minnesota at 292).
76. Mr Ward submitted that the evidence as a whole confirms that the common general knowledge in Australia at the priority date included trimaran technology as well as the use of lifting foils in a variety of marine vessels including mono-hulls and catamarans. Mr Macaw did not put a contrary view.
77. Mr Ward further submitted that the evidence points to the Hercus paper having also entered the body of common general knowledge as it had been widely read among those engaged in the relevant art. While the widespread circulation of a document does not necessarily establish that it had assimilated into common general knowledge (General Electric Co’s Application 53 RPC 221 at 250), I note from Dr Armstrong’s uncontested evidence that Mr Hercus was regarded “both in Australia and on the world scene as a leading light in this technology” and that given his “pre-eminence at the time I have little doubt that in the circumstances his paper would have been very closely read by virtually all the skilled persons in this industry”. It is clear that each of the four declarants identified above was well aware of the Hercus paper.
78. I therefore accept that the Hercus paper can be properly regarded as part of the pool of knowledge of those in the art at the priority date.
79. Austal do not contend that any of the other documents referred to in evidence can be treated as common general knowledge.
80. Mr Macaw countered that if the Hercus paper formed part of the common general knowledge, so also does the failure to practically implement the Trifoil concept. That may be so, but I am not convinced that the lack of commercial success of the Trifoil concept would likely induce the skilled person to discount the Hercus paper as a reliable source of information to which they would refer as a matter of course. I observe here that despite its theoretical nature, the Hercus paper nevertheless clearly proposes the use of lifting foils in association with a trimaran and as such leads by direction someway towards the claimed invention.
81. However, the standing of the Hercus paper as common general knowledge does not assist Austal. Even if it is accepted that the Hercus paper discloses outer hulls that extend forward of the LCF of the central hull as alleged by Dr Armstrong, it still differs from the claimed invention in that the outer hulls are said to just touch the water surface when the Trifoil is moving at speed. As discussed earlier, this does not equate to at least partial immersion of the outer hulls.
82. Mr Gee and (surprisingly) Mr Elms have attempted to address this shortfall in respectively alleging that “[w]hether you lift the two [outer hulls] completely out of the water, or whether you leave all three hulls in the water, both options are very obvious steps from the body of knowledge on trimarans and lifting surfaces” and “it would indeed be routine to consider either option in design”. I consider this to be mere conjecture.
83. The evidence overall demonstrates that as a matter of common practice it is fundamental to any vessel design exercise to take account of a suite of sometimes competing design choices depending on operating requirements. For foil assisted vessels including fast ferries, lift and buoyant forces must be balanced to ensure the sea-keeping characteristics of the vessel. Exhibits RCH-4 and AE2 are illustrative of the diverse range of variables known to the skilled person. Specifically, the evidence establishes that the dynamic lift provided by foils to a vessel at speed was well understood in the art as was the material effect on vessel performance of the amount of lift generated. It was also commonly known to combine lifting foils with mono-hull and hybrid hull vessels, but that body of knowledge did not, on the evidence, extend beyond the use of foils to lift the mono-hull or the outer hybrid hulls clear of the water at speed. There is certainly no suggestion in the evidence that it was commonplace to fit a multi-hull vessel, and particularly a trimaran, with foils to develop lift yet retain all hulls in the water even at speed. Thus I cannot see how this approach would naturally suggest itself as a design option to the skilled person as implied by Messrs Gee and Elms. Indeed, their evidence on this point is highly suggestive of the misuse of hindsight which has been criticised by the courts on many occasions (see, for example, Minnesota at 293).
84. Accordingly, I find that the claimed invention involves an inventive step in the light of common general knowledge alone.
85. This leaves me to consider whether the position is changed when the common general knowledge is considered together with the prior art documents on which Austal have placed reliance.
Prior art information
86. Aside from the Hercus paper which I have already dealt with, the only other documents specifically referred to by Mr Ward under this ground were AU patent specification 737098 (the Vaton specification) and US patent specification 5529009 (the Faury specification). Both documents relate to trimarans.
87. The Vaton specification was published after the priority date of the present application and so does not constitute prior art for the purpose of inventiveness.
88. Mr Macaw argued that there is no evidence to show that the Faury specification could reasonably be expected to have been ascertained by the person skilled in the art. In Commissioner ofPatents v Emperor Sports Pty Ltd [2006] FCAFC 26 at [30], the full Federal Court treated “ascertained” as meaning “find”. The court also said that in many areas it may be assumed that the relevantly skilled person would be familiar with professional journals or other technical information. Unless an inference could be drawn, evidence would generally be required about what that person may reasonably be expected to have done.
89. The only evidence on this point comes from Messrs Gee and Elms. Mr Gee deposes:
“We [viz. his firm of naval architects] used to read all the publications that cam out on fast vessels … These publications were circulated to all our senior people who were encouraged to read them since they related to our bread and butter, fast vessels and innovation. We were not as thorough in reading patent literature … and the only time we looked at patents was if we felt we had something that might be patentable and we would then ask our patent agent in Britain to conduct a search. This was not something we did on a regular basis.”
Mr Elms also confirms the limited extent to which patent literature is consulted by naval architects.
90. I find this somewhat surprising as the research activity evident in the fast-ferry industry suggests that it could be viewed as meeting the description of a “high technology area” spoken of in Emperor Sports at [32]. Nevertheless, I am bound by whatever evidence is before me. Based on the evidence from Messrs Gee and Elms, I am unable to conclude that the skilled person could be reasonably expected to have routinely undertaken a search of patent literature, or was even acquainted with the Faury specification at the priority date.
91. Consequently, I find that the Faury specification is not reasonably ascertainable in the sense required by section 7(3).
92. I therefore dismiss this ground of opposition.
Manner of manufacture
93. Although raised in the statement of grounds and particulars, this ground was not pursued at the hearing. Nevertheless, in NV PhilipsGloelampenfabrieken v Mirabella International Pty Ltd 32 IPR 449, the High Court concluded that the words “a patentable invention” in section 18(1) retain a threshold requirement that the alleged invention be a manner of manufacture. The court also held that this threshold requirement will, notwithstanding an assertion of newness, remain unsatisfied if it is apparent on the face of the specification that the subject matter of the claimed invention is, by reason of the absence of the necessary quality of inventiveness, not a manner of new manufacture.
94. In the present case there is nothing on the face of the specification to suggest that the threshold requirement of inventiveness has not been met.
95. I consequently dismiss this ground of opposition.
CONCLUSION
96. I have found that the opposition does not succeed under any of the grounds relied upon.
COSTS
97. I see no reason to depart from the usual practice that costs follow the event and, accordingly, I award costs under schedule 8 against Austal.
O L Haggar
Delegate of the Commissioner of Patents
24 May 2010
Patent attorneys for the applicant: A Tatlock & Associates, Melbourne
Patent attorneys for the opponent: Griffith Hack, Melbourne
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