Austgen Biojet Holdings Pty Ltd v Mervyn C Goronszy
[1995] APO 37
•28 July 1995
official notice
decision of a delegate of the commissioner of patents
Application : No. 560510 in the name of AUSTGEN BIOJET HOLDINGS PTY LTD
Title: Effluent Treatment
Action: Opposition by MERVYN C GORONSZY under Section 59 of the Patents Act 1952
Decision: Issued .
Abstract: Opposition confined to the ground of obtaining
In terms of the requirements which must be satisfied in an obtaining action:
- the invention allegedly obtained found
to be the subject of the invention
claimed by the opposed application
- the opponent found to have made a
contribution which beneficially affected
the invention, thus establishing a joint
inventor role
- the opponent found to have contributed
to the final conception of the invention
before the relevant date
- the invention consequently found to have
been obtained in contravention of
the opponent's rights
Remedy previously available under sec 60(3) of the 1952 Act to a successful opponent in an obtaining action effectively preserved for a similar action involving a transitional application by sec 33(1) of the 1990 Act
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 560510 by AUSTGEN BIOJET HOLDINGS PTY LTD and opposition by MERVYN C GORONSZY under Section 59 of the Patents Act 1952
background
Patent application 560510 was lodged on 22 September 1981 by Stephen George Burch Jones and Arthur David Brown as a divisional application under sec 51 of the Patents Act 1952 of standard application 51383/79 (now lapsed) and provisional application PE 5674. Parent application 51383/79 in turn claims priority from provisional applications PD 7708 and PD 6206 lodged on 16 February 1979 and 3 October 1978, respectively. The present application was advertised accepted on 9 April 1987 and, after several changes in the name of the applicant, is now proceeding in the name of Austgen Biojet Holdings Pty Ltd ("Austgen").
Mervyn C Goronszy ("Goronszy") lodged a notice of opposition to the application on 8 July 1987. The formal stages of evidence were completed by 28 June 1990 after numerous extensions of time. On 19 November 1990 Goronszy lodged an application under reg 59 of the 1952 Act for leave to adduce further evidence. Leave to adduce further evidence was granted on 10 January 1991. On 27 February 1991 Austgen requested leave to amend under sec 104 of the Patents Act 1990. The amendments were subsequently allowed on 7 October 1992. Austgen lodged another request for leave to amend on 8 May 1992. However these amendments were not advertised until 5 January 1995 and, consequently, have only recently proceeded to allowance.
On 10 June 1992 Austgen was granted leave to adduce further evidence under reg 59 of the 1952 Act. Service of the further evidence took place on 17 July 1992 following which Goronszy applied for and was granted an extension of time under sec 223 of the 1990 Act within which to lodge evidence in reply to the further evidence. Evidence in reply served on 17 September 1992 (but not lodged) was subsequently withdrawn due to concerns raised by Austgen as to its admissability.
A hearing to determine the opposition was originally set down for the Sydney hearing sessions to be held during March 1991. After a number of deferrals the hearing was eventually rescheduled for 15 and 16 December 1994 in Canberra. However on 25 November 1994 the patent attorney for Austgen, Dr W Pickering of F B Rice & Co, advised the office that the parties to the opposition had agreed to a decision in the matter on the written record without a hearing. This agreement was confirmed on the same day by the patent attorney for Goronszy, Mr P Heathcote of Shelston Waters.
Curiously, neither party relied upon written submissions.
On 25 January 1995 Goronszy lodged another application for leave to adduce further evidence. However, a declaration setting out the grounds on which the application was made and the nature of the further evidence as required by reg 59(3) had not been lodged at the time of writing.
As application 560510 was both lodged and advertised as accepted before the commencement of the Patents Act 1990, the opposition is proceeding under the provisions of the 1952 Act and regulations by reason of sec 234(3) of the 1990 Act and reg 23.3 of the Patents Regulations 1991.
the specification
The specification commences by stating that the invention relates to effluent treatment and has been devised to facilitate the design of an activated sludge waste water treatment tank.
The specification indicates that treatment of waste water has in the past been achieved by adding waste water to a treatment tank and subjecting the tank contents to an intermittent cycle of aeration, settlement and effluent decant. Continuous conventional systems are also in use. The specification then explains that it is particularly important with activated sludge systems to avoid undesirable mixing within the tank which results in adverse settling properties as well as to prevent "short-circuiting". This is a condition in which untreated waste water bypasses the aeration process and becomes entrained with treated effluent during the decanting phase of the cycle.
The specification ends with twelve claims, of which claims 1 and 10 are independent claims. Claim 1 reads as follows:
"1. A method of treating effluent utilizing activated sludge comprising passing said effluent continuously into a tank provided with at least one transverse baffle across the tank and dividing said tank into a first portion adjacent said inlet and a second portion remote from said inlet, the volume ratio of said first portion to said second portion being between 1:10 to 1:3, said baffle having at least one aperture therethrough, said first portion being of such dimensions so as to operate at high immediate F/M ratios of up to 5 units, the sludge having biological activity measured as oxygen uptake rate in units of milligrams of oxygen per gram of mixed liquor suspended solids per hour of up to 300 and a solids content of up to 72 kilograms of biological solids per square metre of vessel floor area and said tank operating at an overall F/M ratio of up to 0.4;
aerating and mixing said effluent, at least in said second portion of the tank so as to provide a sludge with good settlement properties;
ceasing said aeration and mixing while still allowing effluent to enter said tank through said inlet;
allowing sludge in said second portion to settle;
decanting treated effluent from said second portion of said tank at a point remote from said inlet;
and repeating said aerating, settling and decanting to treat further effluent."
Claim 10 differs from claim 1 only in that the tank is stipulated as having a length 3.5 to 6 times its width.
I note here by way of explanation that in known activated sludge systems waste water is brought into contact with a mixed microbial population in the form of a flocculent suspension. Colloidal and dissolved organic material is removed from the waste water by adsorption and agglomeration on to the microbial flocs. Micro-organisms feed on the adsorbed material and remove them, with regeneration of active flocs. This is an oxidation process which requires the artificial supply of dissolved oxygen by aeration systems operating at or near the surface of the mixed liquor. When the desired degree of treatment has been achieved, the flocculent microbial mass, known as the "sludge", is separated from the mixed liquor by gravity settling to enable the treated or clarified waste water to be decanted as effluent.
Furthermore, the sludge loading factor (F/M ratio) mentioned in the claims is a well known operating parameter and is based on the rate which organic nutrients enter the treatment tank (expressed in terms of oxygen demand) and the sludge mass held in the tank.
Although it is not immediately clear from the specification how the claimed invention favours the production of activated sludge which settles readily, it appears that dividing the treatment tank by a baffle into two separate portions having a volume ratio as specified in the claims imposes an instantaneous high "selective" organic loading especially during non-aeration (air-off) sequences. This serves to increase the relative organic waste to biomass (activated sludge) ratio in the first tank portion, facilitating maximum uptake of organic material by the activated sludge solids (flocs) with associated high biological activity. The solids are leaked or displaced from the first to the second tank portion to be depleted of adsorbed waste material during the aeration cycle, thus replenishing the adsorptive capacity of the solids for further use. This leaking or displacement is achieved by passing the liquid and solids under or through the baffle. The solids are subsequently returned to the first tank portion by a back flow action.
According to the specification, the present invention enables the treatment system to be so arranged that the solids coming in contact with the soluble organic waste material "see" a gradation of organic waste material concentration very similar to that which occurs in a plug flow (ideal) hydraulic regime. This factor helps mitigate against sludge bulking, a condition which results in adverse settling properties.
The specification further indicates that the baffle also serves as a physical barrier to prevent short-cicuiting and removal of untreated waste during the decanting operation.
GROUNDS OF OPPOSITION
The notice of opposition specifies all the grounds available under sec 59(1) of the 1952 Act. However I note that the voluminous evidentiary material lodged on behalf of both parties is concerned only with the opposition ground of obtaining.
the evidence
Evidence in support
The evidence in support consists of a statutory declaration by Mervyn Charles Goronszy, the opponent, accompanied by exhibits MCG-1 to MCG-19.
Mr Goronszy is broadly qualified and experienced in the field of waste water treatment. He worked with the NSW State Department of Public Works (the "PWD") between 1968 and 1975 before transferring to the NSW State Pollution Control Commission (the "SPCC"), and subsequently gained further relevant experience in the United States.
Evidence in answer
The evidence in answer consists of statutory declarations by:
. Stephen George Burch Jones with exhibit SGBJ.I
. Arthur David Brown with exhibit ADB.I
. Paul Joseph Cardinal with exhibits PJC.I to PJC.VII
. John P. Spitals with exhibit JPS.I
Mr Jones, one of the designated co-inventors in respect of the present application, states that he became involved in the waste water treatment industry circa 1975. Subsequent to this the company Biojet Industries Pty Ltd of which he was a director was formed. This company has since become Austgen Biojet International Pty Ltd (the Australian parent company of Austgen, the applicant in these proceedings).
Mr Brown, the other designated co-inventor in respect of the present application, is technically qualified and employed by Austgen Biojet International Pty Ltd. He states that he has been involved in the design and installation of waste water treatment systems since 1976.
Mr Cardinal has been the President and Chief Executive Officer of Austgen Biojet Waste Water Systems (a subsidiary company of Austgen Biojet International) since August 1983. He states that he has practised in the field of waste water treatment for 20 years, and is the inventor of a number of patents in this field.
Mr Spitals is a patent lawyer who during the period March 1983 to October 1986 was involved in the prosecution of USSN 471907 (the US equivalent of parent application 51383/79, which has since proceeded to grant as US 4468327) before the United States Patent Office on behalf of Austgen Biojet International.
Evidence in reply
The evidence in reply consists of statutory declarations by:
. Takashi Asano with exhibits TA-1 and TA-2
. Raul Julio Olavarria
. Kevin Tomilson
. Enrico Evaristo Piccioli with exhibits EP-1 to EP-5
. Patrick Potter
. Mervyn Charles Goronszy with exhibits MG-1 to MG-78
. William Wesley Eckenfelder
. Stephen John Smith
. Reginald George Clarke with exhibits RC-1 to RC-12
The second Goronszy declaration comprises over one hundred pages and is accompanied by almost eighty exhibits.
Goronszy reintroduces various points made by the other declarants in their evidence in reply, and provides (in some instances, unnecessarily pedantic) counter argument to the evidence in answer, including submissions in response to what Goronszy alleges are attempts by Jones and Brown to "trivialize the invention". These aspects of Goronszy's evidence do not in my opinion make any further advancement to the material already presented. Goronszy also discusses evidentiary material lodged in parallel opposition proceedings and which is nowhere alluded to in any of the previous evidence lodged in respect of the present opposition. I therefore do not consider his discussion of this material to be strictly evidence in reply.
Further evidence (Austgen)
The further evidence lodged on behalf of Austgen consists of statutory declarations by:
. Stephen George Burch Jones
. Paul Joseph Cardinal with exhibits PJC.I to PJC.VII
which primarily serve to contest the evidence in reply.
Further evidence (Goronszy)
The further evidence lodged on behalf of Goronszy consists of statutory declarations by:
. Kevin Scott Young
. Paul R Weast with exhibits PW-1 to PW-3
In my view Mr Young's declaration does not add anything of significance to these proceedings. Mr Weast is a handwriting expert who states that he was engaged by Goronszy to examine certain examples of handwriting. Although no explanation is given as to the relevance of Mr Weast's testimony, I note that a copy of his evidence is exhibited with Goronszy's evidence in reply. I will discuss this and other aspects of the evidentiary material before me later in this decision. I would add here though that in my opinion only the evidence of Weast is strictly impartial to the parties.
overview of the dispute
Parties to the dispute
There are a number of individuals at the centre of the dispute; Jones, Brown, and Goronszy. The position of the parties can be simply summarised as:
. Goronszy argues that the present invention arose from his
research and design studies and was obtained from him by the
principals of Austgen Biojet, namely, Jones and Cardinal, with
the assistance of Brown
. Jones and Cardinal argue that the studies undertaken by
Goronszy were pursued on behalf of Austgen Biojet following
the development of the present invention by Jones and Brown
and, consequently, did not constitute joint inventorship
Following his transfer from the PWD to the SPCC, Goronszy enrolled for a Master of Engineering degree at the University of NSW which was later converted to a Doctorate of Philosophy. In 1983/84 he took leave of absence to accept a visiting faculty position at Vanderbilt University in the United States.
Goronszy and Jones confirm that they first met during 1975. According to Jones, Goronszy was at the time responsible in his position with the SPCC for approving plants for licence and their recommendation for approval to the regulatory authorities. Jones consequently liaised with Goronszy before formally applying for licence to build plants designed by Austgen Biojet.
Goronszy subsequently informed Jones of his enrolment at the University of NSW and asked whether Biojet Industries would be prepared to let him study a number of its plants during his Master of Engineering (and later PhD) canditature. Jones agreed to this request because he viewed such an association:
"to be of great benefit to Biojet Industries Pty Ltd as Goronszy was and is recognised as an expert in this field. I was hopeful that any publications produced by Goronszy examining Biojet Industry Pty Ltd's plants would help give creditability to the systems we were endeavouring to market ..."
In his evidence in support Goronszy describes the nature of this relationship as an association:
"whereby I provided Biojet Industries with waste water treatment facility designs based on ... activated sludge methodology, the technological development of which I had researched from 1969 to 1974."
He continues as follows:
"I took leave of absence ... in 1983 and 1984 during which time I continued and furthered my consulting association with the Biojet derived company(s). I actively terminated this consulting association in July of 1984, continued doing facets of my own developmental research and returned to Australia [from the United States] in December of 1984."
Jones claims that Goronszy's only role in his association with Biojet Industries was in the collection and evaluation of test results in conjunction with him, and that he did not make any inventive contribution in respect of the present invention.
Goronszy disputes this version of events and says that he conceived the present invention during his post-graduate design and research activities. He asserts that Jones' contribution to this work was "minimal and generally of a non-technical nature", and further states that to his knowledge "Brown never conducted any process related studies during the time of my involvement with him and with Jones."
Credibility of the parties
The case of Austgen depends critically upon the evidence of Jones and Brown who allege that they alone are the actual inventors of the invention in dispute. However, it is their evidence with which I have concerns regarding credibility.
Most if not all of the declarants who have provided evidence in reply are well qualified in the relevant field and have had dealings with Jones, Brown and Goronszy. All except Eckenfelder attest to the waste water treatment process design expertise of Goronszy, while seriously questioning the technical competence of Jones and Brown.
Exhibit MCG-4 to Goronszy's evidence in support is a copy of the Austgen Biojet International Inc Business Plan dated December 1983. On page XII of the Executive Summary Jones is introduced as company president having a "B.A. Econ (Lond)." However, Goronszy's reply evidence exhibits a copy of a letter dated 24 May 1989 from a Mr D MacDonald who was instructed by Goronszy to investigate the formal qualifications of Jones, which states that there "is no trace of Stephen George Burch Jones on the University of London's Master Index of students who have been awarded a degree by the university." In any event, I note that Jones' employment history is said to lie in the field of economics, which is in no way connected to the process design of waste water treatment systems.
Brown states that he began his career in 1943 as an apprentice marine engineer in Glasgow. He worked with Patrick Potter & Associates in New Zealand from 1966 to 1971 during which period he was "mainly involved in consulting work for the abattoir industry and became involved with waste-water treatment at this time." In 1971 he travelled to Australia to undertake further consulting work for Patrick Potter & Associates "including waste-water treatment", and in 1976 he became a director and shareholder of Biojet Industries Pty Ltd. Brown does not provide any precise details regarding the extent of his "involvement" with waste water treatment, however, I note from the evidence of Potter (who is the principal of Patrick Potter & Associates) that Brown:
" ... had mechanical engineering experience, but he had absolutely no chemical or biological process experience."
Jones and Brown both claim to have been engaged in the waste water treatment industry since the 1970's. However, apart from some veiled references to their "involvement" with the treatment plants installed at the Palms Caravan Park or marketed by Biojet Industries or a joint venture known as Transfield Biojet (discussed below), their evidence does not set out any formal training or background experience which would conclusively support a claim to expertise or innovative activity in the relevant field. In fact the weight of the evidence suggests that any familiarity Jones and Brown had gained of waste water treatment processes could be largely attributed to disclosures made to them by Goronszy.
By contrast, Goronszy is a qualified industrial chemist and chemical engineer. He served for a number of years with the PWD which pioneered the introduction of the single vessel intermittent process in Australia, and was involved in the initial design of the Bathurst and Port Macquarie plants (also discussed below) which have proven to be significant developments in the field of waste water treatment. He has also presented the results of studies undertaken by him at a number of international conferences, and indeed I note that many of the exhibits shown in evidence in these proceedings are based either on the technical papers presented by Goronszy or his research findings. I also note that even Jones acknowledges Goronszy as an expert in his field.
These considerations raise doubts about the credibility of the evidence of Jones and Brown, particularly insofar as it relates to their technical knowledge of the activated sludge process, and I weight such evidence accordingly.
Development of the activated sludge process
To appreciate the issues of this action, I think it appropriate to present a broad review of the development of the activated sludge process insofar as can be determined from the evidence before me.
By way of initial background, the activated sludge process removes biodegradable organic material in two distinct unit operations - biological oxidation followed by solids separation. In the conventional continuous process the aerobic biological reaction and solids settlement are carried out in two separate treatment tanks. With the intermittent process the two basic unit operations are again required but, as distinct from the continuous process, only a single tank is used and the unit operations are separated in time.
The initial activated sludge process as developed in 1914 was operated on a "fill and draw" or intermittent basis. This mode of operation involved a batch process whereby the tank was filled with sewage and the contents then aerated, settled and decanted. The flow of sewage to the tank was interrupted during the treatment cycle. Sludge was retained in the tank and provided the biomass for treatment of the next batch of sewage. However, it was subsequently found that continuous flow operation was desirable as a practical basis for commercial plants.
A problem arose with the operation of continuous activated sludge plants which was associated with the poor settlement properties of the activated sludge and became known in the art as sludge bulking. Early researchers linked the occurrence of long thread-like (filamentous) bacteria to bulking sludges, and through subsequent investigations recognised that the growth of these filamentous micro-organisms could be suppressed by providing a high waste strength profile using a plug flow hydraulic regime in the aeration tank. Further research led to the actual on-site use (see exhibit MG-3) of baffled aeration tanks to promote plug flow and improve sludge settleability.
Dr Pasveer of the Netherlands is generally credited with the renewal in interest in single vessel activated sludge treatment. The Pasveer system of treatment provided a closed loop shallow ditch or channel using fill and draw methodology to treat municipal waste water from small communities.
This system of treatment was first introduced into Australia by the PWD in 1967 (see exhibit RC1) for small scale municipal application. The Pasveer plants utilised a 6-hour operating cycle consisting of a number of discrete periods of aeration, settling and effluent withdrawal, and characterised by low organic loading levels and high sludge residence time, to produce a low rate of treatment. This so-called "extended aeration" variant was selected to improve plant response to fluctuating load conditions. Horizontally mounted rotors provided aeration and circulation of the liquid in the channel keeping the mixed liquor solids in suspension. The process produced an aerobically digested excess sludge suitable for discharge by a moving weir to a sludge lagoon for final treatment. A number of similar plants were subsequently constructed in NSW and design parameters remained basically unchanged.
Shallow vessel facilities operating in the fill and draw mode were reported to produce sludge with better settling characteristics than those operating continuously. However, some difficulty was experienced with using the channel system as an effective settling vessel, and observations showed that the channel contents remained in motion after cessation of the aeration sequence. It was later discovered that the residual momentum of the channel contents could be negated by reversing the aeration rotors at the end of the final aeration period. Reversal also had positive advantages for minimising short-circuiting of untreated sewage.
An alternative configuration, consisting of a deep rectangular tank (the so-called "Bathurst Box" or B4000 plant - see exhibit MCG-11), was commissioned in 1976 to serve larger populations. The rectangular tank system incorporated the same basic extended aeration criteria used for the shallow vessel configuration, and was found to produce similar results while offering economies of construction. The tank was equipped with a small deflector plate or "Clifford baffle" positioned to dissipate the energy of the incoming waste water, and used floating surface aerators to provide aeration and mixing of the tank contents.
Although the B4000 plant overcame some of the operating problems associated with the Pasveer channel plants, such as the incidence of algal growth, its relatively small liquid surface area substantially reduced the volume of treated effluent that could be decanted without drawing mixed influent from the inlet zone. Nevertheless, the B4000 became the standard design in NSW for treating domestic wastes for populations exceeding two thousand.
A noteworthy development of the concept of single vessel intermittent treatment was the successful operation of a larger capacity municipal treatment plant commissioned in 1979 at Port Macquarie (see exhibits RC3 and RC4) in which aeration was provided by a number of floating aerators separated by surface baffles to restrict surface movement of the tank contents and thereby minimise short-circuiting. The Port Macquarie plant was reported to generally produce a bulking sludge which prevented effective sludge settling.
The installation of several fully operational activated sludge waste water treatment plants made it possible to study the process reactions which occur in this type of plant. Notably, the biological activity of mixed liquor as measured by the rate of oxygen uptake (OUR) was observed to be relatively high at the inlet sections of these plants. During continued aeration this high rate approached a substantially reduced value, and the intermittent channel and rectangular tank systems were as a consequence said to reasonably approximate the ideal hydraulic conditions existing in a plug flow system.
A number of units operating with submerged aeration devices were developed as proprietary plant and used to treat municipal and industrial (e.g. dairy plant - see exhibit MCG-6) waste waters. The basic principles of design and operation for these plants were similar to other rectangular tank facilities except that influent entered an inlet reaction zone delineated by a baffle which extended across the width of the tank. Plant performance measurements indicated that the rate of oxygen uptake in this inlet reaction zone was significantly higher than that observed either in non-baffled plants or the downstream (relative to the baffle) reaction zone of the baffled plant. The instantaneous F/M ratio within the inlet zone was also substantially higher. The relatively high initial organic substrate concentration which existed in the inlet zone was thought to be connected with the promotion of a biological sludge of good settlement characteristics (see exhibits MCG-6 and MG-67).
I understand from the evidence that these proprietary plants were named around the process used - intermittent cycle extended aeration system - and were known commercially by the acronym ICEAS. There is widespread agreement among the declarants identified above that the present invention relates to such a system.
Development of the ICEAS process
Goronszy states that in late 1968 he became involved through the PWD with process studies of Pasveer channel installations, and continued these studies until his transfer to the SPCC.
He further states at para 21 of his evidence in support:
"After transferring from the Department [of Public Works] I continued my research involvement with ... activated sludge treatment methodology in general. This development and research work was solely at my direction and was carried out by myself. Some assistance was obtained in getting analytical results of the usual parameters involved with this type of work. All analytical data concerning oxygen uptake rate, specific oxygen uptake rate, solids settleability and mixed liquor suspended solids data, associated with this work were conducted by myself. Other field analyses were conducted by myself wherever possible ... My research activities were targeted at my gaining a higher degree."
and continues as follows in his reply evidence:
"Facilities that were used for my research included:
Jamberoo Dairy Cooperative (1 rectangular basin with two volumes)
Mt. Victoria (1 loop basin)
Dural Caravan Park (1 rectangular basin with two volumes)
Palms Caravan Park (1 rectangular basin)
Lisarow-Sarah Lee (2 loop basins)Valley Heights (1 loop basin)
Culcairn (1 loop basin)Glenbrook (2 rectangular basins each with three volumes)
Ashford (1 loop basin)
Bathurst (1 rectangular basin)
Alstonville (3 loop basins, 2 operating)
Wyong (3-7 loop basins)
Erina Squash Courts (1 rectangular basin initially with one volume and later with two volumes)
105. The facilities known as Palms Caravan Park, Erina Squash Courts, Jamberoo Dairy Cooperative and Dural Caravan Park were sized and configured by myself. At no time did I ask Jones (or Biojet Industries Pty Ltd) for permission to study these facilities. I undertook the task of obtaining certain performance data in respect of these novel facilities to substantiate my design premises.
106. Access to certain facilities was formalized by the University of New South Wales in order to avoid conflicts with statutory responsibilities associated with my employment [with the State Pollution Control Commission] ... Data collected by myself ... during my employment with the Public Works Department was also officially released for my use.
......
113. ... These studies were not restricted to facilities incorporating my designs that were marketed through Biojet Industries Pty Limited ... In fact, of the 12 plants I was actively conducting research on, only 3 plants, at that time, had been marketed by Biojet Industries Pty Limited ..."
I note here that the above facilities are based on Pasveer channel ("loop") and rectangular tank ("basin") configurations, including the facility identified previously in this decision as the Bathurst Box or B4000 plant, and that the research studies conducted by Goronszy involved rectangular tanks provided with one or more baffles which effectively divided the tank into a number of connected reaction zones or "volumes". Some examples of Goronszy's research findings are shown in exhibits MG-7, MG-8 and MG-46. Goronszy also states that between 1977 and 1982 he wrote a number of technical papers (some in conjunction with his university supervisor, David Barnes) based on these findings which were presented at various international conferences. Two of these are marked as exhibits MCG-11 and MCG-12.
Goronszy's association with Biojet Industries began after meeting Jones and Brown who, in conjunction with declarant Potter, had attempted to develop a package waste water treatment plant at the Palm Caravan Park. In his reply evidence Potter states that he was informed by Goronszy that the package plant was not acceptable to the SPCC (this is confirmed in the evidence of Piccioli).
Potter goes on to say:
"7) ... I had several discussions with Goronszy and Jones during which Goronszy propounded his novel design for the treatment of waste-water in a single tank by means of intermittent aeration, settling of the sludge, and decanting of the clear water.
8) As a result of those discussions, an association developed between myself, Brown, Jones and Goronszy. It was decided to proceed with the construction at the Palm's Caravan Park of a proto-type of Goronszy's novel single tank treatment system. I undertook to design the mechanics and structure of the system in New Zealand to parameters supplied to me by Goronszy. All biological aspects of the design were undertaken completely by Goronszy."
In para 8 of his support evidence Goronszy explains that this design utilised Pasveer channel techniques in a rectangular tank configuration, but was subject to short-circuiting. He then states that subsequent designs included a transverse baffle which separated the tank into two reactor zones. Where high strength wastes were involved, a second baffle was introduced to provide an additional reactor zone. According to para 40 of Goronszy's reply evidence, the "inclusion of the baffle to form two volume sections was implemented at my direction to Jones (circa late 1977), who then got Brown to physically have it installed at the Erina facility (circa early 1978)". The baffled facilities used diffused aeration for the first time and were marketed by Austgen under the trade mark ICEAS (see exhibit PJC.VI).
It is not initially clear from Goronszy's evidence why he elected to incorporate a transverse baffle in subsequent designs to counter short-circuiting - a feature described in his evidence in support as one "which differentiated these facilities from the practices adopted by the Department of Public Works." Paragraph 24 of his supporting evidence states:
" ... Rectangular configured settling basins are designed to prevent or limit short-circuiting caused by thermal stratification or velocity effects caused by inflow. Various types of baffle designs have been used to avert or minimise these effects. Transverse baffles of the type used in the ICEAS development are one of the ways in which inlet flow (velocity) is dissipated across the basin. It is also one of the ways by which thermal effects are minimised. The novelty remains consistent with the claims that the placement of a baffle, strategically located, is to enable continuous inflow to be accepted in a variable volume reactor system. The placement of a baffle in a [conventional] constant volume basin to avoid short-circuiting effects described above is not by itself novel; it is commonplace."
The reply evidence of Goronszy suggests that the installation of a baffle as a means of preventing short-circuiting in an activated sludge treatment plant was itself widely practised in the industry, but goes on to explain at para 50 that what was not known:
" ... was the realisation that a number of favourable specific reaction conditions could be cognated into the operation of a fed-batch reactor to provide a total system that was simple to construct and operate. Described in non-technical terms I found that combining the unit operations of overall biological reaction with
solids-liquid separation in a single basin with the proper inlet configuration (sectioned [baffled] volume) to provide specific ... reactions favourable to the overall process was indeed an advancement of the state-of-the-art."
Goronszy's version of events regarding his research activities is corroborated to some extent by the evidence of Tomlinson and Clarke.
Tomlinson says he met Goronszy in 1970 when the latter was employed by the PWD, and has maintained professional contact with him since that time.
According to Tomlinson, he frequently visited the Mt Victoria plant with Goronszy after March 1976 in relation to his collection and analysis of comparative performance and other operating data regarding various aerated and non-aerated mixing cycles of operation he was testing for biological nutrient removal. Tomlinson also assisted Goronszy with a number of his plant studies and the laboratory analysis of a number of process performance studies at the Glenbrook plant. These studies extended over a period from early 1978 to mid 1981.
Tomlinson explains that Jones and Brown became known to him through a diffuser nozzle testing exercise he had arranged at the Glenbrook plant. However he states that "at no time did Stephen Jones or Arthur Brown become physically involved with sampling, analyses, data recording or measurement during the investigation process research and development work I have referred to."
Clarke was employed by the PWD until 1984, having spent the last 20 years of his career as a sewage treatment specialist. He worked with Goronszy from 1968 until his (Goronszy's) transfer to the SPCC, and states that during that time he was familiar with Goronszy's "day-to-day work, the experimental programs he was involved with and the experimental data that were reported on." The numerous projects listed by Clarke include studies based on Pasveer channel and rectangular tank configurations, examples of which are described in exhibits RC-1 to RC-4 and include the Bathurst Box and Port Macquarie plants.
Clarke then proceeds as follows:
"9. I maintained a close professional liaison with Goronszy following his transfer to the State Pollution Control Commission. I was aware of his continued interest with activated sludge treatment and studies that he conducted in his development of the "baffle-walled" ... ICEAS. I was aware that he was proceeding to a higher degree at the University of New South Wales, through his studies on activated sludge treatment in continuously fed intermittently aerated fill-and-draw systems, racetrack and rectangular tank configurations, with and without an inlet baffle ... I knew him to be undertaking laboratory studies as well as conducting studies at and using data from a number of full-scale plants ..."
Clarke indicates that these plants included the Glenbrook and Mt Victoria facilities (referred to in the Tomlinson declaration), the Jamberoo Dairy Coooperative, and the Palms Caravan Park (referred to in the Potter declaration). However, it is not clear whether Clarke was actually present when Goronszy conducted any of his field studies.
Jones rejects Goronszy's claim that the ICEAS process was conceived by him. He states in para 22 of his evidence in answer:
"Arthur Brown was responsible for the idea of providing a baffle within the reaction tank and I was responsible for the idea of the positioning of this baffle such that the reaction tank is divided into a first portion adjacent the inlet and a second portion remote from the inlet with the volume ratio of the first portion to the second portion being between 1:10 to 1:3."
and continues in his further evidence as follows:
"7. ... The determination of this ratio ... was done on a purely empirical basis and stemmed from my experience with a treatment plant at the Jamberoo Co-Operative Dairy and the plant at Erina Squash Centre. The plant at Jamberoo ... included one baffle dividing the tank into an inlet zone and an outlet zone, the volume ratio of the two zones being 1:11.
From the experience at the Jamberoo Co-Operative Dairy it was clear that a volume ratio of 1:11 was insufficient. It was also clear to me that the size of the outlet zone could not be too small or else difficulty would be experienced during the decant phase. From this reasoning I determined that the baffle should be placed so as to divide the reaction tank into two zones having a volume ratio between about 1:10 to 1:3."
I note here that Jones' evidence regarding the selection of volume ratios is uncorroborated, even by Brown. I additionally note that Jones has made no attempt to discredit the statements made by Tomlinson and Smith concerning their knowledge of Goronszy's independent research activities.
Brown describes his contribution to ICEAS in the following terms:
"9. In some of the waste-water treatment systems ... that I was involved with by Biojet Industries in the mid-70's, there was a problem of "short-circuiting". ... The influent connection of the treatment tank initially had what is known as a "Clifford Baffle" at its discharge into the tank to dissipate the influent velocity [see exhibit ADB.1].
10. Whilst the use of such a Clifford Baffle was of some benefit in preventing short circuiting, experiments involving the addition of dye to the influent showed that short cicuiting was still a problem.
11. In late 1977, early 1978 I decided that it may be possible to overcome this problem of short circuiting by providing within the reaction tank a partition wall which in effect divided the influent region of the tank from the decant region of the tank while still allowing fluid contact between the two regions. The original purpose of this partition was to avoid any problems of short circuiting and was in effect to provide a region of the tank which would dissipate any energy of the influent moving into the tank. Accordingly, this influent zone was initially known as a "stilling chamber". This region is now referred to as the react zone.
......
13. ... Goronszy played no part in the decision to provide such a baffle in the treatment tank."
This evidence is corroborated by Jones. However, in para 111 of his reply evidence, Goronszy asserts that the dye tracer tests referred to by Brown were not actually conducted by him, and that:
"I demonstrated the existence of short-circuiting among other things to Jones at the Palms Caravan Park facility."
Piccioli has been employed with Transfield Pty Ltd since 1973. He was introduced to Jones with a view to exploring the possibility of a commercial venture in the waste water treatment and allied industries with Biojet Industries. During subsequent meetings with Jones, Piccioli says he found:
"6. ... that Jones was involved in a caravan park development at Avaco Beach (near Gosford) [the Palm Caravan Park]. I also found that Jones became involved with biological wastewater treatment as an end user during the execution of that venture ... Jones also recounted this experience as a failure, in that the plant that was installed had to be replaced in order to meet approval conditions by the State Pollution Control Commission.
7. As a result of my discussions with Jones, I was aware that Mervyn Goronszy provided the know-how and process criteria for that replacement plant."
A plant of the actual type marketed by Biojet Industries was installed and successfully operated by Transfield circa 1977 in Perisher Valley. In 1978 an initial joint venture (called Transfield Biojet - see also the Olavarria declaration) was formed. The joint venture was involved with the design, marketing and installation of a number of waste water treatment plants, including ICEAS facilities. Exhibit EP-5 is a Transfield Biojet brochure which includes a diagram of the ICEAS system marketed by the joint venture (and which I note does not include a baffled inlet).
Piccioli refers to the joint venture as follows:
"17. After the first project it was abundantly clear to me, and was admitted by Stephen Jones and Arthur Brown, that the technical requirements for carrying out even the small installations far exceeded their capacity to deliver.
18. I therefore renegotiated the joint venture with Transfield taking full responsibility for all matters with the exception of process design, which was carried out by Mervyn Goronszy through Stephen Jones ...
......
22. I attest that Stephen Jones continued the marketing operations of the Transfield Biojet venture for the ... (ICEAS) ... and obtained the process design through Mervyn Goronszy as Stephen Jones was neither qualified, nor pretended or stated to be, in any level of process or design engineering."
Jones concedes in his further evidence that Biojet Industries was involved only in the construction of small waste water treatment plants prior to its association with Transfield, and so did not have the "project organisation and planning capacity" for the larger scale plants being contracted for by the joint venture. However, he makes no comment at all about his own level of relevant technical expertise.
Olavarria was employed by Transfield Pty Ltd during the period of operation of the joint venture. Olavarria states that he became personally acquainted with Jones and Brown through his business dealings for Transfield. He further states as follows:
"16. In the early weeks of the joint venture I became aware that Mervyn Charles Goronszy (hereinafter Goronszy) had a key role in process matters and their execution.
17. On numerous occasions when I had to confront Jones on technical and related matters that needed immediate resolution, for contractual reasons, he sought the necessary answers from Goronszy. Without this input the venture could not have functioned.
22. ... Never during that time [of the joint venture operation] did Jones or Brown discuss or comment on scientific experimental work they might have been involved with. On the other hand Goronszy frequently made such discussion during my meetings with him, both in and out of the presence of Jones."
In response Jones states that he frequently asked Goronszy to review the process criteria specified for plants designed by Jones and Brown on behalf of Biojet Industries, since he viewed this consultation "as being of particular value given Goronszy's knowledge in the field and his position with the government body [the SPCC] who would subsequently be requested to approve the plant."
decision
In accordance with the decision in Massey v Noack, 11 IPR 632, to prove obtaining, it is necessary to establish:
a) What the invention is that has allegedly been obtained;
b) Whose invention it was when the alleged obtaining occurred;
c) That the claim defines, or includes within its ambit, the
invention allegedly obtained; and
d) That the applicant actually obtained the invention from the
opponent, of from a person of whom the opponent is the legal
representative, assignee, agent or attorney, prior to the
priority date of the claim.
I will now consider the present case against each of these requirements in turn.
The allegedly obtained invention
There is some significant disagreement between the parties regarding the exact nature of the invention in dispute. As asserted in the further evidence of Jones:
"4. ... The primary features of this invention are the use of a tank provided with at least one transverse baffle across the tank and that the baffle divides the tank into a first portion adjacent the inlet and a second portion remote from the inlet, the volume ratio of the first portion to the second portion being in the range 1:10 to 1:3. In its simplest form the invention involves (1) providing a baffle in the tank, and (2) correctly positioning this baffle to provide the required volume ratio."
The views of Goronszy on this matter are stated in his reply evidence as follows:
"43. ... Problems with sludge settling which are attributable to the growth of filamentous microorganisms, generally result in the malfunctioning of an activated sludge treatment facility whereby effluent discharge limitations are not met. Causation of continued filamentous growth conditions is a well recognised problem which can occur in any activated sludge facility if certain reaction conditions, relative to a number of specific microorganisms that can be present in the biomass, are permitted to occur. The dynamics of microbiological growth and the population distribution of certain filamentous microorganisms can be regulated through definable reaction circumstances.
44. Compartmentalization of a fed-batch reactor essentially provides certain specific reaction conditions for the promotion of an essentially non-filamentous biomass. The so-called "baffle wall" for achieving these reaction conditions is but one means of assisting with the achievement of this objective. The inventiveness is not of using a physical baffle, but of devising the reaction circumstances that are necessary to promote essentially non-filamentous biological growth in a simple and practical manner ... The function of operating in a variable volume mode makes criteria specified, or drawn from constant volume operation, inappropriate. Hence, the necessity, when describing variable volume operation, to use a wide range of operating conditions to specify workable and definable reaction circumstances and to redefine certain parameters that do not accord with convention.
45. ... The placement of a baffle wall ... does not necessarily prevent influent elements received into the reactor basin during a non-aeration sequence from reaching the effluent end of the basin and being subsequently discharged ... Recognizing that this "bypass" form of flow will occur, it is a matter of design to lessen the impact that this definable volume of flow can have on effluent quality.
......
47. The key elements ... are hence process criteria whereby appropriate reaction or process conditions are described which can satisfy overall treatment objectives and result in the growth of essentially non-filamentous microorganisms."
These favourable reaction conditions are, according to Goronszy, defined by certain numerical process criteria. He further states in para 98 that the placement of a baffle in order to "prevent short-circuiting" was well known in the art as early as 1932, and that the volumetric ratios described by Jones are meaningless in the absence of appropriate reaction conditions. None of the assertions made by Goronszy regarding the "true" nature of the invention in dispute are seriously contested by the further evidence of Jones.
It appears to me from the evidence in total that the compartmentisation of treatment tanks by the use of transverse baffles was previously known only in respect of continuous activated sludge plants, and not the intermittent activated sludge process. I note in particular the following statement in para 24 of Goronszy's evidence in support:
"To the best of my knowledge the transverse baffle configuration has not been used in variable volume [intermittent] reactor basins to fulfill the short-circuiting prevention role under inflow conditions."
However, the key issue in these proceedings is not one of inventiveness, but entitlement to inventor status. Furthermore, it seems to me that when looking at the question of entitlement, I should have regard to the invention as a whole as well as its component parts. I note in this connection that the "primary features" of the invention according to Jones are disclosed by the present application only in conjunction with the numerical process criteria to which Goronszy has referred. Consequently, the allegedly obtained invention which I will consider in respect of the requirements set out in Massey v Noack, supra, is a method of treating waste water by operating a compartmentalised continuously fed, intermittently aerated and decanted sludge system under specific process conditions.
Regarding the third requirement set out above, I am satisfied that the claims of the present application include within their scope this allegedly obtained invention.
Who possessed the allegedly obtained invention
Apart from those already discussed in this decision, there are a number of additional matters raised in the evidence regarding who was in possession of the invention at the time the alleged obtaining occurred. The most relevant of these matters are:
The Atlanta Meeting
In his evidence in answer Cardinal states that during September 1983 he learnt of the prosecution of USSN 471907 (now US 4468327 which corresponds to parent application 51383/79). To expedite the matter, Cardinal arranged a meeting on 6 October in Atlanta, United States, with Spitals (his company's US patent attorney), Jones and Goronszy. He proceeds as follows in para 7:
"During this meeting John Spitals carefully reviewed the role of the inventor and the circumstances under which co-inventors could be named as contributors to the patent. At the end of this discussion John Spitals directly asked Goronszy if he was in fact an inventor of the process as described and claimed in the U.S. application. Goronszy replied "no Stephen Jones is the inventor". Goronszy indicated that his role had been in the collection of data in conjunction with Stephen Jones and in assessing the advantages gained by the patented process."
Cardinal refers to a copy of his diary record of this meeting (attached as exhibit PJCI to his further evidence) which contains the entry "Merve said Jones & Brown inventors." In the absence of contrary evidence, I am left to accept this diary exhibit as providing prima facie support for Cardinal's recollection of the Atlanta meeting. An essentially identical account of the meeting is presented in para 19 of Jones' evidence in answer. Cardinal further indicates in para 12 that:
"Despite my involvement with Goronszy during the U.S. patent examination period, Goronszy never asked to be named as inventor, nor did he protest that others had stolen his invention as he now states."
Spitals confirms his attendance at this meeting, and states that:
" ... I asked Mervyn Charles Goronszy if he believed himself to be in fact an inventor of the process as described and claimed in U.S. Patent No. 4,468,327 or any aspect thereof. To this question Mervyn Charles Goronszy replied that he was not an inventor with regard to any aspect of the process. Rather, Mr. Goronszy indicated that his role had been in the construction of systems for exploitation of the invention, in the collection of data in conjunction with Stephen Jones, and in assessing the advantages provided by the patented process."
I think the above reference by Spitals to US 4468327 is misleading since USSN 471907 had not proceeded to grant at the time of the meeting in Atlanta. Furthermore, although Spitals refers to the "importance of correct inventorship designation to the validity of a U.S. patent", he does not explain why inventorship was discussed with Goronszy at the meeting given that only Jones and Brown were recorded as inventors by USSN 471907.
Eckenfelder states that he was present at the Atlanta meeting in his capacity as Chairman of the Board of Austgen Biojet Wastewater Treatment Systems. According to Eckenfelder, Goronszy provided input to the meeting by way of explanation of the method and significance of the invention disclosed by USSN 471907. It was then decided at the meeting, initially by Jones, that it was "only proper" that Goronszy be included as a co-inventor for the continued prosecution of the US application.
However, Cardinal and Spitals both fail to mention the presence of Eckenfelder at the meeting in Atlanta, while Jones in his further evidence (para 14) states that "Professor Eckenfelder was known to me as we were both on the Board of Austgen Biojet Waste Water Systems Inc. To the best of my recollection I cannot recall Professor Eckenfelder being at this meeting." Although this raises concerns regarding the standing of the evidence from Eckenfelder, I note that in para 2 of his further evidence Cardinal acknowledges that "Jones suggested that Goronszy be included as a co-inventor because of all the additional work that he had pursued on behalf of Biojet Engineering following the development of the plant operation improvement by Jones and ... Brown."
Goronszy challenges the events declared to above in para 140 of his evidence in reply where he says " ... I have not, before Jones, Cardinal, Spitals or anybody else, given false claim or denial to my role in the matter of the design, development and inventorship of the ICEAS, and related process technology."
He further states that it is evident from various exhibits to his reply evidence that he had been led by Jones to believe that his patent rights could be secured if they were held in trust by him (Jones). Exhibit MG-52 is a letter dated 5 March 1979 from Jones to Goronszy which relevantly states:
"1. ... Your shareholding will be held by me in trust until such time as you elect to register it in your own name or other such vehicle that may suit you.
......
3. You agree to assign to my name equal ownership in and income from all patents and other property rights in your ownership ... which relate to the treatment and purification of liquid wastes.
4. You agree to assign to me equal ownership in and income from any patents and property rights which you may originate, design, develop or participate in the origination, designing and developing of which relate to the treatment of liquid wastes."
However, it appears from the evidence (see exhibit MG-53 in particular) that Goronszy did not accede to the terms of this proposal. In any event, this approach was later shown (presumably by Spitals) to be prohibited by US law. Goronszy further states:
"153. When it became apparent that U.S. Patent law would not permit a "trust" circumstance to continue, it was necessary to rethink what had been presented to me as a sound arrangement.
The determination made at the 6 October meeting in Atlanta to nominate me as an inventor regarding the prosecution of the US patent application appeared to me to provide the replacement action that was necessary relative to securing my patent rights. In deference to the notion of asking to be included I accepted the fact that I was to be included ..."
and also
"139. Some time after the October meeting of 1983, I confronted Spitals by telephone as to the progress being made with the prosecution of U.S. Patent 4468327. I was advised that Austgen Biojet management had changed its mind and that a different approach was to be taken. This was not elaborated upon at that time."
Goronszy then refers to a letter dated 26 July 1984 from Cardinal (exhibit MG-47) which reads in part:
"As you are aware Jones and Brown, considered amending the original ICEAS disclosure to include you as a co-inventor in recognition of your contributions to the sampling and analysis programs conducted at the Biojet Jamberoo and Dural Car Park ICEAS plants in 1979/80. This work helped to support the Jones/Brown patent disclosure developed after their installation of the baffle at the Erina Squash Court plant in early 1978.
As Australian Counsel advised that your employment with the State Government would create a definite conflict of interest between the company and the state such consideration was discarded ..."
Goronszy claims that his research work in no way conflicted with his official duties with the NSW State Government, and in para 134 states that the above letter:
" ... was the first written acknowledgement to me that management decisions made at the 6 October 1983 meeting in Atlanta ... were to be reversed ... This letter does serve to show a considered inventorship role."
In my opinion the evidence of Goronszy about his communications with Jones prior to the meeting in Atlanta suggests that he may not have originally asserted an inventorship role with respect to USSN 471907 since he believed his patent rights would be looked after under the trust agreement proposed by Jones. This appears consistent with Goronszy's understanding that, as such an arrangement was prohibited under US law, he instead was to be included as an inventor during the continuing prosecution of USSN 471907. On the other hand, I have difficulty in understanding the conduct of Jones in suggesting the inclusion of Goronszy as a co-inventor if he (Goronszy) clearly had no inventorship role and had stated as much to the satisfaction of others present at the Atlanta meeting.
Furthermore, while the invention claimed by US 4468323 is identical to the present invention, there is no conclusive evidence before me to the effect that this relationship existed between USSN 471907 and the present invention when the meeting in Atlanta took place. I note in this regard that:
. although US 4468327 and parent application 51383/79, being the
parallel of USSN 471907, contain identical descriptions, the
claims of 51383/79 bear little resemblance to those of the
US patent
. the broad statement of invention set forth in at least
US 4468327 differs markedly from the claimed invention,
and in fact the baffle, the volume ratio of the tank
compartments, and the numerical process criteria which
characterise the invention claimed by US 4468327 are
briefly mentioned as subsidiary features only
. USSN 471907 is a continuation of a chain of previously filed
applications and thus, at the time of the Atlanta meeting
(which preceded the date of US 4468327 by some 10 months),
could have covered two or more inventions or at least a
number of different forms of a single "basic" invention
which was notionally carried over from the prior applications
which taken together leaves me in some doubt as to whether Goronszy's alleged admission of non-inventorship directly concerned the invention in dispute, or at best related to a component part thereof, e.g. the transverse baffle.
Goronszy next attempts to distinguish the present application from US 4468323 in that it makes provision for the return of biomass to the inlet zone of the treatment tank, and specifies this operation in terms of a net organic loading criteria for that zone. I have already indicated in this decison that US 4468323 is a family equivalent of parent application 51383/79. Thus, if Goronszy were correct in his assertion that the present application is "significantly different" to the US patent, the present application prima facie would not be entitled to divisional status. However, this is not an issue I have to decide. In any case, I consider Goronszy's assertion to be totally unfounded since the numerical process criteria which constitute a component part of the present invention are all disclosed by US 4468323.
Goronszy finally makes a number of accusations regarding attempts made by Jones through Cardinal to coerce Goronszy into "signing away" his patent rights to ICEAS. These accusations are in my opinion unsubstantiated but I am left to speculate why, after more than 6 months following the meeting in Atlanta, Cardinal sent Goronszy:
. a handwritten note (exhibit MG-57) which lists potential
advantages and disadvantages to Goronszy if the question of
his inventorship became subject to a court action; and
. affadavits on three separate occasions which inter alia
seek Goronszy's certification that the baffle wall
described by USSN 471907 was installed and invented by
Jones and Brown (exhibit MG-56)
given either version of the events alleged by the parties to have occurred at that meeting. Cardinal states in his further evidence that the latter documents referred to above were contract revisions which merely set out verbal agreements made previously with Goronszy This statement is not strictly supported by the covering letter to exhibit MG-56. Relevantly, however, there is no further evidence to suggest that such an agreement was formally concluded. I also note Goronszy's statement in para 126 of his reply evidence that
"At no time did I transfer any Deed of Assignment or other similar documentation to Jones or to his associated company interests."
The Business Plan
Page 103 of the Business Plan, supra, acknowledges Goronszy as co-inventor with Jones of ICEAS. Furthermore, at page 24 it is stated:
"Several staff members, particularly Mr Goronszy, are leading world authorities in their respective fields of municipal and industrial waste water treatment. Mr Goronszy is considered the major leading USA and world authority on ICEAS type sewage treatment plants."
According to Smith:
"17. I state that the Austgen Biojet ... Business Plan dated 12 December 1983, which was shown to myself by Jones and his staff, contained a statement that Goronszy was a co-inventor of ICEAS. At no time during the period 1983 to 1984 was this statement challenged or removed by Jones, Brown or Cardinal. That Business Plan was used extensively in Australia during that time."
In reponse Jones alleges that Goronszy was incorrectly named by the Business Plan, supra, as a co-inventor of ICEAS and was described as one of the leading world authorities on this type of system only in light of his detailed review of the system invented by himself (Jones) and Brown. This version of events is corroborated in the evidence in answer of Cardinal who, in his further evidence, exhibits an extract from the revised business plan for 1984/85 in which Goronszy is merely listed as a technical advisor.
The evidence of Jones or Cardinal does not explain how Goronszy came to be "incorrectly" named as a co-inventor of ICEAS which I find surprising given that the Business Plan, supra, was authored by Jones himself and proceeds the meeting in Atlanta at which Goronszy was nominated by Jones as a co-inventor of the ICEAS process disclosed by USSN 471907. Furthermore, the Business Plan, supra, states in para 3.211 that the ICEAS process was initially conceived in Australia in 1976. Exhibit MG-34 to Goronszy's evidence in reply is said (and this is not contested on behalf of Austgen) to be a copy of a letter from Jones to the SPCC which refers to the installation of the first ICEAS plant in Australia. That plant is identified as the replacement Palms Caravan Park package treatment facility (see the Potter declaration) which was installed in 1976. In para 21 of his further evidence Jones states:
" ... A replacement plant, based on the Bathurst Box and Pasveer channels, designed by ... Goronszy [and] myself ... was then installed."
which prima facie suggests that Goronszy was indeed a co-inventor of the original ICEAS process. I also note here the evidence of Piccioli which asserts that the ICEAS system was developed and designed by Goronszy on the admission of Jones. Olavarria makes a similar assertion based on doubts allegedly expressed by Cardinal regarding the entitlement of Jones and Brown to inventorship status. However, these assertions are refuted by Jones and Cardinal.
Cardinal additionally claims that the alteration to the revised business plan was made after the original "misstatement" was brought to his attention by Goronszy. This event is unsubstantiated, unless Cardinal is referring to discussions which allegedly took place at the Atlanta meeting. Even so, this would still not explain why the alteration was not effected until July of the following year as stated in para 8 of Cardinal's evidence in answer.
The evidence of Weast
Weast was engaged by Goronszy to examine a graph bearing various handwritten notations and compare this with a verified transcript of the handprinting on the graph that was prepared by Goronszy from dictation, and a folder containing pages of handprinting and handwriting all purported to have been produced by Goronszy. Weast expresses the professional opinion that these examples of handwriting were produced by the same person, viz. Goronszy.
Copies of the graph and pages of handwritten notes examined by Weast are exhibited with Goronszy's reply evidence. On page 33 Goronszy asserts that the graph is a reproduction of Figs 2 and 3 of parent application PE 5674 (Figs 10 and 11 of the present application being respectively a direct transcript of these figures), and that the notes constitute the data base collected by him to produce the figures in question.
In para 29 of his evidence in support Goronszy refers to exhibit MCG-18 which is said to be a copy of an extract from his research notes relating to studies of ICEAS during 1980 and marked to "SJ" (Stephen Jones). He then compares these notes with parent application PE 5674, which was lodged in the name of Jones, and alleges on the basis of this comparison that the provisional specification (in particular pages 3 to 6, which I note essentially correspond to pages 4 to 7 of the present application) was based at least in part on studies undertaken by him and communicated to Jones as part of his design work for Biojet Industries.
I note that while these pages generally refer to the provision of a transverse baffle and the sizing of the inlet zone of the tank, they do not describe the volume ratios of the tank compartments or the numerical process criteria that have been referred to elsewhere in Goronszy's evidence and thus are of little benefit to him in these proceedings.
With regard to the second requirement of the Massey v Noack decision, it is not easy to arrive at a conclusive view of the facts regarding ownership of the invention when the alleged obtaining took place.
The evidence lodged on behalf of Austgen referring to Goronszy's alleged denial at the meeting held in Atlanta of any inventorship role in respect of the invention disclosed by USSN 471907 attempts to establish by implication that Goronszy is not a co-inventor of the invention in dispute.
As I have already mentioned, this evidence is inconclusive as regards whether the invention claimed by USSN 471907 is identical to that which is alleged to have been obtained. In fact the weight of the evidence is to the contrary. The evidence in question additionally fails to conclusively establish why Goronszy's inventorship role was ever at issue considering the level of his involvement, as acknowledged by Jones, with the initial ICEAS plant at Palms Caravan Park and his recorded inventorship role with regard to the ICEAS-based process disclosed by provisional application PD 9375 whose disclosures (including the compartmentalisation of a treatment tank by at least one baffle, the volume ratio of the tank compartments, and the selection of certain numerical process criteria so as to favour the production of a good settling sludge) were incorporated into USSN 471907.
Furthermore, I find it surprising that Goronszy would unequivocally deny any interest in the invention if, as his evidence clearly asserts, the ICEAS process was originated and further developed by him alone. What I also think is curious is why Jones suggested at the Atlanta meeting that Goronszy be included as a co-inventor, or why subsequent to the meeting Cardinal made a number of attempts to obtain Goronszy's formal withdrawal of his rights to the invention, when Goronszy supposedly denied the existence of any such rights in the presence of Cardinal and others. In my opinion the actions of at least Jones are not inconsistent with a tacit acknowledgement that Goronszy had some entitlement as a joint inventor. While recognising that the long-standing association between Goronszy and Biojet Industries may have provided some basis for the actions of Jones, I do not believe that this association would have been viewed as importantly as the likely commercial consequences of Goronszy's involvement as co-inventor.
Overall then, this evidence is largely based on a number of unsubstantiated or contradictory assertions and, consequently, is of little use in determining the inventorship issue. I am also unassisted by the evidence concerning the "error" in the Business Plan, supra, which again contains a number of contradictions and, more importantly, fails to establish the exact relevance of who is actually named by that document as co-inventor of the ICEAS process (which, from my understanding of the evidence, was the process conceived in the mid-1970's) to the present action which concerns a development of the original process.
Brown states that it was his idea to use a transverse baffle to overcome the problem of short-circuiting. However, his evidence fails to mention why he decided in the mid- 1970's that "it may be possible to overcome this problem ... by providing within the reaction tank a partition wall" when the total evidence demonstrates that treatment facilities based on the PWD approach (including those marketed by Biojet Industries and its affiliate companies) prior to that time did not utilise a baffle wall which effectively divided the treatment tank into a number of reaction zones. Although the same could be said of Goronszy, I am satisfied from the evidence that he was well aware that baffles had as early as the 1930's been tried as a means of addressing the problem of short-circuiting in treatment plants operating in the conventional continuous mode. Furthermore, the evidence of Brown is clearly at odds with that of Goronszy who claims that the baffle was first installed by Brown under his instructions.
I note here that the evidence of Brown and Goronszy regarding the installation of a baffle focuses entirely on certain Biojet facilities and fails to establish who was responsible for placing at least one baffle in the Glenbrook plant (see the reply evidence of Goronszy and Tomlinson) which, on my understanding, was not owned by Biojet or its affiliate companies.
Jones says he conceived the idea of dividing the tank into two unequal volumes. In para 14 of his evidence in answer he states:
"Without initially understanding the reasons, it was found that the placement of the baffle such as to divide the reaction tank into a first and second portion, the volume ratio of the first portion to the second portion being 1:10 to 1:3, was found to give ... a better quality effluent."
which I understand from Jones' further evidence to be a reference to non-bulking sludges. Jones goes on to explain that the "empirical" determination of the volume ratios of the tank compartments arose in part from his experience with the treatment plant at Erina Squash Centre where the problem of short-cicuiting was encountered by Brown. It is surprising then that Brown's evidence omits any reference to the alleged activities of Jones.
Jones further states that the volume ratios were also based on work carried out to improve plant efficiency at the Jamberoo Dairy Co-Operative treatment facility which evidently had been unable to cope with one instance of "shock" organic loading.
However, other than a brief reference on page 4 of his further evidence to
" ... visits to Jamberoo, on occasion with Brown, Goronszy and other officers of the SPCC and discussions with Arthur Brown and ... the Manager of the Dairy ..."
Jones provides no credible explanation of why he considered volume ratio as opposed to other process variables to be critical to efficient plant operation at Jamberoo, and how, on the basis of only two design parameters he has identified, viz. an "insufficient" volume ratio of 1:11 and the need to maintain a sufficiently large tank outlet zone, he was able to "determine" that the baffle should be placed so as to divide the tank into two zones or compartments having a specific range of volume ratios. The evidence of Jones is also silent on whether his "somewhat serendipidous" selection of volume ratios was shown to by itself improve plant efficiency, and makes no mention of Goronszy's involvement with the treatment system disclosed by provisional application PD 9375 which, as I have previously indicated, discloses the tank volume ratio which Jones claims is his contribution alone.
According to para 105 of Goronszy's reply evidence, the Erina and Jamberoo facilities were "sized and configured by myself." However, Goronszy fails to establish whether the "size" or "configuration" of these facilities included the volume ratios which Jones claims to have first thought of.
In view of the directly conflicting evidence from Brown and Goronszy on the matter, I am unable to conclusively establish who between them conceived the idea of placing a transverse baffle within the treatment tank. Furthermore, the evidence of Jones concerning the location of the baffle within the treatment tank is unsubstantiated by Cardinal or, more significantly, Brown. Nevertheless, the fact that this aspect of Jones' evidence is essentially uncontested by Goronszy (or any of the other evidence in reply declarants) leaves me with no sound basis for concluding that the idea of the volume ratios came from Goronszy.
It seems to me from the decisions in Costa v Daking, 29 IPR 241, and Tribe v Rankin, 1 IPR 561, that to claim inventor status, a person must establish at least some role in the final conception of that which is sought to be patented in the sense that the role contributed at least something of material benefit to the final concept of the invention. Stated another way, was the involvement and contribution of that person essential to the invention. Thus, given my earlier discussion of what I consider to be the allegedly obtained invention, the question I have to decide with respect to the second requirement set forth in Massey v Noack, supra, is whether Goronszy played some role in the sense discussed above to the development of the numerical process criteria claimed by the present application.
Jones states in para 17 of his evidence in answer that:
"Goronszy asked me whether Biojet Industries would be prepared to let him study a number of our plants ... I agreed to allow Goronszy to conduct tests on our systems and joined him in the collection and evaluation of data obtained from these plants."
I understand from the evidence as a whole that these tests involved the Biojet waste water treatment plants installed at the Erina Squash Centre, the Jamberoo Dairy Co-Operative and Dural Caravan Park. According to the further evidence of Jones, the tests conducted by Goronszy led to the discovery of why the "novel" treatment system conceived by Jones and Brown worked, but that:
"the design criteria for these plants was (sic) developed by myself and Arthur Brown."
Goronszy asserts in his reply evidence that he co-opted Jones to assist him with "the recording of certain data and at the same time to provide him with a first hand practical experience on operational matters relative to the subject invention." According to Goronszy, Jones' contribution to this work was generally of a non-technical nature and:
"109 ... In all, Jones' assistance was co-opted on a few occasions. I estimate some 4 attendances at the Dural Caravan Park facility and some 4 attendances with me at the Jamberoo facility ... The time involved with Jones where he assisted me amounted to less than 30 hours in total."
This further alleged contribution of Jones and Brown to the invention in dispute is again unsubstantiated by any hard evidence. I note in particular that Jones fails to establish how he was able to develop the design criteria for the treatment facilities investigated by Goronszy when, by his own admission, he did not understand the process reactions involved, i.e., why these facilities "worked". In my opinion this failure lends support to Goronszy's claim that Jones is not in a position to provide any specific evidence regarding the development of appropriate design criteria due to his non-technical involvement with the research studies undertaken by Goronszy and his lack of relevant background knowledge. I also note here my views on the credibility of the parties expressed earlier in this decision.
Unlike the evidence for Austgen, Goronszy provides an informed discussion of the many process-oriented variables whose effect on the biological reaction conditions that occur in intermittent activated sludge systems were investigated by him. His evidence in this regard is supported, to an extent, by the evidence of Smith and Tomlinson, and by reference to rather extensive and detailed test data on the basis of which he says he formulated the presently claimed reaction based numerical criteria with a view to promoting the production of an essentially non-filamentous sludge.
My overall assessment of the evidence in this matter leaves me in no doubt that Goronszy was not merely following the instructions of Jones or Brown in performing his research studies, and that, as a result of those studies, the numerical process criteria at issue were originated by Goronszy alone. I think it is apparent from their material benefit to effluent quality that these criteria clearly contributed to the final concept of the allegedly obtained invention.
Consequently, I am of the opinion that Goronszy has established his claim to inventor status, and I therefore find that he is a joint inventor of the invention in dispute.
There is one other issue I need to consider before proceeding with the the second requirement above.
According to Brown, the idea of providing a baffle in the Erina Squash Centre treatment plant to divide the tank into a number of discrete reaction volumes was conceived by him either late 1977 or early 1978 (i.e. before the earliest possible priority date of the present invention). Jones states that the subsequent determination of the tank volume ratios was based on his experience with the treatment plants at Erina and the Jamberoo Co-Operative Dairy. Jones also says that the baffle and its location alone constitute the primary features of the present invention. Assuming this to be the case (and I have already expressed my contrary views on the matter), the evidence of Jones suggests a high probability that the invention allegedly devised by himself and Brown was in use before the relevant date.
Furthermore, Goronszy states that his research activities included on-site studies of the Biojet plants at Erina, Jamberoo and Dural from which he developed and assessed the presently claimed numerical process criteria. This evidence therefore leads me to believe that a process incorporating all features of the present invention was used by Goronszy before the priority date, and I note in this regard that if none of the sites mentioned above (or any of the other plants investigated by Goronszy) incorporated a baffle and a volume ratio between 1:3 and 1:10, it is not clear how he was able to substantiate his test results.
Nevertheless, there is nothing before me to show that the treatment plants in question were open to members of the public other than plant personnel or appropriate regulatory authorities such as the SPCC. Even if the present invention had previously been worked in public, the evidence tends to suggest that, on the balance of probabilities, such use was for experimental purposes only. I am therefore satisfied that any prior use of the invention by Brown, Jones or Goronszy was for the purposes of reasonable trial only and thus was a use to be disregarded pursuant to sec 158(1)(h) of the 1952 Act.
Returning now to the second requirement as stated in Massey v Noack, supra, Goronszy describes his association with Biojet Industries in para 7 of his evidence in support as "a non-contributory partnership arrangement with a retainer fee for design work, plus an expected share in profitability, and/or license fees that were to be established at some future time. These arrangements were never documented ..." I note here that no evidence has been produced which establishes that an employer-employee covenant ever existed between Biojet Industries and Goronszy. Furthermore, and in the absence of contrary evidence, I accept the statements of Goronszy that he did not assign any rights to the invention by virtue of the "trust agreement" proposed by Jones, or the affadavits sent to him by Cardinal.
In para 4 of his evidence in answer Cardinal states that at the time of his appointment with Austgen Biojet Waste Water Systems, Goronszy was employed as a full time consultant to Austgen Biojet Pty Ltd. As understood by Cardinal, one of Goronszy's main roles was to assist Eckenfelder in the supervision of work under a confidential test program involving Vanderbilt University and Austgen Biojet International Pty Ltd. Cardinal does not provide details of this test program but I note that under the terms of the agreement marked as exhibit PJC.II, any inventions related to the ICEAS process which were made or conceived during the program became the sole property of Austgen Biojet International. I also note though that the agreement is dated 1983 which is well after the date of lodgement of the present application, let alone its earliest possible priority date, and consequently is of no use to these proceedings.
The evidence for Austgen also suggests that any rights in the invention which potentially could be attributed to Goronszy did not properly belong to him by reason of his contribution having been made while employed by the NSW State Government. However I note the following statement in Goronszy' reply evidence:
"152. ... My personal interest research work in no way conflicted with my official duties with the State Pollution Control Commission. Similarly, the Department of Public Works has no claim on the work that I did as it was done as my own special interest work outside of the time frame that I worked for that Department."
which is again uncontested on behalf of Austgen, and thus I am satisfied that the NSW State Government is not the beneficial owner of Goronszy's rights to the invention. There is also nothing before me to suggest that beneficial rights to the invention rest with the University of NSW where Goronszy undertook his post-graduate studies.
Consequently, with respect to the second requirement above, I am satisfied that the invention in dispute and which is presently claimed belonged in part to Goronszy when the present application was lodged. However, although Goronszy was as a consequence clearly entitled to jointly make the present application, I note from the patent application form that the present application was made by Jones and Brown alone. Furthermore, I believe it is apparent from the evidence that Goronszy's contribution to the invention occurred before the relevant date. Thus I consider that the final requirement above is satisfied.
Taking account of my foregoing considerations regarding the requirements set out in the Massey v Noack decision, and the absence of any reference in the application form (or declaration in support) to Goronszy being an inventor, I find that the allegation of obtaining has been made out.
CONCLUSION
I have found that the opposition succeeds on the ground of obtaining.
The present application was lodged prior to 30 April 1991 (the commencing day of the Patents Act 1990 under sec 2(2)) and, consequently, is a so-called "transitional application". Chapters 23 of the 1990 Act and of the regulations contain transitional and savings provisions which deal with such applications.
Relevantly, sec 234(2) provides for the case where, before the commencing day, a patent application had been lodged under the 1952 Act and a complete specification had been lodged under that Act in respect of the application, and the application had not been withdrawn or finally dealt with; and states that, subject to Chapter 23 and the regulations, the 1990 Act applies in relation to the application on and after that day (i.e. the commencing day) as if it were a complete application made under the 1990 Act.
Thus the effect of sec 234(2) is that it treats the present application as if it were a complete application made under the 1990 Act. However, I note from sec 234(3) that the opposition provisions of Chapter 5 of the 1990 Act do not apply in relation to the present application; Part V of the 1952 Act as in force immediately before the commencing day continues to apply instead.
Section 60(3) in Part V of the 1952 Act provides as follows:
"Where the Commissioner finds that the invention, so far as claimed in any claim of the complete specification, was obtained from the opponent, he may, on application made in accordance with the provisions of this Act, grant to the applicant a patent for the invention, so far as so claimed, and the claims of the complete specification of that patent shall have the same priority date as the priority date of the first-mentioned claim."
As Goronszy has been fundamentally successful in the present obtaining action, prima facie he is entitled to the benefits afforded by sec 60(3).
However it seems to me that it is no longer possible to make an application "in accordance with the provisions of this Act" as prescribed by sec 60(3) due to the repeal of that Act (i.e. the Patents Act 1952) and its replacement by the 1990 Act.
Nevertheless, the transitional and savings provisions mentioned above were intended to address the need to deal fairly with transitional applications and thereby - to draw an analogy from the judgement of Lockart J in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, (1993) AIPC 91-025 at page 39,594 - ensure that a 1952 Act applicant is treated under the 1990 Act as if the 1952 Act had continued to operate. I am therefore of the opinion that Goronszy can properly avail himself of the remedy prescribed by sec 33(1) of the 1990 Act which essentially preserves the rights which would have been available to him under sec 60(3) of the 1952 Act but for the repeal of that legislation.
Consequently, it is now open to Goronszy to invoke the provisions of sec 33(1) and file a new application under sec 29. However, it is apparent from my findings earlier in this decision that the new application should vest ownership in both Goronszy and Austgen, and identify Goronszy, Jones and Brown together as the actual inventors. It is also essential that the new application does not claim new matter or include claims falling outside the scope of the claims of the present application. In accordance with reg 3.8, I allow Goronszy 3 months from the date of this decison to file a new applicaton to my satisfaction.
Alternatively, it is open for Austgen to amend the present application within the same 3 month period so as to record the multiple ownership and inventor details outlined above. Subject of course to any appeal on my decision, either of the above courses of action must be satisfactorily concluded before a patent can be sealed in respect of the present invention.
In accordance with the general principle that costs follow the event, I award costs against Austgen and in favour of Goronszy.
O.L.Haggar
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : F B Rice & Co, Sydney
Patent attorneys for the opponent : Shelston Waters, Sydney
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