Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd - [2018] FCA 1839

FEDERAL COURT OF AUSTRALIA
Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd
[2018] FCA 1839

File number: NSD 1089 of 2016

Judge: BESANKO J

Date of judgment: 26 November 2018

Catchwords:
PATENTS – where first applicant is the registered owner of a patent titled the Core Sample Orientation (the Patent) – where second applicant is the exclusive licensee of the Patent – consideration of the person skilled in the art – consideration of the field of the invention – consideration of the common general knowledge

PATENTS – whether respondents have infringed various claims in the Patent – where claims in suit in the Patent are method claims and system claims

PATENTS – consideration of the proper construction of the claims in suit – whether there is a lack of clarity in respect of the claims in suit – whether there is a lack of fair basis in respect of the claims in suit – whether there is a lack of utility in respect of the claims in suit

PATENTS – where respondents filed a cross-claim challenging the validity of the claims in suit on a number of grounds – priority date of claims in suit – whether claims in suit are invalid due to a lack of novelty – whether claims in suit lack an inventive step having regard to common general knowledge alone and, in the alternative, common general knowledge and information falling within the terms of s 7(3) of the Patents Act 1990 (Cth)

PRACTICE AND PROCEDURE – where order made prior to trial that issues of liability be heard and determined before issues of the quantum and any pecuniary relief – where claim for additional damages under s 122(1A) of the Patents Act – where entitlement to additional damages under s 122(1A) of the Patents Act, but not the quantum thereof should an entitlement be established, is a part of the hearing – whether applicants are entitled to additional damages

Legislation:
Acts Interpretation Act 1901 (Cth) s 2B

Copyright Act 1968 (Cth)

Patents Act 1990 (Cth) ss 7, 13, 18, 40, 43, 79B, 117, 120, 122

Patents Regulations 1990 (Cth) reg 3.12

Cases cited:
Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411

Apotex Pty Ltd v ICOS Corporation [2017] FCA 466

Apotex Pty Ltd v ICOS Corporation (No 3) [2018] FCA 1204

Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061; (2010) 88 IPR 52

AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324

Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 4) [2015] FCA 1372

Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 2) [2018] FCA 1109

Beadcrete Pty Ltd v Fei Yu trading as Jewels 4 Pools (No 2) [2013] FCA 187; (2013) 100 IPR 188

British Dynamite Co v Krebs (1879) 13 RPC 190

Catnec Components Limited v Hill & Smith Limited [1982] RPC 183

CCOM Pty Ltd v Jiejing Pty Ltd (1994) AIPC 91-079; (1994) 51 FCR 260

Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54; (2017) 250 FCR 155

Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; (2011) 91 IPR 209

Electrical & Musical Industries Ltd v Lessen Ltd (1939) 56 RPC 23; [1938] 4 All ER 221

General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457

Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; (2014) 222 FCR 336

H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151

ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; (1999) 45 IPR 577

Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139; (2008) 239 FCR 117

Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155

KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481; (2007) 71 IPR 615

Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1

Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274

Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA 21; (2007) 235 CLR 173

Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59

Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228

Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676; (2000) 51 IPR 43

Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157

Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) AIPC 90-492; (1988) 81 ALR 79

Re ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349; (2000) 106 FCR 214

Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132; (2011) 199 IPR 194

Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346

Welch Perrin & Co Pty Ltd v Worrell [1961] HCA 91; (1961) 106 CLR 588

Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262

Dates of hearing: 30, 31 August 2017, 1, 4-7 September 2017

Registry: New South Wales

Division: General Division

National Practice Area: Intellectual Property

Sub-area: Copyright and Industrial Designs

Category: Catchwords

Number of paragraphs: 525

Counsel for the Applicants/Cross-Respondent: Mr C Dimitriadis SC with Ms P Arcus and Ms A Spies

Solicitor for the Applicants/Cross-Respondent: Gilbert + Tobin

Counsel for the Respondents/Cross-Claimant: Ms K Howard SC with Mr A Fox

Solicitor for the Respondents/Cross-Claimant: Watermark Intellectual Property Lawyers

ORDERS

NSD 1089 of 2016

BETWEEN:
AUSTRALIAN MUD COMPANY PTY LTD (ACN 009 283 416)

First Applicant

REFLEX INSTRUMENTS ASIA PACIFIC PTY LTD (ACN 124 204 191)

Second Applicant

AND:
GLOBALTECH CORPORATION PTY LTD (ACN 087 281 418)

First Respondent

GLOBALTECH PTY LTD (ACN 086 012 393)

Second Respondent

AND BETWEEN:
GLOBALTECH CORPORATION PTY LTD (ACN 087 281 418)

Cross-Claimant

AND:
AUSTRALIAN MUD COMPANY PTY LTD (ACN 009 283 416)

Cross-Respondent

JUDGE:

BESANKO J

DATE OF ORDER:

26 November 2018

THE COURT ORDERS THAT:
1.The applicants file and serve within 7 days draft minutes of order reflecting the conclusions set out in these reasons.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT
BESANKO J:
INTRODUCTION

Australian Mud Company Pty Ltd is the registered owner of a patent titled, “Core Sample Orientation”. The claims in the patent claim priority from 3 September 2004. I will refer to this date as the Priority Date, although there is an issue about whether this is the correct priority date. In due course, I will set out the reasons I find that 3 September 2004 is the correct priority date. The patent is Australian Standard Patent Application No 2010200162 (the Patent). Reflex Instruments Asia Pacific Pty Ltd is the exclusive licensee of the Patent. Australian Mud Company Pty Ltd and Reflex Instruments Asia Pacific Pty Ltd claim that the respondents, Globaltech Corporation Pty Ltd and Globaltech Pty Ltd, have infringed claims in the Patent.
Before the trial, I made an order that issues of liability be heard and determined before issues of the quantum of any pecuniary relief. There is a claim for additional damages under s 122(1A) of the Patents Act 1990 (Cth) (the Act). The entitlement to that relief, but not the quantum thereof should an entitlement be established, was part of the hearing.
I will refer to Australian Mud Company Pty Ltd and Reflex Instruments Asia Pacific Pty Ltd together as AMC. The respondents did put a submission put that because of the exclusive licence in favour of Reflex Instruments Asia Pacific Pty Ltd (Reflex Instruments Asia), Australian Mud Company Pty Ltd was not a proper party to the proceeding. I reject that submission. This is a hearing on liability and Australian Mud Company Pty Ltd, as the patentee, is a proper party to the proceeding. The standing to sue of Reflex Instruments Asia derives from s 120 of the Act and the exclusive licence agreement with Australian Mud Company Pty Ltd.
I will refer to Globaltech Corporation Pty Ltd and Globaltech Pty Ltd together as Globaltech. Except in one area, there is no need to distinguish between them. The one area is infringement where Globaltech Pty Ltd claims that even if all of its other defences and the cross-claim fail, AMC has not proved that it has engaged in any conduct which amounts to an infringement of the claims in suit.
The claims in suit in the Patent are method claims (claims 1-4, 7-10, 16-17, 21-24, 27-28 and 65) and what are described in the Patent as system claims (claims 33-40, 46-48, 54 and 65). AMC asserts that what are described as systems claims are product claims, while Globaltech asserts that they are, in reality, method claims.
The Globaltech tools which are said to infringe the claims in suit are known as “Orifinder” tools and they consist of an Oritool and Oripad. There are and have been various versions of the Orifinder tool and those said to infringe the claims in suit are known as the Orifinder v3A, Orifinder v3B and Orifinder v5 respectively.
The major issue in the infringement action brought by AMC against Globaltech is the proper construction of the claims in suit. There was by the end of the case, very little dispute about the facts concerning the features and operations of the Orifinder tools. Globaltech submits that the proper construction of the claims in suit is such that its products do not result in an infringement of those claims. Closely associated with its construction arguments and, depending on the way in which those arguments are resolved, Globaltech raises a number of validity arguments, including a lack of clarity (s 40(3) of the Act; a lack of fair basis (s 40(3) (i.e., internal fair basis)); and a lack of utility (s 18(1)(c)). Those validity arguments were described by counsel for Globaltech as the “flipside” of its construction arguments.
Globaltech has filed a cross-claim challenging the validity of the claims in suit on a number of grounds. First, Globaltech claims that the claims in suit are not entitled to priority from 3 September 2004 because the claims are not fairly based on the alleged priority document, being a Provisional Application filed on 3 September 2004. The significance of this submission is that if the correct priority date is any date after September 2004, then the alleged invention is not novel because AMC’s own Ace Core Tool introduced in Australia in October 2004 is novelty‑defeating. AMC accepts that if the correct priority date is after September 2004, then the claims are not novel. Secondly, Globaltech contends that even if the claims in suit are entitled to priority from 3 September 2004, they are invalid due to a lack of novelty. In this respect, Globaltech relies on an act and a document (or either), both of which relate to a tool known as the High Side Seeker. Thirdly, Globaltech contends that the claims in suit do not involve an inventive step and, for the purposes of this argument, Globaltech relies on common general knowledge alone and, in the alternative, common general knowledge and information falling within the terms of s 7(3) of the Act.
There are some other issues concerning infringement and there is AMC’s claim to be entitled to additional damages to be considered.
The Patent in this case is one of a family of patents about which there has been considerable litigation between AMC (and related companies) and a company called Coretell Pty Ltd (Coretell) and companies related to Coretell. Globaltech and Coretell are not related. For present purposes, two sets of proceedings between AMC and Coretell are relevant. Before identifying them, I note that one of the witnesses in this case, Mr Brown, produced a diagram showing the family of patents. I annex the diagram to these reasons (Annexure A). It can be seen that the Patent is a divisional of an earlier application.
The Method Patent and the System Patent shown in Annexure A were the subject of proceedings between AMC and Coretell in the New South Wales District Registry of this Court. There was a trial at first instance before McKerracher J (Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 4) [2015] FCA 1372 (Coretell First Instance)) and an appeal to the Full Court of this Court (Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54; (2017) 250 FCR 155 (Jagot, Nicholas and Burley JJ) (Coretell Full Court)). An application for special leave to appeal to the High Court was refused. The specifications and claims in the Method and System Patents were substantially the same as the specification and claims in the Patent.
The other proceeding was in the Western Australia District Registry and was a proceeding which I heard. It involved the Patent, but, as it happened, infringement and the validity of the Patent were not in issue (Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 2) [2018] FCA 1109 (Coretell Western Australia)). Professor Tapson, a witness in this case, swore an affidavit in that case, but ultimately was not required for cross-examination.
The version of the Act and Patents Regulations 1990 (Cth) which is relevant is that in force prior to the “Raising the Bar” Amendments passed in 2012.
THE PATENT
As I have said, the title of the Patent is “Core Sample Orientation”.
The Abstract in the Patent describes a core orientation device by reference to Figure 1 and the way in which it operates to provide a measure of the physical orientation of the device at a particular moment in time.
The Field of the Invention is said to relate to core sample orientation. The invention relates to an orientation device for providing an indication of the orientation of a core sample relative to a body of material from which the core has been extracted and also to a method of core sample orientation identification.
The Specification contains a heading, “Background Art” and a statement under that heading that there is a need for core sampling in geological surveying operations. It then proceeds to describe conventional core drills and how they are operated to obtain core samples. It states that core drilling operations are typically performed at an angle to the vertical and it is desirable for the purposes of analysing the sample to have an indication of the orientation of the core sample relative to the ground from which it is extracted. Therefore, there must be some means of identifying the orientation which the core sample had within the ground prior to it having been brought to the surface. Core orientation devices are used to provide an indication of the orientation of the core sample.
The Specification states that a common way of obtaining an indication of the orientation of a core sample was through the use of an orientation spear comprising a marker, such as a crayon, projecting from one end of a thin steel shank, the other end of which is attached to a wire line. The description of how the orientation spear is used to mark the core sample is as follows:
The orientation spear is lowered down the drill hole, prior to the inner tube assembly being introduced. The marker on the orientation spear strikes the facing surface of material from which the core is to be generated, leaving a mark thereon. Because of gravity, the mark is on the lower side of the drill hole. The inner tube assembly is then introduced into the outer tube assembly in the drill hole. As drilling proceeds, a core sample is generated within the inner tube assembly. The core sample so generated carries the mark which was previously applied. Upon completion of the core drilling run and retrieval of the core sample, the mark provides an indication of the orientation of the core sample at the time it was in the ground.
The Specification states that there are also mechanical core orientation devices for marking a core sample prior to its extraction from the drill hole. Unlike the orientation spear, which is used before the inner tube assembly is introduced into the drill, the mechanical devices are typically adapted for incorporation in the inner tube assembly for marking the core. An example of such a mechanical orientation device is said to be that disclosed in WO 03/038212. This reference number in the Specification is incorrect. It should be to WO 03/038232 and this is the Ezy-Mark device which I describe later in these reasons.
The Specification states that it is against this background and the problems and difficulties associated therewith that the invention has been developed.
The Specification then contains a section entitled “Disclosure of the Invention”. Before discussing this section, it is convenient to set out the two relevant independent claims in the Patent and the two claims which immediately follow them, namely, claims 1 and 2 (method claims) and claims 33 and 34 (system claims). For ease of reference later in these reasons, I have identified the five steps in claim 1.
Claim 1 is as follows:
1.A method of providing an indication of the orientation of a core sample relative to a body of material from which the core sample has been extracted, the method comprising:
drilling a core sample from a body of material with a core drill having an inner tube; (step 1)
recording the orientation of the inner tube at predetermined time intervals during said drilling, the time intervals being referable to an initial reference time; (step 2)
inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material; (step 3)
removing the inner tube, with the core sample held therein in fixed relation to it, from the body of material; (step 4) and
relating the inputted specific time to the recorded time intervals to obtain an indication of the orientation of the inner tube and consequently the core contained therein at the specific time. (step 5)
Claim 2 is as follows:
2. A method as claimed in claim 1, comprising:
producing signals to indicate the orientation of the inner tube at any instant in time during said drilling;
processing the signals to determine data indicative of the orientation of the inner tube at various instants in time;
inputting a time measurement representative of the instant in time when the core sample is separated from the body of material and first held in fixed relation thereto; and
comparing the inputted time measurement to the instants in time and identifying the data indicative of the orientation of the inner tube and consequently the core sample at the instant in time.
Claim 33 is as follows:
33.A core orientation system for providing an indication of the orientation of a core sample relative to a body of material from which the core sample has been extracted using a core drill, the core drill having an inner tube, the system comprising:
means for recording the orientation of the inner tube at predetermined time intervals during drilling by the core drill, the time intervals being referable to an initial reference time, and for inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material; and
means for relating the inputting specific time to the recorded time intervals to obtain an indication of the orientation of the inner tube and consequently the core contained therein at the specific time.
Claim 34 is as follows:
34. A system as claimed in claim 33, comprising:
means for providing signals associated with the physical orientation of the inner tube of the core drill during drilling;
input means for inputting into the system a time measurement indicative of the time during drilling when the core sample is detached from the body of material from which it is taken and held in fixed relation to the inner tube;
one or more processing means for processing the signals to produce data indicative of the orientation of the inner tube;
one or more processing means for processing the data produced and the inputted time measurement to produce an indication of the orientation of the core sample relative to the material from which it is detached; and
display means for the indication of the orientation of the core sample relative to the material from which it is detached.

As I have said, AMC contends that claim 33 is a product claim, not a method claim, because the system to which the claim is directed is “a set of interacting components forming an integrated whole for a specific purpose, being in this case to orient a core sample”.
Returning to the section of the Specification dealing with the Disclosure of the Invention, the first paragraph identifies what is said to be the first broad aspect of the invention and it is in the same terms as claim 1. There then follows a series of consistory clauses for the rest of the method claims. The same observations apply to the disclosure of the invention insofar as it relates to the system claims (i.e., what is described in the Specification as a second broad aspect of the invention). The third broad aspect of the invention is a core drill having a core orientation system according to the second broad aspect of the invention, and the fourth and final broad aspect of the invention is a combination of the method and system aspects of the invention.
The Specification includes six drawings which are described as Figures 1 – 6 inclusive and it states that the invention will be better understood by reference to the description of one specific embodiment thereof as shown in the drawings. There is then a brief description of each of the drawings.
The final part of the body of the Specification sets out the “Best Mode(s) for Carrying Out the Invention”. I will refer to this as the best method section. This part of the Specification extends over some seven pages and the description in this section is given by reference to numbered features shown in the drawings.
The best method section describes the core orientation device, the inner tube assembly, the outer tube assembly, and the relationship between these parts. According to the embodiment, the physical orientation of the core orientation device comprises rotational orientation about a longitudinal axis of the device. As AMC pointed out, this is referred to in the evidence as the “roll” orientation or “high side” orientation. Subject to some modifications which are not presently material, the core drill is described as being of conventional construction and operating in a conventional way.
The best method section states that the orientation of the orientation device corresponds to the orientation of the lower part of the inner tube assembly which in turn corresponds to the orientation of the core sample progressively entering the inner tube assembly as the lower part does not rotate relative to the core sample.
The best method section contains a description of the process involving the orientation device and core drill and that description begins by a reference to a “first step” which comprises moving the core drill having the core orientation device forming part thereof from a first location to a drilling location. The best method section refers to a “reference time” and there is a statement that the reference time corresponds to the time at which the orientation device was started and the one minute intervals commence from a reference time.
The best method section states that in “this embodiment”, the orientation device is started by pressing a particular key on the keypad. The best method section continues as follows:
It is also necessary to record the time duration between starting the core orientation device 10 and extracting the core sample. Typically this is achieved by starting an external stop watch at the time of starting of the orientation device 10. Other arrangements are of course possible.
The stop watch is started at the time that the orientation device 10 displays a signal on the display 31 indicating that operation of the orientation device 10 has started. This provides for added accuracy.
Once the orientation device 10 has been started and recording of the subsequent time duration commenced, the inner tube assembly 36 is inserted into a drill hole for reception in the outer tube assembly, 13, and the core drilling operation commenced. During the drilling operation, a core is progressively generated within the inner tube assembly, as previous explained.
When the core is to be extracted, the core drill operator refers to the timer and notes the time duration involved. Specifically, the operator either notes the full minute that has previously elapsed or waits until the next full minute elapses, and then records that time (as it must be recalled later).
A little later in the best method section, there is a statement that in the particular embodiment described subsequent rotation of the core orientation device to reflect the measure of the core orientation device is achieved by inputting the time duration as measured by the external stop watch into the orientation device through the keypad. The section provides that the time measurement measured by the operator and entered into the keypad represents the duration of time between starting the orientation device and the point at which the particular drilling process was terminated in order to fracture the core sample from the body of material to which it is attached so that the core sample can be retrieved from the drill hole and brought to the surface level.
The third and second to last paragraphs of the body of the Specification are in the following terms:
From the forgoing, it is evident that the present invention provides an orientation device which does not require physical marking of a core sample prior to extraction thereof from the ground. Indeed, the orientation device according to the embodiment is particularly convenient for an operator to use. All that is required is for the operator to start the orientation device prior to the inner tube assembly 36 being inserted into the drill hole, and contemporaneously start a timer for recording the time duration before the drilling operation ceases to allow the generated core sample to be retrieved.
Modifications and improvements may be made without departing from the scope of the invention. For example in other embodiment the physical orientation does not comprise a rotational orientation but rather a measure of degrees above or below the horizontal plane.
Although not one of the claims in suit, AMC relied on claim 6 in connection with its construction arguments. It is in the following terms:
6.A method as claimed in any one of claims 2 to 5, wherein the instant in time is representative of a duration of time relative to the initial reference time.
AMC relied on some separate and additional arguments in answer to Globaltech’s challenge to the validity of the following claims:
4.A method as claimed in claim 3, comprising generating data representative of the orientation of the core sample at a subsequent time and providing a visual indication of the orientation of the core sample at a time at which the drilling was terminated and/or a direction in which the core sample should be rotated at said subsequent time in order to bring the core sample into an orientation corresponding to its orientation in the identified data.
16.A method as claimed in any one of the preceding claims, comprising comparing the orientation of the core sample at the selected time interval to the orientation of the core sample at any subsequent time and providing a visual indication of the direction in which the core sample should be rotated in order to bring it into an orientation corresponding to the orientation of the core sample at the selected time.
23.A method as claimed in any one of claims 17 to 22, comprising relating the measure associated with the orientation of the core sample with a present orientation thereof such that the core sample can be rotated to reflect the measure associated with the orientation of the core sample.
46.A system as claimed in any one of claims 40 to 45, comprising means for relating the measure associated with the orientation of the core sample with a present orientation thereof such that the core sample can be rotated to reflect the measure associated with the orientation of the core sample.
Claim 4 is dependent on claim 3 which is dependent on claim 2 which is dependent on claim 1.
AMC submitted that an important feature of the invention is “real time orientation” as seen, for example, in claims 4 and 16, that is to say, orientation on the surface where the core is in the inner tube and the orientation device is attached to the inner tube.
WITNESSES
AMC called two experts at trial, Professor Jonathan Tapson and Mr Kelvin Brown. Globaltech also called two experts at trial, Mr Michael Ayris and Mr Adrian Edmonds. Each expert swore affidavits before trial which contained their evidence-in-chief. The parties formulated a list of issues before trial and each expert addressed the issues in what I will refer to as a joint experts’ report. The one exception is that Mr Brown did not participate in the session which addressed infringement. The experts gave evidence in a joint session.
Dr Erik Blake was called as a witness by Globaltech. Dr Blake gave evidence by audio-visual link from Canada. Dr Blake holds a Bachelor of Applied Science in engineering physics (geophysics) from the University of Toronto (1986) and a PhD in geophysical (glaciology) from the University of British Columbia (1992). Dr Blake gave evidence as to the facts and some expert evidence. Further details of his qualifications and experience are set out in the section of these reasons which deal with Globaltech’s novelty challenge.
Globaltech was ordered to file a Product Description with respect to the Orifinder tools. It did that and then filed an Amended Product Description shortly before trial. Only the latter document is of present relevance. It contains a description of, and flowcharts with respect to, the Orifinder v3A, v3B and v5. The Amended Product Description was verified by Mr Khaled Hejleh, who is the managing director of Globaltech Corporation Pty Ltd. He was briefly cross‑examined at the trial. The cross‑examination established that, apart from an additional vibration sensor in the Orifinder v3B, the differences in the three tools related to the software program and not the hardware components.
Globaltech tendered an affidavit of Mr Anthony Pullen who is a patent attorney. He deposed to having received by courier on 21 August 2017, three tool parts from Icefield Tools Inc (Icefield Tools) in Canada. The relevance of those tool parts will be identified later in these reasons. Mr Pullen was not required for cross-examination.
I turn to summarise the qualifications and experience of the four experts who gave evidence in joint session.
Professor Tapson
I start with a brief summary of Professor Tapson’s qualifications and experience as he explained those matters to the Court.
Professor Tapson is an engineer and he is Professor at the School of Computing, Engineering and Mathematics at the Western Sydney University (WSU). He has had over 25 years’ experience in electronic and computer engineering, practising primarily in the fields of sensors and instrumentation, including designing orientation systems in drilling environments.
In 1994, Professor Tapson completed his PhD in engineering at the University of Cape Town (UCT). He also holds a Bachelor of Science in electrical engineering and a Bachelor of Science in physics obtained from the same university.
After he had completed his PhD, Professor Tapson held various academic positions in the field of electrical and computer engineering. It is not necessary for me to set out the details. It is sufficient to say that the positions were held from 1994 to the present day at the Cape Technikon (now the Cape Peninsula University of Technology), the UCT and the WSU.
As part of Professor Tapson’s academic responsibility at Cape Technikon, he established the Centre for Instrumentation Research (CIR) on 1 September 1995. During his tenure as Director of CIR, and thereafter, the CIR was involved in several projects in the field of orientation and mining instrumentation. These projects included systems based on ultrasonic and electrical impedance for measuring the constituents and flow rates of materials in drill pipes and slurry pipelines. The CIR also designed orientation systems that could be embedded in objects in order to measure their trajectories while passing through hostile environments, such as ball mills and autoclaves.
Professor Tapson’s academic responsibilities at UCT included supervising a well-equipped laboratory within the Department of Electrical Engineering. The laboratory primarily undertook research into instrumentation for industrial application. Professor Tapson gave examples of the research projects that he undertook, including in conjunction with UCT’s Centre for Minerals Research. It is not necessary for me to set out the details.
A good deal of Professor Tapson’s research at UCT was carried out under industrial sponsorship from De Beers Consolidated Mines (De Beers) and Anglo Platinum. He estimates that about 50% of the research projects that he worked on between 1997 and 2011 concerned instrumentation for the mining industry.
From 1997 to 2014, Professor Tapson regularly interacted with engineers, researchers and operators from De Beers, Anglo Platinum, Anglo American, AngloGold Ashanti, Bateman, Hatch and Honeywell Instrumentation. Some of this industrial sponsorship was obtained through the AMIRA International consortium (an Australian-based organisation of mining companies), which facilitates collaborative research projects. He had regular contact with Australian researchers in these projects. He also had contact with a number of researchers from the Julius Kruttschnitt Mineral Research Centre at the University of Queensland and geologists working with extracted mineral materials, including core samples. He has also visited mine sites in which core drilling operations have been undertaken, including, in 2003, Anglo Platinum’s core drilling operations at its Rustenburg mine site.
Professor Tapson has taught in the areas of Mechatronics Design, Microprocessor Systems, Process Control and Instrumentation, Electrical Engineering Design and Advanced Topics in Instrumentation. These subjects involve engineering concepts relevant to the design of instruments and techniques for orientation and position sensing in the mining industry.
As far as publications are concerned, Professor Tapson has been an associate editor of a number of peer-reviewed journals, including the Institute of Electrical and Electronics Engineers Sensors Journal, Frontiers in Neuroscience: Neurorobotics and Neuromorphic Engineering. He also regularly reviews articles submitted for publication in peer-reviewed journals in his field, including the Measurement Science and Technology, Review of Scientific Instruments and Control Engineering Practice. Professor Tapson has published over 100 academic papers covering a range of topics including sensor design, electronic circuits and networked systems. He has also regularly given presentations at industry conferences. Of note, is that in 2003, and again in 2004, he was invited to present the keynote address at the Annual Conference of the South African Institute of Mining and Mineral Processing regarding the state of the art of instrumentation and networked systems in the mining industry.
As far as membership of professional societies is concerned, Professor Tapson is a member of the following professional societies: Sensory Systems Technical Committee of the IEEE Circuits and Systems Society (since 2007); Committee Member and former President of the South African Council of Automation and Computation (from 2000 to 2007); and Fellow of the South African Academy of Engineering (since 2009).
Globaltech submitted that Professor Tapson’s experience and qualifications were largely of an academic, rather than of a practical nature. In light of that submission, it is necessary to mention the following. The following are examples of projects that Professor Tapson has conducted in the areas of orientation instruments and systems for the mining industry up to, and including, 3 September 2004:
(1)In 1995, he acted as a consultant for a Brisbane-based instrumentation company for the mining industry named “HiTech”. That work involved designing systems for communicating data in geological surveys.
(2)From 1997 to 2005, he supervised the development and operation of instrumentation for measuring and analysing the constituents of material recovered by a marine diamond drilling system for the Control and Instrumentation division of De Beers Research.
(3)From 2000 to 2005, he founded and was the Technical Director of a South African company, Motornostix (Pty) Ltd (Motornostix), which was, and remains, involved in a number of projects for the mining, manufacturing, recycling and electrical power industries, including for ArcelorMittal, Assmang Chrome, BHP Billiton, De Beers, Lonmin, Samancor and Xstrata. The majority of projects that he worked on while at Motornostix involved the use of accelerometers and magnetic field sensors to detect orientation, rotation and vibration. Motornostix was one of the first companies to make large scale industrial use of silicon accelerometers. As part of the development of those products, Professor Tapson conducted a comprehensive study into the use of sensors in robust environments, such as mining and manufacturing. He was involved in the installation of Motornostix systems at a number of sites in Australia, including BHP Billiton’s North Parkes mine and Sydney Water’s North Head water treatment plant.
(4)From 2001 to 2003, he supervised the design of instrumentation for measuring the orientation and movement of materials on coal conveyors.
(5)From 2002 to 2004, he worked with the Control and Instrumentation division of De Beers Research to develop instrumentation for measuring and communicating drill head orientation in marine drilling. During that time, he had direct and frequent experience with operators and geologists extracting and orientating extracted material.
(6)In 2012, he was involved in developing instrumentation and techniques for measuring petroleum, natural gas and extracted substances obtained through hydraulic fracturing techniques in the oil and gas industries.
Professor Tapson first became aware of core drilling assemblies used in mineral exploration drilling as result of discussions with Professor Stewart Smith of the Department of Geology and Geo-chemistry at the University of Cape Town in the late 1990s. He observed core samples and core drilling equipment before September 2004 in the course of his duties as a downhole instrument designer for the mining and drilling sector, including in consultation with De Beers, Anglo Platinum and the UCT Department of Earth Sciences. Before September 2004, he worked closely on several instrument, drilling and position sensing design projects. He has also visited mine sites before that time, where, as a consultant engineer, he observed operational core drill assemblies in the field for extracting core samples (e.g., Anglo Platinum’s core drilling operations at its Rustenburg mine site in 2003).
Globaltech submitted that Professor Tapson had little experience in core orientation before the Priority Date and that such knowledge and experience as he had, was obtained after the Priority Date. It is true that Professor Tapson’s practical experience before the Priority Date was in drill orientation, but he gave evidence, which I accept, that that field is extremely close to core orientation. It is also true that Professor Tapson became aware of the orientation spear, Ezy‑Mark and Ballmark devices (which I discuss below) after the Priority Date and that he became aware of scribe knife methods after the Priority Date. It is also true that Professor Tapson had no practical experience in drilling for oil and gas. I have taken these matters into account in assessing his evidence. I formed the view that generally, Professor Tapson’s evidence of the matters about which he had informed himself, was reliable.

Professor Tapson was cross-examined about evidence he gave in Coretell First Instance and an affidavit he swore in Coretell Western Australia and I will address that evidence later in these reasons.
It was also suggested by Globaltech that Professor Tapson had a close association with AMC and that one example of that was the fact that he was named as an inventor on a patent without his knowledge. It is true, as Globaltech submitted, that Professor Tapson had acted for a number of years as an expert for AMC or its parent company, Imdex Pty Ltd (Imdex). I take into account the fact that Professor Tapson has given evidence in previous proceedings and that, in a sense, he has had a long association with this family of patents. However, I am not persuaded that his independence has been compromised.
Mr Brown
Mr Brown is the Global Products Manager for Reflex Instruments Asia, which is the second applicant in this proceeding. Both Reflex Instruments Asia and Australian Mud Company Pty Ltd, which is the first applicant in this proceeding, are wholly owned subsidiaries of Imdex. Mr Brown has worked for Reflex Instruments Asia since 2005 and has held his current position as Global Products Manager since 2007. As I have said, Mr Brown participated fully in the joint session of experts, save and except that he was not involved in that part of the session which considered the issue of infringement.
Mr Brown has over 20 years’ experience in mineral exploration drilling. Over this time he has acquired knowledge and experience in all major forms of exploration drilling, including auger drilling, rotary-percussion drilling and diamond core drilling, including the technologies and instruments used in those drilling programmes.
From about 2005, Mr Brown has had frequent contact with clients (and potential clients) in the mining and exploration industry requiring survey and core orientation equipment, including, more recently, electronic core tools.
From about January 1995 to February 2001, Mr Brown was employed as a Senior Driller by PrilrCorp Western Deep Hole Drilling. During that time, he worked on core sample extraction drilling programs throughout Western Australia and was responsible for overseeing and managing all drill crew using core orientation instruments on the rigs. He also supervised and liaised with geologists and exploration companies regarding the orientation of core samples from the drilling operations.
From about February 2001 to about February 2003, Mr Brown was employed by Mosslake Drilling (Mosslake) (now Faraco International) as its drilling manager. As part of his role, he was responsible for overseeing and managing core drilling operations conducted on Mosslake’s rigs. His responsibilities included the management of production rates across Mosslake’s rigs, the hiring and return of equipment used on rigs and working with the executive managers of resource exploration companies and geologists regarding their exploration drilling needs.
Mr Brown estimates that between 1994 and 2003, he had either carried out or overseen multiple core drilling and core sample orientation operations, in which more than 90,000 metres of subterranean rock was drilled.
In early 2004, Mr Brown joined the Imdex group of companies (Imdex Group), working for its business division Ace Drilling Supplies (Ace Drilling) as a Technical Sales Representative. Ace Drilling was then the exclusive distributor for downhole cameras and survey navigation tools in Australia and the Asian region for a Swedish company, Reflex Instruments AB (Reflex Instruments). As a Technical Sales Representative, he provided sales and technical support to customers using Reflex products, including, on occasion, repair and dispatch of replacement equipment.
In January 2005, Mr Brown became a Regional Manager for Ace Drilling and held that role until January 2007. As part of that role, he visited mine sites to introduce and explain Ace Drilling’s new electronic core orientation tool known as the Ace Core Tool, which was the first electronic core orientation tool released in Australia in late September 2004.
As the Global Products Manager for Reflex Instruments Asia, Mr Brown, in addition to site visits and sales, has been responsible for the life cycle management of the company’s product line and the development and implementation of training programs for its sales and technical support staff.
In this current role, Mr Brown regularly visits the company’s regional offices in Australia, Africa, South America, North America, Canada, Europe and Asia Pacific (Imdex Regions). The purpose of these visits is, among other things, to inform the regional office staff about the products supplied by the company, including through internal product training. He also speaks to the sales staff in the Imdex Regions about product development and competitor products, and works with them on strategies to promote the company’s products.
Mr Brown’s visits to the Imdex Regions also involve visits to one or more customers in those regions for the purpose of promoting new products and obtaining feedback on any existing products supplied by Reflex Instruments Asia. These visits often take place on-site at the customer’s drilling operation where Mr Brown speaks directly to the customer about their needs and use of his company’s products, and is often able to observe the operation of the product first hand. Through this process, Mr Brown is able to identify technical or operational issues with the products, which he then passes on to the engineering department at Imdex so that refinements and improvements can be made to these products. On some occasions, he will demonstrate his company’s products at the customer’s drilling site.
In his current role, Mr Brown also works closely with the company’s technical support staff across the Imdex Regions, including the team of product engineers who reported directly to him until around the end of 2011 when Imdex appointed a Research and Development Engineering Manager, Mr Tim Price, who is based in the United States.
Mr Brown has contact with Mr Price on a number of occasions every week. He also engage directly with the product engineers for the purposes, among others, of channelling development ideas to them and receiving feedback on the operation of the company’s products from customers.
Mr Brown’s role as Global Products Manager involves liaising with the project engineers throughout the product development process. The team provides him with at least fortnightly updates on their progress. As part of his involvement in that process, he is responsible for issuing Scope of Works documents outlining the development or modification required to the products. He is also responsible for reviewing the specification documents created by the development team, and for undertaking testing of any prototypes created by the company. In doing so, he acts like an operator of the tool and applies his understanding of the application and requirements in the field to ensure that the product achieves its intended function.
In his current and previous roles, Mr Brown has been in regular contact with all of the major Australian mine site operators regarding their core drilling programs and the performance requirements for equipment used in the field. He regularly attends Australian and international mining events, including the Asia-Pacific International Mining Exhibition, which is the largest mining event for suppliers and end-users of drilling equipment in the Asia-Pacific Region, the Prospectors & Developers Association of Canada (PDAC) conference in Canada and Mining Indaba in Africa.
In 2011, Mr Brown received the Australian Prospect Mining Awards for “outstanding contribution to mining” and “miner of the year” for his role in the Chilean mine rescue in August 2010.
In 2011, Mr Brown was invited by the Australian Institute of Geoscientists (the largest professional body of geologists and geoscientists in Australia) to give the keynote address on the state of the art of instrumentation used in mineral exploration drilling.
In 2012, he was appointed by Curtin University, Western Australia, as an associate supervisor of PhD students who were undertaking research into drilling technology at the Deep Exploration Technologies Cooperative Research Centre.
Globaltech submitted that Mr Brown’s evidence should be treated with some caution because of his employment relationship with Reflex Instruments Asia and noted that he did not participate in the joint session of experts with respect to infringement. Globaltech also asked me to take into account that Mr Brown had no practical experience in oil and gas.
I have taken those matters into account. Nevertheless, I formed the view that Mr Brown was a good witness with considerable practical knowledge and experience in the relevant field. His evidence was helpful and I do not think that his relationship with Reflex Instruments Asia coloured his evidence in any way.
Mr Ayris
Mr Ayris is the managing director and founder of DHS (Aust) Pty Ltd, trading as “Downhole Surveys”.
In 1980, Mr Ayris was awarded a Diploma in Cartography at Wembley TAFE in Western Australia. Cartography is the science or practice of drawing maps.
In 1980, Mr Ayris began working as a Cartographer in West Perth with Associated Surveys, where he was employed to draw plans. Between 1984 and 1986, he was employed as a cartographer, and later as a Surpac consultant, in the Pilbara in Western Australia with Goldsworthy Mining (now BHP) at the Shay Gap mine site. He later moved to Kalgoorlie in Western Australia, where he worked between 1986 and 1989 as a Surpac consultant to draw drill hole location maps for various mining companies.
Most of Mr Ayris’ early work in the Pilbara and Kalgoorlie involved drawing straight drill holes manually on to plans. In about 1987, he became interested in researching the impact on a planned mine pit if the drill holes were not straight as had previously been assumed. These questions formed the basis for what later became several months of research into that area.
Mr Ayris discovered that whilst there were a small number of instruments available to survey the angle and orientation of drill holes, very few companies considered such surveys necessary. He believed that it was an important part of reporting a mineable resource and set about, as he put it, “making downhole surveys a necessary part of drilling for mine suitably assessment”.
In 1989, Mr Ayris opened his own business in Kalgoorlie under the name “Downhole Surveys” and continues to run that business today. At the Priority Date and since, the business is and was a mining survey consultancy and a distributor of downhole instrumentation tools to Australian and overseas mining companies.
When Downhole Surveys opened in 1989, Mr Ayris purchased and operated one survey tool which he used as the sole operator to survey the pit in Kalgoorlie. The survey tool was a magnetic Eastman Multishot tool, which was manufactured by a United States company, Eastman Christensen. The tool worked by lowering a film based camera down into a drill hole via a wire line and winch, along with a compass and dip circle, and multiple camera shots were taken of the compass and dip circle at pre-set time intervals (every 2 minutes) as the tool was lowered down the hole. The operator started a stop watch at the surface at time “zero” and at each pre‑set time interval corresponding to the time the photograph was taken, the depth of the compass/dip circle into the drill hole would be manually recorded by the operator. Mr Ayris would then analyse the depth recordings and the compass/dip circle photographs to determine the orientation of the drill hole which allowed him to draw detailed survey maps of the drill hole location. This, in turn, allowed his customers to create a more accurate positional representation of their ore body. Mr Ayris explained that as technology improved, automatic timing devices on the surface recorded the depth on a computer or PDA at the pre-set times.
In about 1992, Mr Ayris began to generate more survey work for mining companies and was able to employ other staff in his business. It was around this time that he decided to expand his business to include distributing survey tools to mining companies. He also continued to offer his survey consultancy services where he used the downhole instrumentation tools to determine drill hole orientation and draw survey maps.
In 1993, Mr Ayris was awarded the Australasian distributorship for the Swedish company, Reflex Instruments. The distributorship continued until around 2008 when Reflex Instruments AB changed ownership. From that time until around 2009, he had a distributorship with Flexit for the Electronic Multishot System (EMS) and MEMS Gyro.
In 1993, and as part of the distributorship with Reflex Instruments, Mr Ayris brought into Australia a tool known as the Reflex Maxibor. The Maxibor was a non-magnetic multishot tool that included an optical device to measure the bending of a probe lowered into a drill hole. A series of optical rings were displayed down a hole at intervals of 1.5 or 3 m. A liquid level sensor was mounted in line with the reflector rings to define a vertical plane. A light source was directed at and reflected by the rings. Digital photographs of the reflector rings were taken at pre-set time intervals and the offset of the rings from the vertical analysed to determine the orientation, including high side, of the drill hole. A digital stop watch was used at the surface by the operator for recording depth at the pre-set photograph times for later correlation with the orientation measurements. Mr Ayris sold Reflex Maxibor tools to Boart Longyear and other mining companies operating in Western Australia.
Over the subsequent years, Mr Ayris introduced over 15 mining survey products into Australia. On 3 September 2004, Mr Ayris was the Australian distributor at least eight downhole instrumentation tools and thereafter he continued to provide his survey consultancy services to mining companies throughout Western Australia.
Mr Ayris said that since his business began, as at 3 September 2004, and continuing today, he has kept himself informed of, and stayed up-to-date with, downhole instrumentation tools, including geophysical probes, gyroscopes, drilling tools, survey tools and core orientation tools, available on the market in Australia and overseas, so as to ensure that he was, and still is, distributing and using the most appropriate tools for his customers.
Mr Ayris said that as at 3 September 2004, he kept himself informed about new downhole instruments by the following means: maintaining close relationships with tool manufacturers; conducting his own research through internet searches; reading scientific papers, conference papers and patents; reading trade publications in the drilling field, including Australian Drilling, Mining Monthly, and Geodrilling; attending educational and networking events through the Australian Drilling Industry Association (ADIA) of which he has been a member since 1987; and attending various conferences in the field. In particular, Mr Ayris said that he has attended the PDAC conference held in Canada almost every year since 1998, including the conference held between 7 and 10 March 2004. The significance of this conference will become clear when I discuss the evidence of Dr Blake. PDAC is regarded as the premier international event for the mining industry. Mr Ayris has also attended Diggers & Dealers in Kalgoorlie almost every year since it commenced in 1992. Diggers & Dealers is the leading Australian event for the mining industry.
Before and since 3 September 2004, and continuing today, Mr Ayris reviews scientific and conference papers and patents in the field of downhole instrumentation to stay informed of new technology and to analyse his competitors’ activity.
Mr Ayris is the inventor named on several patents and patent applications in the area of drilling technologies, namely a patent titled “Drill hole orientation apparatus”, as well as two patent applications titled “Apparatus for aligning drilling machines” and “Controlled rotation centraliser”.
In submissions, Globaltech identified Mr Ayris as representative of the person skilled in the relevant art before the Priority Date and a person who had all the necessary skills and experience in the relevant field.
Although AMC made submissions about the weight which should be accorded to Mr Ayris’ evidence, it did not submit that it should not be accorded any weight. Indeed, in relation to Globaltech’s case with respect to the lack of an inventive step, AMC relied on the fact that Mr Ayris, despite being active in the field since 1989, did not himself develop a core sample orientation method or system, such as that described in the Patent, and nor was he aware of any other person having done so.
AMC was, however, critical of Mr Ayris’ failure to disclose that his business had been a distributor of orientation tools which either allegedly infringed the Patent or, in fact, did infringe other related patents. Mr Ayris’ company supplies the Orifinder v5 under the name “Trucore” and Mr Ayris agreed that he probably should have referred to this in his affidavit. His company also supplied the Camteq Orifinder tool which was found to have infringed the Method and System Patents in Coretell First Instance and he agreed that it would have been relevant for him to have listed this tool as one of the tools supplied or distributed by his company. There was also another tool Mr Ayris’ company distributed, the Devicore tool, which had been the subject of a letter of demand from AMC and which had led Mr Ayris to read the Patent before swearing his affidavits in this proceeding. There was a settlement of that dispute and the effect of that settlement is that the obligation on his company not to distribute the Devicore tool comes to an end if the Patent is held to be invalid. He agreed on reading the deed of settlement, he had an interest in the Patent being found to be invalid. I have taken these matters into account in assessing Mr Ayris’ evidence.
Mr Edmonds
Mr Edmonds is an electronics and software engineer. In 1994, he was awarded a Bachelor of Electrical and Electronics Engineering with First Class Honours and a Bachelor of Information Technology with Distinction from Queensland University of Technology.
From April 1995 to February 1998, Mr Edmonds worked as a Systems Engineer with Pacific Star Technologies/Claremont Technology.
Between March 1998 and January 2004, Mr Edmonds was employed by Tyco Environmental Systems (formerly Greenspan Technology) as a Product Development Manager and Electronics Engineer. One of his tasks was to design and develop a miniature depth sensor for borehole applications. The relevance of this work to the subsequent work which he did at Ranger Survey Systems (RSS) was to learn how to develop miniaturised, low power, high accuracy sensoring electronics for harsh temperature, pressure and mechanical shock environments.
Between January and June 2004, Mr Edmonds was employed as a Software Engineer and Team Leader with Zetron Australia.
In March 2004, Mr Edmonds commenced employment with RSS as an electronics and software engineer. His role was to develop electronic drill hole surveying instruments for use in underground directional drilling.
Mr Edmonds’ initial task at RSS in March 2004 was to develop a downhole survey tool that also could be used as an electronic rock core orientation system. He gave some details of how he went about the task. He familiarised himself with the core orientation systems and drill hole surveying instruments that were available at the time, including the Chardec Consultants Tool and tools of 2iC Australia Pty Ltd (2iC), Reflex Instruments, FLEXIT and Scientific Drilling. AMC submitted that it is highly significant that, in carrying out this task, Mr Edmonds did not discover the MI-3 tool or the High Side Seeker tool and nor did he develop, before the Priority Date, the method or system described in the Patent because the task was the same as, or very similar to, the task of the notional skilled team postulated for the purposes of determining whether there was an inventive step. Approximately three years after he first commenced the task, Mr Edmonds proposed a system that used a downhole tool incorporating an accelerometer with a below ground timer that was synchronised to a PDA or a Single Shot Module kept at the surface. The development was done in three stages with three interim product releases, being the Ranger Explorer I, Ranger Explorer II and Ranger Discoverer. The precise details of the system developed by Mr Edmonds and how he proceeded over the three year period is not made clear by the evidence.
THE PERSON SKILLED IN THE ART

The person skilled in the art is a person of the kind to whom the patent is addressed (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 (General Tire) at 485). The person is likely to have a practical interest in the subject matter of the invention (Catnec Components Limited v Hill & Smith Limited [1982] RPC 183 at 242-243 per Lord Diplock).
In Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1 (Kimberley-Clark v Arico) at [24], the High Court said, in the context of reading a complete specification, that the Court is to place itself “in the position of some person acquainted with the surrounding circumstances as to [the] state of the art and manufacture at the time”, quoting from the decision in British Dynamite Co v Krebs (1879) 13 RPC 190 at 192.
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481; (2007) 71 IPR 615 at [16], Kiefel J, sitting as a judge of this Court, said that evidence may come from persons who do not precisely answer the description of the person skilled in the art and that some witnesses may be more skilled than others. The evidence is admissible and it is for the Court to come to a conclusion.
The person skilled in the art may be a team of persons, depending on the invention, and the complexity of the area. In General Tire, the Court of Appeal said (at 485):
The earlier publication and the patentee’s claim must each be construed as they would be at the respective relevant dates by reader skilled in the art to which they relate having regard to the state of knowledge in such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, be evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date. If the art is one having a highly developed technology, the notional skilled reader to whom the document is addressed may not be a single person but a team, whose combined skills would normally be employed in that art in interpreting and carrying into effect instructions such as those which are contained in the document to be construed. We have already described the composite entity deemed to constitute the notional skilled addressee.
The experts were asked to identify at the Priority Date the qualifications and experience of the person or persons who would address the task of developing an improved method or system for providing an indication of the orientation of a core sample relative to the body of material from which the core has been extracted. The experts agreed that the answer to this question depended on the degree to which implementation was expected. As I understand it, the experts proceeded on the basis that implementation, as well as conceptual development, was part of the task and they gave their answers on the assumption that technical implementation is part of the task.
Professor Tapson said that the person skilled in the art would be a team consisting of an instrumentation design engineer and a person with drill experience, preferably in core orientation. Professor Tapson said that it was possible, but unlikely, that these skills would be found in one person. Professor Tapson was cross-examined about a statement he made in a statutory declaration. I do not need to go into the details. It is sufficient to say that I do not discount his evidence as a result of his cross-examination on that topic.
Mr Brown considered that the person skilled in the art would be engineers – electrical/software and firmware, and a driller, or combination of all three.
Mr Ayris said that the person skilled in the art would be a person with relevant drilling related experience, in particular, core drilling, and a software and electronics engineer.
Mr Edmonds said that the person skilled in the art would be an electronic and software engineer with experience in the design of survey tools and a mechanical engineer with experience in the design of drilling equipment and barrel enclosure design.
In my opinion, the person or persons skilled in the art would have experience or knowledge in electronics and software and drilling. There was debate before me about whether one person was likely to have all of the requisite experience and knowledge. I am of the opinion, on the balance of probabilities, that that is unlikely and it is more likely that the relevant “person” will be a team of two, or possibly more, persons.
In this case, each of the four experts had varying levels of expertise relevant to areas or aspects of the task.
FIELD OF THE INVENTION
The field of the invention was core orientation. It was not surveying. However, that does not of itself mean the skilled addressee would not have knowledge of and possibly have regard to survey tools. The evidence suggests that the skilled person would have knowledge of survey tools. The main area of dispute about the field of the invention was whether it was restricted to mineral exploration or included, as well, petroleum exploration. AMC submitted that the field of the invention was mining for minerals and that involves, among other things, drilling in hard rock environments. It did not include exploration for oil and gas which generally involves environments of soft and fractured rock. Globaltech submitted that there was nothing in the Specification which excluded exploration for oil and gas as well as mining for minerals. The significance of this issue seemed to be as to the common general knowledge and prior art the skilled addressee would have and would consider as relevant. AMC also put its argument in the alternative, that is, even if Globaltech is correct and the field of the invention includes oil and gas, it still could not succeed.
In Coretell First Instance, McKerracher J held that the Method and System Patents were restricted to mineral exploration. His decision on that topic was not challenged on appeal. His Honour said (at [242]-[243]):
As noted, the claims must be construed in the context of the specification in which they appear. Looking to, amongst other things, the field in which the inventions are directed as indicated from the specification, it is quite clear that the context of the Patents is mineral exploration. The evidence is that the claimed inventions are directed to core sampling and rock formations where exploration has been carried out for minerals. Such formations are hard rock, in which fractures are unlikely to occur and which include unfractured igneous and metamorphic rock formations.
In contrast, the formations, as the expert evidence clearly established, in petroleum exploration were likely to be soft, brittle or highly fractured. These features are requisite features in order for hydrocarbons supporting the existence of petroleum to be present. It is clear that the claimed inventions are not intended for use in orienting core in such formations and, indeed, they would not work in such formations. I am satisfied on the expert evidence that the person skilled in the art would clearly understand that such inventions would not be expected to be used other than in mineral exploration. The specifications of the Patents themselves describe the prior art methods. They are peculiar to the context of mineral exploration and drilling in hard, unfractured or solid rock. The references to the prior art methods in the ‘Background Art’ sections of the Patents are plainly directed to that context.
As I have already said, the specifications for the Method and System Patents considered in Coretell First Instance were substantially the same as the Specification of the Patent.
The evidence in this case establishes, as it did in Coretell First Instance, that mining for minerals generally involves hard rock environments and that, by contrast, oil and gas exploration is more likely to involve soft, brittle or highly fractured forms.
Professor Tapson considered that the field of the invention was core orientation in the mining industry and did not include oil and gas exploration and surveying. Mr Brown expressed a similar view.
Mr Ayris said that the field of the invention was core sample orientation device, not specifically for mining, oil and gas and surveying.
Mr Edmonds said that the field of the invention was core orientation for geological surveying in the mining industry and surveying, in the sense of geological surveying, and he expressed no opinion on whether it included oil and gas exploration.
The evidence of Mr Brown establishes that drilling in a hard rock environment is more likely to be carried out at an angle to the vertical, whereas drilling for oil and gas is more likely to be carried out at the vertical. Furthermore, in a hard rock environment, the rock and, therefore, the core sample is less likely to fracture.
I am persuaded by the evidence of Mr Brown and Professor Tapson that the field of the invention is drilling in hard rock environments. It is true that both witnesses under cross‑examination acknowledged (as is the case) that the Specification does not contain an express statement restricting the invention to hard rock environments. It is also true, as Mr Brown acknowledged under cross-examination, that AMC in its marketing material promotes its own Ace Core Tool, which is said to be an embodiment of the invention, as suitable in badly broken formations. I am disposed to think that it is the marketing material which is at fault, rather than the marketing material casting doubt on the general proposition.
I consider that the following matters lead to the conclusion that the field of the invention is mining for minerals. First, the background art referred to in the Specification consists of tools and devices used in mining and not, as far as the evidence went, in oil and gas. The orientation spear and the mechanical core orientation devices for marking the core, such as the Ezy-Mark which is mentioned in the Specification, and the Ballmark which is not, are used in hard rock drilling. Secondly, the Specification refers to core drilling operations carried out at an angle to the vertical and to the core sample being held in fixed relation to the inner tube of the core drill, both features being more representative of hard rock drilling than drilling into soft or fractured rock. Thirdly, there is no reference in the Specification to the use of scribe knives which, as I will explain, were commonly used in oil and gas exploration. Finally, I consider that there is force in Professor Tapson’s opinion that the Specification is plainly about drilling into hard rock and it would be odd if the invention became less useful, the more successful the exploration task was as would be the case in the exploration for oil and gas.
COMMON GENERAL KNOWLEDGE
Common general knowledge was described by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA 21; (2007) 235 CLR 173 (Lockwood [No 2]) in the following terms (at [55]):
“Common general knowledge” was well understood as being “part of the mental equipment of those concerned in the art under consideration”, and Minnesota Mining had confirmed that what was “known or used” in Australia was confined to common general knowledge, which was explained as:
“the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old”.
(Citations omitted.)
In Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 (AB Hässle v Alphapharm) (at [31]), Gleeson CJ, Gaudron, Gummow and Hayne JJ upheld the primary judge’s rejection of information as common general knowledge in circumstances in which there was no evidence of its general acceptance and assimilation by those persons skilled in the relevant art.
In order to qualify as common general knowledge, it is not necessary that the knowledge be memorised by persons skilled in the art. It is sufficient if it is material in the field in which the person skilled in the art is working which he or she knows exists to which he or she would refer as a matter of course (ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; (1999) 45 IPR 577 at [112] per Emmett J; Re ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349; (2000) 106 FCR 214 at [57]; see Bodkin C, Patent Law in Australia (2nd ed, Thomson Reuters, 2014) at [4110]).
I begin with some basic facts about core sample orientation and downhole tools and instrumentation.
Mr Brown described the core sample orientation process and the tools which are used in that process. I accept his evidence. Core sample orientation is a process of obtaining and marking the orientation of a core sample from a drilling operation. The core is typically a solid cylindrical core of approximately three metres. Core orientation procedures are required to be carried out because, once detached from its parent rock and retrieved to the surface, the recovered sample will not reflect its original orientation underground. In order to reorientate the sample, it is typically necessary to include an orientation tool in the drilling assembly unit between the greaser unit and the inner core tube holding the core sample. The purpose of the orientation tool is to indicate the orientation of the core sample in its original underground orientation and provide that orientation data to the operator. The process of orientating drill samples allows geologists to correlate recovered samples with one another to reveal trends in rock strata and predict whether resource mining is worthwhile, and if so, where, in what direction, and how deep below the surface. Core orientation is an important process as it allows geologists to build a three-dimensional profile of subsurface resource deposits, such as iron ore or diamonds. As metal bearing deposits are often determined by the structural compositions of their enclosing rocks, it is important for the geologists to understand the structural elements in order to estimate the likely location of mineral bearing ore deposits and once located, determine the likely position, size and composition of the deposit. If a valuable ore seam is found, it is vital that the core has been orientated properly so that a true picture of the ore body can be investigated, located and estimated.
Mr Brown described other exploration drilling techniques and the way in which they differ from core drilling. He referred to rotary-percussion drilling and rotary-airblast drilling, which involved recovery of mixed rock chips for analysis. Other than to note that there are other exploration drilling techniques, it is not necessary to set out the details of the techniques.
Core sample orientation is different from measuring dip or azimuth. Core orientation requires the roll orientation of a core sample in its original underground location to be ascertained. Azimuth measures the direction or inclination to a horizontal plane.
Mr Ayris gave a helpful summary of downhole instrumentation which I accept. He said that the term referred to all kinds of tools that were used down boreholes and those tools included survey tools, core orientation tools, drilling tools, geophysical probes and gyroscopes. Mr Ayris said that a survey tool was a tool that provided information to plot borehole trajectory and path, usually including azimuth and direction and usually using a compass or a gyroscope or other deviation methods. He said that a core orientation tool was one that provided information as to the orientation of a core sample drilled from a borehole. He said that core orientation did not generally require a measurement of azimuth or direction. Mr Ayris described a drilling tool as a tool that has a drilling bit to cut or bore a hole.
I have set out earlier my conclusions concerning the qualifications and experience of the skilled addressee faced with the task at the Priority Date of developing an improved method or system for providing an indication of a core sample relative to a body of material from which the core has been extracted (at [108]-[113]).
The four experts were asked to provide their respective opinions about whether the skilled addressee would have known about core orientation tools and survey tools and what he or she would have known about such tools.
I start with core orientation tools.
Mr Brown said that unless the electrical or software engineers had specific exposure to the industry, it would not be necessary for such persons to know about core orientation tools. However, the drilling expert would need to understand the drilling workflow and the application requirement. Professor Tapson said that the drilling expert would need to be familiar with the core orientation problem and application, and that the engineer would not necessarily need this prior knowledge. Mr Ayris said that the skilled addressee would need to know about core orientation tools and that internet searching would have identified existing core orientation systems in the oil and gas industry. He emphasised once again, that this opinion was based on an interpretation that the task required development rather than implementation. Mr Edmonds said that the electronic and software engineer would not have had to have had experience or knowledge of orientation, whereas the mechanical engineer would have needed knowledge of core orientation systems.
I turn now to survey tools.
Mr Brown said that the diamond driller/operator would be familiar with survey tools. The electrical or software engineer would not necessarily have had that knowledge unless exposed by previous experience. Professor Tapson said that the relevant person or persons would not need to know about such tools and that the information might be acquired in the course of the task. Mr Ayris said that the skilled addressee would have known about such tools. Mr Edmonds said that the electronic and software engineer should have knowledge of survey tools, whereas the mechanical engineer would not need to know about survey tools.
I consider that the skilled addressee, in this case a team, would have a member who would have knowledge about core orientation tools and survey tools.
The four experts were asked about whether the skilled addressee they each identified would have known about tools that were used in mining and in oil and gas. All said that the person skilled in the art would have known about tools used in mining, and Mr Ayris added that in 2004, there were only a few instrument manufacturers. Mr Brown said that the skilled addressee which he had identified would not have known about tools used in oil and gas. Professor Tapson said that the skilled addressee which he had identified would not necessarily have known about tools used in oil and gas. Mr Ayris said that the skilled addressee which he had identified would have known about tools that were used in oil and gas, and that it was common practice to review developments within the oil and gas sector. Mr Edmonds offered no comment on the issue. This issue is linked to the issue concerning the field of the invention, although it does not necessarily follow that because the field of the invention is mining and not oil and gas, as I have found, the person skilled in the art would not have some knowledge of relevant developments in oil and gas exploration.
This lengthy description of the evidence of the four experts may be summarised in the following way. The field of the invention was core orientation in mining. The person skilled in the art is a team with the experience and qualifications previously described and they, or at least one member, would have knowledge of core orientation tools and survey tools. I am not satisfied that the team would have known about tools used in oil and gas, or at least would have had detailed knowledge of such tools.

AMC referred to the general evidence of Mr Brown and Mr Ayris which I have summarised above.
AMC submitted that the core orientation tools known and used in the field included the spear, the Ezy-Mark and the Ballmark. Each of these tools were mechanical orientation tools.
AMC’s case is that at the Priority Date, the person skilled in the field of the orientation of core samples in drilling operations would have used mechanical means for in situ orientation of core samples, such as the spear, Ezy-Mark and Ballmark. The spear was the most commonly used method of core orientation in 2004. Before the introduction of the Ace Core Tool after the Priority Date, there were no core orientation tools which used electronic means to measure, record and display the orientation of extracted core samples.
Each of the core orientation tools referred to above, other than the spear, were used in conjunction with the core drill assembly which conventionally consisted of a head assembly, an inner tube, an outer tube or core barrel, a drilling bit and a core lifter.
AMC referred to Globaltech’s submission that common general knowledge included electronic survey tools, such as the Eastman Multishot, Reflex Maxibor and Scientific Drilling EMS. AMC submitted that what these survey tools measured was dip or azimuth measurements rather than core orientation.
The Eastman Multishot was a system used in the oil and gas industry. Each of the experts were aware of the Eastman Multishot before the Priority Date but none had used it in a core orientation application. Only Mr Ayris had used the Eastman Multishot before the Priority Date and he had used it as a survey tool. His description of its use as a survey tool is set out above (at [86]). AMC submitted that recording the depth of the tool in the borehole was not the same as measuring orientation. Mr Edmonds correctly drew the distinction in stating that while he was aware of the Eastman Multishot before the Priority Date, he was not aware of any core orientation devices being used in Australia before the Priority Date.
The Reflex Maxibor was also an optical based survey tool and the webpage describing the Maxibor states that its function is optical measurement of angle and distance. Neither Mr Brown nor Mr Ayris identified the Reflex Maxibor as a core orientation device known to them before the Priority Date.
The Scientific Drilling EMS was also a borehole survey tool. Mr Ayris was aware of the Scientific Drilling EMS from at least 1996. However, he did not himself use the device for orienting core before the Priority Date. In like vein, Professor Tapson was not aware of the Scientific Drilling EMS being used for core orientation before the Priority Date.
AMC submitted that neither the Eastman Multishot nor the Scientific Drilling EMS could be connected to the back-end assembly of a drill without the use of a device like a muleshoe. Mr Brown gave evidence to the effect that, in the case of mineral exploration, a muleshoe could not be used effectively for core drilling because although it might give the operator a reading at the top of the back-end assembly, that reading cannot be transferred past the thrust bearing, that is to say, the middle of the back-end assembly, into the core sample due to the free rotation of the back-end assembly.
Furthermore, the Eastman Multishot and the Scientific Drilling EMS were used in the oil and gas industry rather than the mining industry. Mr Ayris was the only expert aware of the Eastman Multishot as a core orientation device before the Priority Date. Mr Ayris’ evidence did not demonstrate that the Eastman Multishot was used in core orientation applications.
With respect to the lack of an inventive step and reliance on common general knowledge alone, AMC submitted that Globaltech had put forward no evidence that it was a straightforward or obvious matter to combine all of the features of the contested claims. It referred to the evidence of Mr Ayris who said that he was active in the field from 1989. He was familiar with some of the borehole survey tools relied on by Globaltech as prior art and he even used or distributed some of these survey tools for many years before the Priority Date. Mr Ayris gave evidence concerning the Eastman Multishot tool, the Scientific Drilling EMS and the MI-3 tool from Icefield Tools. He gave evidence that he knew the first two of these tools were capable of being used as core orientation tools. However, it is clear that he himself did not use them for core orientation purposes. Nor is there any evidence that any of these tools were actually used in Australia for core orientation before the Priority Date. It follows that the fact that Mr Ayris did not use either the Scientific Drilling EMS or the Eastman Multishot for core orientation purposes before the Priority Date is significant. He had been actively involved in the field for 15 years before the Priority Date and Globaltech itself said in the course of its submissions that there was no-one else who knew more about the area at that time than Mr Ayris. However, Mr Ayris did not take the step which Globaltech contends would have been obvious or very plain for such a person based on that prior art. He did not even attempt to apply those tools to core orientation, let alone develop a method or system for orienting core samples having all the features claimed in each of the contested claims of the Patent. Nor did he give any evidence of any other person in the field having done so before the Priority Date.
Furthermore, even if the field of the invention includes the oil and gas industry, the oil and gas industry prior art, such as the Eastman Multishot tool and the Scientific Drilling EMS tool, is reliant on the scribe knife method for orienting core samples. The scribe knife method points away from the method and system claimed in the Patent. In particular, it points away from a method or system involving the steps of recording the orientation of the “inner tube”, the core sample being “held in fixed relation” to the inner tube, or the “relating step” (i.e., step 5 in claim 1).
AMC referred to the agreement of the experts as to the improvements the Patent offered in the mining industry. In addition, Mr Brown said that the Ace Core Tool which is an embodiment of the Patent resulted in a paradigm shift such that digital core orientation has become the predominant means of core orientation in Australia and the tool has had considerable commercial success.
With respect to common general knowledge and the High Side Seeker tool, AMC submitted that the skilled person or skilled team would not have ascertained the tool or regarded it as relevant. None of Mr Brown, Professor Tapson or Mr Edmonds were aware of the tool before the Priority Date. Furthermore, it is significant that from March 2004, Mr Edmonds was working on a task at Ranger Survey Systems to develop a downhole survey tool that could be used as an electronic core orientation system. Globaltech, in fact, described Mr Edmonds’ task at Ranger Survey Systems as “the very task of developing an electronic core orientation system, which the Patent relates to 6 months before the Priority Date”. In the course of that task, Mr Edmonds took steps to familiarise himself with the core orientation systems and drill hole surveying systems that were available at the time. In particular, in March 2004 and onwards, he had regard to PDAC conference brochures, trade materials and internet searches. Mr Edmonds did not become aware of the High Side Seeker tool despite having been engaged in the task I have described. Although Mr Ayris attended the PDAC conference in 2004, he did not recall seeing the High Side Seeker tool at the conference. Properly construed, the evidence of Mr Brown and Professor Tapson is not to the effect that they would have found the promotional website material or information about the public disclosure of the tool at the PDAC conference in 2004.
AMC submitted that the evidence does not establish that the skilled person would have considered the High Side Seeker tool as being relevant to core sample orientation in the mineral exploration industry. Furthermore, AMC relies on its submission that the High Side Seeker tool could not be used to orientate a core sample without extensive modifications.
AMC submitted that, even if the skilled person or skilled team had ascertained the High Side Seeker tool and regarded it as relevant, it would not have led to the invention claimed in the claims in suit. Globaltech has adduced no evidence establishing an intellectual pathway of the hypothetical non-inventive worker from the tool to the combination claimed in the claims in suit. It is noteworthy that Dr Blake’s evidence was to the effect that nobody had tried to apply the tool for the purpose of core orientation at any point in time. AMC submitted that that suggests that it would not have been “very plain” to the skilled worker before the Priority Date to arrive at the claimed invention.
Analysis
Common General Knowledge
I refer to the matters set out above (at [129]-[159]) and, in particular, the description of the mechanical orientation tools (at [144]-[147]).
Based on Mr Brown’s evidence, which I accept, before the Priority Date a person skilled in the field of core orientation would have used one of the mechanical core orientation devices for orienting core. The most commonly used method was the spear. Prior to the introduction of the Ace Core Tool shortly after the Priority Date, there were no core orientation tools which used electronic means to measure, record and display the orientation of extracted core samples in the field of mineral exploration. Furthermore, I accept Mr Brown’s evidence that even in 2007, mechanical methods for orientation of core samples were routine, standard and commonly used, and digital orientation tools were rare with the exception of the Ace Core Tool.
There was no dispute between the parties that the mechanical core orientation tools, other than the spear, were used in conjunction with the core drill assembly and that the assembly conventionally consisted of the following: a head assembly (or back-end assembly which is used to connect the inner and outer tubes and provides an arrangement for the inner tube to be retrieved to the surface at the conclusion of the drilling run); an inner tube being a tube that progressively receives and holds the 3 metre or 6 metre core sample as drilling advances in the rock; an outer tube being a tube that the inner tube fits into during core drilling. The outer tube is connected to the drilling bit; a drilling bit, being an angular cutting tool for cutting a core sample from the surround rock; and a core lifter, being a circular sleeve connected to the bottom of the inner tube that grips the core sample at the conclusion of the drilling run.
I have already referred to the electronic survey tools which were known at the Priority Date, including the Eastman Multishot, the Reflex Maxibor and the Scientific Drilling Multishot. They are all survey tools which measure dip or azimuth, rather than core orientation.
As at the Priority Date, the Eastman Multishot was used in the oil and gas industry. As outlined above, all four experts were aware of the tool, but only one had used it and that was Mr Ayris. He had used it as a survey tool. Mr Ayris did not use the Eastman Multishot for core orientation purposes before the Priority Date. Mr Edmonds was aware of the Eastman Multishot before the Priority Date, but to him, it was an electronic survey tool, not an electronic core orientation device.
The Reflex Maxibor has been described previously. It was also an optical based survey tool that measured the shape of a borehole by reference to a known initial dip and azimuth. Mr Brown and Mr Ayris were aware of the Reflex Maxibor before the Priority Date, but neither identified it as an electronic core orientation device.
The Scientific Drilling Multishot was a borehole survey tool which originated in the oil and gas industry. Mr Ayris, who gave evidence of attending trade shows in the oil and gas industry, was not aware of the Scientific Drilling Multishot being used as an electronic core orientation device and, as I have said, he never used it in that way. There is no evidence that the Scientific Drilling Multishot was used for core orientation before the Priority Date.
Professor Tapson was not aware of the tool being used for core orientation before the Priority Date.
Mr Brown gave evidence of a difficulty with using the Eastman Multishot or Scientific Drilling Multishot in core drilling which I accept. There would have to be a device like a muleshoe to connect the tool to the back-end assembly, but although that might provide a reading at the top of the back-end assembly, that reading cannot be transferred past the thrust bearing into the core sample because of the free rotation of the back-end assembly.
The MI-3 tool was known only to Mr Ayris. It was not designed for or ever used for core orientation. Even if it was part of common general knowledge, it was part of such knowledge as an electronic survey tool like the other electronic survey tools about which evidence was given.
The High Side Seeker tool was not part of common general knowledge at the Priority Date. None of the four experts were aware of it at the Priority Date. Mr Ayris went to the PDAC conference in March 2004, but he had no recollection of the High Side Seeker tool. I have already found that such public disclosure as there was at the conference was not a disclosure of the methods and systems in the Patent.
I am of the opinion that Globaltech has failed to establish that the invention was obvious to a person skilled in the art in light of common general knowledge alone. My reasons for reaching this conclusion are as follows. First, Mr Ayris has been involved in the field since 1989. He has used the Eastman Multishot and he has distributed the Reflex Maxibor, the Scientific Drilling Multishot and the MI-3 tool. Although he said that he understood that the Eastman Multishot could be used for core orientation, he never used it in that way, nor did he use the Scientific Drilling Multishot in that way. Mr Ayris was described in Globaltech’s opening as the person who knew as much about the field as anybody else. Secondly, the experts agreed that the methods and systems described in the Patent offer a number of improvements over the existing devices in the mining industry. Those improvements were as follows: speed of operation for the drilling contractor; accuracy and reliability over the mechanical systems; a digital system attached to the core tube; applying the advantages of electronic systems in terms of accuracy and reliability that had been experienced in survey tools to core orientation tools; the concept that identifying the time of core break is most useful in identifying the data associated with core orientation; and the use of the orientation tool to reorientate the core on the surface while the core is still in the tube. As to this last matter, it was noted that the spear method also did not require a complex reorientation process at the surface as the core was already marked. It is not insignificant that Mr Ayris described the improvement in the Patent in terms of an improvement in the mining industry from a mechanical spear to a digital system attached to the core tube. Mr Edmonds said that the Patent describes using the electronic technology known at the time for surveying tools and its inherent advantages and applies that technology to mechanical core sampling. Furthermore, there is no reason to doubt the evidence of Mr Brown and Professor Tapson where they elaborated on the advantages. Mr Brown referred to speed and accuracy over the mechanical orientation devices in the mining industry, and Professor Tapson referred to speed and the elimination of operator error. Thirdly, Mr Brown and Professor Tapson gave evidence to the effect that the invention was not obvious in light of common general knowledge at the Priority Date. Fourthly, the Ace Core Tool which is an embodiment of the claims in the Patent (and indeed is claimed by Globaltech to be an anticipation if the priority date is deferred) and which was released into the Australian market in late September 2004 has been a commercial success. Its introduction resulted in what Mr Brown described as a paradigm shift, such that core orientation has become the predominant means of core orientation in Australia. Two further versions of the tool have been made. Fifthly, Mr Edmonds, who in fact was engaged in the task, or a very similar task, to the task to be attributed to the notional skilled team for the purpose of the inventive step question, did not discover the invention. Finally, even if the field of the invention includes the oil and gas industry, the use of scribe knives is part of the use of the Eastman Multishot and Scientific Drilling Multishot. I accept the evidence of Professor Tapson and Mr Brown to that effect. Professor Tapson described the reorientation process involved in the scribe knife prior art methods and that includes the orientation taking place with the core sample removed from the inner tube (see [433] above). For reasons I have given in my discussion on novelty, I agree with AMC that this process points away from a method or system which refers to “recording the orientation of the inner tube”, the core sample being held “in fixed relation” to the inner tube and the relating step.
Common General Knowledge and the Scientific Drilling Marketing Material
The first issue is whether the Scientific Drilling marketing material was material the person skilled in the art could be reasonably expected to have ascertained, understood and regarded as relevant.
Mr Brown was not aware of the Scientific Drilling electronic survey tool being used for core sample orientation in the mining industry, an industry which he described as small. He agreed that he could have found the information if it was on the internet, but it has not been established that the information about the Scientific Drilling Multishot or the marketing material was on the internet. Professor Tapson was not aware of the Scientific Drilling Multishot at the Priority Date. Mr Edmonds said that he was aware of the Scientific Drilling Multishot survey tool and Mr Ayris said that he was aware of the tool as a borehole survey device. In any event, the Scientific Drilling marketing material would not have been regarded as relevant, bearing in mind that it involves techniques relevant in the oil and gas industry. This can be seen from passages in the material itself:
Using the surface computer, the probe is programmed or “armed” with a delay time and shot interval determined by the Survey Engineer as most suitable for the wellbore profile. … On highly deviated wells however the survey engineer may wish to pump the instrument down.
The standard steering probe is supplied for use in wellbore temperatures up to 135ºC. …
(Emphasis added.)
Having regard to the field of the Patent, techniques in the oil and gas industry are not relevant to core sample orientation for mineral exploration. This conclusion is supported by the fact that Mr Edmonds did not consider any oil and gas systems such as the Scientific Drilling Multishot or come across it. Mr Ayris was not aware of any core orienting techniques in oil and gas being transferred to mining and he did not transfer any himself. He said that his primary interest at the time was survey instrumentation. I am not satisfied that the Scientific Drilling marketing material could reasonably be expected to have been ascertained, understood and regarded as relevant by the person skilled in the art.
In any event, I am not satisfied that the invention is obvious, even if the Scientific Drilling marketing material was ascertained, understood and regarded as relevant. There are at least the following differences between the method or system envisaged by the Scientific Drilling Multishot and the methods or systems in the claims in suit.

The technique in the Scientific Drilling Multishot envisages that the core sample will rotate as it fills the core tube. The orientation of the inner tube is not recorded in the Scientific Drilling Multishot. The technique relies on scribe knives to physically mark the core sample as it enters the tube. The scribe knife reference mark is correlated with both depth and time measurements to calculate the orientation of any particular point of the core sample once extracted. Mr Brown said that, in his view, it is necessary in the method described in the Scientific Drilling Multishot to use scribe knives to mark the physical orientation of the core as it enters the core barrel.
Mr Brown addressed the description and a diagram for the “Core Orientation of Electronic Core Orientation”. The diagram shows a particular orienting core barrel, a muleshoe and scribe knives. He described a muleshoe as a piece of running gear that is coupled with the bottom hole assembly to ensure that its components are in alignment. The scribe reference mark will align up to the Scientific Drilling Multishot via the muleshoe. A muleshoe would not be used in mineral exploration.
Mr Brown was asked to comment on the reference to the use of a muleshoe for the purposes of connecting the Scientific Drilling tool to the back-end assembly of a drill. He said, and I accept, that in mineral exploration, one would not use a muleshoe on a back-end assembly used to core because the presence of thrust bearing means that one cannot transfer any reference past the thrust bearing part. In a back-end assembly, the middle will be a thrust bearing. Mr Brown said:
MR BROWN: So the back-end assembly, if you will, has – you can describe it as having two parts. In the middle will be a thrust bearing. It just means that both parts can move independently that can rotate independently of each other, and this is because of the nature of the coring. The top part of the back-end assembly stays fixed to the drill rods as they rotate. It rotates with them. At the thrust bearing is where that rotation starts through the workings of a bearing and that bottom section of the back-end assembly is connected to an inner tube. And that stays, normally, still as the core is fed up into it. So if you were to put a mule shoe into the top of that mineral exploration back-end assembly, it might give you a reading, but because it freely rotates, you can’t transfer that past the thrust bearing into the core sample.
Mr Brown said that, in the case of the Scientific Drilling Multishot technique, the orientation would be achieved by applying a toolface offset, correlating with depth, and using the scribe marks. As Mr Brown said, it is a more complicated process than “just looking at a screen”.
Mr Brown said, and I accept, that there are at least three differences between the method and system in the claims in suit and the Scientific Drilling Multishot technique. First, the method and system in the claims in suit are such that the orientation of the core sample is provided immediately to a drill crew and the orientation can be marked on the core sample before it is removed from the core tube. By contrast, the Scientific Drilling Multishot technique involves a calculation of orientation by reference to the deviation of scribe knife lines, as well as a combination of other recorded information, including depth measurements as well as time.
Secondly, in the Scientific Drilling Multishot technique, the core sample is not held in fixed relation. The core catcher does not perform this function. Its function is to stop core pieces from falling out, rather than to hold the core sample in fixed relation to the inner tube.
Thirdly, the Scientific Drilling Multishot does not describe “inputting a time measurement” into the system. The Scientific Drilling Multishot can only be used to calculate orientation at a point along the core sample by reference to depth as well as time.
The scribe knife method employed in the Scientific Drilling Multishot points away from the method and system and, in particular, the steps involving “recording the orientation of the inner tube”, the core sample being “held in fixed relation” and the “relating step”. I accept that even if the Scientific Drilling Multishot was able to obtain some kind of data relevant to roll orientation, it did not work in the manner of the claims in suit because it did not disclose the feature of the core sample being “held in fixed relation” to the inner tube. I also accept that for the method and system claims in suit to work, the inner tube must not rotate relative to the core and that the orientation reading of the inner tube serves as a proxy for the orientation of the core sample.
I accept Professor Tapson’s evidence that a number of features of, for example, claim 1 are either not present or it is not clear that they are present. First, although the Scientific Drilling Multishot refers to recording at predetermined time limits, it is unclear whether those measurements are of the orientation of the inner tube. Secondly, the presence of a bearing pack between the tool and the inner tube suggests that the tool and inner tube may not be held in fixed relation suggesting this feature may not be present. Thirdly, the “held in fixed relation” integer is not a feature of the Scientific Drilling Multishot because the scribe knife method is used to compensate for a lack of fixed relation between the core sample and the inner tube. If there was a fixed relation, there would be no need for the scribe knife method. Finally, with respect to the relating step, that is not disclosed in the Scientific Drilling Multishot because with scribe markings on the core used to orientate the core sample in a reconstruction process at a time when the core sample and the inner tube are no longer held in fixed relation to each other. In addition, the Scientific Drilling Multishot does not depend on identifying the specific time required by the integer and there is no mention or description of a time relation step at any part of the process of downloading of data.
I am not satisfied that the methods and systems identified in the Patent would have been obvious to the skilled team armed with common general knowledge and the Scientific Drilling marketing material.
Common General Knowledge and the High Side Seeker Promotional Website Material and the High Side Seeker Tool
Again, the first issue is whether the High Side Seeker promotional website material and the High Side Seeker tool was material the person skilled in the art could be reasonably expected to have ascertained, understood and regarded it as relevant.
As I have previously said, none of Mr Brown, Professor Tapson and Mr Edmonds were aware of the High Side Seeker tool before the Priority Date. Mr Ayris said that he attended the PDAC conference in March 2004, but he could not recall the content of Dr Blake’s presentations. In oral evidence, he said that he had no recollection of the High Side Seeker tool prior to being sent documents relating to it in this proceeding.
The evidence of Mr Edmonds is particularly significant because he was engaged in the very task that one postulates as the task undertaken by the notional skilled team, or at least a very similar task. In oral evidence, Mr Edmonds explained that he searched for information, including on the internet, to familiarise himself with the tools that were being used in the field at the time. However, he largely concentrated on information in the brochures and technical information brought back from the PDAC conference. He said he would have found the marketing material on the internet on conducting a search. He said he would have found material about Icefield Tools, the MI-3 tool and the High Side Seeker tool if Ranger Survey Systems had been examining the possibility of establishing an operation in Canada. Importantly he agreed that it is in that sense that the Court should understand his evidence that the relevant marketing material was on the internet.
Mr Brown clarified his previous evidence and said that he would have tracked down the business of Icefield Tools and Professor Tapson believes he would have found the information about the Icefield tools, but would not have identified them as core orientation tools.
It is not clear to me how it is said that the person skilled in the art would have ascertained the High Side Seeker tool and limited disclosure at the PDAC conference in March 2004. That leaves the promotional website material. Having regard to the evidence of the experts summarised above, I am not satisfied that it would have been ascertained and regarded as relevant by the person skilled in the art. There is a further problem for Globaltech. Even if the promotional website material was ascertained, I am not satisfied that the person skilled in the art would regard it as relevant in view of the developments that would be necessary before the tool could be deployed in a drilling assembly operating in accordance with the methods and systems described in the claims in suit.
Even if the skilled person could reasonably be expected to have ascertained, understood and regarded the promotional website material as relevant, I am not satisfied that that leads to the conclusion the invention is obvious. The extent to which the promotional website material fell short of disclosing the invention has been addressed in the context of novelty. The matter not disclosed and the possible use of scribe knives means that the skilled team would not be led to the invention by steps taken as a matter of routine.
The words of Lord Diplock in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 at 362 are apposite:
Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result.
Before leaving inventive step, I add that on any view the claims in the Patent involving a visual indication of the orientation or a direction in which the core sample should be rotated (i.e., claims 4, 16, 23 and 46) have not been shown to be obvious in light of common general knowledge and the promotional website material or the High Side Seeker tool itself.
Conclusion
I reject Globaltech’s lack of inventive step case.
CONCLUSIONS
The priority date of the claims in suit is 3 September 2004. The claims in suit are valid. Each of the respondents has infringed the claims in suit. The applicants are not entitled to additional damages under s 122(1A) of the Act.
The applicants are to file and serve within seven days draft minutes of order reflecting the conclusions set out in these reasons.

I certify that the preceding five hundred and twenty-five (525) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko.
Associate:
Dated: 26 November 2018

Annexure A

File number:	NSD 1089 of 2016
Judge:	BESANKO J
Date of judgment:	26 November 2018
Catchwords:	PATENTS – where first applicant is the registered owner of a patent titled the Core Sample Orientation (the Patent) – where second applicant is the exclusive licensee of the Patent – consideration of the person skilled in the art – consideration of the field of the invention – consideration of the common general knowledge PATENTS – whether respondents have infringed various claims in the Patent – where claims in suit in the Patent are method claims and system claims PATENTS – consideration of the proper construction of the claims in suit – whether there is a lack of clarity in respect of the claims in suit – whether there is a lack of fair basis in respect of the claims in suit – whether there is a lack of utility in respect of the claims in suit PATENTS – where respondents filed a cross-claim challenging the validity of the claims in suit on a number of grounds – priority date of claims in suit – whether claims in suit are invalid due to a lack of novelty – whether claims in suit lack an inventive step having regard to common general knowledge alone and, in the alternative, common general knowledge and information falling within the terms of s 7(3) of the Patents Act 1990 (Cth) PRACTICE AND PROCEDURE – where order made prior to trial that issues of liability be heard and determined before issues of the quantum and any pecuniary relief – where claim for additional damages under s 122(1A) of the Patents Act – where entitlement to additional damages under s 122(1A) of the Patents Act, but not the quantum thereof should an entitlement be established, is a part of the hearing – whether applicants are entitled to additional damages
Legislation:	Acts Interpretation Act 1901 (Cth) s 2B Copyright Act 1968 (Cth) Patents Act 1990 (Cth) ss 7, 13, 18, 40, 43, 79B, 117, 120, 122 Patents Regulations 1990 (Cth) reg 3.12
Cases cited:	Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 Apotex Pty Ltd v ICOS Corporation [2017] FCA 466 Apotex Pty Ltd v ICOS Corporation (No 3) [2018] FCA 1204 Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061; (2010) 88 IPR 52 AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324 Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 4) [2015] FCA 1372 Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 2) [2018] FCA 1109 Beadcrete Pty Ltd v Fei Yu trading as Jewels 4 Pools (No 2) [2013] FCA 187; (2013) 100 IPR 188 British Dynamite Co v Krebs (1879) 13 RPC 190 Catnec Components Limited v Hill & Smith Limited [1982] RPC 183 CCOM Pty Ltd v Jiejing Pty Ltd (1994) AIPC 91-079; (1994) 51 FCR 260 Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54; (2017) 250 FCR 155 Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; (2011) 91 IPR 209 Electrical & Musical Industries Ltd v Lessen Ltd (1939) 56 RPC 23; [1938] 4 All ER 221 General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; (2014) 222 FCR 336 H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151 ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; (1999) 45 IPR 577 Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139; (2008) 239 FCR 117 Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155 KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481; (2007) 71 IPR 615 Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA 21; (2007) 235 CLR 173 Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59 Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228 Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676; (2000) 51 IPR 43 Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) AIPC 90-492; (1988) 81 ALR 79 Re ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349; (2000) 106 FCR 214 Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132; (2011) 199 IPR 194 Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 Welch Perrin & Co Pty Ltd v Worrell [1961] HCA 91; (1961) 106 CLR 588 Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262
Dates of hearing:	30, 31 August 2017, 1, 4-7 September 2017
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Copyright and Industrial Designs
Category:	Catchwords
Number of paragraphs:	525
Counsel for the Applicants/Cross-Respondent:	Mr C Dimitriadis SC with Ms P Arcus and Ms A Spies
Solicitor for the Applicants/Cross-Respondent:	Gilbert + Tobin
Counsel for the Respondents/Cross-Claimant:	Ms K Howard SC with Mr A Fox
Solicitor for the Respondents/Cross-Claimant:	Watermark Intellectual Property Lawyers

NSD 1089 of 2016
BETWEEN:	AUSTRALIAN MUD COMPANY PTY LTD (ACN 009 283 416) First Applicant REFLEX INSTRUMENTS ASIA PACIFIC PTY LTD (ACN 124 204 191) Second Applicant
AND:	GLOBALTECH CORPORATION PTY LTD (ACN 087 281 418) First Respondent GLOBALTECH PTY LTD (ACN 086 012 393) Second Respondent
AND BETWEEN:	GLOBALTECH CORPORATION PTY LTD (ACN 087 281 418) Cross-Claimant
AND:	AUSTRALIAN MUD COMPANY PTY LTD (ACN 009 283 416) Cross-Respondent

JUDGE:	BESANKO J
DATE OF ORDER:	26 November 2018