Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 3) - [2022] FCA 1189

FEDERAL COURT OF AUSTRALIA
Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 3) [2022] FCA 1189

File number(s): NSD 1040 of 2019

Judgment of: ROFE J

Date of judgment: 6 October 2022

Catchwords:
PATENTS – where invention claimed is a core sample orientation device relating to a system and method for orienting core samples extracted from the ground – construction of patent – meaning of “predetermined time intervals” – whether respondents infringed patent in suit – held: respondents’ product infringed patent – accessorial liability for infringement: s 117 of Patents Act 1990 (Cth), authorisation and joint tortfeasorship – all respondents liable for infringing conduct

PATENTS – invalidity – external fair basis and priority date – fourth respondent challenges priority date of patent claims on basis that they are not fairly based on the matter disclosed in the provisional – claims of patent found to be fairly based – cross-claim dismissed

DAMAGES – applicants seeks orders for additional damages against each respondent per s 122A of Patents Act 1990 (Cth) – conduct of respondents in circumstances where lengthy litigation history exists between the parties and previous versions of the respondents’ product found to infringe patent – applicants entitled to an award of additional damages

Legislation:
Copyright Act 1968 (Cth)

Federal Court of Australia Act 1976 (Cth)

Patents Act1990 (Cth)

Patents Regulations 1991 (Cth)

Cases cited:
Apotex Pty Ltd v Les Laboratoires Servier (No 2) (2012) 293 ALR 272

Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (2013) 304 ALR 1

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

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

Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (2019) 138 IPR 33

Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 3) [2022] FCA 596

Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2022] FCA 445

Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524

Calidad Pty Ltd v Seiko Epson Corp (No 2) (2019) 147 IPR 386

Collins v Northern Territory (2007) 161 FCR 549

Coretell Pty Ltd v Australia Mud Company Pty Ltd (2017) 250 FCR 155

Facton Ltd v Rifai Fashions Pty Ltd (2012) 95 IPR 95

Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd [2021] FCAFC 65

Generic Health v Otsuka Pharmaceutical Co Ltd (2013) 100 IPR 240

Globaltech Corp Pty Ltd v Australian Mud Company Pty Ltd (2019) 145 IPR 39

Hood v Down Under Enterprises International Pty Ltd [2022] FCAFC 69

Hytera Communications Corp Ltd v Motorola Solutions, Inc [2019] FCAFC 210

Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525

Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86

Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274

Mead Corporation v Riverwood Multiple Packaging Division of Riverwood International Corporation [1997] FSR 484

MJA Scientifics International Pty Ltd v SC Johnson & Sons Pty Ltd (1998) 43 IPR 275

Northern Territory v Collins (2008) 235 CLR 619

Novartis AG v Pharmacor Pty Ltd [2022] FCAFC 58

Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd (2019) 154 IPR 215

Playgro Pty Ltd v Playgro Art & Craft Manufactory Limited (2016) 117 IPR 489

Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79

Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119

Roadshow Films Pty Ltd v iiNet Ltd (2012) 95 IPR 29

Seiko Epson Corporation v Calidad Pty Ltd (2017) 133 IPR 1

Sociétédes Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5

Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd (2014) 110 IPR 82

The Koursk [1924] P 140

Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574

University of New South Wales v Moorhouse (1975) 133 CLR 1

Division: General Division

Registry: New South Wales

National Practice Area: Intellectual Property

Sub-area: Patents and associated Statutes

Number of paragraphs: 440

Date of hearing: 8–10 March 2022, 14 March 2022

Counsel for the Applicants: Mr C Dimitriadis SC with Ms P Arcus

Solicitor for the Applicants: Gilbert + Tobin

Counsel for the Respondents: Mr A Ryan SC with Mr A Fox SC

Solicitor for the First and Second Respondents: Griffith Hack

Solicitor for the Third and Fourth Respondents: Bird & Bird

ORDERS

NSD 1040 of 2019

BETWEEN:
AUSTRALIAN MUD COMPANY PTY LTD

First Applicant

REFLEX INSTRUMENTS ASIA PACIFIC PTY LTD

Second Applicant

AND:
GLOBALTECH CORPORATION PTY LTD

First Respondent

GLOBALTECH PTY LTD

Second Respondent

BOART LONGYEAR LIMITED (and another named in the Schedule)

Third Respondent

AND BETWEEN:
BOART LONGYEAR AUSTRALIA PTY LTD

Cross-Claimant

AND:
AUSTRALIAN MUD COMPANY PTY LTD

Cross-Respondent

ORDER MADE BY:

ROFE J

DATE OF ORDER:

6 OCTOBER 2022

THE COURT ORDERS THAT:
1.The parties confer and, within 14 days of these orders, submit to the Associate to Justice Rofe an agreed minute of orders giving effect to these reasons.
2.Failing agreement, each party provide their proposed minute of orders within the same period as specified in order 1.

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

REASONS FOR JUDGMENT
ROFE J:
INTRODUCTION

The First Applicant, Australian Mud Company Pty Ltd (AMC) is the registered owner of Australian Standard Patent No 2010200162 for an invention entitled “Core Sample Orientation” (the Patent).
The Second Applicant, Reflex Instruments Asia Pacific Pty Ltd (Reflex) is the exclusive licensee of the Patent. The Applicants are subsidiaries of the publicly listed company Imdex Limited (Imdex). I will refer to the Applicants as AMC in these reasons.
The claims in the Patent assert a priority date from Provisional Patent Application No 2004905021 (the Provisional) filed on 3 September 2004 (the Priority Date), although there is an issue as to whether the claims of the Patent are fairly based on matter disclosed in the Provisional.
AMC claims that the Respondents have infringed claims 1–4, 7–10, 16, 17, 21–24, 27, 28, 33–40, 46–48, 54 and 65 of the Patent (the Contested Claims), of which claims 1 and 33 are independent claims. The Contested Claims 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).
There are four Respondents. The First and Second Respondents are Globaltech Corporation Pty Ltd (Globaltech Corporation) and Globaltech Pty Ltd (GTCPL) (collectively, Globaltech). The Third and Fourth Respondents are Boart Longyear Limited (BLY) (now called Boart Longyear Pty Ltd) and Boart Longyear Australia Pty Ltd (BLYA) (collectively, Boart Longyear).
AMC contends that each of the four Respondents has infringed the Contested Claims of the Patent in respect of the exploitation of tools for orienting core samples, referred to in these reasons as the “V6 Tool”. The V6 Tool was also referred to in the evidence as the TruCore™ UPIX Tool or UPIX Orifinder Tool.
The infringement dispute is limited to one feature of independent claims 1 and 33, being the “predetermined time intervals” integer.
Before the trial Besanko J made orders on 12 December 2019 that the issues of liability be heard and determined before any issues of the quantum of pecuniary relief. AMC makes a claim for additional damages pursuant to s 122A of the Patents Act1990 (Cth) (the Act). The entitlement to that relief, but not the quantum thereof, should an entitlement be established, was part of the hearing.
BLYA has filed a cross-claim for revocation of the Contested Claims, which turns upon a challenge to the Priority Date of the claims based on the Provisional. BLYA asserts that the claims lack fair basis on the Provisional.
The version of the Act and Patents Regulations 1991 (Cth) which is relevant is that in force prior to the “Raising the Bar” amendments passed in 2012.
In general terms, the Patent relates to a system and method for orienting core samples extracted from the ground, such as may be used in connection with geological surveys and other exploratory drilling operations.
For the reasons set out below I find that the V6 Tool takes each of the integers of the Contested Claims of the Patent. Further, I consider that AMC’s entitlement to an award of additional damages pursuant to s 122(1A) of the Act is enlivened. I have also found that the Patent is valid.
PRIOR PROCEEDINGS
The Patent was the subject of previous proceedings between AMC and Globaltech before Besanko J. In those proceedings, Globaltech was found to infringe the Patent by offering for sale and selling in Australia other core orientation devices known by the brand name “Orifinder”: versions 3A, 3B and 5 (Earlier Devices) (Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (2019) 138 IPR 33 (Globaltech FI)). Besanko J held the Patent to be valid and infringed. He rejected all invalidity challenges, including on the ground of external fair basis. A certificate of validity was issued by Besanko J in Globaltech FI in respect of each of claims 1–4, 7–10, 16–17, 21–24, 27–28, 33–40, 46–48, 54 and 65 of the Patent.
Globaltech’s appeal was unsuccessful. The Full Court held the Patent to be valid and infringed (Globaltech Corp Pty Ltd v Australian Mud Company Pty Ltd (2019) 145 IPR 39 (per Kenny, Robertson and Moshinsky JJ) (Globaltech FC)). An application for special leave to appeal to the High Court was refused.
Globaltech was recently unsuccessful in seeking a stay of the quantum aspect of the Globaltech FI proceeding: Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2022] FCA 445 (Globaltech QS). Following that decision Globaltech sought an order that AMC make their election as between damages and an account of profits on or before 27 May 2022. This application was unsuccessful: Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 3) [2022] FCA 596.
Separate proceedings for infringement of the Patent were issued in respect of another core orientation device, the V4 Tool. These were resolved by consent, with orders made by Bennett J on 19 October 2015 including a restraint on both Globaltech Corporation and GTCPL from dealing with the V4 Tool.
The Patent was also the subject of proceedings between AMC and Coretell Pty Ltd: Australian Mud Company Pty Ltd v Coretell Pty Ltd(No 2) [2018] FCA 1109, in which Besanko J found the Patent to be valid and infringed. A certificate of validity of each of claims 1 to 69 of the Patent was issued by Besanko J.
There were also related infringement proceedings involving two innovation patents which claimed priority from the Provisional, before McKerracher J at first instance (Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 4) [2015] FCA 1372 (Coretell 2015)) and then on appeal to the Full Court (Coretell Pty Ltd v Australia Mud Company Pty Ltd (2017) 250 FCR 155 (per Jagot, Nicholas and Burley JJ) (Coretell FC)). An application for special leave to the High Court was refused. Besanko J noted in Globaltech FI at [11] that the specifications and claims in the innovation patents were substantially the same as the specification and claims in the Patent.
The Respondents contend that the V6 Tool operates in a different way to the earlier core orientation devices (the V3A, V3B, V4 and V5 Tools) and therefore avoids infringement.
THE PATENT
The invention described and claimed in the Patent provides a method and system for identifying the in situ orientation of the core sample in the surrounding rock prior to extraction. This is important, because drilling typically takes place at an angle to the vertical, and it is necessary to understand the orientation of the sample so that once on the surface, information concerning the location and direction of particular rock formations can be derived from the sample.
The following description of the Patent is substantially based on the description of Besanko J in Globaltech FI, and the reasons of the Full Court in Globaltech FC. None of the parties took issue with those descriptions in this proceeding.
The Patent is entitled “Core Sample Orientation”. The abstract in the Patent describes a core orientation device by reference to Figure 1 and the way in which the device 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. More specifically, 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. It also relates to a method of core sample orientation identification.
The field of the invention was discussed by Besanko J in Globaltech FI at [115]–[124], with his Honour concluding that the field of the invention is drilling for minerals in hard rock environments, as distinct from drilling for oil and gas.
The specification then sets out the “Background Art”, which explains what core sample orientation is and identifies conventional core orientation tools that were in use before the Priority Date. As at the Priority Date, various manual systems and methods for orientating core samples were known and used in mineral exploration. Importantly, these were all “mechanical” type tools, which worked by physically marking the core prior to its extraction from the ground. There were problems and difficulties associated with these prior art methods and tools which the invention claimed in the Patent addresses. These matters were discussed by Besanko J as part of his discussion of the common general knowledge in Globaltech FI at [125]–[159].
When a core sample has been acquired, it is fractured from the surrounding rock (referred to as “core break”), and then the inner tube assembly, and core sample therein, are retrieved back up to the ground surface for analysis. It is said to be desirable for analysis purposes to have an indication of the orientation of the core sample relative to the ground from which it was extracted.
The specification states that a common way of obtaining an indication of the orientation of a core sample is 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 to be incorporated 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 (which the Full Court in Globaltech FC noted should be WO 03/038232).
The specification notes that it is against this background and the problems and difficulties associated therewith that the invention was developed.
Before discussing the “Disclosure of the Invention” section, the Full Court in Globaltech FC considered it convenient to set out the two relevant independent claims in the Patent and the two claims that immediately follow them, namely, claims 1 and 2 (method claims) and claims 33 and 34 (system claims). Claim 1 comprises an introductory phrase followed by five descriptive phrases that are indented from the margin, which Besanko J described as “steps”, an approach adopted by the Full Court.
The broadest method claim, independent claim 1, provides as follows (with integer numbers added). I have also adopted the designation of “steps” as used by Besanko J and the Full Court:
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:
1.1drilling a core sample from a body of material with a core drill having an inner tube [step 1];
1.2.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];
1.3.inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material [step 3];
1.4.removing the inner tube, with the core sample held therein in fixed relation to it, from the body of material [step 4]; and
1.5. 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 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.
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.

In the section headed “Disclosure of the Invention”, the Patent sets out a description 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, which is described in the specification as the 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. It contains a brief description of the drawings, which each depict one specific embodiment of the invention.
The function of this part of the specification is to provide a disclosure of the invention, or in other words, to say what the invention actually is. Four broad aspects of the invention are disclosed. These include a first broad aspect, a method of core sample orientation having particular features, referable to claim 1; and a second broad aspect, a core orientation system with particular features, which is referable to claim 33. There are also various narrowing preferments or limitations.
In the “first broad aspect”, the method disclosed works by using the orientation of the inner tube assembly of the core drill, which receives the core sample, as a proxy for the orientation of the core sample itself. The orientation of the inner tube can be measured by a device with components such as accelerometers, which are capable of sensing a device’s orientation. The device is typically attached to the inner tube and sent downhole to provide those measurements of orientation.
The “second broad aspect” of the invention, is directed to a core orientation system. It has generally similar features to the method of the “first broad aspect”. The difference is that it is directed to a system comprising means or components for carrying out the relevant steps, rather than a method comprising the steps. Those means are broadly defined by reference to their functions, which reflect the steps of the method. In context, it is apparent that the system is directed to a set of interacting components located downhole and on the surface which work together to achieve a specific purpose, being in this case to orient a core sample. The nature of such a system is dealt with further in the context of the corresponding claim of the Patent, claim 33.
The specification then provides a “Brief Description of the Drawings”. This commences with a passage which emphasises that the detailed description that is about to follow is exemplary but non-limiting, stating that “[t]he invention will be better understood by reference to the following description of one specific embodiment thereof as shown in the accompanying drawings…”. That “one specific embodiment” of the invention is then described in a section headed “Best Mode(s) for Carrying Out the Invention”.
The final part of the body of the specification sets out the “Best Mode(s) for Carrying Out the Invention” (Best Mode(s) section). Besanko J referred to this as the “best method section”, and the Full Court followed suit. This part of the specification extends over nine pages and refers to features that are shown in the drawings and are identified by numbers.
The purpose of the Best Mode(s) section is to provide a detailed description of a particular exemplary but non-limiting preferred embodiment. The embodiment described involves the use of two timers (downhole and above ground) that are started contemporaneously, using a “counting forwards” system from a common initial reference time. Consistent with it being merely a preferred embodiment, there are references throughout this part of the description to “this embodiment” or “the embodiment”. In context, the third last paragraph in this part of the description on page 21 relates to the particular preferred embodiment being described, not to the invention as a whole, or in its broad form. This was dealt with by both Besanko J and the Full Court: see Globaltech FC at [110].
The best method section contains a description of the process of using the core orientation device. The description begins with 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 contains a statement to the effect that the reference time corresponds to the time at which the core orientation device is started, and from which successive one minute intervals are timed.
The best method section states that in “this embodiment”, the core 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, the core orientation device is rotated to reflect the measure of the orientation. This is achieved by inputting the time duration, as measured by the external stop watch, into the orientation device using 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.
The claimed method works in general terms by recording the orientation of the inner tube of the core drill during drilling (for example through the use of accelerometers) at predetermined time intervals. An inputted time (representative of core break) and recorded orientation measurements are subsequently related so as to provide an in situ indication of the orientation of the core sample.
There are then 69 claims, including the independent claims 1 and 33 set out above.
WITNESSES
AMC called one expert at trial, Professor Jonathan Tapson. Professor Tapson gave evidence on both infringement and validity. Globaltech called three experts at trial, Professor Thomas Braunl, Mr Peter Berry and Mr Adrian Edmonds. Globaltech’s three experts gave overlapping evidence in relation to infringement. Boart Longyear called one expert, Professor Christian Dupuis who gave evidence solely in relation to the validity challenge. Each expert made affidavits before trial which contained their evidence-in-chief and evidence in answer. The parties formulated two lists of issues before trial and each expert addressed the issues in a joint expert report, one for infringement (JER-I) and another for (in)validity (JER-V). The experts gave evidence by way of two joint sessions which were conducted via Microsoft Teams. First on infringement with Professor Tapson, Professor Braunl, Mr Edmonds and Mr Berry and second on invalidity with Professor Tapson and Professor Dupuis.
As an aside, I note that the expert evidence in this proceeding was filed prior to the Full Court’s decision in Novartis AG v Pharmacor Pty Ltd [2022] FCAFC 58 per Yates, Beach and Moshinsky JJ (Novartis). Consistent with modern case management in patent litigation, the purpose expressed in Pt VB of the Federal Court of Australia Act 1976 (Cth) and the Intellectual Property Practice Note (IP-1), the Court would not expect to see a party relying on multiple expert witnesses from the same discipline. Rather, the Court would expect the parties to be guided by the comments of Beach J in Novartis at [24]–[30].
AMC also called evidence from Mr Kevin Laurence Brown, the Global Products Manager for Reflex. Mr Brown was not cross-examined.
Globaltech called evidence from two in-house witnesses, Mr Khaled Hejleh, the Managing Director of Globaltech Corporation and GTCPL, and Mr Brett Wilkinson, Chief Technical Officer at Globaltech Corporation, both of whom were cross examined.
Boart Longyear called evidence from Ms Shannon Emrick, General Counsel Asia Pacific of BLYA.
Globaltech was ordered to file a Product Description with respect to the V6 Tool before trial. The Product Description contains a description of, and flowcharts with respect to, the V6 Tool. The Product Description was verified by Mr Hejleh.
I turn now to summarise the qualifications and experience of the expert witnesses who gave evidence. In respect of Professor Tapson, Mr Brown and Mr Edmonds all of whom gave evidence in Globaltech FI, I also refer to the summary of Besanko J at [44]–[59] in the case of Mr Tapson, [60]–[79] for Mr Brown, and [98]–[103] in the case of Mr Edmonds.
Professor Tapson
Professor Tapson is an electronics and electrical engineer and Professor at the School of Computing, Engineering and Mathematics at Western Sydney University. He is currently on a leave of absence from the University during which he is employed as the Chief Scientific Officer for GrAI Matter Labs, an electronics company in San Jose, California.
Professor Tapson completed his PhD in engineering in 1994 at the University of Cape Town. He also holds a Bachelor of Science in electrical engineering and a Bachelor of Science in physics obtained from the same university.
Besanko J noted at Globaltech FI [52] that 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.
In Globaltech FI at [53] and [54], along with details of Professor Tapson’s membership of professional associations and editorial boards and presentations at industry conferences, Besanko J noted that Professor Tapson had published over 100 academic papers covering a range of topics including sensor design, electronic circuits and networked systems. Of particular note to his Honour was that in 2003, and again in 2004, Professor Tapson 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.
At [55] Besanko J listed examples of projects that Professor Tapson had conducted in the areas of orientation instruments and systems for the mining industry up to late 2004.
It was suggested by the Respondents that Professor Tapson was an experienced or “seasoned” witness for AMC and its related entities, having appeared for them in eight other proceedings before this court and the Patent Office in Australia and the US, and that he had a close association with AMC. The Respondents pointed to the fact that as a result of Professor Tapson making suggestions during the course of a previous retainer as an expert for AMC, he was named as a co-inventor on two patents. Professor Tapson states in his affidavit dated 12 October 2020 that he has received no payment for his contributions to those patents nor was he involved in their preparation.
A similar suggestion was made by Globaltech to Besanko J in Globaltech FI, who rejected it, stating at [59]:
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.
Nothing that transpired in the hearing would cause me to depart from Besanko J’s conclusion. It is true that Professor Tapson has been an expert for AMC in a number of proceedings brought by AMC. However, this is in the context where each of the proceedings involved the construction of the claims of the Patent or the related innovation patents and their validity, and evolving iterations of the Globaltech core orientation device. In that context, it is unsurprising that AMC would continue to have Professor Tapson give expert evidence.
Mr Brown
Mr Brown is the Global Products Manager for Reflex. Mr Brown gave evidence in Globaltech FI. He was not required for cross examination in this proceeding.
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. Details of Mr Brown’s employment history and experience was set out by Besanko J at [62]–[77].
For the most part, Mr Brown’s evidence was directed towards the conduct of the Respondents in support of AMC’s claim for relief against all the Respondents, and its claim for additional damages.
Mr Edmonds
Mr Edmonds was an expert witness for Globaltech in Globaltech FI.
Mr Edmonds is an electronics and software engineer who has worked with electronic drill hole surveying instruments for use in underground directional drilling since March 2004. Mr Edmonds has experience in working on projects developing instruments in the field of mining and mineral exploration and geotechnical drilling before the priority date. Justice Besanko summarised Mr Edmonds’ experience at [98]–[103].
Professor Braunl
Professor Braunl is a Professor of electrical, electronic and computer engineering in the Department of Electrical Engineering at the University of Western Australia. He is also the Director of the University’s Robotics & Automation Lab and Renewable Energy Vehicle Lab.
Professor Braunl has substantial experience in the general areas of electronic circuits, assembly code, watch dog timers, and all manners of circuit boards, CPUs, chips, and their relationships to software. One of his particular research and teaching areas in his role at the University of Western Australia is in embedded systems. Professor Braunl explains that an embedded system is a computer hardware system (comprising processors, memory, input/output devices) with stored software as part of a complete device.
Professor Braunl teaches students in areas such as microcontrollers, sensors, actuators, hardware and software, assembly language, C language, watch dog timers, CPU design, interrupts and communication between processors, timers, design and analysis of circuits, and more. He also designs and uses all of these types of electronic components and software in his work on autonomous vehicles as part of his role as director of the Renewable Energy Vehicle Lab.
Professor Braunl had no experience with mining or drilling instrumentation or with software associated with drilling equipment and instrumentation.
Mr Berry
Mr Berry is a consultant electronics and software engineer based in Western Australia. He graduated in 1983 with a Bachelor of Science in Electronic Engineering from the University of Natal. As at the priority date he was working on a variety of projects concerning electronic technology including designing digital circuit boards, writing embedded firmware for processors, communications protocols and networking. He had also undertaken work to design circuitry and firmware to communicate with accelerometers to determine the data sensed from the accelerometer axes.
Mr Berry had undertaken some previous consulting work with Globaltech in or about 2017. Mr Berry states that that work involved two relatively small research projects in respect of testing out new product ideas. His role was to design some electronic componentry of the new product ideas. Neither of the projects was in relation to an electric downhole orientation tool. This constituted his only experience in relation to mining or drilling equipment. Mr Berry was unaware of any of the earlier proceedings.
Associate Professor Dupuis
Associate Professor Dupuis is an electrical engineer and an Associate Professor at the Université Laval, Québec, Canada. Professor Dupuis graduated with a Bachelor of Electrical Engineering in 2001 from the University of New Brunswick, Canada. He also holds a Masters in Electrical Engineering from the same University. His doctoral thesis was entitled “Field measurements and analysis of electrokinetic seismoelectric signals generated in sedimentary environments”. During 2013–14, he was an adjunct visiting fellow at Curtain University of Technology in Western Australia.
For approximately 13 years Professor Dupuis has carried out research in the areas of mining, mineral exploration and geotechnical drilling, including the development of borehole instruments and measurement systems to facilitate borehole geophysics and improve mineral exploration efficiency.
Mr Hejleh
Mr Hejleh is the Managing Director of both Globaltech Corporation and GTCPL. Mr Hejleh verified the Product Description for the V6 Tool. Mr Hejleh was cross examined predominantly in relation to the corporate relationships of the Respondents.
Mr Wilkinson
Mr Brett Wilkinson is the Chief Technical Officer of Globaltech Corporation, a company in which he is also a shareholder.
Mr Wilkinson graduated with a Bachelor of Engineering with honours in electronic systems in 1999 from Edith Cowan University. Since graduating, Mr Wilkinson has worked his whole professional life at Globaltech Corporation.
As Chief Technical Officer, Mr Wilkinson manages a team of about six firmware engineers and two technicians. Mr Wilkinson oversees the design and development of electronic tools at Globaltech, including both the electronic hardware and the firmware, from concept to production handover. He is listed as a co-inventor on a number of Globaltech’s patents. Mr Wilkinson was involved in the design and development of each version of the Orifinder Tools, including the V6 Tool.

Mr Wilkinson performed a series of repeat tests on a V6 Tool to provide output results of the time intervals between successive orientation recordings of the V6 Tool. These results were provided to the expert witnesses for consideration.
Ms Emrick
Ms Shannon Emrick is the General Counsel Asia Pacific of BLYA. Ms Emrick is also:
(a)a director of BLYA (since February 2017);
(b)Company Secretary of BLYA (since October 2017);
(c)a director of the Third Respondent, BLY Limited (which became BLY Pty Ltd on 4 February 2022) (since December 2021);
(d)a director of Votraint No 1609 Pty Ltd (which owns 58% of share capital in Globaltech Corporation) (since 2016); and
(e)the Company Secretary of Votraint No 1609 Pty Ltd since 2017.
Ms Emrick was also interim Global Chief Legal Officer of Boart Longyear Company from 1 November 2021 until 28 February 2022.
As part of her role as General Counsel, Ms Emrick manages the regional BLY Adelaide Office and has legal oversight over Australian and Pacific operations, such as commercial and strategic decisions for the BLY Group within the Asia Pacific region, M&A and divestor work.
In her role as General Counsel Asia Pacific of BLYA, Ms Emrick reports to and supports the Global Chief Legal Officer and the Board of the ASX listed entity, which prior to 4 February 2022 was BLY.
THE SKILLED PERSON
The debate between the parties on infringement and validity centres on the construction of the Patent and of the Provisional. These are ultimately matters for the Court, although the evidence of properly qualified experts has the potential to assist in terms of the surrounding common general knowledge and any issues relating to the operation of the allegedly infringing device.
The notional person skilled in the art, or skilled addressee, is a person with a practical interest in the subject matter of the Patent. In general terms, in the present case, this includes those interested in the design, manufacture and operation of down hole drilling tools, including core orientation devices, their instrumentation, electronics and software, and the techniques for measuring orientation, particularly core sample orientation. It is likely that the person skilled in the art is a team.
In Globaltech FI, Besanko J identified the skilled addressee of the Patent as at the Priority Date as follows at [113]:
In my opinion, the person or persons skilled in the art would have experience or knowledge in electronics and software and drilling. There was a 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, possibly more persons.
Besanko J held in Globaltech FI at [114] that each of the experts called to give evidence, relevantly including Mr Edmonds and Professor Tapson, were in a position to give relevant expert evidence. Like the experts in Globaltech FI, the remaining experts in this case had varying levels of expertise relevant to areas and aspects of the task, but each were in a position to give relevant expert evidence.
EARLIER GLOBALTECH PROCEEDINGS
Before going further, it is useful to refer to the construction of claim 1 in the Globaltech FI proceedings. In that earlier proceeding, Besanko J construed claim 1 of the Patent, including the “predetermined time intervals integer” and then considered the question of whether the V3A, V3B and V5 Tools infringed the Patent. Justice Besanko found each of the V3A, V3B and V5 Tools infringed the claims in suit. Globaltech appealed the findings as to the V5 Tool. Justice Besanko’s construction of the claims and findings that the V5 tool infringed the claims in suit were upheld by the Full Court in Globaltech FC.
It is against the backdrop of Besanko J’s construction of the Patent claims in Globaltech FI, as upheld by the Full Court in Globaltech FC, that the Respondents advance their construction and external fair basis arguments in this proceeding.
Globaltech FI
Under the heading “The Main Construction Issues”, Besanko J discussed three issues, commencing at [185]. Only the first and third of these issues, described as “synchronisation” and “predetermined time intervals” are relevant for the purposes of this proceeding.
Besanko J began his consideration of the “synchronisation” issue at [185] by noting that there was no dispute that the method in claim 1 requires two timers, one in the downhole device and the other on the surface, and that they are involved in a way that ultimately leads to the identification of the orientation recording at or close to the time of the core break. Nor was it in dispute that the act of inputting the specific time referred to in step 3 is an act carried out by the operator on the surface. These matters were also not in dispute in the present proceeding.
The Full Court observed in Globaltech FC at [60], that Globaltech used the term “synchronisation” to refer to a timer on the surface being started contemporaneously with the timer of the orientation device. The Full Court gave as an example the method adopted when a stop watch is used, as per the best method for carrying out the invention, which may be described as “synchronisation”.
At [188] Besanko J referred to Professor Tapson’s explanation that the use of two timers where the two timers are not started at the same time and then counted forward at the same rate might be called “time correlation”, but was not synchronisation. For example, there might be time correlation between two timers (A and B) if the time on an already running timer is recorded. Justice Besanko noted Professor Tapson’s opinion that the claims included not only synchronisation, but also forms of time correlation.
The Full Court noted at [62] that a further expression used by Besanko J was “offset”. This was a term used by Globaltech. In order to identify what was meant by “offset”, Besanko J set out the following passage from Professor Tapson’s evidence at [192]:
Suppose that the preferred embodiment described on pages 18 to 20 of the Patent were implemented with a clock indicating Greenwich Mean Time (GMT) in place of the stopwatch referred to in page 19, 1st paragraph. The operator notes the GMT time when he/she starts the orientation device (10) and notes the GMT time when he/she initiates core break (cf. Patent, page 18, 6th paragraph to page 19, 2nd paragraph). The operator determines the difference between the former GMT time and the latter GMT time, in minutes (cf. Patent, page 19, 4th paragraph). The operator inputs the time difference into the orientation device (10) through keypad (72) (cf. Patent page 19, 6th paragraph to page 20, 1st paragraph). This inputted specific time is representative of core break.
The operator has used the difference between two points in time (i.e., the two GMT times) to determine the inputted specific time, instead of using a stopwatch that is started contemporaneously with the orientation device (10). For that reason, the embodiment I have just described is not a “Synchronised Surface Timer” as that term is defined by the Respondents.
At [193], Besanko J noted that Globaltech was prepared to accept the offset example at [192] fell within claim 1.
At [195]–[197] the primary judge summarised the rival construction contentions:
(a)Globaltech’s primary contention was that the claims are restricted to synchronisation. The primary judge treated this contention as referring to “synchronisation” in the sense described above (although, as the primary judge recognised, there was a debate as to the meaning of synchronisation);
(b)Globaltech’s secondary contention was that claim 1 is limited to synchronisation and time correlation where the two timers are counting forwards and the relevant calculation is made from the start to the relevant point, which is core break. While acknowledging that it was somewhat imprecise, the primary judge referred to this construction as “counting forwards” (an expression used in the evidence and submissions); and
(c)AMC submitted that, although claim 1 is limited to synchronisation and time correlation, the latter phrase means where two timers are used and the relevant calculation is made either from the start to the relevant point or from the end back to the relevant point. Whilst again acknowledging that it is somewhat imprecise, the primary judge referred to this construction as “counting forwards or backwards”.
Besanko J summarised the competing contentions as to the first feature, the “synchronisation” issue, at [240]:
To sum up, Globaltech described its system as asynchronous. That followed, so it submitted, from the fact that there is no initial reference time and the handheld device at the surface only starts the core orientation device running. Sometime later, there is a point at which the drilling will stop. At that point, the operator starts a handheld timer, which may be different from the handheld device used at the beginning, to record the time. The core is broken and then retrieved to the surface. At that time, the handheld timer is stopped, as is the device timer. The operator is able to identify the orientation reading just prior to core break by reference to the time which has elapsed from the time when the handheld timer was started just prior to core break, and the time when it was stopped.
At [241] Besanko J opined that the construction issue concerning synchronisation and counting forwards or backwards turned primarily on the meaning of certain words and phrases in steps 2, 3 and 5 of claim 1 and, more particularly, “predetermined time intervals” and “initial reference time” in step 2, and “inputting the specific time beyond the reference time” and “representative” in step 3.
At [242] to [248], Besanko J set out the competing contentions in relation to the words “predetermined time intervals” and “initial reference time”:
Step 2 “predetermined time intervals” and “initial reference time”
242 AMC’s submission with respect to the phrase “predetermined time intervals” is that when applied to an occurrence, the phrase means no more than that something occurs or is done at pre-programmed intervals and it does not say anything about two timers or synchronisation.
243 Globaltech’s submission is that the predetermined time intervals are pre-known sequential time intervals that are referable to a known start time and that the start time must, therefore, happen at the beginning. In general terms, that proposition may be accepted. Globaltech goes on to submit that predetermined time intervals are synonymous with synchronised operations where two devices (i.e., one in the downhole tool and one at the surface) can keep track of the same intervals because they are predetermined. To be predetermined, such intervals must have pre-known start and end points. As I understood Globaltech’s submission, it was that accurate predetermined time intervals are an essential feature of a synchronised system. It put its submission in writing as follows:
The Patent is a synchronised method that requires highly accurate timers counting at accurate intervals, otherwise it would not be possible for the inputted specific time to be related to the initial reference time and the predetermined time intervals. And it would not be possible to subsequently identify a specific time interval using the inputted specific time if the intervals are at unpredictable duration.
It may be accepted, that predetermined time intervals are a feature of a synchronised system. However, the same may be said of the methods or systems which are a feature of the use of the Orifinder v3B and Orifinder v5.
244 With respect to the phrase “initial reference time”, dictionary definitions of the word “referable” when followed by “to” suggests that it means having a particular relationship with or be directed to.
245 There was debate between the experts concerning whether the start of the RTC which occurs when the Orifinder v5 is switched from Hibernation to Standby mode, was an initial reference time or simply a time. Professor Tapson said that it was the former because every measurement thereafter is timestamped against that time, whereas Mr Edmonds considered that it is just the time on the RTC. Professor Tapson’s initial reference time in the case of the Orifinder v5 is when the tool enters Standby mode from Hibernation mode which is when the RTC starts.
246 AMC submits that “initial reference time” means no more and no less than a reference time that may be referenced time. It means something that can serve as a reference for the “predetermined time intervals” that are referred to later in the claim, for example, by timestamping. AMC submits that the Court should accept Professor Tapson’s evidence that “initial reference time” means no more than a fixed start time with respect to which the predetermined time intervals are timestamped and includes the time at which a clock in the downhole tool is started. If it meant synchronised two timers, then that could easily have been said. If it meant the starting or synchronised time (Mr Ayris), or the starting point where the two timing devices are synchronised meaning that these times are matched and they count at the same rate (Mr Edmonds), then the claim could easily have said that. Mr Edmonds’ opinion as to the meaning of “initial reference time” was linked to his understanding of the specific time beyond the reference time which is examined below.
247 Globaltech submits that an initial reference time is an essential requirement of a synchronised system. In context, it means the synchronisation of a surface timer and a timer in the downhole tool. Globaltech relied on the evidence of its experts. The reasoning of those experts was based, in part at least, on the need for an initial reference time in the case of a synchronised system, but not otherwise, and the explanation as to the operation of the best mode or method. Globaltech also made the point that the only method described in the Patent involved a timer at the surface which is started contemporaneously with the timer in the downhole tool. Globaltech submits that Professor Tapson’s construction of initial reference time as related to the start time of the downhole timer, should be rejected because all the experts are agreed that there must be a surface timer in addition to a timer in the downhole tool, and that Professor Tapson’s construction involves reading words into the claim, that is, in the downhole timer, contrary to the principles established in the authorities (Welch Perrin v Worrell at 610).
248 The construction issues in this case are by no means easy. At first blush, there is a good deal of attraction in Globaltech’s submission that in a context in which it is agreed on all sides that the method involves two timers, one on the surface and one in the hole, the reference to “initial reference time” would suggest a time to which both timers referred, and in its submission that in practical terms the only context provided by the Specification in the best method section and its reference to a synchronised or at least counting forwards method.
Ultimately Besanko J concluded as to “synchronisation” as follows at [265]:
In conclusion, the claims are not limited to the use of a Synchronised Surface Timer and the major issue is whether the claims are limited to a method which counts forwards or includes a method that counts forwards or backwards. I accept Professor Tapson’s evidence that “initial reference time” in step 2 includes the start of the timer in the downhole device. I do not see any reason to limit the phrase to the start of two timers or the start of one timer and the recording of the time shown on another timer. I accept the evidence, particularly in light of the acknowledgments or concessions made by Mr Edmonds, that the Orifinder v5 involves an inputting of a specific time within step 3 and falls within step 5 when that step is considered alone. That really leaves for consideration the word “beyond” in the phrase “beyond the reference time” in step 3. I do not think it means anything more than after or later than.
At [277], in considering the “predetermined time intervals” integer in the context of his infringement analysis, Besanko J noted:
The Orifinder v5 uses a WDT. WDTs are not precisely accurate as they can be affected by temperature and pressure. The margin of error is in the region of up to 10%.
In short, the V5 Tool operated using a device called a “Watch Dog Timer” which counted 12 mini cycles of approximately 2 seconds each so as to produce time intervals which due to the inaccuracy of the WDT, varied randomly within a range of about 25 seconds plus or minus up to about 10%. In other words, although intended to be 25 seconds, the time intervals varied randomly within the range of about 22.5 to about 27.5 seconds (the V5 range). The Respondents’ argued that these were not “predetermined time intervals” because of this variability and the fact that the precise duration of each time interval could not be known in advance.
Justice Besanko noted at [278] that:
AMC submitted that there is no requirement in the claims that the predetermined time intervals be exact or precise time intervals, and no requirement that the progression of time intervals be known or confidently predicted to within “a given second”. The best method section in the Specification does not suggest a need for such a degree of accuracy. First, the body of the Specification refers to a timer in the device, but not one exhibiting any particular degree of accuracy. Secondly, there will inevitably be a short delay between starting the orientation device and starting the external stop watch. Thirdly, the relevant time duration inputted into the orientation device is referred to as “in minutes” and not the more precise “in minutes and seconds”.
At [279] Besanko J recorded the evidence of the Respondents’ experts on the issue of “predetermined time intervals”; Mr Ayris, who did not give evidence in this proceeding, and Mr Edmonds, who gave evidence in this proceeding:
Mr Ayris agreed that “predetermined time intervals” in step 2 means a pre-programmed or pre-set time interval and that there is no requirement in the claim that some intervals must be expressed with any particular degree of accuracy. Time intervals of, for example, 25 seconds plus or minus 10% (resulting from the use of a WDT) are predetermined time intervals. Mr Edmonds did not agree with this for two reasons. The first reason related to the particular wording of claim 2 which I do not need to consider at this time. The second reason is that he interpreted the claim to mean that the inputted specific time on the surface timer must precisely align with the end of one of the predetermined time intervals when a predetermined time interval is taken.
At [280] Besanko J noted two points:
First, the WDT in the Orifinder v5 will be accurate to plus or minus 10%. It determines when the orientation readings are taken, and while it must fulfil the requirement of readings at predetermined time intervals, there is no further accuracy issue because the timestamping is done by reference to the RTC. Secondly, core break is not instantaneous, or not necessarily instantaneous. The timestamping of each measurement is done by reference to the RTC which, in turn, refers back to the starting of the RTC (i.e., when entering Standby mode).
At [281] Besanko J concluded that the WDT used in the V5 Tool (with its plus or minus 10% accuracy) did not mean that the recording of the orientation of the inner tube does not take place at predetermined time intervals within step 2. The V5 was held to infringe the claims of the Patent.
Globaltech appealed Besanko J’s construction of the claims and finding that the V5 Tool infringed the claims of the Patent. Relevantly for this case, it alleged that Besanko J had erred by finding that the invention was not limited to a “synchronous” method/system involving two timers that each noted the same initial reference time at the beginning of drilling operations, with both timers counting from that time.
Globaltech FC

The Full Court observed at [120] that:
It was common ground at the trial that two timers would need to be used, one downhole (where orientation measurements would be recorded) and one on the surface (where the person using the method would be). However, the claim does not refer to these timers or how they are to be operated. In particular, it does not refer to the two timers being ‘synchronised’, or to the two timers being started at the same time.
The Full Court continued at [121] to [124] in relation to the steps of claim 1:
121 The steps of claim 1 that deal with the recording, inputting and relating of time measurements are steps 2, 3 and 5. As the primary judge recognised, these steps cannot be considered in isolation from each other.
122 Step 2 refers to recording the orientation of the inner tube at predetermined “time intervals” during the drilling, the time intervals being “referable to an initial reference time”. This occurs downhole, where the orientation measurements are recorded, and thus involves the use of the downhole timer. The time intervals at which the orientation measurements are recorded are “referable to” an initial reference time on that timer.
123 Step 3 refers to inputting “the specific reference time beyond the reference time”, which is representative of the time at which the core is broken. It was common ground below that this step occurs on the surface. In contrast to step 2, the “specific time” inputted in this step is not said to be “referable to” the initial reference time. It need only be “beyond” the initial reference time. As a matter of ordinary language, this may simply mean that the “specific time” occurs after or later than the initial reference time. This issue is discussed further below.
124 Step 5 refers to “relating the inputted specific time to the recorded time intervals” to obtain an indication of the core orientation at the specific time. This is the step of the method at which the two sets of time measurements (downhole and surface) are related to each other, so as to enable the orientation of the core sample at the time of core break to be determined. The word “relating” is a broad term. In this context, it encompasses any means of relating the inputted specific time to the recorded time intervals so as to obtain an indication of the orientation of the core sample at the specific time.
At [125] and [126]:
125 In our view, in light of the above matters, and having regard also to the further matters discussed below, the correct construction of claim 1 is that: step 2 involves the recording of time measurements downhole, while step 3 involves the inputting of a time measurement at the surface; the step in which these time measurements are related to each other is step 5, which occurs later, after the inner tube with the core sample contained in it has been removed from the ground and brought to the surface (see step 4); there is no requirement that the time measurements be related to each other prior to step 5 (by the use of a common initial reference time); that work is done by step 5, which involves “relating” the time measurements to each other.
126 This construction is supported by other aspects of the Patent. First, the specification, after referring to a preferred method comprising (inter alia) inputting a time measurement representative of the instant in time when the core sample is separated from the body of material (Patent, p 4, lines 16-17), states that “[p]referably, the instant in time is representative of a duration of time relative to the initial reference time” (Patent, p 5, lines 4-5). Secondly, the Patent contains a number of narrower claims that use the same or similar language (claims 6, 26 and 52). For example, claim 6, which is dependent on claim 2, requires the instant in time (referred to in claim 2) to be “representative of a duration of time relative to the initial reference time”. These parts of the specification and these claims suggest that when the patentee intends to indicate that the time of a core break is to be measured in a way that is referable to the initial reference time, it says so expressly.
At [127] the Full Court observed that the claims were not limited to the preferred embodiment as described in the best modes section:
While it may be accepted that the best method section (which describes one embodiment) contemplates a system of synchronisation, or at least counting forwards, as discussed above it is not usually legitimate, in the absence of an express reference in the claim itself, to import into a claim features of the preferred embodiment. In the present case, the claim itself does not contain an express reference to a system of synchronisation or counting forwards, and we do not consider there to be a proper basis to import this aspect of the preferred embodiment into the claim.
The Full Court then turned to consider the construction specific issues raised by Globaltech on appeal.
First, at [130], the Full Court rejected Globaltech’s submission that Besanko J erred by finding that the invention claimed was not limited to a method/system involving two timers that each noted the same initial reference time at the beginning of drilling operations (ie that a “synchronised” approach was required). In doing so, the Full Court noted that claim 1 does not require the use of two timers that “record time by reference to the same initial reference time”. The Full Court further noted that only step 2 (involving the downhole timer) requires that the time intervals be “referable to” the initial reference time and step 3 (at the surface) merely requires that the input specific time be “beyond” the reference time. The Full Court continued at [130]:
Further, the claim does not, as Globaltech submitted, provide that “the times on the two timers are matched when the specific time is inputted into the surface timer to determine the orientation of the core sample”. As noted above, step 3 deals with the “inputting” of the specific time at the time of core break (at the surface); step 5, which occurs later, is the step in which the measurements are related to each other so as to obtain an indication of the orientation of the core sample.
Secondly (at [133]), Globaltech submitted that the primary judge erred by finding that the “initial reference time” in step 2 of claim 1 includes the start of the timer in the downhole device but does not necessarily also refer to the start of the surface timer. Globaltech submitted that, given that claim 1 requires the use of two timers, the only reasonably open construction of step 2 is that the initial reference time refers to the same start time on both timers. It submitted that, if “initial reference time” does not refer to the starting time on both timers, it cannot be known whether the initial reference time refers to a time on the surface timer or the downhole timer. Globaltech submits that AMC’s construction involves reading “initial reference time” so as to exclude the surface timer and, in effect, impermissibly reading into the claim the words “on the downhole device”.
The Full Court rejected Globaltech’s second submission at [134]:
Step 2 refers to recording the orientation of the inner tube at predetermined time intervals during the drilling, “the time intervals being referable to an initial reference time”. This recording takes place on the downhole timer. It is therefore apparent that step 2 refers to, at least, the downhole timer. The real issue is whether the time recorded on the surface timer must also be referable to the initial reference time. While there are arguments in favour of that construction, we consider the preferable construction to be that this is not required. In resolving this issue, step 2 cannot be considered in isolation. It is necessary to consider the other integers of the claim, in particular, steps 3 and 5. Step 3 does not in terms require the time on the surface timer to be referable to the initial reference time. Rather, it refers to inputting the specific time “beyond” the reference time. Step 5 is the stage at which the inputted specific time is related to the recorded time intervals. Having regard to these steps, in addition to step 2, the preferable construction is that the claim does not require the time recorded on the surface timer to be referable to the initial reference time. Contrary to Globaltech’s submissions, this construction does not involve reading words into the claim; rather, it involves construing the words of the claim.
Thirdly, the Full Court noted at [137] that Globaltech submitted that the primary judge erred by failing to find that the words “inputting the specific time beyond the reference time” in step 3 refer to a time that is referable to the initial reference time. Globaltech submitted that AMC’s construction gives the word “beyond” a meaning in isolation from its context; it ignores that the steps of claim 1 are in chronological sequence — in particular, when step 2 is read with step 3, there is a clear link between the initial reference time and the inputting of the specific time; it ignores the word “reference” in the phrase “the reference time”, which indicates that the initial reference time is used as a reference point in time.
The Full Court rejected Globaltech’s third submission at [138]:
First, contrary to Globaltech’s submissions, the primary judge did construe the words “specific time”. His Honour considered what the “specific time” represented at [250]. His Honour also considered how the “specific time” was required to be measured or expressed at [258]-[259]. Secondly, while there are arguments in favour of Globaltech’s construction of the words “inputting the specific time beyond the reference time” in step 3, we consider the preferable construction to be that “beyond” does not mean anything more than “after” or “later than” and that the words do not require the inputted specific time to be referable to the initial reference time. The word “beyond”, on a natural reading, does not mean “referable to”. The wording of step 3 may be contrasted with that of step 2, which requires in terms that the time intervals be “referable to” the initial reference time. AMC’s construction is supported by other aspects of the claims, in particular claim 6 [which the Full Court discussed further below].
At [141] the Full Court noted the evidence of Globaltech’s experts, Mr Ayris and Mr Edmonds, to the effect that the inputted time in step 3 is referable to the initial reference time, later stating “it is apparent that the primary judge considered Globaltech’s experts’ opinions to involve reading in words to the effect that the inputted time in step 3 must be referable to the initial reference time”.
In relation to claim 6, the Full Court observed at [143]:
In our view, contrary to [Globaltech’s] submissions, claim 6 provides some assistance in resolving the construction issue concerning claim 1. Globaltech submits that claim 2 requires the inputted time to be measured by reference to the initial reference time. However, claim 2 does not state this. Rather, as with claim 1, there is an issue as to whether the inputted time needs to be referable to the initial reference time. Claim 6 does in terms require a relationship between the inputted time and the initial reference time, by stating that the instant in time (referred to in claim 2) is “representative of a duration of time relative to the initial reference time”. As stated above, this suggests that when the patentee intends to indicate that the time of a core break is to be measured in a way that is referable to the initial reference time, it says so expressly. Globaltech’s reference to Nichia v Arrow does not assist. Here, the two claims under consideration (claims 1 and 6) do not raise the “same issue of construction”, but rather use materially different wording.
The Full Court did not comment specifically on Besanko J’s construction of “predetermined time intervals” as there was no challenge to that construction. At [144] the Full Court upheld Besanko J’s construction of claim 1 of the Patent as correct.
CONSTRUCTION
Relevant Principles
The principles which govern claim construction are well established and are not in dispute. The Full Court in Globaltech FC adopted at [92] the summary of principles set out by the Full Court (per Hill, Finn and Gyles JJ) in Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 at [67]:
There is no real dispute between the parties as to the principles of construction to be applied in this matter although there is some difference in emphasis. It suffices for present purposes to refer to the following:
(i) the proper construction of a specification is a matter of law: Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;
(ii) a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890 at [81] (Flexible Steel Lacing); and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1; 177 ALR 460; 50 IPR 513; [2001] HCA 8 at [24];
(iii) the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corporation Pty Ltd at 391;
(iv) while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221 at 224–5; (1938) 56 RPC 23 at 39;
(v) experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485–6 (Sartas No 1 Pty Ltd); 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 (Kimberley-Clark v Arico at [24]); and
(vi) it is for the court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd at 485–6.
At [94] the Full Court observed that it is usually not legitimate, in the absence of an express reference in the claim itself, to import into a claim features of the preferred embodiment: Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 per Gummow J at 89.
Predetermined time intervals
The sole issue for construction is the “predetermined time intervals” integer.
The Respondents submit that predetermined time intervals are sequential time intervals that have a pre-known start and finish time relative to a known start time. That is, they are predictable at the commencement of operation of the device.
In support of their construction the Respondents point to the only example given in the Patent of a predetermined time interval as “an interval of one minute” (ie recordings taken at 1 minute intervals). They also refer to the common view of their experts that the predetermined time intervals integer requires that the orientation recordings which are taken are to be known in advance and be predictable.
The Respondents referred to the Macquarie Dictionary definitions of “determined” as “decided; settled; resolved” and “predetermined” as “to determine or decide beforehand”. The complete definition of “predetermined” is:
1.  To determine or decide beforehand.
2.  To ordain beforehand; predestine.
3.  To direct or impel beforehand to something.
AMC submits that the language and context of the phrase “predetermined time intervals” in claim 1 reveals the nature and purpose of those intervals, and their relevance to how the claimed method works. In particular, there is nothing in the language of “predetermined time intervals” which requires, as a matter of ordinary English, that they must all be same, or known in advance with any particular degree of precision. In their closing submissions AMC states:
Further, once it is recognised that the method in claim 1 as a whole is not limited to a “synchronised” approach, in which the above ground timer is started at the same time as (or synchronised with) the downhole timer before the beginning of the operation, so as to relate the measurements of one to the other, it is apparent that there is no need for the downhole time intervals to be of known duration or predictable in advance by the operator of the method. The method works perfectly well by the two sets of measurements — the record of the time of core break made above ground, and the downhole time intervals at which orientation measurements are taken — being related to each other in the subsequent relating step, being step 5 of the method claimed in claim 1. AMC notes that this was recognised by both Besanko J and (in the context of the “synchronisation” issue) the Full Court.
Against that background, AMC submits that the phrase “predetermined time intervals” in claim 1 (and in claim 33) refers simply to time intervals which are predetermined by the operation of the method or system, such as by being programmed or set in hardware or software. There is no requirement that the precise progression of time intervals be known in advance or be predictable with any given level of accuracy (such as within “a given second”). Further, there is no requirement that the same outcome be generated each time, so that the intervals at which core orientation measurements are taken are identical. AMC contends that Besanko J’s findings show that the intervals may, for example, be predetermined so as to fall within an acceptable range which is sufficient to enable the invention to work.
AMC submits that its construction accords with the ordinary meaning of the word “predetermined”, and the use of the word in context in the method and system of the claims and Besanko J’s correct construction of “predetermined time intervals” in Globaltech FI (and affirmed by the Full Court).
Consideration
It was not in dispute that the phrase “predetermined time intervals” is not a term of art and it does not have a defined meaning in the specification which is inconsistent with, or other than, the ordinary English meaning of the words.
The Full Court noted at [120] that it was common ground in the earlier proceeding that two timers would need to be used to carry out the method of claim 1, one downhole (where the orientation measurements would be recorded) and one on the surface (where the person using the method would be). The need for two timers was also common ground in this proceeding. The Full Court went on to note that the claim does not refer to these timers or how they are to be operated. In particular, the claim does not refer to the two timers being “synchronised”, or to the two timers being started at the same time (see also [130]). There is no requirement that the time measurements be related to each other prior to step 5, the relating step.
Justice Besanko held that the phrase “predetermined time intervals” in claim 1 does not require a method in which the precise duration of each time interval is the same or can be known in advance by the operator (at [278]).

The disclosure in the Provisional has been now considered in two earlier proceedings, Globaltech FI and FC and Coretell FC.
Coretell FC
Burley J (with whom Jagot J and Nicholas J concurred) considered the disclosure of the Provisional in detail in Coretell FC at [137]–[154], in the context of an external fair basis challenge to the claims of the Method and System innovation patents. His Honour did so against the background of three arguments that were raised by the Coretell parties in that proceeding (the “unitary device argument”, the “functional disclosure argument” and the “held in fixed relation” argument). His Honour’s reasons demonstrate the breadth of the disclosure in the Provisional. In particular, in Coretell FC at [142], his Honour considered the section of the Provisional entitled “Disclosure of the Invention”, which is the section that broadly describes the invention. This provides a description of the invention in several aspects. The fifth aspect (set out above) is of particular relevance to BLYA’s present external fair basis argument.
The breadth of the fifth aspect was remarked upon by Burley J, who observed at [145]:
It is notable that this aspect is expressed in broad, functional terms. The description is not limited to the manner in which the method may be carried out, although the use of a core drill having an inner tube assembly is required. Unlike the first four aspects described, the use of particular “means” is not identified.
And at [147]:
It is clear from these paragraphs that the method so described is not constrained to be performed by any particular orientation device, as described in aspects one, two, three or four. No language in the fifth aspect mandates such an approach. The language in the final paragraph beginning with “[p]referably” tells against such a construction.
Burley J also considered the detailed description of what the inventor considered to be the best method for carrying out the invention. The non-limiting nature of that description was highlighted in his Honour’s reasons in Coretell FC by his emphasis on “embodiment” in the passage at [148] (below) to indicate that this is only an embodiment of the invention, and the invention is not limited to that the preferred embodiment:
The specification then includes a section which refers to Figures 1 – 6 which are included in the Application, and describes, at length, what the inventor considered to be the best method for carrying out the invention. The section commences by observing that the embodiment shown in the drawings is directed to an orientation device for use with a core drill in order to provide an indication of the orientation of a core sample obtained in a core drilling operation.
(Emphasis in original.)
At [154], Burley J addressed the final paragraph of the Provisional. His Honour rejected an argument that this confined the scope of the invention, stating at [158]–[159]:
158 …When the invention is read as a whole, in order to understand the sense of its disclosure, it is my view that the invention is described to extend beyond the particular device described. It includes a method disclosed by reference to function. In particular, the disclosure of the fifth aspect of the invention is not confined in the manner for which the appellants contend. As a matter of language, the fifth aspect describes a method that employs a core drill having an inner tube assembly, but otherwise provides no constraint on the five functional steps to which the method refers. Nothing in the paragraph setting out the fifth aspect suggests that the method is confined to the use of a device as set out in the earlier aspects. The paragraph that immediately follows the description of the fifth aspect indicates, as I have observed above, that the inventor considered it to be preferable, but not essential, that the method be performed using an orientation device of the type described in the first two embodiments. Nor, in my view, does the detailed description of the best method provide any language to suggest that the invention is to be understood as confined to a device embodiment. Indeed, that section is particular in emphasising that it describes only an “embodiment”.
159 I have observed above that, as the High Court noted in Doric No 1, a broad statement of the invention made by the inventor may be sufficient to provide fair basis for the claims, although it is open to the Court to find that a claim which is based on what has been cast in the form of a consistory clause will not be fairly based if other parts of the matter in the specification show that the invention is narrower than that clause: Doric No 1 at [99]. I have been unable to detect in the content of the specification a suggestion that the invention is narrower than that described in the fifth aspect. Whilst the appellant draws attention to the paragraph (quoted above) on the final page of the specification, I do not consider that, properly construed, that paragraph is to be understood as confining the disclosure of the invention to “an orientation device only”, and not the broader method set out in the fifth aspect. The statement in the first sentence of the paragraph that the invention “provides an orientation device” is plainly correct, but it does not limit the disclosure to that orientation device (singular) alone.
BLYA referred to Burley J’s observations in relation to the fifth aspect at [158] and [159], drawing attention to three elements which it says are relevant to construction in this proceeding. First, at [158] his Honour noted that the invention described extends beyond the particular device described to include a method disclosed by reference to function. The fifth aspect concerns disclosure of five functional steps. Thus, BLYA submits, the disclosure is limited to, and concerns, such expressions of functionality. If later amendments introduce new functionality then they will introduce matter that travels beyond the disclosure of the fifth aspect.
The second, relates to the second last sentence of [158]: “Nor in my view, does the detailed description of the best method provide any language to suggest that the invention is to be understood as confined to a device embodiment”. BLYA submits that this raises the point as to whether the description of the best method might aid construction of the fifth aspect. BLYA says that the “Best Mode” section of the Provisional simply affirms the disclosure in the fifth aspect, confirming Professor Dupuis’ view as to the confined nature of the disclosure in the fifth aspect.
Third, BLYA refers to Burley J’s observation at [159] that he had “been unable to detect in the content of the specification a suggestion that the invention is narrower than that described in the fifth aspect”, and submits that passage supports the proposition that the other parts of the Provisional do not suggest a construction of the broad statement of the fifth aspect other than as a method limited to the description of the best mode, in accordance with Professor Dupuis’ reading of the specification.
AMC drew attention to Burley J’s comments at [162] in the context of considering the Coretell parties’ argument in that case on the external fair basis issue (the “functional disclosure” argument), his Honour again noted the breadth of the disclosure in Coretell FC at [162]:
As I have noted, in the fifth aspect, the inventor says his invention is a method whereby the functional effects described are achieved. That function may be achieved using any means that meets the function. The position is, as the respondents submitted, analogous to the facts in Doric No 1 at [4]-[12], where the consistory clause in the specification included a broad statement directed to a latch assembly which had a lock release means described in terms of its function, but did not indicate anything in terms of the form which the lock release means may take. The High Court considered that to be sufficient description, and within s 40(3) of the Act, to satisfy the test for fair basis. In that case, the Court found at [38] that no words of limitation of the breadth of the functional disclosure were to be found in the body of the specification. The same applies in the present case.
(Emphasis added.)
AMC submits that Justice Burley’s findings and analysis as to the disclosure of the Provisional in Coretell FC are correct, and significant for the present case. In particular, his Honour’s emphasis on the fact that the “fifth aspect” discloses a broad method whereby the functional effects described are achieved, using any means that meets the function, is significant.
Globaltech FI
Besanko J also addressed an external fair basis challenge, this time in relation claims of the Patent: Globaltech FI at [334]–[349]. His Honour found that claims 1 to 4, 7 to 10, 1–17, 21 to 24, 27 to 28, 33–40, 46–48, 54 and 65 of the Patent were fairly based on matter disclosed in the Provisional. In doing so, his Honour construed the Patent and the Provisional and made detailed findings as to their disclosure, and found that the Provisional provided a real and reasonably clear disclosure of the methods and systems that were claimed in the Patent.
AMC submits that the allegation of lack of fair basis that was considered and rejected by Besanko J concerned the very same feature in the “fifth aspect” of the invention in the Provisional, and the very same integer of the claims of the Patent, as are put in issue by BLYA’s argument in this case. In dealing with this, his Honour held that the relevant part of claim 1 (integer 1.3, referring to the inputting of a “specific time”) was fairly based on the corresponding part of the Provisional (step 3 of the “fifth aspect”, referring to the recording of a “specific time interval”); see Globaltech FI at [345]:
In my opinion, the word “recording” includes inputting and, indeed, the word “inputting” may have a narrower scope. I have reached this conclusion for three reasons. First, the fifth aspect of the invention in the Provisional Application is describing a method and, as Burley J said in Coretell Full Court, it is a method described in broad functional terms. Secondly, having regard to step 5, the invention encompasses a recorded specific time that is inputted so that the relating step (i.e., the recorded specific time is related to recorded time intervals) can be carried out. I agree with AMC’s submission that if one has recording of the specific time according to the fifth aspect of the Provisional Application, then considering the method as a matter of substance, one will also have inputting of that time. …
At [347] Besanko J rejected an argument that the specific time interval “at which” the core sample was separated (in the “fifth aspect” of the invention in the Provisional) was materially different from the specific time “representative of when” the core sample was separated (in the Contested Claims of the Patent). Reading the disclosure in the Provisional purposively and in a common sense way, Besanko J held that the skilled person would not understand the language used to require exact precision with the core break, particularly noting that core break is not instantaneous: Globaltech FI at [347], citing Professor Tapson’s evidence.
The expert evidence
Professors Tapson and Dupuis agreed in the JER-V, that a “time interval” is defined as a “period of time that separates two given instants in time”, and that time intervals can exist without the need that they be calculated. They also agreed that the Provisional disclosed the use of time as a means of indexing data that is collected by the invention.
The experts noted that the concept of time is intrinsically defined by intervals that are referenced to an agreed upon temporal reference. For example, the time “12.35 am” represents an instant in time that is referenced to a 35 minute interval since midnight, ie counting forward from midnight. Or, as Professor Dupuis agreed in the joint session, the same time can also be identified as 25 minutes until 1 am, ie counting backward from 1 am. These examples are two different, but equally valid, ways of identifying the same instant in time. It is inherent in the nature of time that either method can be adopted, because time is a continuum that is counted in standard units of minutes and hours.
The two experts also agreed that the sole reference to “specific time” within the context of the fifth aspect of the invention disclosed in the Provisional is to the time when the core sample is separated from the body of material (ie core break). The experts differed as to whether that sole reference to “specific time” allowed for the recording of the event without consideration of a duration of time relative to an initial temporal reference (ie initial reference time).
Professor Tapson considered that the Provisional describes relating a “specific time to the recorded intervals” and that “specific time” in that context is not necessarily calculated, measured or expressed as a duration of time relative to the initial reference time. Professor Tapson considered that there was nothing in the Provisional that limited “specific time” to a duration of time relative to the initial reference time. Professor Dupuis disagreed.
Professor Dupuis agreed that the “specific time interval” in step 3 is one of the time intervals referred to in step 2, being the specific one that occurs at the time of core break. Professor Dupuis agreed that “specific time interval” is used because it identifies which of the downhole time intervals is the time interval of interest. That is, the time interval at which the core breaks. He also agreed that the recording of the specific time interval is done by the operator, above ground, and that the operator would be aware that the orientation tool down the hole has been recording orientation measurements at successive time intervals, and the record of those would be stored by the downhole device. Professor Dupuis agreed that step 3 required making a record to identify which of the downhole time intervals is the one of interest, the one recording the core break.
Professor Dupuis agreed that step 5 of the fifth aspect involved the relating of the above ground record relating to the time of the core break, and the downhole time record of the time interval at which the core break orientation measurement was taken.
Professor Dupuis regarded the sole reference to “specific time” as “essentially synonymous” with “specific time interval” in the context of the Provisional. He considered them as intimately related to the same temporal reference (the starting of the stopwatch disclosed in the described embodiment), and the specific instant when the core was separated from the body of material — namely, “specific time”.
Professors Dupuis and Tapson agreed that “recording the specific time interval” in step 3 could be implemented simply by making a record of the time at which core break occurs on the above ground timer.
[Counsel]: Just to clarify … simply recording the time on the aboveground timer at which the core break occurs, you accept that that, subject to the issues you raised, would be one way in which you could make … a record of the specific time interval downhole at which core break occurred; correct?
Dupuis: That’s correct.
[Counsel]: And you could do that, because you would know, for example, if the time on the aboveground timer was one hour and 55 minutes – just to take an arbitrary number – you would know that the specific time interval counted out down hole at which core break occurs is the one that occurred at the time of one hour and 50 minutes or whatever I put to you that was the time …
Dupuis: 55 minutes, yes.
[Counsel]: … on the aboveground timer. Yes. Do you agree with that?
Dupuis: Yes.
[Counsel]: Professor Tapson, can I ask you whether you agree that that is one way in which step 3 of this method could be practiced.
Tapson: Yes, I agree.
Professor Dupuis agreed that, subject to the accuracy of the timers, the fifth aspect of the invention in the Provisional could be implemented without having an initial temporal reference and instead using a later temporal reference.
BLYA sought to diminish the effect of Professor Dupuis’ agreement that there were other means by which the method of the fifth aspect could be implemented, noting that the cross examination was directed towards potential ways to implement the method of the fifth aspect, not what the experts considered was taught by the disclosure in the Provisional. AMC rejected the criticism, submitting that the role of the expert is not to construe the words of the specification, but to assist with technical matters, such as how the invention disclosed might be implemented.
Whilst Professor Dupuis agreed that there was more than one way that the method of the fifth aspect could be implemented, he was not completely convinced that the Provisional specification intended any method other than a synchronised (counting forward) method. The cornerstone of his reasoning was his observation that the invention described in the Provisional involves the concept of a time interval referenced to a synchronisation event, which he regarded as fundamental to the one embodiment of the invention disclosed in the Provisional. It was clear that he considered that the invention disclosed in the Provisional was limited to the preferred embodiment described in the best method section. He considered that implicit in that embodiment was the feature of the inputting of a specific time interval beyond the reference time. In his affidavit dated 28 January 2021, Professor Dupuis stated:
Implicit in the provisional specifications is the synchronicity of the measurement system based on an external reference clock that is disclosed as a stopwatch. The description of the invention makes it clear that, the key to indexing the measurements in space and time is the ability to recall the time interval that elapsed from the initialization of the system and when the rock core was broken.
BLYA criticised Professor Tapson for his clarification made at the start of the joint session wherein he changed his reference in the JER-V to the notions of counting forward and counting backwards as being “valid within the claims of the patent” to “valid within the description of the provisional specification”. BLYA submitted that this showed that Professor Tapson’s reasoning was based on the way AMC advanced its claim construction arguments for the Patent in the earlier proceeding, rather than him considering the disclosure in the Provisional in isolation. When this proposition was put to Professor Tapson, he rejected it:
I think that’s much too direct. I – I do – I think it’s not unreasonable to say that I’m a human being, and – and having read the patent and the claims, it would be impossible to, in a sense, not be informed by that. But – but the idea that there was some effort to merge or – or – or resolve any differentiation between those two is – is simply not accurate.
I do not consider that Professor Tapson’s “acknowledgement” diminished his evidence as to what he considered to be disclosed in the Provisional.
Consideration
In Globaltech FI and FC, Globaltech’s preferred construction which limited claim 1 of the Patent to the synchronised method of the preferred embodiment, was rejected. Besanko J and the Full Court adopted a broad construction of step 3 of the method of claim 1 as encompassing synchronous and asynchronous methods. (Globaltech FI at [265] and Globaltech FC at [134]).
For the reasons which follow, I do not consider that the disclosure in the Provisional is limited to a synchronised method. The claims of the Patent are fairly based on the matter disclosed in the Provisional.
Despite propounding a construction of claim 1 of the Patent limited to a synchronised method at trial, Globaltech chose not to pursue the present external fair basis argument in Globaltech FI. BLYA, not a party to the earlier proceedings, seeks to explain Globaltech’s abandonment on the basis that the external fair basis argument only “crystallised” with the adoption of the broader construction of claim 1 encompassing synchronous and asynchronous methods by Besanko J, which was upheld by the Full Court in Globaltech FC. The current external fair basis argument could have been run at the Globaltech FI trial. That Globaltech abandoned the argument suggests that Globaltech did not count it amongst its strongest. In any event the argument is now raised by BLYA, which was not a party to Globaltech FI.

By directing attention to the contrast between the third integer of the fifth aspect disclosed in the Provisional — “recording the specific time interval beyond the reference time at which the core sample was separated from the body of material” — and the third integer of claim 1 of the Patent — “inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material”, BLYA seeks to argue that the disclosure in the Provisional is limited to a synchronised method and that there is no basis in the Provisional for the broad construction of claim 1 adopted by Besanko J and the Full Court in Globaltech FI and FC.
BLYA submits that the disclosure in the Provisional is limited to the manner of carrying out step 3 in the embodiment described in the best method section. Professor Dupuis, despite his agreement in oral evidence that there are other ways to carry out the method of the fifth aspect, continued to maintain his position that the disclosure in the Provisional is confined to the synchronised method using a stop watch as described in the embodiment. The other ways of carrying out step 3, which Besanko J found to fall within the claims, are said by BLYA to “introduce new functionality”, and travel beyond the disclosure of the Provisional. I reject that submission.
Justice Burley described the fifth aspect of the Provisional as being “expressed in broad functional terms”. The description of the fifth aspect in the Provisional is not limited to the manner in which the method may be carried out: Coretell FC at [145]. That function may be achieved using any means that meets the function: Coretell FC at [162]. His Honour described the position being analogous to the facts in Lockwood No 1 (at [4]–[12]) at [162]:
[W]here the consistory clause in the specification included a broad statement directed to a latch assembly which had a lock release means described in terms of its function, but did not indicate anything in terms of the form which the lock release means may take. The High Court considered that to be sufficient description, and within s 40(3) of the Act, to satisfy the test for fair basis. In that case, the Court found at [38] that no words of limitation of the breadth of the functional disclosure were to be found in the body of the specification. The same applies in the present case.
The functional effects of particular relevance to the external fair basis case are the recording and relating functions described in steps 3 and 5 of the fifth aspect of the Provisional:
·Recording the specific time interval, beyond the reference time…; and
·Relating the recorded specific time to the recorded time intervals…
As discussed above, the experts agreed that a “time interval” is defined as a “period of time that separates two given instants in time”, and that the Provisional disclosed the use of time as a means of indexing data that is collected by the invention.
Professor Dupuis accepted as a general proposition, that the nature of time is such that there are different ways of identifying an instant in time which are equally valid.
Professors Dupuis and Tapson understood the phrase “specific time interval” as used in step 3 to designate one of the time intervals referred to in step 2 which are counted out downhole, being the specific one that occurs at the time of core break as referred to in step 3.
Professor Dupuis agreed with Professor Tapson that it is possible to use a temporal reference that occurs after an event of interest in order to relate measurements of two timers that occurred before that reference, even if the two timers were not synchronised with each other to begin with, due to the inherent properties of time.
Professor Dupuis agreed that “recording the specific time interval” in step 3 could be implemented simply by making a record of the time at which core break occurs on the above ground timer.
Professor Dupuis agreed that other there were other possible ways to carry out step 3 than the synchronous method involving a stopwatch described in the embodiment, including an asynchronous method. His evidence was that the difference between a synchronous method and an asynchronous method was not “trivial”, and that design of an asynchronous method might “require a little bit more thought” in order to make “all of the timing events line up”. However, he did not suggest that utilising an asynchronous method would introduce new functionality to the steps set out in the fifth aspect.
Professor Dupuis maintained his opinion that the invention described in the Provisional involved a concept of a time interval referenced to a synchronisation event, which he regarded as fundamental to the invention disclosed in the Provisional. He considered the synchronicity of the measurement system based on an external reference clock (the stopwatch disclosed) was implicit in that embodiment. Professor Dupuis accepted that his view was based on the features of the preferred embodiment in the Best Modes section of the Provisional. Professor Dupuis considered the preferred embodiment was the only method disclosed in the Provisional.
Professor Dupuis’ opinion that the disclosure of the Provisional was limited to the one embodiment disclosed in the Provisional was not founded on the absence of “interval” in the fifth step of the fifth aspect. In his view the phrases “specific time” and “specific time interval” were “essentially synonymous in the context of the Provisional”.
Justice Burley in Coretell FC held that the disclosure of the fifth aspect of the invention was not confined to the preferred embodiment. His Honour observed at [158] that the inventor considered that embodiment to be “preferable” but not essential. There is no language in the detailed description of the best method of the Provisional to suggest that the invention is to be understood as confined to the preferred embodiment. No words of limitation of the breadth of the functional disclosure are to be found in the body of the Provisional.
As the experts agreed, there were other manners in which to record the time at which core break occurred for the purposes of carrying out step 3 than the stopwatch method of the preferred embodiment. These other manners do not add additional functionality to the steps of the fifth aspect disclosed in the Provisional.
The absence of “interval” in step 5 of the fifth aspect does not cause the disclosure in the Provisional to be confined to the synchronised method of the preferred embodiment. BLYA’s external fair basis argument which relies of the absence of “interval” in the fifth step epitomises the over meticulous verbal analysis approach of the kind rejected by the High Court in Lockwood No 1 at [68].
As such, I do not consider the claims to be without fair basis and BLYA’s cross-claim is unsuccessful.
CONCLUSION
Each of the respondents has infringed the Contested Claims of the Patent which I find to be valid. Further, the applicants are entitled to additional damages pursuant to s 122(1A) of the Act.

I certify that the preceding four hundred and forty (440) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe.
Associate:
Dated: 6 October 2022
SCHEDULE OF PARTIES

NSD 1040 of 2019

Respondents

Fourth Respondent:

BOART LONGYEAR AUSTRALIA PTY LTD

File number(s):	NSD 1040 of 2019
Judgment of:	ROFE J
Date of judgment:	6 October 2022
Catchwords:	PATENTS – where invention claimed is a core sample orientation device relating to a system and method for orienting core samples extracted from the ground – construction of patent – meaning of “predetermined time intervals” – whether respondents infringed patent in suit – held: respondents’ product infringed patent – accessorial liability for infringement: s 117 of Patents Act 1990 (Cth), authorisation and joint tortfeasorship – all respondents liable for infringing conduct PATENTS – invalidity – external fair basis and priority date – fourth respondent challenges priority date of patent claims on basis that they are not fairly based on the matter disclosed in the provisional – claims of patent found to be fairly based – cross-claim dismissed DAMAGES – applicants seeks orders for additional damages against each respondent per s 122A of Patents Act 1990 (Cth) – conduct of respondents in circumstances where lengthy litigation history exists between the parties and previous versions of the respondents’ product found to infringe patent – applicants entitled to an award of additional damages
Legislation:	Copyright Act 1968 (Cth) Federal Court of Australia Act 1976 (Cth) Patents Act1990 (Cth) Patents Regulations 1991 (Cth)
Cases cited:	Apotex Pty Ltd v Les Laboratoires Servier (No 2) (2012) 293 ALR 272 Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (2013) 304 ALR 1 Australian Mud Company Pty Ltd v Coretell Pty Ltd(No 2) [2018] FCA 1109 Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 4) [2015] FCA 1372 Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (2019) 138 IPR 33 Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 3) [2022] FCA 596 Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2022] FCA 445 Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 Calidad Pty Ltd v Seiko Epson Corp (No 2) (2019) 147 IPR 386 Collins v Northern Territory (2007) 161 FCR 549 Coretell Pty Ltd v Australia Mud Company Pty Ltd (2017) 250 FCR 155 Facton Ltd v Rifai Fashions Pty Ltd (2012) 95 IPR 95 Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd [2021] FCAFC 65 Generic Health v Otsuka Pharmaceutical Co Ltd (2013) 100 IPR 240 Globaltech Corp Pty Ltd v Australian Mud Company Pty Ltd (2019) 145 IPR 39 Hood v Down Under Enterprises International Pty Ltd [2022] FCAFC 69 Hytera Communications Corp Ltd v Motorola Solutions, Inc [2019] FCAFC 210 Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525 Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 Mead Corporation v Riverwood Multiple Packaging Division of Riverwood International Corporation [1997] FSR 484 MJA Scientifics International Pty Ltd v SC Johnson & Sons Pty Ltd (1998) 43 IPR 275 Northern Territory v Collins (2008) 235 CLR 619 Novartis AG v Pharmacor Pty Ltd [2022] FCAFC 58 Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd (2019) 154 IPR 215 Playgro Pty Ltd v Playgro Art & Craft Manufactory Limited (2016) 117 IPR 489 Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119 Roadshow Films Pty Ltd v iiNet Ltd (2012) 95 IPR 29 Seiko Epson Corporation v Calidad Pty Ltd (2017) 133 IPR 1 Sociétédes Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd (2014) 110 IPR 82 The Koursk [1924] P 140 Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574 University of New South Wales v Moorhouse (1975) 133 CLR 1
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Patents and associated Statutes
Number of paragraphs:	440
Date of hearing:	8–10 March 2022, 14 March 2022
Counsel for the Applicants:	Mr C Dimitriadis SC with Ms P Arcus
Solicitor for the Applicants:	Gilbert + Tobin
Counsel for the Respondents:	Mr A Ryan SC with Mr A Fox SC
Solicitor for the First and Second Respondents:	Griffith Hack
Solicitor for the Third and Fourth Respondents:	Bird & Bird

NSD 1040 of 2019
BETWEEN:	AUSTRALIAN MUD COMPANY PTY LTD First Applicant REFLEX INSTRUMENTS ASIA PACIFIC PTY LTD Second Applicant
AND:	GLOBALTECH CORPORATION PTY LTD First Respondent GLOBALTECH PTY LTD Second Respondent BOART LONGYEAR LIMITED (and another named in the Schedule) Third Respondent
AND BETWEEN:	BOART LONGYEAR AUSTRALIA PTY LTD Cross-Claimant
AND:	AUSTRALIAN MUD COMPANY PTY LTD Cross-Respondent

ORDER MADE BY:	ROFE J
DATE OF ORDER:	6 OCTOBER 2022

NSD 1040 of 2019
Respondents
Fourth Respondent:	BOART LONGYEAR AUSTRALIA PTY LTD