Boris Rozenblit v VR Tek Pty Ltd
[2013] APO 49
•27 August 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Boris Rozenblit v VR TEK Pty Ltd [2013] APO 49
Patent Application: 2010251745 & 2010281342
Title:Method, process and device for polymeric waste processing (2010251745)
Feeder and extrusion device and method of use thereof (2010281342)
Patent Applicant: VR TEK Pty Ltd (2010251745)
VR TEK Pty Ltd and APRIL Ltd (2010281342)
Requestor: Boris Rozenblit
Delegate: Dr B. Akhurst
Decision Date: 27 August 2013
Hearing Date: Written submissions filed on 6 and 17 May 2013
Catchwords: PATENTS – requests under section 32 - inventorship – insufficient evidence of inventorship – no material contribution to the inventions – applications successful
Representation: Patent applicant: Michael Vainer represented the applicant(s)
Requestor:Boris Rozenblit was represented by Lloyds and Barclay Lawyers.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010251745 & 2010281342
Title:Method, process and device for polymeric waste processing (2010251745)
Feeder and extrusion device and method of use thereof (2010281342)
Patent Applicant: VR TEK Pty Ltd (2010251745)
VR TEK Pty Ltd and APRIL Ltd (2010281342)
Date of Decision: 27 August 2013
DECISION
Boris Rozenblit is the sole inventor for patent application 2010251745. Boris Rozenblit, Dmitry Shtak and Sergey Azarenkov are the inventors for patent application 2010281342. Michael Vainer is not an inventor for patent applications 2010251745 and 2010281342.
I direct that applications 2010251745 and 2010281342 are to proceed without Michael Vainer as an inventor.
Costs are awarded according to Schedule 8 against the applicants.
REASONS FOR DECISION
Background
Standard patent application 2010251745 (’745) titled “Method, process and device for polymeric waste processing” was filed by VR TEK Pty Ltd on 3 May 2010 under the provisions of the PCT, claiming a priority date of 20 May 2009 from provisional application 2009902282. The inventors are listed as Michael Vainer and Boris Rozenblit.
Standard patent application 2010281342 (’342) titled “Feeder and extrusion device and method of use thereof” was filed via the PCT on 15 March 2010 by VR TEK Pty Ltd and APRIL Ltd., claiming priority from application 2009903685 filed on 7 August 2009. The inventors are listed as Michael Vainer, Boris Rozenblit, Dmitry Shtak and Sergey Azarenkov.
On 12 September 2012, Boris Rozenblit (‘Rozenblit’) applied under section 32 of the Patents Act 1990, for the removal of Michael Vainer as inventor from the records of patent applications 2010251745 and 2010281342. Mr Rozenblit did not pursue an equivalent section 32 request in respect of lapsed provisional patent application 2011902326, filed by VR Tek Wheels Pty Ltd on 15 June 2011.
It is convenient to mention here standard patent 2006241342 titled “Tyre segmenting device” filed on 23 November 2006, and granted to VR Tek Pty Ltd on 6 September 2007. The inventors of record are Michael Vainer and Boris Rozenblit. In his submissions Rozenblit states that he “did not file an objection to patent 2006241342 because it has since lapsed”. I note however, that although it was ceased for a period under section 143(a), patent 2006241342 was advertised as restored on 27 September 2012 after the Commissioner allowed an extension of time under section 223 to pay the outstanding renewal fee. Both Rozenblit and Vainer have provided evidence and submissions in respect of patent 2006241342 and I will refer to these as appropriate in this decision.
In response to the delegate’s request for written confirmation that the applicant(s) of record wished to defend the action, Shelston IP advised that VR TEK Pty Ltd and Michael Vainer each wished to do so. Vainer confirmed on 14 December 2012 that he was representing himself in the matter for both applications.
After the evidentiary periods had ended with no evidence from the applicants of record, on 8 March 2013 the delegate sought clarification as to the parties in the dispute. The delegate noted that if Vainer did not represent the applicants of record (VR TEK Pty Ltd and APRIL Ltd), he had no standing to appear and be heard in the matter. Since costs could be awarded against the unsuccessful party, the delegate requested the applicants to advise whether Michael Vainer represented them and whether they relied on his evidence.
Vainer responded on 13 March 2013, advising that as the company was in liquidation he could not represent VR TEK Pty Ltd, but that he would continue to represent himself in relation to his being a co-inventor or in any other matter. Lloyds and Barclay Lawyers confirmed on behalf of Rozenblit that Joseph Loebenstein had been appointed liquidator on 20 December 2012. Neither the liquidator nor APRIL Ltd responded to the delegate’s request for clarification.
On 10 April 2013, the delegate informed the parties that in the absence of any indication from the applicants that they relied on Vainer’s evidence to defend the action, he would make a determination in favour of Rozenblit in both cases without the need for a hearing. However, the delegate allowed the applicant(s) 7 days to request a hearing before making a formal determination.
On 16 April 2013, Vainer advised the Commissioner that he would be representing himself “as the individual inventor to defend the position that I not be removed as an inventor from Patent applications 2010251745 & 2012281342 [sic] with the permission of Loebenstein Insolvency”. Attached to Vainer’s advice was a reply from liquidator, Joseph Loebenstein to a request from Vainer on 11 April 2013 that he (Vainer) be allowed to request a hearing on his own behalf and defend his position that he not be removed as an inventor. The liquidator’s reply is as follows:
“Dear Mr Vainer
I refer to your e-mails below and advise that I have no objection to you representing yourself at the hearing referred to in your e-mails on the express understanding that you do not in any way represent myself or VR Tek Pty Ltd (In Liquidation) and that neither myself nor VR Tek Pty Ltd (In Liquidation) will be in any way responsible for any costs incurred by your involvement in the hearing.”
On 17 April 2013, the delegate advised the applicant, Vainer and Rozenblit as follows:
“IMPORTANT INFORMATON - NOTIFICATION OF HEARING PROCESS
VR TEK and APRIL have not requested to be heard in these matters. Further, VR TEK and APRIL are not intending to offer any defence.
In the absence of the involvement of Mr Vainer I would make a determination in favour of Mr Rozenblit, and the matter would now be at an end.
Mr Loebenstein has given Mr Vainer permission to appear at the hearing, and make submissions rebutting the case of Mr Rozenblit. By doing this it is clear that Mr Loebenstein is defending the action. As a consequence my comments in the letter of 10 April 2013 no longer apply, and a hearing will be held.
Please note that if the outcome of the hearing is in favour of Mr Rozenblit, costs will be awarded against VR TEK and APRIL, and such costs can be recovered as a debt (section 211). Mr Loebenstein cannot remove VR TEK and APRIL from liability for costs that may be awarded by the Commissioner. Costs cannot be awarded against Mr Vainer, as he is not a party to the matter (see section 210(1)(d)).
…
[The delegate confirmed that Vainer wished to be heard and that Rozenblit may also be heard. He provided a summary of the hearings process and a timetable for submissions]
As a final point, if VR TEK and APRIL notify me that they are no longer defending the matter, the hearing will not take place and I will immediately make a formal determination as foreshadowed in my letter of 10 April 2013. In the absence of a clear and unambiguous statement, the hearing process above will apply.”
No response was received from the applicants or liquidator to the delegate’s letter. The matter was heard in Canberra by way of written submissions filed by Boris Rozenblit and Michael Vainer on 6 May 2013 and 17 May 2013, respectively.
The Evidence
Boris Rozenblit filed evidence in support on 2 January 2013 and 16 January 2013 and responding evidence on 7 February 2013 and 15 February 2013 for applications’745 and ’342, respectively. The supporting evidence for ’745 consisted of a statutory declaration by Boris Rozenblit with annexures 1-10, and for ’342 a statutory declaration by Boris Rozenblit with annexures 1-12. The responding evidence for each application consisted of a statutory declaration by Boris Rozenblit with annexures 1-19.
Michael Vainer filed documents in support of his case on 17 December 2012. For both ’745 and ’342, this consisted of a booklet with contents listed as “Background Information”, “References”, “Legal Documentation”, “Invention workings by Michael Vainer” and “Technical Discussions by Michael Vainer with CSIRO”. For application ’342 the contents also included “Communications by Michael Vainer with Dmitry Shtak of APRIL Ltd”. On 22 January 2013, Vainer filed a booklet for each of applications ’745 and ’342, including a reply to Rozenblit’s statements in support and six attachments. Although Vainer’s statements were not in declaratory form, I have accepted it as evidence in these proceedings.
Vainer’s submissions for the hearing included 13 attachments, some in addition to those previously filed as evidence. Vainer did not request further evidence, nor has leave been granted for further evidence in this matter. Any additional documents not filed within the evidentiary periods are not properly in evidence in these proceedings and I need not have regard to them in hearing this matter. Nevertheless, I have perused these documents and consider them of little probative value in establishing Vainer’s entitlement to be recorded as an inventor for the patent applications the subject of the section 32 request. Therefore, Rozenblit was not given the opportunity to respond to these documents.
The Section 32 request
The provisions of section 32 of the Patents Act 1990, as in force immediately before 15 April 2013, are as follows:
“If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.”
Rozenblit’s application under section 32 is for a determination that patent applications 2010251745 and 2010281342 should not proceed with Michael Vainer recorded as an inventor. The facts Rozenblit relies on to establish his case are:
For patent application ’745
“The inventors appearing on the application number 201051745 [sic] are Vainer, Michael and Rozenblit, Boris.
This is incorrect. The only inventor whose name should appear on application number 2010251745 is Rozenblit, Boris.
I (Boris Rozenblit) am the sole inventor of the method, process and device for polymeric waste processing forming the invention which is the subject matter of patent application number 2010251745.”
For patent application ’342
“The inventors appearing on the application number 2010281342 are Vainer, Michael Rozenblit, Boris Shtak, Dmitry and Azarenkov, Sergey as the inventors
This is incorrect. The only inventors whose names should appear on application number 2010281342 is Rozenblit, Boris Shtak, Dmitry and Azarenkov, Sergey. Vainer, Michael is NOT an inventor.
I (Boris Rozenblit), Dmitry Shtak, and Sergey Azarenkov are the sole inventors of the feeder and exturzsion [sic] device and method of use thereof, which is the subject matter of patent application number 2010281342.”
For applications ’745 and ’342 (alternative text in square brackets)
“I say that I am [we are] the sole inventor because:
(a)I [We] performed all the research necessary for the invention
(b)The invention was my [our] original idea and conception
(c)I [We] prepared the substance of the description of the invention which constitutes the description contained in patent application number 201051745 [sic], [2010281342]
(d)My [Our] qualifications, expertise and knowledge are in the relevant technical areas
I say that Michael Vainer is not an inventor because:
(a)He had no involvement whatsoever with the research or development of the invention
(b)He played no role in originating or developing the idea or conception of the invention
(c)He has no qualifications, expertise or knowledge in the relevant technical areas
(d)His involvement with the invention commenced after it had already been developed by myself [myself, Dmitry Shtak, and Sergey Azarenkov]
(e)His involvement with the invention was limited to its commercial exploitation and not its technical development.”
Rozenblit’s primary submissions are as follows:
“Vainer played no role at all in the inventive process. His input was restricted to translation of Rozenblit’s completed inventions into English, and preparation (in conjunction with a patent attorney) of the patent applications. Rozenblit invented the invention the subject of patent application 2010251745 entirely on his own, and the invention the subject of patent application 2010281342 solely in conjunction with Dmitry Shtak and Sergey Azarenkov.”
Vainer claims that he is a co-inventor, but he does not dispute the entitlement of the other inventors of record. On the contrary, he states in his evidence:
“… I request that application 2010251745 remains as correctly showing the inventors as Vainer, Michael and Rozenblit, Boris.”[1]
“... I request that application 2010281342 remains as correctly showing the inventors as Vainer, Michael Rozenblit, Boris Shtak, Dmitry and Azarenkov, Sergey.”[2]
[1] Michael Vainer (MV) Evidence in support (EIS) ’745 “Retort” page 2, last para
[2] MV EIS ’342 “Retort” page 2, last para
There is no argument that applicants VR TEK Pty Ltd and APRIL Ltd derive entitlement by assignment[3]. It follows that this dispute is confined to the question of whether Michael Vainer is entitled to be named as an inventor for applications ’745 or ’’342.
[3] MV ’745 & ’342 EIS “Background”; Boris Rozenblit (BR) ’745 & ’342 EIS page 8 and 9, respectively
The standard of proof in these proceedings is the normal standard of proof required in civil litigation, that is, the balance of probability.
The law in relation to inventorship was considered by the Full Court of the Federal Court of Australia in University of Western Australia v Gray [2009] FCAFC 116. Relevant to this case, the Full Court identified the following matters to be considered:
(i)Identify the “inventive concept” of the invention as defined by the claims.
(ii)Determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice.
The “Inventive Concept”
The parties did not dispute the nature of invention in each of the ’745 and ’342 specifications. In his submissions, Rozenblit describes the inventions as follows:
“1. A method, process and device for processing polymeric waste. It was designed with a view to exposing preliminarily deformed segmented tyres to ozone, to produce rubber fragments which can subsequently be extruded as devulcanised rubber powder. (Method Invention). It is the subject of patent application 2010251745 (Method Patent)
2. A feeder and extrusion device which extrudes particulate polymer waste and is particularly useful for recycling shredded or segmented tyres to produce devulcanised rubber powders (Feeder Invention). The invention includes a method of use, and is the subject of patent application 2010281342 (Feeder Patent)” (Emphases in original)
Vainer similarly refers to the “Method, process and device for polymeric waste processing” of patent application ’745[4]; and to the “Feeder and extrusion device and method of use thereof” of application ’342[5].
[4] MV ’745 EIS pages 1 and 2
[5] MV ’342 EIS pages 1 and 2; EIR page IV
The broad invention identified by Rozenblit is consistent with the claimed invention in each specification, and it is apparent from the evidence and submissions of both parties that nothing turns on a more precise determination of the inventive concept in either case. Therefore, I accept Rozenblit’s statements of the invention as identifying the “inventive concept” in each of applications ’342 and ’425.
Inventorship - who was responsible for the Inventive Concept?
The law regarding inventorship in Australia was conveniently summarised by the delegate in David Leigh Wake v Cavitus Pty Ltd [2010] APO 11 as follows:
“53.The law on inventorship was most recently discussed in University of WesternAustralia v Gray [2009] FCAFC 116 (UWA) and Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9. The Full Court in Polwood considered a number of authorities in other jurisdictions which were observed to draw a distinction between the conception of an invention and its verification or implementation (called “reduction to practice” under US patent law).
54.In Gunter v Stream 573 F.2d 77 (1978) the “conception” of the invention was described as the complete performance of the mental part of the inventive act. That is to say, the invention is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice”. A concept can be complete although experimentation may continue. In Polwood (at [46]), the Full Court referred to Mueller Brass Co v Reading Industries Inc 17 USPQ 361 for the proposition that inventorship is a role in the final conception of that which is sought to be patented:
“It is clear that, in working out the inventive concept in a patent, each patent will be different and it will be necessary to ascertain the inventive concept from the whole of the specification. Contribution after the invention was fully conceived where that contribution was under the direction of the inventor does not give rise to entitlement to the invention. A person must be able to say that without his or her contribution to the final conception it would have been less.”
55.The reference in Mueller to “the final conception” does not mean that a co-inventor need necessarily devise the final form of the invention. As noted in Monsanto Co v Kemp 154 USPQ 259, a co-inventor’s role could occur at any stage in the development of the invention. Thus, for example, where one person makes an initial step leading toward the invention and their work is taken up and finalised by another, both may be considered to have jointly contributed to the invention.
56.There has also been some consideration of the principles of joint inventorship in Australia. In RowWeeder Pty Ltd v Nielsen 39 IPR 400, joint inventorship was said to arise where one person has a general idea for solving a problem but is unable to give effect to the idea while another person is able to do so. The delegate concluded in Row Weeder (at 405) that a person has entitlement to an invention if that person’s contribution, either solely or jointly with others, had a material effect on the final concept of the invention.
57.The same point was made in Mueller at 372:
“… it is reasonably clear that a person who has merely followed instructions of another in performing experiments is not a co-inventor of the object to which those experiments are directed. To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented. Perhaps one need not be able to point to a specific component as one’s sole idea, but one must be able to say that without his contribution to the final conception, it would have been … less something of benefit.”
58.This was reinforced in Falkenhagen et al v Polemate Pty Ltd [1995] APO 32:
“… it seems to be the case that a second person, engaged because of that person’s expertise to construct a device or prototype based on instructions from or given the concept of a first person, is not normally regarded as an inventor of the device, and this holds true even if the second person suggests ways to aid its design or operation. However if the second person’s suggestions give a result or advantage not contemplated by the original concept then the second person may qualify as a joint inventor of the improved device.” (original emphasis)
59.Although not referring to the distinction drawn in other jurisdictions between inventorship based on conception and verification or implementation, the delegate in Falkenhagen did differentiate between the involvement of a person in the final concept of the invention as opposed to a preferred working embodiment of it.
60. The Full Court in UWA did not depart from the above principles, and in fact reaffirmed (at [248]) that the law in Australia in respect to inventorship:
“remains that a putative inventor or putative joint inventor must have made a material contribution to the invention. What [Polwood] illustrates is that the reduction to practice of an inventive concept may or may not require an invention or inventive step. If not, reduction to practice does not demonstrate inventorship.””
Boris Rozenblit’s evidence in support
In his supporting evidence, Rozenblit set out his qualifications and work history. Rozenblit graduated from Civil Engineering Technical College in the former Soviet Union in 1951. He was awarded a Bachelor of Engineering from Novocherkask Polytechnic Institute in 1957, followed in 1962 by a Masters of Engineering from Dniepropetrovsk Engineering and Construction Institute in the area of Industrial Engineering. Rozenblit worked as an engineer throughout his career until his retirement in 1991. His early work was mainly in construction, but later involved production and manufacturing processes. Between 1983 and 1991 Rozenblit worked as Group Manager at the Moscow Research Institute (Scientific Department) where he was able to devote his time to “devising solutions to various industrial problems”. Rozenblit’s career achievements included 65 patented inventions, several prestigious awards and, in 1988, official acknowledgement by Boris Yeltsin as “the best inventor in the Moscow region”. [6]
[6] BR EIS ’745 & 342 at [7]-[29]
In his evidence, Rozenblit stated that he had been involved in a number of projects involving waste recycling[7] during the course of his career, and his ideas about tyre recycling first began to take shape at some time prior to 1983[8]. Much of Rozenblit’s work at the Moscow Research Institute involved applications of recycled tyres and during his time there he “engaged in extensive research relating to the improvement of tyre recycling processes”.[9]
[7] BR EIS ’745 & ’342 at [11], [20]-[27]
[8] BR EIS ’745 & ’342 at [20], in view of [23]
[9] BR EIS ’745 and ‘342 at [23]-[27]
Rozenblit came to Australia in 1994, where he pursued his interest in tyre recycling:
“30. I continued developing my inventions in the area of recycled tyres after settling in Australia. [He provides details of 2 such provisional patent applications]. …
31.I was very keen to find partners who would enable me to patent and commercialise my inventions, by investing funds and bringing these products to market. In particular I felt three inventions involving recycled tyres, each of which complemented the other, had particular industrial potential and in my view could only be commercialized if I was able to find a commercial partner able to invest the necessary funds:
a. A method of segmenting rubber tyres
b. A method, process and device for processing recycled rubber tyresc. An improved extruder”[10]
[10] BR EIS ’745 & ’342 paras as indicated
I understand from Rozenblit’s evidence as a whole that inventions a, b and c above are the subject matter of patent 2006241342, and patent applications ’745 and ’342, respectively.
In his supporting evidence, Rozenblit explained how his ideas developed in respect of the inventions described and claimed in applications ’745 and ’342, and the contribution made by Dmitry Shtak and Sergey Asarenkov to the latter invention:
“HISTORY AND DEVELOPMENT OF PATENT [application] 2010251745 - METHOD, PROCESS AND DEVICE FOR POLYMERIC WASTE PROCESSING
46. During my work at the Moscow Research Institute (Scientific Department), I learned about a Soviet factory involved in developing rocket technologies. The scientists there told me that it was the practice to add rubber to rocket fuel, and in order to ensure that it burned completely and did not leave residues inside the rocket, ozone was added to the fuel.
47. I remembered the problems I had encountered earlier [prior to 1983[11]] in devising a method to manufacture rubber mats from crumbed recycled rubber, … I realised that it may be possible to use ozone to crumble the rubber and make the surface activated, so that the rubber crumb can be mixed with other polymers creating an elastopolymer.
[11] BR EIS ’745 paras [20] and [22]
48. I began researching ozone activation of rubber and found that this process had been initiated at the Troitsk Technological Laboratory (JSC TTL) in the 1990’s. A group of scientists - [Rozenblit names them] - had developed new technologies for recycling rubber tyres and other industrial rubber products such as conveyor belts to create rubber powder, by means of a low energy and environmentally friendly technology that was based on the use of ozone gas.
49.It became apparent to me, through a study of this technology and the existing patents, that there were deficiencies with this technology which had prevented its being widely used. The process was so complex, and productivity so low, that it could not be commercially implemented.
50. I studied existing methods of using ozone to break down industrial rubber products, and the equipment that was used to achieve this, as well as the methods of and equipment for obtaining ozone gas mixtures. I also reviewed the scientific literature, patents and developments involving ozone use in other areas.
51. Using the internet, I researched patents in Russia, USA, UK, Israel, Latvia and other countries based on IPC classes B29B 17/00, B29B 17/02, B29 19/00, B29B17/02, C01Bl3/10, B29B17/00, B02C18/44, C08J11/16, C08J11/04, B01J19/00, US CL.521/41 and 422/187, as well as other classes and subclasses relevant to ozone and its application.
52. …
53.The invention that is the subject of patent application 2010251745 is entirely the result of my original work. …”[12]
“HISTORY AND DEVELOPMENT OF PATENT [application] 2010281342 - FEEDER AND EXTRUSION DEVICE AND METHOD OF USE THEREOF
46. While I was working at the Moscow Research Institute (Scientific Department), I studied technologies and practices used by various enterprises and scientific organisations for manufacturing high quality rubber powder. It was clear that there were methods of producing devulcanised rubber powder from milled tyres which were cheaper and more energy efficient than those in use at the time.
47. During this research, I became aware of the work of the scientist N.S. Enikolopov at the Institute of Chemical Physics of the USSR Academy of Sciences. His investigations of polymer extrusion devices and milling using extrusion technology led him to an unexpected conclusion - under the influence of a relatively mild voltage shift within a certain temperature range, elastomers, rubber and viscous polymer melts could be broken down and turned into powder. This was a breakthrough in rubber regeneration technology: thermomechanical methods could be used to destroy intermolecular bonds in vulcanized rubber, while minimizing oxidization.
48. Researching further, I found that the first prototype feeder and extrusion device based on this discovery was made by the Soviet R&D company, Nor-Plast. The first mass produced waste rubber miller was manufactured and assembled by Balakovorezino Tekhnika in 1983.
49. Once I started working with Mr Vainer, I began investigating whether there were any feeder and extrusion devices available that would utilise Enikolopov's methods and could be modified to make them compatible with my inventions for processing polymeric waste, and for segmenting tyres prior to processing.”[13]
[12] BR ’745 EIS paras as indicated
[13] BR ’342 EIS paras as indicated
Unable to find any Australian factories producing appropriate devices, Rozenblit contacted manufacturers in the USA and in Russia, initially without success[14]. His evidence continues:
“51. Finally I found a factory known as Aprel [APRIL Ltd, the co-applicant for ’342] in Saint Petersburg, Russia. The people I was dealing there were inventors like myself, and we understood each other. They were interested in working together, combining my ideas with their own, in order to produce a modified machine. Their input was practical, because they manufactured these machines, while my input was theoretical – ideas for increasing efficiency and decreasing energy usage. Among ideas which I contributed were the regulation of the feeding method, and the provision of air holes to permit expulsion of interstitial air during the feeding process. Another innovation was the ability to store and feed batches of different polymer waste simultaneously to the extruder.
52. Staff at Aprel and I corresponded, and I sent them plans and technical specifications for manufacturing the extruder.”[15]
[14] BR ’342 EIS [50] and annexure 11
[15] BR ’342 EIS paras as indicated
Rozenblit and his collaborators at APRIL agreed on the specifications for manufacture of an extruder machine. Rozenblit’s evidence included an email to himself from APRIL dated 29 August 2008 and a translation. The email confirmed APRIL’s ability to supply the machine at an acceptable price.[16] Rozenblit’s evidence continues:
“53. Once the extruder had been manufactured by Aprel, we needed to test it with 25 Kg of rubber pellets sized 20 X 15 X 10 mm. I milled these pellets manually, in my own home, from the side walls of tyres. The pellets were tested by Aprel and the results were excellent and demonstrated low energy usage -100-250 kWt per 1 tonne of powder produced, with average particle size of 100-150 micrometers.
54. It seems that the high mechanical impact causes partial devulcanisation of rubber, breaking the polysulphide bonds and forming free radicals, thereby creating an activated, devulcanised grain surface. This explains the low energy consumption, as devulcanisation takes place on the grain surface without affecting its structure.”[17]
55.…
56.The invention that is the subject of patent application 2010281342 is entirely the result of my work and that of my co-inventors at Aprel, Dmitry Shtak and Sergey Azarenkov. …”[18]
[16] BR ’342 EIS para [52] and Annexure 12
[17] BR ’342 EIS paras as indicated
[18] BR ’342 EIS paras as indicated
In 1996-1997, in seeking to commercialise his inventions in Australia, Rozenblit had approached members of Parliament and private companies[19]. In 2006, he met Vainer:
“35. In 2006 I was introduced to Michael Vainer. I knew he was a businessman, and he spoke Russian fluently, so there was a good match. He offered to provide his commercial expertise and access to funds. Combining that with my inventions and technical abilities, we both felt my inventions could now be patented and commercialised.
36. Although I was still engaged in negotiations with various companies, I decided to work together with Mr Vainer and broke off the negotiations with the other company. On 3 October 2006 we signed an agreement, and it was on this basis that we were going to work together.
37.…
38. I should mention that at no stage (except in my work with Aprel [co-applicant APRIL Ltd] in relation to patent application 2010281342) was I interested in working with another inventor. I was looking for a commercial partner only. I did not require, and did not want, technical input from my prospective partner. None of the companies and people which I approached were capable of assisting me in developing the technical aspects of my inventions. This includes Mr Vainer whose only knowledge of the technical aspects of my inventions until at least the time the patent applications were filed, was knowledge of the matters I had confided in him, to ensure he would be able to successfully file our patents and commercialise the inventions.”[20]
[19] BR ’745 and ’342 EIS at [33]-[34] and Annexures 8-9
[20] BR ’745 & ’342 EIS paras 38
The agreement referred to by Rozenblit at para [36] is the “Heads of Agreement” document discussed below at paragraph [44] of this decision.
Rozenblit describes working with Vainer to prepare the patent applications:
“39.Once Mr Vainer and I had reached our agreement [the Heads of Agreement], he would come to my place and I would explain him in great detail about my inventions, for purposes of translating them to English. I pulled out all the books, and explained him the processes involved. Over a period of 4 years, Mr Vainer visited me frequently. I taught him all that I had developed and researched. He wrote up these ideas in English and brought them back to review with me. I worked hard over several years developing the ideas to the point that they could be patented. …
40. Mr Vainer used the documents he had translated and prepared on the basis of all that I had told him in order to apply for the patents from IP Australia. Whenever we needed to supply new information to IP Australia, such as information proving that the invention contained a novel inventive step, Mr Vainer would come over, translate the requirements, and I explained in great detail how to respond.
41.…
42. At one point we were sitting together nearly every day- I was dictating or explaining in Russian, and Mr Vainer was translating into English.
43. The three patents which were ultimately submitted, corresponding to the inventions mentioned above in paragraphs 31(a), 31(b), and 31(c) were:
a. Australian standard patent application AU2006241342 -Tyre segmenting device
b. Australian provisional patent application AU2010251745 - Method, process and device for polymeric waste processing
c. Australian provisional patent application AU20099093685 [sic] - Feeder and extrusion device and method of use thereof”[21]
[21] BR ’745 & ’342 EIS paras as indicated
Although Rozenblit at para 43.b. refers to 2010251745 as a provisional, it is a standard patent application. Furthermore, the application number and title at para 43.c. encompass two patent applications – provisional application 2009909685 titled “Extrusion device and method of extruding materials” which is the priority document for standard patent application 2010281342 “Feeder and extrusion device and method of use thereof”. On a fair reading, I understand Rozenblit’s paragraph [43] to be consistent with paragraph [31] of his evidence (reproduced at [28] of this decision). Both refer to three inventions, which were later the subject of three standard patent applications in Australia - applications 2006241342 “Tyre segmentation device”, 2010251745 “Method process and device for polymeric waste processing”, and 2010281342 “Feeder and extrusion device and method of use thereof”.
Rozenblit reiterated that Vainer’s role in respect of patent applications ’745 and ’342 as restricted to translation of Rozenblit’s Russian language descriptions of the inventions and preparation of the patent applications in English:
Application ’745
“52. In 2006, on the basis of this research and my original ideas, I prepared applications in Russian in respect of the method and the device for separation of rubber from metal using ozone. Michael Vainer translated this material, and prepared the English language documents for patent application, no 2010251745. All the diagrams accompanying the patent application - figures 1 to 8 - are in my hand and were prepared by me without any input whatsoever from Mr Vainer. Figure 3, in fact, was one of my earlier drawings for this invention and was prepared several years before I had even met Mr Vainer.”
53.The invention that is the subject of patent application 2010251745 is entirely the result of my original work. Mr Vainer’s involvement was restricted to attending to administrative matters, and translating and preparing the patent application documents.”[22]
Application ’342
55.In his preparation of the English language documents for patent application 2010281342, Mr Vainer relied entirely on the material I gave him in Russian, which fully described the invention. All the drawings accompanying the patent application - figures 1 to 11 - are in my hand and were prepared by me without any input whatsoever from Mr Vainer.
56.The invention that is the subject of patent application 2010281342 is entirely the result of my work and that of my co-inventors at Aprel, Dmitry Shtak and Sergey Azarenkov. Mr Vainer's involvement was restricted to handling commercial arrangements with Aprel, attending to administrative matters, and translating and preparing the patent application documents.”[23]
[22] BR ’745 EIS paras as indicated
[23] BR ’342 EIS paras as indicated
It is well settled in law that in disputes under section 32 the requestor, in this case Rozenblit, carries the legal burden of proof on the balance of probabilities. However, the evidentiary burden may shift from time to time, particularly where knowledge of the relevant facts lie particularly with one party or the other (Dunlop Holding Ltd’s Application [1979] RPC 523 at 542-4).
Rozenblit has put forward a credible prima facie case that he is the sole inventor for the subject matter of patent application 2010251745 and, that he, Dmitry Shtak and Sergey Azarenkov are the only inventors for that of patent application 2010281342. The effect of Rozenblit’s evidence is to shift the evidentiary burden to Vainer. Vainer must establish with evidence that he is entitled to be recorded as an inventor for patent applications 2010251745 and 2010281342.
Consideration of Michael Vainer’s evidence and submissions
Vainer submitted that Rozenblit has provided no credible evidence that he, Vainer, is not an inventor in his own right:
“The fact is that I became an inventor in my own right in order to invent, patent and then commercialise the referred to tyres recycling technologies, and it is I who properly performed the inventive process and shared my previous knowledge and new research with Boris Rozenblit, and it is through my efforts and assistance that Boris Rozenblit succeeded as a co-inventor with me in the field of tyre recycling technology, where previously as an individual Boris Rozenblit failed - having no proprietary intellectual property in this field in his own right. This is the correct and only conclusion, and is clearly and unequivocally proven with the concrete evidence provided.”
Disputing Rozenblit’s account of events, the “Background” provided in Vainer’s supporting evidence essentially summarises his case in these proceedings. His evidence for ’745 is as reproduced below, with alternative text for application ’342 as indicated:
“Boris Rozenblit’s knowledge is limited to a potential invention of a Tyre Segmenting Device [i.e. the subject matter of patent 2006241342] for which he approached me for my expertise in relation to tyres back in 2006.
In a Heads of Agreement signed on 3rd October 2006 …, Boris Rozenblit claimed that he “has invented a technology for the recycling and processing of tyre (Technology)” being the Tyre Segmentation Device, and warranted that “he is the sole legal and beneficial owner of the Technology.”
After entering into the Heads of Agreement and commencing to work with Boris Rozenblit, I discovered that Boris Rozenblit only had conceptual knowledge of the potential Technology with little technical expertise – to this day I am yet to see any evidence of his knowledge in relation to tyres. I on the other hand in my previous capacity as Director of Worldwide Trade Corporation had worked in the tyre production technologies area with Russia’s ‘Moscow Tyre Plant’ and later continued my work with the Russia-Netherlands tyre manufacturing consortium ‘Amtel-Vredestein OJSC’ … .
It quickly became evident that the technology required a lot more research and development prior to being patentable and then potentially made commercial. Boris Rozenblit asked me to progress the research and development of the Technology [i.e. the tyre segmentation device, see Vainer’s second paragraph above] with him as a co-inventor in order to progress further. I agreed to utilise my expertise in tyre production technologies together with my knowledge in Computer Science and Engineering … and worked on the problem daily for nearly two months to solve the technical issues associated with the concept and its relation to prior art.
On the 24th November 2006 we assigned the Technology as co-inventors to VR TEK Pty Ltd via a Deed of Assignment … which led to Australian Standard Patent 2006241342 and PCT Application PCT/AU2007/001433.
Since that time I have worked with Boris Rozenblit on new technologies as an inventor in my own right, including the invention in relation to patent application 2010251745 (PCT/AU2010/000507) [or 2010281342 (PCT/AU2010/000284)], together with government bodies like the Advanced Manufacturing Cooperative Research Centre, science institutions like the CSIRO, and academic institutions like Deakin University, with never a claim that I was not the inventor.”[24]
[24] MV EIS ’745 & ’342 “Background”
Vainer’s background summary highlights a number of issues that are in dispute. Most importantly, there is no agreement regarding the nature of the partnership between Vainer and Rozenblit in its early stages, nor is there any agreement on the actual contribution of the inventors of record to the inventions described and claimed in patent applications ’745 and ’’342 or patent 2006241342.
I will consider the evidence broadly in chronological order in order to determine the nature of Vainer’s contribution to the invention of each these applications and whether any such contribution had a material effect on the invention of applications ’745 and ’342.
The “Heads of Agreement” document
Both Rozenblit and Vainer referred in their evidence to the “Heads of Agreement” document dated 3 October 2006. Michael Vainer and Boris Rozenblit are the only parties to this agreement. Other relevant parts of this document are reproduced below:
“BACKGROUND:
A. Boris has invented a technology for the recycling and processing of tyres (Technology).
B. Michael has commercial expertise and access to funds.
C. Boris and Michael have agreed to enter into a joint venture (Joint Venture) to develop and commercially exploit the Technology through the following entities that they will establish:
(1) the VR Tek Unit Trust (VRUT), the trustee of which will be VR Tek Pty Ltd (VRT); and
(2) a company called VR Tek Operations Pty Ltd (VRT Operations)
AGREEMENT:
1. The units in VRUT and the shares of VRT and VRT Operations will be owned 45 per cent by an entity nominated by Boris and 55 per cent by an entity nominated by Michael, in recognition of:
(a) the intellectual property and technical expertise, time and effort to be contributed by Boris to the Joint Venture;
(b) the commercial expertise, time and effort to be contributed by Michael to the Joint Venture, and the financial risk to be borne by Michael under paragraph 10.
3.Boris warrants he is the sole legal and beneficial owner of the Technology (and associated intellectual property rights), free from encumberances and any third party rights, and he will execute a formal deed of assignment of all his present and future right title and interest in the Technology (and associated intellectual property rights) to VRT as trustee for VRUT. In consideration for the promises entered into in these heads of agreement, Boris undertakes to assign all future adaptions, extensions or inventions regarding the recycling of tyres to VRUT for development and exploitation by the Joint Venture.
6. Boris will be Technology Director and, in consultation with Michael, will be responsible for the development of the Technology, development of a prototype and the preparation of a patent specification on behalf of VRUT.
7. Michael will be Commercial Director and, in consultation with Boris, will be authorised on behalf of VRT Operations to approach and have discussions with third parties on a confidential basis in relation to the commercialisation of the Technology.
10.Michael will procure funds to be lent to VRUT and/or VRT Operations on an interest-free basis up to $10,000 to fund the following expenses of VRUT and/or VRT Operations:
(a)incorporation and ASIC fees;
(b) development of a prototype;
(c) legal expenses;
(d)a patent application by VRT (as trustee for VRUT) in respect of the Technology.
13. Michael and Boris each commit their best endeavours to the success of the joint Venture in developing and commercialising the Technology.”
It is apparent from their evidence that each party places a different interpretation on the phrase “technology for the recycling and processing of tyres” or, in its abbreviated form, the “Technology”. Vainer interprets the Technology as the Tyre Segmentation Device of patent 2006241342[25]. In contrast, Rozenblit claims that the “technology for the recycling and processing of tyres” was deliberately not described in detail as there were a range of tyre reprocessing technologies that he was keen to develop with Vainer. These included the three inventions identified in his evidence, which became the subject of applications ’735 and ’342, and patent 2006241342.[26] For the purposes of determining inventorship it is not necessary for me to decide the proper construction of the “Technology” but I have been mindful of the parties differing interpretation in considering their evidence.
[25] MV EIS ’745 & ’342 under “Background”
[26] BR evidence in reply (EIR) ’745 & ’342 pages 8
Rozenblit described the Heads of Agreement document as important “because it records the reality of” his own and Vainer’s role in their joint venture:
“Mr Vainer acknowledges in the agreement that I invented the technology the subject of our agreement (Background clause A), that his contribution would be commercial expertise and access to funds only (Background clause B), that my contribution to the Joint Venture would be my intellectual property and technical expertise (clause l(a)) and that his contribution would be commercial expertise and bearing of the financial risk (clause l(b)). Clauses 3 and 6 of the agreement make it clear that Mr Vainer never envisaged that he would be making any contribution to the technical development of my inventions. It would have been, and is, absurd to suggest that Mr Vainer has the ability to contribute in any way to the inventions the subject of the patents in respect of which he has without my knowledge registered himself as co-inventor.”[27]
[27] BR EIS ’745 & ’342 pages 5
However, Vainer claimed he entered into the agreement without knowledge of the full facts. His responding evidence on this point is as follows:
“Boris Rozenblit had me enter into that agreement under false pretences where I had accepted in good faith that he “has invented a technology for the recycling and processing of tyre (Technology)” being the Tyre Segmentation Device, and warranted that “he is the sole legal and beneficial owner of the Technology”.
I note again that after entering into the Heads of Agreement and commencing to work with Boris Rozenblit, I discovered that Boris Rozenblit only had conceptual knowledge of the potential Technology with little technical expertise specific to tyres.”[28]
[28] MV EIR ’745 & ’342 pages III
In his submissions, Vainer alleged deliberate deceit by Rozenblit:
“After preliminary background checks on Boris Rozenblit by Salvatore Saker, I entered into a Heads of Agreement with Boris Rozenblit in good faith on the 3rd October 2006 …, in which Boris Rozenblit claimed that he “has invented a technology for the recycling and processing of tyres (Technology)” being the Tyre Segmentation Device, and warranted that “he is the sole legal and beneficial owner of the Technology'”. Him having signed this document with his witness and translator lziaslav Poudel, he must have known at the time that he was making a FALSE statement in a legal document as he did not possess any proprietary intellectual property in relation to the processing of tyres, with nothing of any substance to commercialise. His ideas in this area were purely conceptual with basic undertaking of research. His previous inventions are in unrelated areas and do not refute this fact.” (Emphasis in original)
On its face, the Heads of Agreement document establishes that at the time it was signed, the parties to the Agreement considered Rozenblit to be the inventor of the technology to which the document relates and they did not envisage any inventive contribution by Vainer. Even if the “Technology” is narrowly interpreted as the tyre segmentation device, paragraph 3 of the Agreement provides for Rozenblit, but notably not Vainer, to assign all future inventions regarding the recycling of tyres to VR TEK for development and exploitation by both parties. I am satisfied that at the time of the Agreement Vainer was not expected to contribute in an inventive capacity to any further inventions in this field.
In contrast to Vainer’s evidence and submissions, I do not consider the references in the Agreement to Rozenblit’s “intellectual property and technical expertise” and his being the “sole legal and beneficial owner of the Technology (and associated intellectual property rights)” to distinguish between Rozenblit’s intellectual knowledge relating to the tyre recycling technology and the “proprietary” intellectual property rights advocated by Vainer.
The Heads of Agreement is contemporaneous evidence of the parties understanding of their respective roles when they first agreed to develop and commercially exploit the tyre recycling and processing technology. As “Technology Director”, Rozenblit was to contribute the intellectual property and technical expertise, and he would be responsible for development of the technology, a prototype and preparation of a patent application. Vainer, as “Commercial Director”, was to contribute commercial expertise and bear the financial risk. Vainer’s responsibilities were to organise funding and commercialisation of the technology to which the Agreement relates.
Vainer sought to distance himself from the limited role specified for him in the Heads of Agreement. He submitted that a Confidentiality Agreement between Rozenblit and Worldwide Trade Corporation Pty Ltd (‘WTC’) on 25 July 2006 predates the Heads of Agreement and establishes that he had relevant prior experience and exposure to tyre recycling technology, for which Rozenblit had sought him out in 2006. However, for the reasons provided below at [110]‑[116], the Confidentiality Agreement does not assist Vainer in this matter. Furthermore, at [117]-[122], Vainer has not otherwise established that he had prior expertise and knowledge in tyre recycling technologies.
Vainer’s evidence is that having signed the Heads of Agreement, he discovered that Rozenblit only had conceptual knowledge of the Tyre Segmentation Device[29]. However, the conception of an invention denotes inventorship. In order to establish his own entitlement to be named as an inventor, Vainer must establish with evidence that he has made a material contribution to the invention disclosed and claimed in the relevant patent specifications. Any reduction to practice Vainer may have undertaken of another’s inventive concept will only make a material effect if the steps involved in that process require further invention or an inventive step.
[29] MV EIS ’745 & ’342 “Background”; EIR ’745 & ’342 pages III
In order to establish his own entitlement to be named as an inventor for applications ’745 and ’342, Vainer relied on the following:
· The fact that he is recorded as a co-inventor for patent applications 2006241342, ’745 and ’342 and associated assignment documents;
· His handwritten “invention workings”;
· His technical communications with third parties;
· His asserted qualifications in Computer Science and Engineering; and
· His asserted prior technical knowledge in relation to tyre recycling.
Vainer’s inclusion as a co-inventor in the patent applications and assignment documents
Vainer relied on his inclusion as an inventor in the patent applications and assignment documents in order to establish his entitlement as an inventor, in addition to the fact that the patent attorneys filing the applications had not queried his inclusion as an inventor. However, once his entitlement has been challenged under section 32, the mere fact that Vainer had previously been named as an inventor is of very little weight in establishing on the balance of probabilities that he is, in fact, entitled to be recorded as an inventor for patent applications ’745 and ’342.
Both parties have led evidence regarding Rozenblit’s knowledge or otherwise of Vainer’s being identified as an inventor in these documents. Rozenblit’s evidence is that as he did not read or write English, he was not in fact aware that Vainer was recorded as co-inventor on all the patent applications and other legal documents, until his legal advisors brought this to his attention in 2012[30]. Annexure 3 to Vainer’s submissions, a letter from HTS Accountants who act for VR Tek, does not assist in refuting Rozenblit’s evidence on this point. Rozenblit asserted that had he known Vainer was representing himself as a co-inventor he would immediately have objected, and would have refused to sign the documents[31]. Vainer has not established that Rozenblit knew of and agreed to Vainer’s being recorded as an inventor for patent application s ’745 and ’342.
[30] BR ’745 & ’342 EIR pages 9 and 8, respectively
[31] BR ’745 & ’342 EIR pages 9 and 8, respectively
Vainer’s handwritten notes (invention workings)
Vainer relies on his notes (workings) to refute Rozenblit’s claims that he is not an inventor. I will address this evidence for each application separately.
Application ’745
Vainer identified his contribution to the invention of patent application ’745, as follows:
“It is I who performed most of the research as evidenced by my workings.” [32]
“It was my idea and conception to utilise selective reprocessing of polymeric waste with the utilisation of ozone as a value add process to the previously patented Tyre Segmentation Device as evidenced by my workings.”[33]
“It is I who performed most of the research and development as evidenced by my workings … .” [34]
“It is I who predominantly originated and developed the idea and conception of the invention as evidenced by my workings.[35]
[32] MV ’745 EIS page 1
[33] MV ’745 EIS page 1 and EIR page IV
[34] MV ’745 EIS page 1, EIR page IV
[35] MV ’745 page 1
Vainer’s workings for application ’745 consist of 3 pages he has identified in the contents page as “Ozone research and development”, 9 pages identified as “Selective processing of polymeric waste research and development” and further pages identified as “Patent description and formulation”.
The Ozone Research and Development document is handwritten and titled “Ozone information”. These notes commence with “1998” followed by “Method 1: Weight of Rubber/Weight of Ozone” and “Method 2: Concentration of Ozone within a chamber (12m3)”. Brief and specific details are provided under the abbreviated headings “M1” and “M2”.
The evidence of “Selective processing of polymeric waste research and development” is in the form of flow charts. First a handwritten draft and a second typed draft, with similar but not identical text and handwritten annotations. The charts are headed “Selective Reprocessing of Polymeric Waste” and “Selective Processing of Polymeric Waste”, respectively, and summarise a number of steps to process unsorted or sorted polymeric waste. The notes relating to the patent description and formulation consist of pages of handwritten and typed text.
In his responding evidence, Rozenblit challenged Vainer’s reliance on the workings, believing them to be translations of material Rozenblit had provided in Russian:
“As evidence of his research efforts, Mr Vainer has provided extensive hand written notes. Looking through these documents (with the aid of a translator) it is abundantly clear to me that they comprise his English transcription of the material which I had provided him in Russian. They are nothing other than translations of my descriptions of the invention which constitutes the basis for patent application 201051745. …”[36]
[36] BR EIR ’745 pages 1-2
Rozenblit assigned page numbers to Vainer’s evidence of workings and pointed to anomalies in the text to support his conclusion that the document is a translation by Vainer of his own description of the invention in Russian that he referred to in his supporting evidence (see para [37] of this decision). The anomalies he identifies are as follows:
“Russian words
One of the aspects of Mr Vainer's notes which demonstrate that they are nothing more than English transcriptions of my Russian instructions to him is the reproduction of Russian words which Mr Vainer had difficulty translating. In particular, he seems to have had difficulty finding the correct English words for “wuбep” (“Shibber”) and "шлюз" (“Shlyuz”) and these words appear in the original Russian throughout his notes (eg pages 3, 33, 34, 44). On page 14, he translates them as “slide valve” and “sluice” respectively.
On page 21, he correctly translates another word I frequently used in explaining my invention to him - he writes - eмкocmь = capacity
Inappropriate expression in inverted commas
Throughout his notes, many expressions appear in inverted commas. These are direct translations of the Russian words I was using. It appears that Mr Vainer was not sure whether this direct translation was the appropriate English language expression.
Examples are:
The Russian word for airtight is “герметичньІй” which is pronounced “germetichniy”. On page 15 of Mr Vainer's notes he initially wrote ‘geometric’, but changed this to ‘“hermetic” airtight chamber.’
On page 39 he originally mistranslated my Russian "ролик" as “skates”, but later corrected this to rollers. In the context of this invention, no inventor would have considered mounting the perforated chamber on skates rather than wheels.
On page 41 he uses the Russian expression I had adopted for the perforated chamber in figure 1, “Cassetet”. He also uses that word (modified to “Cassette”) in the same context at page 34, where he suggests as an alternative, “stockpiling perforated container”.
Obviously translated expressions
Throughout Mr Vainer’s notes are expressions which would not be used by a person who had grown up and been educated in Australia, but which are typical of a direct translation from Russian to English.
Examples are:
At page 17: “the containers may hold gravity activated pushers and/or elements for further exertion of influence of the further deformation of the tyre segments”
At page 24: “its also differentiated by that the outside surface of the main chamber are mounted electro-magnetic induce door/s
At pge [sic] 26: “the usage of ozone is increased due to the requirement being set by the quality of rubber which requires the most amount of ozone to cut the chemical bonds within the rubber closest to the bead”
At page 61: ‘“Easily deformable fragments” are subject to “changing-load” deformation action
Dotted lines indicate words whose English translation Mr Vainer was unsure of
Mr Vainer used dotted lines in his notes where I had dictated Russian words which he was not sure of in English, or which he had not noted down in time. Sometimes, he inserts a later dictionary translation, and sometimes the dotted lines are left unfilled.
At page 38, which appears to be a continuation of page 37 he writes (starting at page 37) “15. Pipe socket for the output of “non-harmful” elements/ air containing ozone of “normal allowable” concentration … which can undergo barbotage through water as a further safety measure.” The word ‘barbotage’ was obviously looked up in a dictionary, as the translation of the Russian word for repeated washing in water. Barbotage is not the correct translation however, as although it refers to the repeated injection and aspiration of fluid, it is used only in a medical context.
At page 44, he wrote “the loading of ‘pieces’ the hermetically sealable casing can be through шлюз sluice chamber/s” ... it is clear Mr Vainer did not know the English Translation for шлюз and later filled in what he had found to be the appropriate translation of my words to him.”[37]
[37] BR ’745 EIR pages 1-3
Rozenblit’s responding evidence raised significant questions regarding the nature of the documents Vainer relies on to establish his entitlement to be recorded as an inventor for patent application ’745. Despite this, in his submissions for the hearing, Vainer did not address Rozenblit’s evidence other than to summarily dismiss it:
“My handwritten notes from my inventive process is unequivocal proof of my sharing my knowledge and research as co-inventor.”
Vainer’s evidence in respect of ’745 consists of assertions of inventorship unsupported by any reasoned argument as to the significance of his notes in this matter. In contrast, Rozenblit’s evidence in respect of the notes is reasoned and logically probative. On balance, I am not satisfied that Vainer’s notes (invention workings) establish that he conceived any part of the invention, or made any material contribution to the invention disclosed and claimed in application ’745.
Application ’342
Vainer similarly relied on his workings to establish his contribution to the invention of patent application ’342, as follows:
“It is I who performed most of the research for provisional patenting as evidenced by my workings” … It was then also I who performed most of the research for PCT patenting as evidenced by my workings.”[38]
“It was my idea and conception to utilise the feeder and extrusion device and method of use thereof as a value add process to the previously patented Tyre Segmentation Device as evidenced by my workings.”[39]
“It is I who performed most of the research and development as evidenced by my workings … .” [40]
“It is I who predominantly originated and developed the idea and conception of the invention as evidenced by my workings.[41]
[38] MV ’342 EIS page 1
[39] MV ’342 EIS page 1
[40] MV ’342 EIS 2 occurences at pages 1 and 2
[41] MV ’745 EIS page 1
For this invention, Vainer’s workings are listed in the contents page of his booklet as “Feeder and extrusion device and method of use thereof provisional patent research and development and formulation” and “PCT patent application claims description and formulation”. This evidence consists of 24 pages of handwritten notes with text typical of that found in a patent specification.
Again, Rozenblit believes that Vainer’s workings for ’342 are “merely a translation of his dictated Russian text for the patent application”[42]. He continued “[t]hat text [i.e. Vainer’s workings] was not the final version, and Mr Vainer must be credited with investing considerable effort editing and improving the English style of the application”[43].
[42] BR ’342 EIR page 3
[43] BR ’342 EIR page 3
The fact that Vainer prepared the patent specification for application ’342 is not in dispute[44] and his notes are consistent with an early draft of the document, as argued by Rozenblit. Although he claimed their contribution was minimal[45], Vainer does not dispute that Rozenblit, Shtak and Asarenkov are inventors for application ’342[46]. Nevertheless, Vainer provides nothing in his evidence to identify his own particular contribution to the invention of application ’342, as distinct from that of the other inventors, nor does he explain the probative value of the notes in determining this point. Responding in his submissions to Rozenblit’s reply evidence, Vainer merely states:
“… my hand written notes is proof of my sharing my knowledge and research as a co-inventor.”
[44] BR ’745 & ’342 EIS paras [39]-[43]; ’342 EIR pages 9-10
[45] MV ’745 & ’342 EIS pages 1
[46] MV ’745 & ’342 EIS pages 2
As for ’745, Vainer’s evidence consists of assertions, unsupported by any reasoned argument as to the significance of his notes in establishing that he is an inventor of the subject matter of application ’342. Rozenblit’s evidence is brief but pertinent to the matter in question. In the absence of any corroborating evidence, I am not satisfied that Vainer’s notes establish that he made any material contribution to the invention of patent application ’342.
Vainer’s communications with the CSIRO and other parties
Vainer provided evidence of technical discussions he had with CSIRO in order to establish that he performed “most of the research and development” for the inventions of ’745 and ’342[47]. The evidence consists of a single page letter for both ’745 and ’342 and, for ’745 only, 2 pages of handwritten notes headed “CSIRO: Ozone”, which Vainer asserted “clearly shows my own technical discourse with CSIRO”[48].
[47] MV ’745 & ’342 EIS page 2-3
[48] MV ’745 EIR page 7-8
The Ozone document lists 5 dot points on page 1 that appear to summarise work to be undertaken. The handwritten text is not easy to read, but it includes the words: “Construct prototype … of our technology”, “Laboratory test explosion-proof percentage of ozone and rubber dust”, “Extrapolating the laboratory test into our device (original prototype) of approx. 10m3 volume.”, “Determine the … highest explosion-proof ... of ozone … in order to optimally separate rubber from metal”, “Test other materials, … stainless steel, that can be appropriately used for the construction of our technology.” The second page specifies 3 parameters including Ozone and Flow Rates and two paragraphs of text – the second paragraph appears to ask a question:
“Therefore what is the minimum amount of Ozone in kg/hr that your technology can generate to allow the most cost effective experimentation for our current purposes, …”
The evidenced letter is typed on plain paper. It commences “Dear Michael” and finishes “Best wishes Stuart”. The letter is unsigned. It contains no date, no header block and no signature block to identify the writer. Nevertheless, the letter clearly relates to the relevant technology and both Vainer’s Ozone document and the letter refer to determining “explosion-proof” limits or percentages of ozone and rubber dust.
Rozenblit claimed that Vainer’s Ozone notes “are consistent with Vainer translating CSIRO’s English language queries to Rozenblit, and having the responses dictated to him in Russian by Rozenblit.” Regarding the letter, Rozenblit submitted that it established only that Vainer was CSIRO’s point of contact for written communications with the applicant/patentee VR TEK, noting that this is hardly surprising given that he (Rozenblit) is unable to communicate in English.
Vainer submitted for the hearing that his representations to CSIRO were his own in the capacity of co-inventor and that he worked with CSIRO as a co-inventor in his own right. Furthermore, in respect of both documents Vainer states:
“[i]t is ludicrous and offensive for Boris Rozenblit to suggest that I was simply his ‘mouth piece’”, “numerous parties at CSIRO will testify that this is not the case if required”.
Vainer’s submissions contain a number of similar assertions that numerous parties at CSIRO or other co-inventors will or can testify in his support “if required”. Since such evidence would clearly have been helpful to him in this matter, I am surprised that Vainer has not provided the evidence he is referring to. Nevertheless, since it is not in dispute, I accept that Vainer corresponded with CSIRO on technical matters. What must be determined is whether any of the technical detail in Vainer’s correspondence originated with Vainer rather than Rozenblit, and if so, whether it establishes that Vainer made a material contribution to the inventions of ’745 or ’342.
Rozenblit’s responding evidence of inventorship
Consistent with the Heads of Agreement, Rozenblit identified Vainer’s role at VR TEK as involvement in commercial and financial negotiations, with no technical involvement at all[49]. In order to establish that it was he, not Vainer, who contributed the technical input in discussions and collaboration with CSIRO and other third parties regarding the three inventions of patent 2006241342 and applications ’745 and ’342, Rozenblit provided five documents in evidence[50], as follows:
· A set of technical drawings;
· A CSIRO Project Update dated 16 December 2008;
· The minutes of a meeting with CSIRO on 10 July 2009;
· Diagrams of the inventions; and
· A draft Australian Research Council (ARC) funding application.
The technical drawings
[49] BR ’745 & ’342 EIR pages 7
[50] BR ’745 & ’342 EIR pages 7-8
Rozenblit explained that in late 2008 to early 2009, he worked with CSIRO to build a prototype of the Tyre Segmentation Device[51] (the subject matter of patent 2006241342). He has adduced in evidence a set of technical drawings which he claims were developed in the context of this work[52]. Consistent with Rozenblit’s evidence, a signature on each drawing is similar to Rozenblit’s signature on other documents in evidence, and his name is typed on the first drawing as the person checking it.
The Project Update
[51] BR ’745 & ’342 EIR pages 7
[52] BR ’745 & ’342 EIR Annexure 14 and 15, respectively
The second document headed “Project Update” [53] is annotated as being prepared by Merchant Yousuff (presumably of CSIRO) on 16 December 2008. The preamble refers to matter consistent with the Tyre Segmentation Device of patent 2006241342 and summarises five “Technical meetings” held between 5 November and 10 December 2008. Rozenblit is identified as “Technical Director” consistent with his title and role in the Heads of Agreement document, and is stated to have “explained the patented design” in the first meeting dated 5 November 2008. He is also stated to have agreed to provide further specified technical information to the design team at the next meeting.
[53] BR ’745 & ’342 EIR Annexure 15 and 16, respectively
In the second meeting on 13 November 2008, Rozenblit is described as having “spent his time with the design team” where sketches were made of the full unit and decisions were made of the tyre cutting tool design. For the next meeting on 20 November 2008, the update refers to drawings being made for the full unit assembly and individual components, and Rozenblit’s suggestion for attaching the cutter plate. In a further meeting on 5 November 2008, component design and drawings were revisited with Rozenblit described as making a further suggestion. Critically, under this date the document includes the comment “Up to this point CSIRO team was following B.R instructions only”. B.R is identified earlier in the document as Boris Rozenblit.
For the last recorded meeting on 10 December 2008, the Update refers to the CSIRO team coming up with solutions to issues discussed in the previous meetings and contains a reference to Rozenblit providing further information on the material used for the cutter.
In summary, the Project Update document records the substantial technical contribution by Rozenblit to the tyre segmentation device of patent 2006241342, and further suggestions by CSIRO in preparing the prototype. This document makes no explicit reference to Vainer. However, I understand from Rozenblit’s evidence that Vainer, who “exclusively represented the company in negotiations with third parties” translated for Rozenblit in such meetings[54].
Minutes of a meeting with CSIRO
[54] BR ’745 and ’342 EIR pages 8
Rozenblit provided evidence that “CSIRO were reluctant to continue working with VR TEK beyond the Tyre Segmentation Device, and many meetings were held with a view to continuing the project”. One such meeting is evidenced by Rozenblit’s third document - the minutes of a meeting held with CSIRO on 10 July 2009[55]. The attendees included Rozenblit and Vainer for VR TEK, three representatives from CSIRO and one from the Advanced Manufacturing Cooperative Research Centre (AMCRC).
[55] BR ’745 and ’342 EIR Annexure 16 and 17, respectively
Rozenblit noted that this document establishes the integrated nature of the 3 inventions contained within patent 2006241342, and applications ’745 and ’342. In this regard, the first line of the minutes states “… it is intended that the IP/Commercialisation provisions of Phase 1 will be extended to Phases 2 and 3”. I understand from the minutes as a whole, that Phase 1 refers to the production of a prototype tyre segmentation device (the invention described in patent 2006241342); Phase 2 relates to an extruder with an inventive feeder mechanism to be supplied by April Ltd (the invention of ’342), and Phase 3 to an ozone reaction chamber (required for the invention of ’745).
The minutes state that Vainer provided advice on the project objectives and scale of the equipment to be developed to enable materials performance testing. However it appears from the following extracts from the minutes that no technical details of the extruder and ozone chamber design (the subject matter of applications ’342 and ’745, respectively) were discussed at this meeting:
“CSIRO’s normal practice is to work collaboratively with customers to scope and cost projects, include [sic] a free exchange of information. CSIRO requested that VR-TEK disclose to CSIRO details of the extruder and ozone chamber design, specifications and service requirements under the confidentiality agreement in place between CSIRO and VR-TEK.
VR-TEK advised that they are concerned that they will disclose VR-TEK intellectual property to CSIRO which CSIRO would then appropriate and attempt to commercialise without VR-TEK.”
Also consistent with a conclusion that no significant technical information was discussed at this meeting, under the heading “Action Items” is included the statement
“VR-TEK to provide information on the ozone unit design (especially the device used to provide mechanical force) and the extruder design and service requirements).”
It appears from the minutes that APRIL was expected to manufacture the extruder. However, Rozenblit points to a statement in the minutes explicitly referring to VR-TEK proposing that he work with CSIRO to develop the detailed design of the of the ozone chamber, in the same manner that he had for the tyre segmentation device:
“There will be no engineering drawings available for the chamber. VR-TEK proposes that the detailed design will be developed by VR-TEK (Boris Rozenblit) working with CSIRO. (CSIRO note: translation arrangements for Boris will need to be considered).
Nazmul Alam outlined the Phase 1 practice in which Boris Rozenblit worked with the CSIRO team to develop the design.”
Rozenblit’s evidence is that as he was unable to actively participate in these meetings due to his language difficulties, it would have been Vainer who proposed on behalf of VR TEK that he (Rozenblit) would develop the detailed design of this prototype. Vainer provides no comment on this point, other than his broad submission:
“Any allegations by Boris Rozenblit that the inventions were not also and predominantly based on my own knowledge and research and therefore my inventive process which I shared with Boris Rozenblit are completely FALSE.” (Emphasis in original)
Irrespective of whether Vainer proposed Rozenblit to prepare the technical drawings with CSIRO, the fact that the minutes record that Rozenblit should work with CSIRO to prepare the drawings is consistent with Rozenblit being an inventor. The minutes do not establish that Vainer himself had any role other than that identified in clause 7 of the Heads of Agreement, that of representing VR TEK in negotiations with third parties.
Diagrams of the inventions
As further evidence that he was responsible for the technical input rather than Vainer, Rozenbit states that in August 2009, Vainer had a meeting with CSIRO at which he presented a diagram with an English key[56]. In addition to Vainer’s diagram and key, Rozenblit has placed in evidence a diagram and explanatory notes in Russian he had prepared, and an English translation[57]. The diagrams are essentially the same with additional text in English on Vainer’s copy. The main components in Vainer’s English key are consistent with those identified in Rozenblit’s translated notes, and include the segmenting device, the extruder-feeding device and an ozone chamber.
[56] BR ’745 & ’342 EIR pages 8
[57] BR ’745 & ’342 EIR Annexures 17-18 & 18-19, respectively
Rozenblit’s evidence is that:
“Vainer used my oral explanations and those notes to prepare an English language key, and the diagram I had prepared is the diagram he presented.”[58]
[58] BR ’745 & ’342 EIR pages 8
Vainer disputed this, his submissions mirroring his evidence:
“… my representations to CSIRO were my own in the capacity of co-inventor. It is Boris Rozenblit who copied them for his own records, his actions obviously being suspect given he kept no significant hand written notes of his own in relation to his inventive process.”
Although he asserts that Rozenblit copied his own drawing on this occasion, in his submissions, Mr Vainer acknowledges, albeit with qualifications, that all of the diagrams for the patent applications were prepared by Rozenblit:
“There is no dispute that the diagrams utilised were Boris Rozenblit’s which he volunteered to provide as part of his contribution to the inventions.”
“… it is [Rozenblit] who volunteered to do diagrams related to the patent application but mainly based on my workings.”
Rozenblit’s translated notes do identify the elements in the diagram consistent with those in Vainer’s English key. However, while Vainer’s document carries the date of his presentation, 10 August 2009, Rozenblit’s notes and diagram are not dated. The diagram provides evidence of the integrated nature of the three inventions of patent 2006241342 and applications ’745 and ’342. However, it is of little probative value in establishing that the concept for the invention lay with Vainer or Rozenblit.
Referring to his own lack of research notes which Vainer seeks to capitalise on (see para [92] above), Rozenblit explains in his evidence for applications ’745 and ’342, that he gave most of his documents to Vainer:
“Until approximately a year ago, I placed complete trust in Mr Vainer. I believed we were a team, and that I could rely on him not to take advantage of my lack of English, and my ignorance of the Australian legal and bureaucratic procedures.
Once I had explained him everything I could about my inventions, I gave nearly all of my documents, including notes, research, printed articles, sketches, and finished drawings to him. There is, for this reason, not very much information I can provide to demonstrate my research and development efforts which led up to the patented invention.”[59]
[59] BR ’745 & ’342 EIR pages 3
Notwithstanding, Rozenblit has provided ample material in evidence to establish the development of his own key ideas prior to filing the PCT applications WO 2010/132918 and WO2011/014902 (the international filings for ’745 and ’342, respectively). I have not reproduced that evidence in its entirety in this decision because Rozenblit’s entitlement to be named an inventor for the Australian applications is not in dispute.
On the basis of the technical drawings, Project Update and CSIRO minutes, I am satisfied that it was Rozenblit, not Vainer, who provided the technical input for CSIRO to build the prototype of the invention of patent 2006241342 and it was Rozenblit who was to provide the technical expertise to design and develop the ozone chamber in VR-TEK’s proposed collaboration with CSIRO.
Draft ARC funding application
In his evidence, Rozenblit explained that after CSIRO’s involvement in developing the tyre recycling technology came to an end, Vainer came to an arrangement with Deakin University to continue work on phases 2 and 3 of the project. During this time an application was made for funding from the Australian Research Council (ARC). Rozenblit’s evidence includes a draft ARC funding application prepared by Prof. Quipeng Guo of Deakin University[60]. The project in the research proposal “Developing thermoplastic vulcanizates from recycled rubber waste” is relevant to the invention of application ’745. Rozenblit is identified on page 3 as the only “Person Participant” for VR TEK in the research proposal, and on pages 40 and 51 he is recorded as a “Partner Investigator” and “Investigator” on the project, respectively. Vainer appears on page 46 of the document under the heading “Organisation Contact Details” for the Partner Organisation VR TEK Global Pty Ltd.
[60] BR ’745 EIR Annexure 19
The research proposal contains no reference to Vainer in a research role. In his submissions, Vainer provided the following explanation for the omission:
“… as I also had the role of heading the industry partner in the research proposal; I had to provide the name of another participant from the industry partner in the research proposal for that heading. Numerous parties at CSIRO and Professor Qipeng Guo will testify to this if required.”
It appears odd that an investigator in a project could not be recorded as such in the research proposal if he had provided his own contact details. In the absence of the corroborating evidence that Vainer refers to, I cannot accept Vainer’s submission. The information in the draft ARC funding application is consistent with Rozenblit’s statement that Vainer was the point of contact for English-language communications with VR TEK. It is inconsistent with Vainer having a technical role in the research project.
In summary, the evidence before me of technical discourse and collaboration by Vainer and Rozenblit with CSIRO and other parties, does not establish that Vainer himself made any material contribution to the inventions of patent applications ’745 or ’342.
Vainer’s qualifications, prior expertise or knowledge in the relevant technical areas
Rozenblit submitted that Vainer lacks the necessary background to be a co-inventor for the subject matter of patent applications ’745 and ’342. In particular, he points to a lack of relevant qualifications or experience.
In contrast, Vainer submitted that he has “a vast amount of relevant experience” and “a vast amount of exposure to the technologies constituting the invention” and that he “shared his knowledge as co-inventor with Boris Rozenblit”. Vainer submissions regarding his qualifications are:
“My Computer Science qualifications with studies in modular processes etc, with a High Distinction/Distinction average … have a direct bearing on my inventive process, and my Engineering studies which record High Distinction average shows a superior understanding and mastery of Engineering’s most important fundamentals … which I also utilised in my inventive process.”
Education
In regard to his technical qualifications, Vainer’s submissions were as follows:
“I am technically qualified to undertake the inventive process as I have carried out studies in Computer Science at Deakin University in 1993 (High Distinction/Distinction average) and Engineering at Monash (High Distinction average). I have never claimed to be a Computer Scientist or an Engineer by trade; however my exceptional understanding in these areas makes me highly qualified to undertake the tasks I have undertaken.”
In his evidence, Vainer stated:
“I have gained technical qualifications in the areas of Computer Science and Engineering as evidenced by my academic transcripts.”[61]
[61] MV ’745 & ’342 EIS “Retort”
Vainer was awarded a Graduate Diploma of Business (Computing) by Deakin University[62], a Bachelor of Economics by Monash University[63], a Master of Insurance and Risk Management from Deakin University[64] and a Master of Business Administration at La Trobe University[65]. These qualifications are consistent with Vainer’s email signature block “Michael Vainer BEc, MBA” in correspondence dated 8 July 2009[66].
[62] MV ’745 & ’342 EIS IV
[63] BR ’745 & ’342 EIR, pages 5, and Annexures 8 and 9, respectively
[64] BR ’745 & ’342 EIR, pages 5, and Annexures 8 and 9, respectively
[65] MV submissions Annexure 5
[66] MV ’342 EIS VII
I agree with Rozenblit’s submission that any computer-related qualifications Vainer may have had are unlikely to assist him in any technical sense with the technologies involved in patent applications ’745 and ’342. Relevantly in the present context, Vainer completed the first year of a Bachelor of Engineering undergraduate degree at Monash University in 1995[67]. Notwithstanding that Vainer’s examination grades were exemplary; I cannot conclude on this basis alone that Vainer derived the technical expertise necessary to make a material contribution to the invention of applications ’745 and ’342 or 2006241342 by way of his academic achievements.
Prior Expertise and Knowledge
[67] MV ’745 & ’342 EIS IV; BR ’745 & ’342 EIR pages 5, and Annexures 9 and 11 respectively
To otherwise establish relevant technical expertise, in his evidence Vainer makes the following assertions:
“I … in my previous capacity as Director of Worldwide Trade Corporation had worked in the tyre production technologies area with Russia's ‘Moscow Tyre Plant’ and later continued my work with the Russia-Netherlands tyre manufacturing consortium ‘Amtel-Vredestein OJSC’”[68]
“I also have specific expertise and knowledge in the relevant technical areas as evidenced by my work related to tyre production technologies with Russia's ‘Moscow Tyre Plant’”[69]
“I had specific technical expertise in relation to tyre recycling technology further to my work with Amtel-Vredestein OJSC”[70]
“I also provide reference to my technical expertise gained as Director of Worldwide Trade Corporation, well before meeting Boris Rozenblit, in my work with the following:
ØSolid Waste Management- Green Waste Recovery Engineering Company Limited, Nanjing, China (2002) …
ØGas Application Technologies-Air Water Inc. Applied Technology Laboratories, Osaka, Japan (2003) …
ØWaste Management & Energy Management - Hatlar Group, Melbourne, Victoria, Australia (2004) …
ØPrototype Manufacturing-Kerrie Lee Nominees, North Essendon, Victoria, Australia (2005) …”[71]
[68] MV ’745 & ’342 EIS “Background”;
[69] MV ’342 EIS “Retort”
[70] MV ’745 & ’342 EIR pages III and ’745 EIS “Retort”
[71] MV ’745 & ’342 EIR pages V
Vainer claims that his work experience in tyre production technologies gave him “specific technical expertise and knowledge in the relevant technical areas”[72]. Despite his assertions, it is not prima facie apparent how experience in tyre production would be helpful in devising the tyre recycling technologies to which ’745 and ’342 relate, and Vainer provides no explanation. Nevertheless, in his evidence in reply Vainer referred to gaining “specific technical expertise in relation to tyre recycling technology” with Amtel-Vredestein OJSC”[73]. In his submissions, Vainer’s work experience at the Moscow Tyre Plant was also in the field of tyres recycling. More detailed consideration of Vainer’s evidence of relevant experience is provided below.
Worldwide Trade Corporation
[72] MV ’342 EIS page 2 para (c); ’745 EIS page 1 second para (c)
[73] MV ’745 & ’342 EIR pages III, second dot points
Vainer was a Director of Worldwide Trade Corporation Pty Ltd (‘WTC’), jointly with Salvatore Saker, between registration of the company on 13 February 2004 and 1 November 2008 when it was deregistered[74]. Vainer relied on a “Confidentiality Agreement” dated 25 July 2006[75], between WTC and Rozenblit, to establish his claim to prior experience and exposure to the relevant technology. In particular, Vainer refers to the Agreement as “specifically referencing [his] knowledge and thereby specifically “including Tyres Recycling Technology””. The signatories to the Agreement are Rozenblit and Salvatore Saker. The parties to the Agreement are WTC as the “Owner” and Boris Rozenblit as the “User”. In the passages reproduced below I have substituted the party names accordingly.
[74] BR ’745 & ’342 EIR Annexures 10 and 11 respectively
[75] MV ’745 & ’342 EIR attachment VI
In clause 1 of the Agreement, WTC agrees to disclose “the Confidential Information to [Rozenblit] for the purpose of allowing [Rozenblit] to evaluate the Business Proposal and to determine whether or not to proceed with the Business Proposal”. The “Business Proposal” is defined at clause 9.1 as including:
“… any proposal for the undertaking of any business venture or activity by either [Rozenblit] or [WTC] which involves the use of the Confidential Information in any way whatsoever and includes, without limitation, any marketing or advertising proposal for [Rozenblit] or [his] business put by [WTC] or [Rozenblit].”
Pursuant to clause 9.1(a), the Confidential Information includes, but is not limited to, the information identified in the Schedule. The Schedule to the document states “Confidential Information includes any information provided by [WTC] to [Rozenblit] in relation to any commercial dealing of [WTC] with any third party” and handwritten underneath are the words “Including tyres recycling technology”
The Confidentiality Agreement between WTC and Rozenblit is silent regarding any knowledge possessed by Vainer, contrary to his assertion that clause 9.1(1) [sic] of the Agreement refers specifically to:
“Confidential Information developed by Worldwide Trade Corporation in its commercial dealings with Amtel-Vredestein OJSC specific to tyre recycling technology as acknowledged in the Schedule of the Confidentiality Agreement …”[76]
[76] MV ’342 EIR pages III
In his responding evidence, Rozenblit has provided direct evidence of Vainer’s knowledge in the form of an email from Salvatore Saker, Vainer’s co-Director at WTC[77]. When asked to comment on Vainer’s claims to specific expertise and knowledge in technical aspects of tyre recycling through his involvement at WTC with Amtel and the Amtel-Vredestein OJSC consortium, Mr Saker relevantly replied:
“In answer to your questions: at the time of Mr Vainer’s involvement with my company, Worldwide Trade had conducted ZERO activities in the Tyre industry, including tyre shredding in any way shape or form. The only exercise that took place, was Mr Vainer at the time, trying to source Asian Tyres for my clients in the Middle East, however without success.” (Emphasis in original)
[77] BR ’745 & ’342 EIR Annexures 11 and 12, respectively
I note that Mr Saker says in his email that he and Vainer did not part amicably. Nevertheless, although he refers in neutral terms to his co-Director several times in his submissions for the hearing, Vainer does not refer to or comment on the above statement by Mr Saker, which stands uncontested.
Consistent with Mr Saker’s statement, the Confidentiality Agreement between WTC and Rozenblit does not establish that Vainer had relevant experience or prior exposure to the technology of patent 2006241342, or patent applications ’745 and ’342.
Moscow Tyre Plant and Amtel-Vredestein OJSC
Vainer relied on an email sent to him by an employee of Amtel-Vredestein OJSC as evidence of his work with the Moscow Tyre Plant and Amtel-Vredestein OJSC. The email is relevantly reproduced below:
“From: … < [email protected] >
Sent: Friday, 16 March 2007 11:08 PM
To: [email protected]
Subject: About cooperation with Amtel
Attachments: … 01 03 20011.xlsDear sirs,
Earlier I worked on «Moscow Tyre Plant» in a department of export.
Now I work in company “AMTEL” and I am engaged in export deliveries of tyres.
Let me introduce Amtel-Vredestein Group.
Amtel-Vredestein group is an international company and one of the largest tire-manufacturers in Europe.
The Group currently includes two tyre plants in Russia-(Amtel-Povolzhe, Kirov;Amtel-Chemozemye,Voronezh; «Moscow Tyre Plant - M», Moscow) and one plant in the Netherlands (Vredestein Banden B.V., Enschede).
The Group's Russian enterprises produce a wide range of tyres for passenger cars under Amtel brand. We also produce certain range of tyres for trucks, light trucks and agricultural machinery. Almost all of our tyres have E-certificates, getting DOT certificates is possible as well.
You can find more information about our company at You can see the catalogue of production to the address of It, unfortunately, in Russian.I wait for your counter offers on cooperation.
Best regards
Trade Representative
New Markets Development Department
Amtel-Vredestein OJSCAlexander L Dobrov”[78][78] MV ’745 & ’342 EIS section IV
The content of this email does not establish that Vainer had “specific technical expertise in relation to tyre recycling technology” as he claimed[79], or that he worked with Amtel-Vredestein OJSC and/or the Moscow Tyre Plant in any technical capacity whatsoever. I note however that the content of the email could be consistent with Vainer sourcing tyres for export, which his co-Director Salvatore Saker says Vainer attempted while at WTC (see para [115] above).
Other Companies
[79] MV ’745 & ’342 EIR pages III
Vainer submitted that his:
“specific dealings with analysing related technologies is vast which has provided [him] with excellent technical knowledge in the fields relevant to the inventions, including working with Solid Waste Management Green Waste Recovery Engineering Company, Air Water Inc Applied Technology Laboratories, The Hatlar Group (Waste Management & Energy Management), Kerrie Lee Nominees (Prototype Manufacturing) and Moscow Tyre Plant”.
Vainer provided nothing further in evidence regarding the Moscow Tyre Plant. The documents in evidence relating to the other companies are as follows:
· 6 pages of a Feasibility Report dated December 2002 referring to the Green Waste Recovery Engineering Company Limited, with hand-written annotations of a non-technical nature;
· the title page of a confidential document entitled “Air Water Inc. and CDT Technical Information Summary” dated 23 May 2003;
· the first 3 pages of a confidentiality agreement between WTC and The Hatlar Group (the Title page, Table of Contents and a page of the agreement listing the parties and the first 3 clauses of the generic Terms of the agreement);
· the first 3 pages of a confidentiality agreement between WTC and Kerrie Lee Nominees (the pages as indicated above) and the front page of a confidential document Titled “Angular Centering Thread Prototype manufacture quotation”.
None of these documents make any reference to tyre recycling or to Vainer, and they do not otherwise establish that Vainer has gained technical knowledge and/or expertise relevant to the inventions disclosed and claimed in patent applications ’745 and ’342 or patent 2006241342.
In summary, I am not satisfied that Vainer has qualifications, technical knowledge or expertise in the relevant technology. The evidence adduced by Vainer to support his claim to inventorship is not sufficient either alone or in combination to establish that he made any material contribution to the invention described and claimed in patent applications ’745 and ’342 or patent 2006241342.
Is there any other evidence that Vainer made a material contribution to the invention?
Although disputed by Rozenblit[80], Vainer has claimed that after Rozenblit asked him to work with him as a co-inventor to progress the technology further (i.e. the tyre segmenting device of patent 2006241342), he “worked on the problem daily for nearly two months to solve the technical issues associated with the concept and its relation to the prior art”[81]. Also disputed[82], Vainer claimed to have worked with Rozenblit as an inventor in his own right for the inventions of patent applications ’745 and ’342 [83]. Vainer submitted that Rozenblit’s allegations that he is not an inventor are “completely unfounded”, and that:
“[i]n agreeing to work with Boris Rozenblit as co-inventor, I utilised all my aptitudes to pursue the inventive process and did so successfully and with distinction”.
[80] BR ’745 & ’342 EIR pages 10 and 9, respectively
[81] MV ’745 & ’342 EIS under “Background”
[82] BR ’745 & ’342 EIR pages 11 and 10, respectively
[83] MV EIS ’745 & ’342 “Background”
In respect of patent 2006241342, Vainer provided no information on the “technical issues associated with the concept” that he was required to solve, or of ideas he had or steps that he took to address those issues. However, he submitted that he worked for nearly two months “utilising my knowledge to create a patentable Standard Australian Patent”. In his evidence, Vainer claimed to have “prepared the substance of the description of the invention” for applications ’745 and ’342[84], although he acknowledges that Rozenblit prepared all of the diagrams in those documents. There is no dispute that Vainer undertook a substantial amount of work to translate Rozenblit’s ideas into English and write the English language patent specifications[85], and to this extent I accept that Vainer did “prepare the substance of the description of the invention”. However, for the reasons provided in this decision, I do not accept that the invention described was based on Vainer’s own original ideas.
[84] MV ’’745 & ’342 EIS pages 1; EIR page IV
[85] BR ’745 &’342 EIS paras [39]-[40]; EIR pages 10-11 and 10, respectively
In his supporting evidence, Vainer sought to diminish any contribution by his co-inventors of record. For application ’745, Vainer states that Rozenblit’s knowledge was limited to the known “Ozone Knife” technology and that “it was very obvious that his [Rozenblit’s] expertise and knowledge in relation to the method, process and device for polymeric waste processing was minimal at best”[86]. Similarly, for application ’342, Vainer states “Boris Rozenblit’s knowledge and contribution to this invention was limited to his association with Dmitry Shtak in relation to food extrusion”[87]. He described the expertise and knowledge of co-inventors Dmitry Shtak and Sergey Azarenkov in the relevant area as “questionable” and stated that “it was also very obvious that Boris Rozenblit’s expertise and knowledge in relation to the feeder and extrusion device and method of use thereof as a value add process to the previously patented Tyre Segmentation Device was minimal at best”.[88] In the face of these claims that the other inventors were struggling with the technology involved, what did Vainer identify as his own contribution to each of the inventions of patent applications ’745 and ’342?
[86] MV ’745 EIS page 1,
[87] MV ’342 EIS page 1
[88] MV ’342 EIS page 1,
In respect of the inventions of ’745 and ’342, Vainer described his involvement and contribution to the research and development of the inventions as follows:
“Boris Rozenblit was initially only interested in selling the Tyre Segmenting Device previously patented by us as the resultant commercial outcome. It was I who took the initiative of the research and development and insisted on new value-add technologies being developed instead of the outputs of the Tyre Segmenting Device simply becoming inputs for known existing technologies.”[89]
“It was I who took the initiative and insisted on new value-add technologies being developed instead of the outputs of the Tyre Segmenting Device simply becoming inputs for known existing technologies.” [90]
[89] MV ’745 & ’342 EIS pages 1
[90] MV ’745 & ’342 EIS pages 1-2 (3 occurences) and page 2 (3 occurences), respectively
Rejecting Vainer’s claims to have taken the initiative of the research and development, Rozenblit states:
“Mr Vainer did nothing of the sort. The technologies he refers to were already developed at the time he became involved, and it was always my plan - which I shared with Mr Vainer from the outset and which were a feature of our negotiations with CSIRO - that the outputs of the Tyre Segmenting Device be utilised as the inputs for the other patented technologies I invented and that we commercialise the entire process as a whole.”[91]
[91] BR ’745 &’342 EIR pages 12 and 11, respectively
Notably, in both of Vainer’s statements reproduced above, he says he insisted on the value-add technologies “being developed”. He does not say that he developed them. Rozenblit’s evidence is that due to his poor English skills and unfamiliarity with commercial and IP procedures in Australia, he allowed Vainer to take responsibility for the patent applications, and it was Vainer’s choice to patent the tyre segmenting device first[92]. However, Rozenblit maintained that he developed the three technologies at the same time and that they form integral parts of an overall approach to and conception of segmented tyre reprocessing that he always intended to be implemented together[93]. In his evidence in reply, Rozenblit explained:
“[i]t is this overall approach which makes my inventions groundbreaking in their field. … it was a matter of great importance to me that all three patents be utilised to create a viable segmented tyre reprocessing industry. Implementation of this technology has been a long sought after goal of many American and other world scientists.”[94]
[92] BR ’745 &’342 EIR pages 12 and 11, respectively
[93] BR ’745 & ’342 EIR pages 12 and 11, respectively
[94] BR ’745 &’342 EIR pages 12 and 11, respectively
In direct contrast, Vainer asserted that the concept of using the inventions of patent 2006241342 and ’745 or ’342 in combined processing originated with him:
“It was my idea and conception to utilise selective reprocessing of polymeric waste with the utilisation of ozone as a value add process to the previously patented Tyre Segmentation Device … Boris Rozenblit’s research was limited to the known ‘Ozone Knife’ technology.”[95]
“It was my idea and conception to utilise the feeder and extrusion device and method of use thereof as a value add process to the previously patented Tyre Segmentation Device. Boris Rozenblit's contribution was limited to his association with Dmitry Shtak in relation to food extrusion.”[96]
[95] MV ’745 EIS page 1
[96] MV ’342 EIS page 1
Rozenblit labeled Vainer’s statement that his research was limited to the known Ozone Knife technology as “meaningless” and that it “demonstrates the shallow nature of Mr Vainer's understanding of these technologies”[97]. He continued:
“Mr Vainer says that my research was "limited to the known 'Ozone Knife' technology". "Ozone Knife" is a name that was coined by Troitsk Technological Laboratories (see paragraph 48 of my statement) to refer to a patented technology which they describe in European Rubber Journal, Vol 178, No 11, Dec 1996 p22. The technology is described as requiring tyres to be stressed while immersed in an ozone rich atmosphere for an hour or so. I have described the problems I identified with this technology in paragraph 49 of my statement. [Paragraph 49 is not reproduced in this decision]
Mr Vainer's description of his purported innovation betrays his lack of any understanding of what the Ozone Knife Technology involved, and how my invention improved on that invention with the addition of several innovative steps - an important one being the preliminary constant deformation of the output of the Tyre Segmentation Device prior to introduction into the ozone-rich environment.
"Utilisation of ozone as a value add process" is nothing more than a re-statement of the general principle behind both the Ozone Knife technology and the improvements brought about by my inventions.
In any event, Mr Vainer had no original ideas or conceptions relating to utilisation of selective reprocessing of polymeric waste or the utilisation of ozone in this process. Whatever knowledge he obtained was derived from and went no further than that knowledge I had imparted to him for translation into English.”[98]
[97] BR ’745 EIR page 11
[98] BR ’745 EIR pages 11-12
Throughout his evidence and submissions, in describing his own role Vainer makes assertions unsubstantiated by any detailed discussion of any contribution of his own to the final form of the inventions of patent applications ’745 and ’342. It is clear from the evidence of both parties that Vainer translated Rozenblit, Shtak and Azarenkov’s ideas into English to prepare and file the patent specifications. It is not disputed that Vainer played a business role, dealing with administrative matters and commercialisation of the inventions. However, there is no evidence before me that establishes that Vainer made any technical contribution at all, material or otherwise, to the inventions of patent applications ’745 and ’342. In the absence of any probative evidence, or corroboration by any third party, that Vainer himself made any material contribution to the inventions, Vainer is not entitled to be named as an inventor for patent applications ’745 or ’342.
The legal burden of proof was on the section 32 applicant, Boris Rozenblit, who put forward a credible prima facie case that he alone invented the subject matter of patent application 2010251745, and he in combination with Dmitry Shtak and Sergey Azarenkov invented the subject matter of patent application 2010281342. This placed the burden on the applicant to refute Rozenblit’s claim that Vainer was not an inventor. Vainer, on behalf of the applicant, has not discharged this burden. On the balance of probabilities, Rozenblit is the sole inventor of the invention described in patent application 2010251745, and Rozenblit, Shtak and Asarenkov are the only inventors for the invention described in patent application 2010281342. Michael Vainer is not an inventor.
Status of patent applications 2010251745 and 2010281342
Application 2010251745 entered national phase on 10 October 2011. A request for examination on 9 April 2013 was deemed under reg 22.2C not to have been filed when the fee for requesting examination was not paid. The application will lapse if examination is not requested within 5 years of the filing date i.e. by 3 May 2015, or within 6 months of a direction to request examination by the Commissioner, whichever is the earlier.
Application 2010281342 entered national phase on 10 October 2011, examination was requested on 9 April 2013. In this case IP Australia did not send an invitation to pay the exam request fee within the prescribed time. Therefore, under reg 22.2F the examination request was treated as if the fee had been paid when the request was made, but the applicant was notified on 31 May 2013 that the exam request fee remains payable pursuant to reg 22.2F(7). Examination of the application has not yet commenced.
Once examination commences for these applications, a notice of entitlement reflecting the findings of this decision should be filed before the applications are accepted.
Status of patent 2006241342
Patent 2006241342 is currently in force. The next renewal fee is due on 23 November 2013. If it is not paid by the due date, or within 6 months of the due date with penalty fees, this patent will cease.
Additional patent applications
The following patent applications are in the same field of technology and record Michael Vainer as the sole applicant and inventor. Both applications are currently undergoing expedited examination in Australia.
·Patent application 2013200687 titled “Method and device for polymer pulverisation extrusion”, was filed in Australia on 8 February 2013 as a divisional of application PCT/AU2013/000005 which was filed with WIPO on 9 January 2013.
·Patent application 2013200688 titled “Utilisation of gasses for polymeric materials fragmentation and activation and related device” was filed in Australia on 8 February 2013 as a divisional of application PCT/WO2013/000041 filed on 21 January 2013.
CONCLUSION
The central issue in this dispute is whether Michael Vainer is an inventor. Michael Vainer has failed to establish that he is an inventor for patent applications 2010251745 and 2010281342.
Boris Rozenblit is the sole inventor for patent application 2010251745. Boris Rozenblit, Dmitry Shtak and Sergey Azarenkov are the only inventors for patent application 2010281342. I will give directions under section 32 to give effect to this finding.
The reasons in this decision would apply equally to the invention of patent 2006241342, should Boris Rozenblit wish to apply under section 191A to remove Michael Vainer as an inventor from the Register entry for this patent. Alternatively, the patentee could request correction of the Register under section 191A or 192.
The logic in this decision would also apply to patent applications 2013200687 and 2013200688 should those applications encompass the inventions described in patent applications 2006241342, 2010251745 and 2010281342.
COSTS
The parties made no submissions on costs. It is normal in actions before the Commissioner that costs should follow the event. In the circumstances, I see no reason to depart from the normal award of costs.
Boris Rozenblit has been successful in these proceedings. Therefore, for patent application 2010251745, I award costs according to Schedule 8 against the applicant VR TEK Pty Ltd. For patent application 2010281342, I award costs according to Schedule 8 against the applicants VR TEK Pty Ltd and APRIL Ltd.
Dr B Akhurst
Delegate of the Commissioner of Patents
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