Davies v Lazer Safe Pty Ltd
[2018] FCA 702
•25 May 2018
FEDERAL COURT OF AUSTRALIA
Davies v Lazer Safe Pty Ltd [2018] FCA 702
File number: WAD 670 of 2015 Judge: MCKERRACHER J Date of judgment: 18 May2018 Date of publication of reasons: 25 May 2018 Catchwords: PATENTS – patent for safety system used for the detection of obstructions in the path of a moving part of machinery, such as press brakes – claim for infringement – issues as to validity
PATENTS – infringement – whether infringement established – construction of the claims of the patent – failure to establish that respondent’s systems infringe the claims asserted
PATENTS – validity – cross-claim for invalidity – whether patent is invalid – priority date – whether the claims are disclosed in earlier priority documents ‑ disclosure in provisional applications considered – novelty – whether lack of novelty established – prior art base – consideration of prior art systems – obviousness – identification of the person skilled in the relevant art – matters and particulars of common general knowledge – fair basis – failure to establish grounds of invalidity
Legislation: Federal Court Rules 2011 (Cth) r 34.46
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), Sch 1, s 55(1)
Patents Act 1990 (Cth) ss 7, 7(1), 7(2), 7(3), 18(1)(b)(i), 18(1)(b)(ii), 40, 40(3), 43
Patents Amendment Act 2001 (Cth) Ch 1, Pt 1, item 13
Patent Regulations 1991 (Cth) regs 3.12, 3.12(1)(b)
Cases cited: Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411
Apotex Pty Ltd v Sanofi-Aventis (2008) 78 IPR 485
Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd (2016) 117 IPR 210
Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52
Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 4) [2015] FCA 1372
Bristol-Myers Squibb Company v F H Faulding & Co Limited (2000) 97 FCR 524
British Dynamite Co v Krebs (1896) 13 RPC 190
Canadian General Electric Co Ltd v Fada Radio Ltd (1930) 47 RPC 69
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260
Commissioner of Patents v Emperor Sports Pty Ltd (2006) 149 FCR 386
Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385
Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2001) 192 ALR 306
Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd (1999) 99 FCR 151
Electric & Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 23
Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214
F Hoffman-La Roche & Co Aktiengesellschaft v Commissioner of Patents (1971) 123 CLR 529
Flour Oxidizing Co Ltd v Carr & Co Ltd (1908) 25 RPC 428
Freeman v TJ & FL Pohlner Pty Ltd (1994) 30 IPR 377
Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 224 ALR 168
General Tire & Rubber Co v The Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121
Glaverbel SA v British Coal Corp [1994] RPC 443
GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Apotex Pty Ltd (2016) 119 IPR 1
H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151
Hill v Evans (1862) 45 ER 1195
Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 239 FCR 117
Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1
Kirin-Amgen Inc v Hoechst Marion Rousell Ltd (2004) 64 IPR 444
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173
Metropolitan-Vickers v B.T.H Co Ltd (1926) 43 RPC 76
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228
Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513
Nippon Katsyaku Kabushiki Kaisha and Sankyo Company, Limited v Rohm and Haas Company [1997] APO 40
Olin Corporation v Super Cartridge Co Pty Ltd (1976) 180 CLR 236
Olin Mathieson Chemical Corp v Biorex Laboratories Ltd [1970] RPC 157
Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 225 ALR 416
Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11
Rodi & Wienenberger A.G. v Henry Showell Ltd [1969] RPC 367
Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 177 ALR 231
Sachtler GMBH & Co KG (formerly Sachtler AG) v RE Miller Pty Ltd (2005) 221 ALR 373
Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479
Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5
Société Technique de Pulverisation Step v Emson Europe Ltd [1993] RPC 513
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588
Welcome Real-Time SA v Catuity Inc (2001) 51 IPR 327
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262
Windsurfing International Inc v Petit (1983) 3 IPR 449
Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848
Date of hearing: 12, 13, 15 and 22 June 2017 Date of last submissions: 23 June 2017 Registry: Western Australia Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and Associated Statutes Category: Catchwords Number of paragraphs: 422 Counsel for the Applicants: Mr A Fox Solicitor for the Applicants: DLA Piper Australia Counsel for the Respondent: Mr GT Fitzgerald Solicitor for the Respondent: Wrays Lawyers Pty Ltd ORDERS
WAD 670 of 2015 BETWEEN: KEVIN STEPHEN DAVIES
First Applicant/First Cross-Respondent
TRICLOPS TECHNOLOGIES PTY LTD (ACN 117 350 464)
Second Applicant/Second Cross- Respondent
AND: LAZER SAFE PTY LTD (ACN 090 113 572)
Respondent/Cross-Claimant
JUDGE:
MCKERRACHER J
DATE OF ORDER:
18 MAY 2018
THE COURT ORDERS THAT:
1.The claim and cross-claim each be dismissed.
2.Subject to any further order the reasons for judgment are not to be published except to the parties and their legal representatives before 12.00 noon, 25 May 2018.
3.Any party seeking an extension or variation of order 2 is to file and serve any interlocutory application seeking such relief together with any affidavit evidence to be relied upon by 12 noon, 25 May 2018.
4.The applicants file any materials in relation to costs or other orders within 14 days.
5.The respondent file any materials in relation to costs or other orders within a further 14 days.
6.Unless the Court otherwise orders, costs and/or any other orders, if any, be determined on the papers.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
Table of contents
1 INTRODUCTION
[1]
1.1 The dispute and outcome
[8]
1.2 Overview
[11]
1.2.1 The Patent
[11]
1.2.2 Common ground and issues
[14]
2 THE EVIDENCE
[29]
2.1 The key experts – an overview
[29]
2.2 Evidence in chief - detail
[36]
3 CONSTRUCTION OF THE PATENT
[188]
3.1 Principles
[188]
3.2 Terms in issue
[192]
3.3 Applicants’ position on construction
[194]
3.4 Consideration
[220]
3.5 Conclusion on construction
[235]
4 INFRINGEMENT
[240]
4.1 Principles
[240]
4.2 The Lazer Safe Systems
[243]
4.3 Consideration of infringement
[263]
4.4 Conclusions on infringement
[279]
5 INVALIDITY
[280]
5.1 Statutory considerations
[281]
5.2 Priority date
[284]
5.2.1 Principles
[284]
5.2.2 The respondent’s contentions
[286]
5.2.3 Consideration
[290]
5.2.4 Conclusion
[294]
5.3 Novelty
[295]
5.3.1 Principles
[295]
5.3.2 The respondent’s contentions
[305]
5.3.3 Consideration
[319]
5.3.4 Conclusion
[355]
5.4 Obviousness
[356]
5.4.1 Principles
[356]
5.4.2 The respondent’s contentions
[364]
5.4.3 Consideration
[381]
5.4.4 Conclusion
[405]
5.5 Fair basis
[406]
5.5.1 Principles
[406]
5.5.2 The respondent’s contentions
[410]
5.5.3 Consideration and conclusion
[411]
5.6 Clarity
[412]
5.6.1 Principles
[412]
5.6.2 The respondent’s contentions
[417]
5.6.3 Consideration
[418]
5.6.4 Conclusion
[420]
5.7 Conclusion on invalidity
[421]
6 GENERAL CONCLUSION
[422]
MCKERRACHER J:
1. INTRODUCTION
The applicants, Mr Kevin Stephen Davies and Triclops Technologies Pty Ltd (ACN 117 350 464), claim infringement of Australian Standard Patent No. 2003229135 for the invention entitled ‘A Safety System’. The Patent is Annexure A to these reasons.
The Patent is for an invention relating to a safety system, in particular, for use with machinery having moving parts, such as press brakes. A press brake is a mechanical tool used for bending material, usually metal. It operates with substantial force. The safety system is to detect the presence of an obstruction in the path of a moving part in such machinery. As the Patent discloses, various mechanisms have been used in the past to prevent the operators of industrial machinery, such as press brakes, from placing their hands beneath the moving tool during operation. Such an action by the operator has the potential to cause injury, given the force applied to the tool and the speed at which it can move.
An example of a previous safety mechanism noted in the Patent is a physical guard placed between the operator and the tools. The use of physical guards can, however, obstruct the view of the operator during use and/or impede access to the work making it difficult for the operator to perform the job and the task in the most efficient manner. Another example provided is a light curtain which surrounds the path of the moving tool. Light beams are projected onto detectors, which are able to sense when the beam is broken and trigger either a halt or slowing down of the movement of the tool. Again, the disadvantage of the individual light beams is said in the Patent to be that operators are kept away from the work area. Another method of providing safety protection is the use of one or more light beams along the leading edge of the tool, which are arranged to move with the tool and slow or stop the tool if an obstruction breaks the beam. In such arrangements, the beam must be deactivated as the tool approaches the work and the light beam must be set at sufficient a distance from the tool to stop the tool in time. The minimum permissible distance of the beam from the tool is therefore dependent on the maximum speed and movement of the tool. Again, it is suggested in the Patent that a problem with this type of arrangement includes the need to realign light beams when tools are changed and the possibility that an operator may move a hand under the tool just as the beams are deactivated.
The Patent is for an invention which attempts to overcome, in part, some of the disadvantages identified in previous safety systems for detecting the presence of obstructions in hazardous areas around machines having moving parts.
Mr Davies is the owner of the Patent. Triclops is and has been since 8 October 2015, the exclusive licensee of the Patent.
The respondent (Lazer Safe Pty Ltd (ACN 090 113 572) has, since at least 20 June 2015, offered for sale and kept for sale the systems (the Lazer Safe Systems) known as:
(a)an LZS-005;
(b)an IRIS; and
(c)an IRIS Plus (or IRIS +).
The main difference between the three laser systems is that the IRIS and IRIS Plus systems contain additional functionalities to the LZS-005. IRIS has additional functionality known as ‘bend speed management’ (BSM). IRIS Plus also has BSM, together with an additional functionality discussed in more detail below. A Product Description was filed by the respondent detailing the Lazer Safe Systems and their functionalities (discussed in, and annexed to Appleyard #2 (defined at [29]) and contained in the Confidential Annexure to these reasons, but which is omitted from publication).
1.1 The dispute and outcome
The applicants say that the respondent has infringed the Patent by the sale of its products. The respondent rejects the infringement allegation and asserts in response, for various reasons, that the Patent is invalid.
The applicants press infringement of claims 1-5, 8, 12, 14, 21, 22, 28-31, 38, 44 and 46. However, if claim 1 is found to be infringed then, given admissions made by the respondent, the dispute as to infringement of the dependent claims only concerns whether claims 2, 3, 4, 5, 14, 21, 38 and 46 are also infringed (the Disputed Claims). The respondent cross-claims for invalidity.
For reasons which follow, in my view, the applicants’ construction of the claims of the Patent is unrealistically broad. On the proper construction, I consider there is no infringement by the respondent’s systems. However, equally, on the proper construction, the Patent was not invalid as asserted by the respondent.
1.2 Overview
1.2.1The Patent
The ‘Summary of the Invention’ (p 3 lines 6-19) constitutes a consistory clause, referable to claim 1. This is a broad description of the nature of the invention, and does not limit the invention to one particular form (the words used are ‘[i]n accordance with one aspect of the present invention…’: p 3 line 6). The consistory clause identifies that the invention comprises three components being:
(a)‘at least one light emitting means’;
(b)‘at least one light receiving means’; and
(c)‘a processing and control means’.
Any obstruction within the region illuminated by the ‘light emitting means’ will result in, for example, a shadow being cast on the light receiving means. This affects the information output by the ‘light receiving means’, which then acts upon by the ‘processing and control means’, which may, as a consequence, control movement of a part of the press brake, such as the tool. The invention is described (p 3 line 20 to p 12 line 16) ‘by way of example’ with reference to the drawings accompanying the Patent. The ‘light emitting means’ (as described in the example) serves the purpose of illuminating a region around the path of a tool in order to detect obstructions in the region. That component is used in conjunction with at least one ‘light receiving means’. The ‘light receiving means’ is said to comprise an aperture in a screen and an image detection device (p 6 lines 7-8). Examples given of the ‘image detection device’ are a ‘charge coupled device’ (a CCD) and a projection screen (with a camera to observe the projected image) (p 6 lines 8-9). Both of these types of image detection devices contain an array of light sensors, wherein each sensor outputs an electrical signal based on the level of light it receives. Different embodiments of the light emitting means and the light receiving means are described at p 5 line 1 to p 6 line 22.
The ‘processing and control means’ receives ‘information’ from the light receiving means. An issue will be whether ‘information’, as the applicants say, is a broad notion, not limited to, for example, ‘images’. Various embodiments are described at p 7 line 1 to p 11 line 18. The role played by the ‘processing and control means’ commences with an example describing the comparison of ‘images’ stored in the memory of the processing and control means with images received from the ‘image detection device’ (p 7 lines 4-14). That is, ‘image information’ constitutes ‘images’ in this embodiment. This embodiment may be described for present purposes as an ‘image comparison’ embodiment. Another embodiment concerns the creation of ‘a total picture made up of the image information’ received by the light receiving means (p 8 lines 1-7). This ‘total picture’ is referred to as a ‘shadow map’ (p 8 lines 4-5).
1.2.2Common ground and issues
It is common ground that each of the Lazer Safe Systems possesses each of the following integers of claim 1 of the Patent:
Claim 1 Integers 1.1 A safety system for use with a machine having a moving part arranged to move through a known path of movement, the safety system characterised by comprising: 1.2 at least one light emitting means arranged to emit light, 1.3 the axis of the emitted light being generally perpendicular to the path of movement of the part such that a region including at least a portion of said path is illuminated; 1.4 at least one light receiving means arranged to receive light from the or one or more of the light emitting means which has passed through said region; and
It is also accepted that if any of the Lazer Safe Systems possess all of the integers of claim 1 of the Patent, that system also possesses all of the integers of claims 8, 12, 22, 28, 29, 30, 31 and 44 of the Patent.
Therefore, the following are essentially the issues in dispute in the proceedings:
(1)What is the proper construction of the Disputed Claims, particularly as to integer 1.5 and integer 1.6 of claim 1?
(2)Whether each of the Lazer Safe Systems possesses the following integers of claim 1:
Claim 1 Integers 1.5 a processing and control means arranged to receive image information from the light receiving means and thereby recognise the presence of one or more shadowed regions on the light receiving means cast by obstructions in the region; 1.6 wherein the illumination of the region is such that the processing and control means has sufficient image information to determine the boundaries of the or each shadowed region and control movement of the part dependent on said image information. (3)It is also in dispute whether each of the Lazer Safe Systems possess the following integers of dependent claims:
Claim 2 Integer 2.2 characterised in that the processing and control means either slows or stops the movement of the part if the processing and control means determines the presence of an obstruction in a predetermined or calculated area of the region. Claim 3 Integer 3.2 characterised in that the processing and control means calculates the positions of the obstructions relative to the part or relative to each other and slows or stops the part dependent on the relative positions. Claim 5 Integer 5.2 characterised in that the region is relatively large with respect to the size of a leading edge of the part and is entirely illuminated by a single parallel beam of light. Claim 14 Integer 14.2 characterised in that the processing and control means is arranged to determine the thickness of an obstruction casting a shadow on the light receiving means and allow continued movement of the part should the thickness be less than a predetermined value, 14.3 the predetermined value being a value determined to be small enough that the obstruction could not be a part of the operator’s body. Claim 21 Integer 21.2 characterised in that the light receiving means comprises a projection screen 21.3 and image information is detected by a camera arranged to observe the image on the projection screen. Claim 38 Integer 38.2 characterised in that the light receiving means includes a receiving end lens arrangement such that light passing through the region is focussed by the receiving end lens arrangement. (4)It is also in dispute whether IRIS and IRIS Plus possess the following integers of dependant claims:
Claim 4 Integers 4.1 A safety system in accordance with any one of claims 1 to 3, 4.2 characterised in that the processing and control means calculates the speeds of movement of the obstructions relative to the part or relative to each other and slows or stops the art dependent on the relative speeds. Claim 46 Integers 46.2 characterised in that the tool is arranged to bend material 46.3 and the processing and control means controls movement of the tool during bending.
In relation to the respondent’s allegation of invalidity, it is common ground that the filing date of the Patent was 10 June 2003.
The Patent also asserts a claim to priority from each of the following three provisional applications:
·PS 2878 11 June 2002 (as to which, see [25(5)] below
·220950078 10 July 2002
·2002951351 12 September 2002
There are several issues in dispute in relation to invalidity.
The first is the date which each of the Disputed Claims is entitled to claim as its priority date pursuant to s 43 of the Patents Act 1990 (Cth).
In connection with novelty, it is agreed that:
(1)US Patent No. 4772801, in the name of Cybelec SA (Cybelec Patent), was made publicly available on 20 September 1988.
(2)European Patent Application EP 1 246 148 A2 in the name of SICK AG (SICK Patent), was made publicly available on 2 October 2002.
(3)The SICK Patent can only be relevant for the purpose of novelty if the Disputed Claims are not entitled to claim priority from any of the provisional applications (that is, the priority date of the Disputed Claims is not earlier than the filing date).
(4)Claims 3, 4 and 14 do not lack novelty in light of the Cybelec Patent.
(5)Claims 3, 4, 14 and 21 do not lack novelty in light of the SICK Patent.
In relation to novelty, the disputed issues are:
(1)Whether any of claims 1, 2, 5, 8, 12, 21, 22, 28, 29, 30, 31, 38, 44 or 46 of the Patent lack novelty in light of the Cybelec Patent.
(2)If the SICK Patent is relevant to the question of novelty, whether any of claims 1, 2, 5, 8, 12, 22, 28, 29, 30, 31, 38, 44 or 46 lack novelty in light of the SICK Patent.
There is also a claim in relation to inventive step or obviousness in connection with invalidity. It is agreed that:
(1)The Cybelec Patent was made publicly available in United States of America on 20 September 1988.
(2)The SICK Patent was made publicly available on 2 October 2002 in the German language.
(3)The SICK Patent can only be relevant for the purpose of inventive step if the priority date of the Disputed Claims is not earlier than the filing date.
(4)For the purpose of assessing inventive step, the relevant version of s 7 of the Patents Act predated the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth).
(5)The common general knowledge in the relevant art is the same, whether considered at any of the filing date or the filing date of any of the provisional applications.
The respondent has provided the applicants with a schedule of matters asserted to form part of the common general knowledge in Australia as at both 11 June 2002 and 10 June 2003 (the respondent’s CGK Schedule). Where the applicants agree that any of those matters form part of the general knowledge as at these dates, the agreement is indicated in the applicants’ response (applicants’ response to CGK Schedule).
The issues in dispute in relation to inventive step or obviousness in connection with invalidity are:
(1)The identity, qualifications, experience and attributes of the hypothetical skilled worker in the relevant art as at the priority date of the Patent.
(2)Whether any of the other matters asserted to be common general knowledge in Australia in the respondent’s CGK Schedule, but not agreed in the applicants’ response to CGK Schedule did form part of the common general knowledge in Australia as the priority date of the Patent.
(3)Also in dispute is whether the invention as claimed in any of the Disputed Claims would have been obvious to the hypothetical skilled worker in the relevant art in light of the common general knowledge as it existed in Australia as at the priority date of the Patent.
(4)Whether:
(a)the Cybelec Patent could reasonably be expected to have been ascertained, understood and regarded as relevant by the hypothetical skilled worker in the relevant art before the priority date of the Patent; and if so
(b)the invention, as claimed in any of the Disputed Claims, would have been obvious to the hypothetical skilled worker in the relevant art in the light of common general knowledge as it existed in Australia as at the priority date of the Patent considered together with the Cybelec Patent.
(5)If the Disputed Claims are not entitled to claim a priority date earlier than the filing date, whether:
(a)the SICK Patent could reasonably be expected to have been ascertained, understood and regarded as relevant by the hypothetical skilled worker in the relevant art before the priority date of the Patent; and if so
(b)the invention as claimed in any of the Disputed Claims would have been obvious to the hypothetical skilled worker in the relevant art in the light of common general knowledge as it existed in Australia as at the priority date of the Patent considered together with the SICK Patent.
There is also a ‘fair basis’ argument. The issues in dispute are whether claim 1 and all claims dependent upon claim 1 are fairly based on the disclosure of the Patent insofar as they claim the following, being integer 1.5 and integer 1.6:
a processing and control means arranged to receive image information from the light receiving means and thereby recognise the presence of one or more shadowed regions on the light receiving means cast by obstructions in the region;
wherein the illumination of the region is such that the processing and control means has sufficient image information to determine the boundaries of the or each shadowed region and control movement of the part dependent on said image information.
There is also a claim based on lack of clarity in relation to invalidity. The issues in dispute in this regard are:
(1)Whether the use of the word ‘recognise’ in claim 1 is unclear; and
(2)Whether the use of the phrases ‘image information’ and ‘sufficient image information’ in claim 1 is unclear.
I address the issue of infringement, and the issues arising in relation to invalidity, in turn.
2. THE EVIDENCE
2.1 The key experts – an overview
The infringement evidence relied on was:
(a)for the applicants by affidavits of Mr John Acheson sworn on 27 April 2017 (Acheson # 2) and sworn on 5 June 2017 (Acheson # 3); and
(b)for the respondent by affidavits of Mr Robert Appleyard sworn on 17 February 2017 (Appleyard # 2) and Mr Peter Berry sworn on 16 February 2017.
As to invalidity, the evidence relied on was:
(a)the respondent’s evidence in chief by:
(i)affidavit of Mr Appleyard sworn on 17 October 2016 (Appleyard # 1);
(ii)affidavit of Mr Mark Pullen sworn on 17 October 2016;
(b)the applicants’ evidence in answer: affidavit of Mr Acheson sworn on 17 February 2017 (Acheson # 1);
(c)the respondent’s evidence in reply: affidavit of Mr Appleyard sworn on 28 April 2017 (Appleyard # 3); and
(d)the applicants’ evidence in answer: affidavit of Mr Acheson sworn on 14 June 2017 (Acheson # 4).
In relation to claim construction and the issue of infringement, I preferred the respondent’s witnesses, principally, Mr Appleyard, despite the superior qualifications and perhaps more general expertise of Mr Acheson. While Mr Acheson was more qualified generally, he had very limited experience in the particular field of this technology. I am conscious in arriving at this preference that Mr Appleyard was not independent. Despite this, he had very considerable internationally relevant experience and skills and I found his infringement evidence plausible and realistic, despite his obvious interest in the matter. On that invalidity evidence of a more general nature, as distinct from infringement, I preferred the evidence of Mr Acheson. I considered that his evidence on invalidity in response to the respondent’s claims was realistic and objective and to be preferred.
Mr Appleyard
Mr Appleyard is a director and principal of the respondent. He has had extensive ‘hands-on’ experience with press brake safety systems since about 1995 when he started designing and building safety systems for press brakes. In 1998, he established the respondent’s business developing safety products for use with press brakes. He was the principal designer of the respondent’s safety system known as the Lazer Safe LZS-003 System, a precursor of the LZS-005. The respondent operates worldwide, in the design and manufacture of press brake safety and control devices. Mr Appleyard has also, since 2001, been involved in writing safety standards for press brakes for the European Union and, since 2009, for the United States. He and the respondent have won various Western Australian awards for engineering excellence, industry and export since 2003. The respondent has received State and Federal funding grants since 1998 for the development of its business.
Mr Acheson
Mr Acheson was initially giving evidence for the applicants only as to validity, principally in answer as to the novelty and obviousness of the Patent. He is an American systems engineer based in Iowa. Since 2004, he has worked in the United States principally as a systems designer in aerospace, communications, software and defence. Between about 2002 and 2004, he worked as an intern and then part-time for Accurpress America in Rapid City, South Dakota, whilst completing his studies at the South Dakota School of Mines and Technology. His work with press brake safety systems was undertaken as a project for his studies. Mr Acheson’s exposure to press brake safety systems is quite limited: in time, in nature, in scope and geographically. His involvement with these systems centred on his part-time student design project for his engineering studies, which began in about mid-2003 and after the latest priority date. His experience is American, rather than Australian or European. His evidence discloses no substantial personal awareness or knowledge of this field at an international or Australian level at any of the priority dates. It is notable that the relevant field or art is quite restricted and confined, especially in Australia. Safety systems for press brakes are a small but sophisticated market, centred on Europe (with considerably smaller markets in the United States and even more so in Australia at the relevant time in 2002/2003). Mr Acheson expressly accepted that the United States was a ‘backwater’ for press brake safety systems in 2002/2003.
Mr Berry
Mr Berry is an independent electronics and software engineer. He gave evidence on infringement only, in answer to Mr Lim’s proposed evidence on behalf of the applicants. Mr Lim was then not called. Mr Berry holds a Bachelor of Science in Electronic Engineering from the University of Natal (now the University of KwaZulu-Natal) in South Africa in 1983. In 2000, he moved to Perth where he has continued to work as a self-employed engineering consultant and contractor. He has designed and implemented electronic software components and systems for over 30 years, particularly in the ‘embedded’ area where electronics and software are used to control devices and machines. He has performed work for the respondent on an ad hoc basis since about 2006, but such work is only a small proportion of his overall business. He was not involved in work relating to the specific safety features of the Lazer Safe Systems. He was not as qualified as Mr Acheson, but his evidence was helpful and plausible.
Mr Pullen
Mr Pullen is a patent attorney acting for the respondent in this dispute. His evidence was of a formal nature exhibiting the various documentary prior art and other relevant documents, together with a history of the application for the Patent and the publication of various prior art documents. He was not required for cross-examination.
2.2 Evidence in chief - detail
Before considering the arguments advanced by the parties on the construction of the Patent, I propose referring to the detail of the evidence in chief of the key witnesses, mainly on construction, but partly on infringement and invalidity. I have not relied on the infringement evidence or even comparisons as an aid to construction. The summary does not discuss the cross-examination which, when relevant, is examined in discussion as to the parties’ contentions on each of the aforementioned issues.
Mr Acheson
Mr Acheson is the principal systems engineer at Rockwell Collins, a United States multinational company. Rockwell Collins is engaged in the design, production and support of systems for use predominantly in the aerospace and defence industries. Mr Acheson holds a Bachelor of Science and Electrical Engineering and has had 10 years’ experience in control system design. In 2004, he completed his Bachelor of Science and Electrical Engineering in South Dakota School of Mines and Technology in Rapid City. Between the second and third years of study, in around mid-2002, he undertook a summer internship with Accurpress. Accurpress was a manufacturer of press brakes and shears for forming sheet and plate metal. After that internship, he was employed by Accurpress on a part-time basis during his next year of study. At this time, he worked on a few small research and development projects. One of the projects involved development of an angle sensor for measuring the extent to which a piece of metal had been bent by a press brake. This would facilitate partial bending of a piece of metal, that is, not using the full stroke of a machine to bend a sheet of metal to the maximum bend angle, usually 90 degrees. He undertook a variety of administrative and network administration tasks.
In the final years of his study, around mid-2003, as part of a final year design class, Mr Acheson undertook a design project to design and build a press brake safety system. The project was undertaken at the request of Accurpress. Accurpress funded the project and provided him with materials and support for it. This was, in effect, an extension of the work he was already performing for Accurpress.
After graduating in 2004, Mr Acheson commenced fulltime employment with Rockwell Collins, where he worked for some seven years. During this time he was a member of the Government Systems, Advanced Sensors and Navigation Department. His work focused on digital signal processing for communication and navigations systems and the development of signal processing algorithms. He was heavily involved in work on software defined radios. It is a type of radio where many of the parts and components, typically implemented by hardware, are instead implemented by software. It allows the radio to be reconfigured, utilising different types of signals.
In 2011, Mr Acheson joined a company known as Cambridge Silicone Radio. At this company, he was part of the software development of low powered GPS chips, intended for use in applications such as smart phones. After two months with Cambridge Silicone Radio, the director of software for whom he was working, left the company to join a start-up company called ‘mCube’. Mr Acheson also joined mCube at that time, working on algorithms for a navigation system for use indoors. This could be used, for example, in shopping centres or other large indoor public spaces without the need for GPS. He was named as an inventor on two patents which were filed while he was with mCube. At around 2012, the office of mCube that he was working with was spun-off into a different start-up company. He left to join Raven Industries, where he worked as an architect on precision agriculture systems. He was the lead architect on the development of numerous systems. One was a grain yield monitoring system for combine harvesters, providing accurate real-time yield maps. He also worked on the integration of sensors into GPS and automated steering systems for agricultural machinery. Whilst with Raven Industries, he was named as an inventor on eight filed patents. In about April 2016, he left Raven Industries and returned to Rockwell Collins, where he remains employed. He has a number of duties there. He is a systems analyst, working on airborne and ground based software defined radios. He is also the modelling and simulation group leader engineer and leads several software development teams.
Specifically, in relation to press brake safety systems, Mr Acheson was, whilst working with Accurpress, engaged to design and build a prototype press brake safety system. This came about as a result of being approached by the owner of the company, Mr Hilton. There had been some incidents with the company’s press brakes and Mr Hilton wanted Mr Acheson to look at designing a safety system to deal with this. Accurpress, at that stage, did not sell press brakes with manufacturer-fitted systems. Some of Accurpress’ dealers offered to install third party light curtain systems for customers. In simple terms, he explained a light curtain creates a vertical ‘curtain’ of light in front of a press brake which can detect objects that enter the light and stop the press brake. Light curtain systems typically operated in the following way:
(a)two vertical columns were mounted a short distance, approximately one foot in front a press brake, with one column at either end of the press brake;
(b)one column had a series of vertically spaced apart light transmitters to transmit beams of light across the front of the press brake, while the other column had a corresponding set of receivers, receive the light from the light transmitters; and
(c)if one or more of the beams of light were broken during operation, the press brake could be stopped.
Otherwise if Accurpress customers wanted safety systems fitted to their press brakes, they would have to obtain aftermarket safety or guarding systems and have them refitted to the systems. At this stage, one of Accurpress’ major competitors Trumpf, offered customers the option of having a light curtain system installed in their press brakes. At the time he began working on the project, Mr Acheson had been working with Accurpress for close to two years for an average of about 15 hours per week. As such, he said he had a good knowledge of the operation of press brakes.
Mr Acheson described a press brake as being a large piece of industrial machinery, designed to bend sheet metal. Typically, it does this by lowering a long tool or blade onto the sheet of metal to be bent and driving the sheet into a V-shaped die. The press brake pushes the metal all the way into the die to create a complete bend or only part of the way to create a partial bend. Mr Acheson was also aware of the likely safety issues that could arise for an operator of a press brake. The vast majority of press brakes were manually fed. This meant that an operator would stand next to the machine, insert the metal to be bent in the press brake and hold an end of the piece out of the path of the tool to keep the piece in place while bending occurs. The major safety risk to the operator was that he or she could inadvertently insert a part of his or her body, such as a finger, hand or arm into the path of a tool. The tool is relatively sharp and descends with great force, so if a part of an operator’s body became trapped beneath a tool, it could cause serious injury or even death.
Another safety risk can arise when the tool pushes the sheet metal into the die to bend the sheet. This causes the edges of the sheet to fold upwards and towards the machine in a V‑shape and it is possible for the edge of the sheet to strike an operator in the head or the face as this occurs, particularly if the bending occurs at high speed. It is also possible for a part of an operator’s body to become trapped between the sheet and the side of the blade as this bending takes place. This could be the operator’s hands or fingers if the operator is holding the sheet as it is bent.
The first step Mr Acheson took in the project was to look at the existing market to see what types of safety systems were available. He was already aware of light curtains.
Mr Acheson undertook internet searches to find out what systems were available. At this time, Google was not as widespread in internet searching. He used a program known as MetaCrawler, being a service that aggregated results from a number of different early internet search engines that were available at the time.
He had no knowledge at that stage of whether or not any patents existed and did not undertake any searches to ascertain this. The only systems he uncovered in the searches he did conduct were the various forms of light curtains.
Mr Acheson expected the task to be a simple one, namely, taking an existing light curtain, developing the necessary program and applying it to an Accurpress press brake. However, it became apparent that there was a more complex problem. That was how to avoid the system being falsely triggered. By ‘falsely triggered’, he referred to a situation where the light curtain was interrupted, but without actual risk to operator safety. That could occur, for example, if the piece of metal being bent obstructed one of the light beams. This was more common where either a thick piece of metal was being bent or where a sheet was being bent into a box or similar shape in a number of operations. When a sheet was being bent into a box, the previously bent up sides of the box would present a wide profile and would be more likely to block a light beam from the light curtains and trigger a stop. At the time of conducting his inquiries, Mr Acheson was aware that this problem had been approached by varying the threshold required for a sensor of the light curtain to register as being blocked.
Mr Acheson understood at the time that the sensors in light curtains comprised a photodiode. A photodiode is an electrical component converting light into an electrical current. The sensors could work in one of two ways:
(a)the sensor could be set to output either a high/low or on/off signal, depending on the amount of light detected. The amount of light required to switch between signals could be adjusted by a physical adjustment of the sensor; or
(b)the sensor could output a signal of a particular voltage, depending on the amount of light detected. This was sent to a controller which could be programmed to generate an ‘on’ or ‘off’ signal, depending on whether the voltage was above or below a defined level.
In either case, the result was same. A binary on/off or high/low signal would be generated, depending on whether the level of light received by the photodiode was above or below a set level.
If a light beam was obstructed by a very thin object, for example, the edge of a sheet of metal only several millimetres thick, some light would still reach the sensor. However, if the light beam was obstructed by a larger object, the amount of light reaching the sensor would be much lower. By varying the threshold voltage at which the signal was triggered, which in turn depended on the amount of light received, the systems could be adjusted so that they did not trigger if only a very thin obstruction blocked the path of the light beam.
Another problem with light curtains was that the light transmitters and receivers had to be very precisely aligned. This was to ensure that the light beam, when not obstructed, was detected by the transmitter. If there was a slight misalignment, this could result in either some or all of the narrow light beam missing the receiver. This, in turn, could cause the output of the light sensor to fall below the threshold and trigger a signal, causing the press brake to stop.
Mr Acheson largely worked on this project alone. After reviewing the existing market for safety systems, which seemed to comprise various arrangements of light curtains, and seeing the drawbacks of light curtains, he decided to take a different approach. He considered that one way of dealing with the alignment issues would be to use a camera, which would monitor the path of the descending blades. This offered, he said, a fairly robust solution without the types of alignment issues referred to above. As long as the field of the camera covered the relevant area, it would not matter if there was a slight misalignment of the camera. There was therefore greater tolerance if the camera was not perfectly aligned.
The camera used at the time was a complimentary metal oxides semiconductor (CMOS) camera and is one type of technology used in cameras. The other type is a CCD. Both CCDs and CMOS cameras perform the same basic function, that is, capturing light and converting it to an electrical current.
Mr Acheson thought about using the camera to try and distinguish between the body of an operator and other, permitted objects, such as the workpiece, however, he quickly dismissed this as being too difficult and complex a problem requiring too much processing power.
Instead, he applied an optical filter to the camera and worked on distinguishing between a permitted obstruction, such as the workpiece, and an impermissible obstruction, such as part of the operator’s body, based on the intensity of light detected. In order to make a clear distinction between the intensity of light detected from a permitted obstruction and an impermissible obstruction, he used a glove coated in phosphorescent chemical, which was to be worn by an operator, and exposed this to a UV light source. When the glove was exposed to the UV light source, it emitted a high intensity of light. When this level of intensity was detected by the camera, it would trigger a signal to stop the press brake. However, the presence of other obstructions in the field of the camera, for example, the workpiece, die or tool, would not trigger such a signal. In this way, the system would only be stopped if the gloved hand of an operator entered the field of the camera. He developed a working prototype of this system, but the system was never put into commercial use as far as he knew. He believed that the requirement for the user to wear a particular type of glove made this system too cumbersome for practical use.
Mr Acheson said he was well aware in mid-2003 of light curtains systems where the light emitting and receiving means are fixed in front of the press brake. As a result of the work he performed on press brakes, he maintained an interest in this field after completion of the project. He became aware of systems which illuminated an area around the blade at a later time. This was one or two years after completing the project. He was not aware of those in mid-2003 and would not have regarded them as being common general knowledge, either at 11 June 2002 or mid-2003.
Mr Acheson said he was aware of processing and control means as a common feature of light curtain systems. He would have regarded this as common general knowledge, both at 11 June 2002 and mid-2003. However, the manner in which each system processes information, that is, the exact logic it uses, usually comprised confidential proprietary information and so would not have been immediately apparent. He would therefore not have regarded that information as common general knowledge.
On the detection of shadows cast by obstructions between the light emitting and receiving means, Mr Acheson said that if this is referring to the function of a light curtain detecting whether a shadow has been cast upon a light sensor, leading to a corresponding drop in output voltage from the sensor, he was aware of this and considered it was common general knowledge at both dates.
As to technology which could be used to record and store the images of shadows cast in the region between the light emitting and receiving means, including shadows cast by the blade, workpiece or an anvil, or an obstruction in the region, Mr Acheson said he was aware of image recording technology generally, such as CMOS cameras. However, at the time he undertook the project he had not heard of its use to record and store images in a press brake safety system. He did not regard this as being common general knowledge at either date. He ultimately used a CMOS camera in the press brake safety system he designed in around 2003. He did not, however, use the CMOS camera to record or store images. Rather, he arranged it to observe an area below the blade of the press brake and trigger if the camera detected an intensity of light corresponding to the coated glove of an operator’s hand.
With regard to programming the processing and control means such that it could be used with such technology to determine the boundaries of the shadows cast in the region, Mr Acheson was not aware of the use of such technology in press brake safety systems. It was not, in his view, common general knowledge at either date.
As to programming the processing and control means such that it stored images and could compare them with other images, similarly, Mr Acheson was not aware of the use of this technology and did not regard it as being common general knowledge at either date.
As to controlling, including stopping the descent of the blade, depending on detecting shadows cast by obstructions, detecting the shape of shadows cast by obstructions, or detecting the shape of shadows cast by obstructions and comparing them with the shape of other images recorded by the system, Mr Acheson was aware that light curtains operated by controlling the descent of blade based on detecting a shadow cast by an obstruction. But none of the systems he was aware of detected the shape of the shadow or controlled the blade based on such information (emphasis added). That was not, in his view, common general knowledge at either date.
As to the following systems in the respondent’s CGK Schedule, the Cybelec System, the TIROPS System (standing for Travelling Infra Red Operator Protection System), the Fiessler AKAS System and the Nuova System, Mr Acheson had not come across systems by those names and did not regard them as common general knowledge at either date.
The respondent’s Lazer Safe LZS-003 System
Mr Acheson said he recalls hearing of the respondent’s systems at the time he undertook the project. He did not recall a particular system name or model number he was aware of at the time and could not recall specifics of the systems, but his recollection was that they were light curtain systems which were generally well known. As he could not recall specifics of the Lazer Safe Systems at the time, he does not regard those systems as likely to have been common general knowledge at either date.
The Patent
Mr Acheson could not recall ever seeing the Patent before he was provided with a copy of it by the applicants’ solicitors. He was given various tasks in relation to the Patent.
He expressed the following views in relation to it.
Prior systems identified in the Patent
The section in the Patent headed ‘Field of the Invention’ sets out a number of prior systems and the problems that arise with each of the systems in a self-explanatory way.
Mr Acheson said that as at the priority date, which he was instructed by the applicants’ solicitors to regard as 11 June 2002:
(a)physical guards and tethers had been used. They had the problems described in the Patent. Mr Acheson does not regard them as being commonly used as at the priority date because of the problems. He regarded the light curtain systems as being well known at the priority date;
(b)Mr Acheson was aware of light curtains and the ‘false triggering’ problem referred to in the Patent. He was not aware of any issue with small body parts being able to be passed through a light curtain. While this would theoretically have been possible, in his experience, the problem did not arise in practice for at least one of the following reasons:
(i)the light curtain was positioned far enough away from the machine so that a finger could not reach the hazardous area of the machine. Reaching a hazardous area would require the operator to pass at least a part of his or her arm through the light curtain. The beams were closely enough spaced that an operator’s arm could not pass between light beams; or
(ii)alternatively, if the light curtain was close enough to the machine that a finger could reach a hazardous area to pass through the curtain, the light beams would be positioned closer together to prevent this from happening.
(c)as at the priority date, Mr Acheson was not aware of light beams projected along the leading edge of the tool, nor the problems associated with them.
General comments on the Patent
Mr Acheson said he found the Patent to be clearly written and had no trouble understanding the Patent or the invention it disclosed. It is a safety system for a press brake. It has a light transmitter and a receiver which receives light from the light emitter. The light emitter illuminates an area that is included in the path of the descending blade.
He said the light beam that is described in the Patent has a two dimensional cross section (that is, it is not a single point or a flat beam). The Patent described a lens arrangement at the transmitting end of the beam that is used to spread a point beam and then collimate the beam by making the rays of light that comprise the beam substantially parallel to one another so that the beam will have zero or negligible spread (that is, the cross section of the beam will not vary or vary only by a very small amount over its length).
At the receiver end, the Patent described a way of collapsing the light beam back to a smaller size. The light receiver also includes an image detection device. A processing and control means processes the images captured to search for unknown shadows and can stop or slow movement of the tool depending on what is detected. The Patent also mentioned that the processing and control means may use ‘shadow maps’ which are prior recorded images of what a safe view looks like as the tool moves through its path of movement. The system can compare these shadow maps with the shadows being cast on the receivers as the tool descends.
Mr Acheson’s view was that the invention described in the Patent is not like any systems he had seen or heard of as at the priority date or in 2003. Had he been aware of this Patent at the time he was engaged in the design of the safety system, it would have been of great interest to him and, in particular, its ability to distinguish between safe and unsafe obstructions.
Claims of the Patent
Mr Acheson referred to the ‘claims’ commencing at p 13 of the Patent and comprising 47 numbered paragraphs, all being for a ‘safety system’. Only claim 1 is a stand alone claim and the remaining claims add features to claim 1 or other previous claims, which ultimately trace back to claim 1. Having read the Patent, most of the words or phrases appearing in the claims of the Patent were clear and he could understand them based on his skill and present experience. He considered that he would have similarly been able to do so as at the priority date. The applicants’ solicitors asked him to provide an understanding of the meaning of certain words and phrases appearing in the claims. In relation to them, he said the following.
‘Image information’ in claim 1
Mr Acheson said he understood ‘image information’ to refer to the information that constitutes the ‘image’ that is detected by the image receiver; this is the image that is provided to the processing and control means. He understood that an image to be constituted by the output from one or more sensors, together with the details of its location. He considered that an image can exist where there is only one output from one location. As such, the information will be ‘image information’ as long as it includes the output of at least one sensor together with its location. It could also be the output from an array of sensors with information about the position of each sensor within the array.
‘Recognise the presence of one or more shadowed regions’ in claim 1
Mr Acheson took recognition to be referring to the ability to detect shadows cast by multiple independent objects. It requires the ability to ‘recognise the presence’ of a shadow that is cast. The reference to ‘presence’ he said implies a concept of time, that is, that there is an ability to know at any given time whether a shadow is there or not.
‘Obstructions in the region’ in claim 1
In this context, Mr Acheson understood an obstruction to be any opaque object which blocks the light travelling between the transmitter and the receiver. That could be, he said, fingers, hands, the workpiece, the anvil or the tool itself.
‘Processing and control means has sufficient image information to determine the boundaries of the or each shadowed region’ in claim 1
Mr Acheson said this referred to the required resolution of the image information and he understood the phrase to be saying that the resolution of the image information that is received by the processing and control means must be sufficient to allow determination of the boundaries. He noted that the phrase does not mention that the processing and control means must carry out boundary determinations. Rather, it only requires that the processing and control means have the necessary information to do so.
He also said that in order to understand what resolution would be required for boundary detection, it is helpful to understand how ‘boundary detection’ or ‘edge detection’ is carried out. He said it is one of the cornerstones of image analysis. He was familiar with edge detection, having applied it in projects on which he worked while at Raven Industries. While this was well after the priority date, he regarded the basic concepts as having been unchanged since around the 1970s.
‘Edge detection’, he said, involves image information being analysed to search for a transition from a ‘dark’ output in one pixel to a ‘light’ output in an adjacent pixel or vice versa. In the case of photodiodes, this would involve a comparison of the voltage output of adjacent photodiodes looking for a sufficient step or difference, referred to as a gradient between the outputs. ‘Edge detection’ is a term Mr Acheson used interchangeably with ‘boundary detection’. I will refer to ‘boundary detection’ to keep the language consistent with the Patent.
Therefore, to have sufficient resolution to carry out boundary detection, there must be enough pixels that the transition from ‘light’ to ‘dark’ can be seen. As this phrase in claim 1 refers to ‘boundaries (plural) of the or each shadowed region’ (which are cast by one or more obstructions in the region) (emphasis added) there must be an ability to determine multiple boundaries on potentially multiple shadows. Mr Acheson regarded that requirement as being met if boundaries can be identified sufficiently to give an impression of the shape and location of a shadow, albeit in a coarse or grainy manner. As resolution increases, it becomes possible to detect boundaries with more precision. However, a relatively coarse resolution may still allow determination of the boundaries in the sense he described.
‘A single parallel beam of light’ in claim 5
Mr Acheson said this phrase requires that there is a single continuous beam of light, rather than using multiple point light sources in an array to illuminate an area. The phrase also requires the beam of light to be parallel, but does not say to what the beam is parallel. He therefore understood the term ‘parallel’ to refer to being parallel to itself, that is, that the rays of light in the beam are parallel to one another, or collimated, and the beams spread or beam angle is zero or very close to zero.
‘Columnated’ in claim 35
Mr Acheson treated this term as being a spelling error for what should be ‘collimated’. He was not familiar with the word ‘columnated’.
Acheson # 2
In a further affidavit, sworn on 27 April 2017 (Acheson # 2), Mr Acheson reviewed the evidence of Mr Appleyard in Appleyard # 2. Mr Acheson said that, in relation to the Lazer Safe Systems, the systems first scan and then identify the location of the tool and then blank segments representing the location of the tool. This means that the shadow cast by the tool would not stop the tool. Only if a shadow is detected in an unblanked area, that is ‘an unknown’ shadow, is the tool stopped. Mr Acheson spoke of an additional possible function for the Patent, which he understood as being as follows:
(a)a processing and control means may create ‘a total picture’ made up of the image information received as a tool moves through its path of movement, that is, a ‘shadow map’;
(b)the shadow map is a series of images, in effect, a video of what is observed as the tool passes through its full path of movement;
(c)in the first instance, it will include the tool and the anvil only, this is created on a first pass of the tool, with no workpiece present; and
(d)subsequently, additional shadow maps may be created which include images of the workpiece being bent.
It is only the final stage of the second function, namely the creation of shadow maps, including the workpiece, that is described by Mr Appleyard. Mr Acheson said this particular aspect of the operation of the system, being the comparison with the pre-stored images of the workpiece being bent, was specifically identified in the Patent.
In relation to integers 1.5 to 1.6, Mr Acheson disagreed with the view expressed by Mr Appleyard that none of the Lazer Safe Systems has integer 1.5 or integer 1.6. Mr Acheson said Mr Appleyard ‘seems to assume’ that these integers impose a range of requirements based on examples in the Patent of how the invention could operate. Mr Acheson did not see those as being requirements of claim 1 of the Patent. Mr Appleyard’s views on the matter, Mr Acheson said, seem to be influenced by:
(a)his view that the tool is not an obstruction as referred to in integer 1.5 and integer 1.6. A view with which Mr Acheson disagreed; and
(b)that the Lazer Safe Systems are not ‘safety systems’ after guarding mode is fully muted and the purpose of the BSM is to enhance productivity. Mr Acheson disagreed with this, saying the two functions described, namely, BSM and ‘Bendshield Plus’, which operate after the guarding mode is muted, provide a safety function. Systems having these functions, in Mr Acheson’s opinion, are ‘safety’ systems when these functions are active.
In relation to integer 1.5, Mr Acheson’s disagreement with Mr Appleyard was based on two assumptions that appeared to have been made by Mr Appleyard:
(a)that ‘image information’ meant information on the shape of an obstruction; and
(b)that ‘recognising the presence of a shadowed region’ required comparison with a stored image.
Mr Acheson disagreed that integer 1.5 imposed either of those requirements.
In relation to integer 1.6, again he considered that Mr Appleyard’s views were based on the assumption that integer 1.6 required that the system both:
(a)determined the shape of any obstruction; and
(b)controlled movement of the part based on the determination of the shapes of the obstructions or identification of the obstruction.
Mr Acheson disagreed that integer 1.6 imposed either of those requirements. Rather, in relation to integer 1.6, Mr Acheson said the following:
(a)the processing and control means must have sufficient image information to meet two requirements:
(i)it must have sufficient image information to determine the boundaries of each shadowed region. That term appears in integer 1.5, and refers to a shadow cast on the light receiving means by an obstruction in the illuminated region. The ‘shadowed region’ may be a shadow of only part of an object. What is likely to happen in practice is that if the hand of an operator starts to enter into the illuminated region, the tip of a finger may enter the illuminated region first. It follows that the first shadowed region from this obstruction to appear in the light receiving means will be a small shadow cast on the edge of the light receiving means by the tip of the finger. It is only the boundaries of the shadowed region that must be able to be determined. It is not the boundaries of the physical obstruction that must be capable of being determined. For example, in a case where the physical obstruction is a hand entering the illuminated region, at the moment it first appears and starts to cast a shadow on the light receiving means, the shadowed region may be only a very small section, such as a single pixel; and
(ii)it must have sufficient image information to control the movement of the parts, that is, the tool based on that information. This means that the processing and control means is able to generate output signals to control movement of the part based on the image information it is receiving. Nothing in the words of integer 1.6, or the claim when read as a whole, require that the control of the part be based on a determination of the shape or identification of what is the physical obstruction;
(b)there is no requirement that boundary determination is actually carried out, only that the image information is sufficient to do so; and
(c)the opening words of integer 1.6 require that the manner in which the region is illuminated allows the quality of image information that is required to be generated. This requires that the light transmitter transmits light with a high enough energy to create sufficient contrast between light and shadow on the receiving means. This allows a gradient to be found between the light and dark pixels as described above. It also requires that the illumination covers the range of sensors, that is, pixels sufficient for boundaries to be detected.
Mr Acheson also took issue with Mr Appleyard’s views about ‘obstructions in the region’. The prior description contains statements to the effect the tool was not an obstruction. Mr Acheson’s view was that the tool, and indeed any object that casts a shadow on the light receiving means, is an ‘obstruction in the region’. In the case of the tool, it is an obstruction that is deemed safe and, therefore, the system is able to continue operation, even with this obstruction present.
In relation to operation of the Lazer Safe Systems during ‘guarding mode’, Mr Acheson said:
(a)during set up, diagonal scanning software scans the image of the guarding area at the full camera resolution to identify the lowest point of the tool. Mr Acheson believed it must do so by detecting a boundary, that is detecting a transition from light to shadow at this point; and
(b)a predetermined number of ‘segments’ around the tool and around the corners of the guarding area are identified so that these can be blanked or disregarded. Certain segments are given a ‘weighting’ which conveyed to Mr Acheson these segments are treated differently in some way. However, this is not explained in the Product Description. Other segments are ‘blanked’, which conveyed to Mr Acheson that these segments are disregarded completely. He said that if there is weighting, rather than blanking, he would require further information as to what the term ‘weighting’ meant.
In relation to ‘bending mode’, Mr Acheson noted that the LZS-005 does not operate after the guarding function is muted and the tool begins to bend the workpiece. However, both IRIS and IRIS Plus provide functions during bending of the workpiece. IRIS and IRIS Plus provide the BSM function. IRIS Plus also provides angle measurement of the workpiece being bent. The feature called Bendshield Plus is also described, but is had not been put into commercial use, according to Mr Appleyard.
Mr Acheson understood that BSM operates by scanning the image to find a point on the top of a workpiece. This is found by the transition from a light pixel to a dark pixel, detecting a boundary of the shadow cast by a workpiece. As the workpiece is bent, the image is continuously scanned to find the new location of the top of the workpiece. By tracking the position of the top of the workpiece as it rises, the angular velocity of the workpiece can be calculated. Although this occurs after the ‘guarding’ function is turned off. In Mr Acheson’s opinion the system was still functioning as a safety system when BSM is operational. The purpose of BSM is to control the speed of the bending to avoid ‘sheet overhang injury’ as described in the Product Description. IRIS and IRIS Plus differ from the system described in the Cybelec Patent. The Cybelec Patent only provides a safety function, in his opinion, prior to the bending of the workpiece.
The bend angle measurement feature of IRIS Plus operates by identifying a straight line representing the edge of the workpiece on either side of the tool. The system then calculates the angle between these lines. The purpose of the function is to check, in real time, whether a target angle has been has been achieved. Mr Acheson did not regard this as a safety function.
However, Bendshield Plus involves a guarding function being turned back on for a period of time once bending is commenced. A significant number of segments in the obstruction matrix are blanked and it is only an area between the workpiece being bent and the tool that remains unblanked. This is to protect against an operator getting a finger trapped between the workpiece as it bends upwards and the side of the tool. It is not clear from the Product Description how the system determines which areas are to be blanked when Bendshield Plus is enabled, but Mr Acheson understood that the operation of this function would be the same as described above for guarding mode, thereby, providing a safety function.
In relation to location of obstructed segments, Mr Acheson expressed the view that the Lazer Safe Systems must know the location of these segments, contrary the view that expressed by Mr Appleyard, as the tool will only be stopped if an unblanked segment is deemed obstructed.
As to information used in BSM, in order to find the relevant pixel each time the system must be constantly scanning to locate the transition between light and dark, the boundary representing the leading edge of the workpiece. This requires analysing the output of all pixels along the scanning path in order to find this transition point.
Mr Acheson disagreed with Mr Appleyard’s view that the Lazer Safe Systems did not have the presence of integer 1.5. He said that the processing and control means can:
(a)during ‘set up’, identify the presence of the tool tip and blank out the segments occupied by the tool;
(b)during ‘guarding’, determine each segment, either obstructed or unobstructed, based on comparison of the voltages returned in each segment to a threshold; and
(c)during BSM, identify a point in the top service of the workpiece based on where the output of the sensors transition from light to dark.
Mr Acheson considered that it is only if the tool is regarded as not being an obstruction, that Mr Appleyard’s view could be correct. Mr Acheson said, however, that:
(a)the information available to the processing and control means is plainly ‘image information’;
(b)each of those processes involve ‘recognising the presence of a shadowed region’;
(c)the tool is an obstruction and the function of the system in identifying the tool during set up is relevant when considering integer 1.5; and
(d)the system is a safety system when BSM is operational and therefore the operation of BSM is relevant when considering integer 1.5.
Mr Appleyard’s view relied on the assertion that Lazer Safe Systems do not know the location of the obstructed segment. Mr Acheson disagreed, explaining that:
(a)the process of detection of the tool during set up clearly demonstrates that the processing and control means has sufficient image information to find the tool tip;
(b)even when considering the only segment information that is passed to the Press Controller and Safety System (PCSS), this would allow the determination of the boundary of any obstructed segment or group of segments simply by checking the status of the adjacent segments;
(c)the operation of the BSM function of each of IRIS and IRIS Plus plainly requires sufficient image information to determine boundaries, as the process involves determining a boundary;
(d)the tool is an obstruction and the function of the system in identifying the tool during set up is relevant when considering integer 1.6;
(e)the system is a safety system when BSM is operational, therefore, the operation of BSM is relevant when considering integer 1.6; and
(f)in both guarding mode and BSM, the image information is sufficient to be used, and in fact used, to control the movement of the part. In guarding mode, both the image information used to locate and blank the tool, as well as the image information received when the tool has descended, are used to stop the tool if another obstruction, outside the tool obstructed area or any other blanked areas, is detected. In BSM, the image information is used to calculate the bend speed and slow the tool if the speed is too high.
Integer 1.6 is present in the Lazer Safe Systems, according to Mr Acheson.
Mr Acheson also disagreed with Mr Appleyard in relation to the latter’s view on claims 2, 3, 4, 5, 14, 21 and 46, providing the following reasons (and some commentary on claim 38):
Claim 2
•I do not agree that the additional integer of claim 2 is not present in the Lazer Safe Systems.
•The processing and control means stops the movement of the part if an obstruction is detected in an unblanked segment of the obstruction matrix. These unblanked segments are determined during set-up, and are a “predetermined or calculated area” of the region.
Claim 3
•I do not agree that the additional integer of claim 3 is not present in the Lazer Safe Systems.
•The processing and control means is able to determine whether the obstruction is in a front, middle or rear area (relative to the tool) (see Product Description page 7). The system can respond differently depending on which area the obstruction arises. For example, when in Box Mode as described in paragraph 35 of the Product Description.
Claim 4
•I agree that the additional integer of claim 4 is not present in LZS-005.
•I do not agree that the additional integer of claim 4 is not present in IRIS and IRIS Plus.
•The BSM function calculates the angular velocity of the workpiece as it is being bent. It then slows the descent of the blade if the angular velocity is too high. This velocity could either be the velocity of just the operator side of the workpiece (relative to a stationary plane), or the velocity of the operator side of the workpiece relative to the other side of the workpiece (which, assuming a symmetrical V-shaped die, would be twice the velocity of the operator side only). In the first case, as the tool is stationary, the calculated velocity would be the velocity relative to the tool. In the second case, the calculated velocity would be of one obstruction relative to another.
Claim 5
•I do not agree that the additional integer of claim 5 is not present in the Lazer Safe Systems.
•The opinion expressed here seems based solely on the assertion that the term “relatively large” is unclear. By itself, without any reference to compare the size of the region, this term would be unclear to me. However the claim states that the region is “relatively large with respect to the size of a leading edge of the part” [emphasis in original]. This phrase however is not unclear to me. When I look at, for example, Figure 6 of the Product Description, it is clear that the region includes multiple segments to either side and below the tip of the tool, and that the tip of the tool occupies only a small area of the region. Consequently, I regard it as “relatively large” compared to the leading edge of the part.
Claim 14
•I do not agree that the additional integer of claim 14 is not present in the Lazer Safe Systems.
•Paragraph 27 of the Product Description describes that the equivalent of five fully obstructed pixels is required for a segment to be deemed obstructed. The ways in which this can occur are illustrated in RMA-30. In order to have the equivalent of five fully obstructed pixels, an obstruction must have a minimum thickness sufficient to span two pixels (as shown in the first example in RMA-30). This equates to a thickness of approximately 1.33 [millimetres], which is determined based on the pixel size. An obstruction of this size is too small to be part of the operator’s body. If an obstruction is smaller than this, it will not sufficiently obstruct enough pixels in a segment for that segment to be deemed obstructed. As a consequence, the movement of the part will not stop.
Claim 21
•I do not agree that the additional integer of claim 21 is not present in the Lazer Safe Systems.
•I am not able to understand the reason for Mr Appleyard’s opinion on this integer. He clearly states a screen is used. Paragraph 76 of the Product Description states that the screen receives the laser light from the sender unit (i.e. the image is projected onto the screen), and the camera observes its pixelated view of the screen (i.e. detects the image information).
Claim 38
•Based on the information in the Product Description and the Second Appleyard Affidavit, I am not able to either agree or disagree that the additional integer of claim 38 is not present in the Lazer Safe Systems.
•A lens at the receiver in such a system is used to refract light and focus the beam of light onto the array of sensors in the receiver. This is required where the area of the array of sensors is smaller than the area of the projected light. For example, in a typical domestic camera, a Jens arrangement is used to focus incoming light onto sensors within the body of the camera, which are much smaller than the field of view of the camera.
•Based on my knowledge and experience of the operation of systems such as this (i.e. having an array of light sensors), the only situation in which I am aware a lens would not [emphasis in original] be used is if the array of sensors is of the exact same physical size as the cross sectional area being observed. In my experience, this would be unusual, since sensor arrays are typically smaller than the area being observed, therefore require a lens to focus the light onto the sensors. I would therefore consider it unusual if the Lazer Safe System did not use such a lens. However without further information regarding the optics of the receiver, I am not able to clearly say one way or the other.
Claim 46
•I agree that the additional integer of claim 46 is not present in LZS-005.
•I do not agree that the additional integer of claim 46 is not present in IRIS and IRIS Plus.
•Plainly the tool is arranged to bend material. Plainly IRIS and IRIS Plus control the tool during bending, for example during the operation of BSM, or BendShield Plus when these features are present.
•Mr Appleyard’s opinion on this integer seems to be based on the notion that IRIS and IRIS Plus are not “safety systems” when they control the tool during bending. As I describe above, BSM is a safety function and as such, these systems are still functioning as a safety system when BSM is operational.
(paragraph numbers omitted)
In relation to Mr Berry’s affidavit, Mr Acheson said that Mr Berry did not provide any clear explanation of what he understood to be required by integer 1.5 and integer 1.6. However, similarly to Mr Appleyard, Mr Berry’s opinion on the presence of those integers, or otherwise, is based on the premise that claim 1 of the Patent requires the type of object identification that is described merely as a possibility in the Patent. He did not agree with that. Mr Acheson said:
While I do not agree with the premise on which Mr Berry proceeds in providing his opinion, I make the following comments on the opinion he expresses:
a)Mr Berry asserts that the Lazer Safe Systems do not attempt to determine boundaries or relative positions of silhouetted objects in the region, and do not use any form of image comparison. However, the system scans to identify the tip of the tool (i.e. finding a boundary and location). It [t]hen applies blanking based on this location. As described above, I regard this as a form of image comparison, i.e. between the map of blanked segments, and the actual output at a given time.
b)Mr Berry also asserts that there is no storage of old images. However the map of blanked segments (once created) must be stored in order to be subsequently used.
c)Mr Berry states that once an obstruction is determined in an unblanked segment, no further information is gathered, and no further processing is performed. This is plainly incorrect. The operation of L-filtering, Hard Shell Soft Centre filtering, and the operation of the latch function all require further processing once an unblanked segment is deemed obstructed. I note however that the Previous Product Description which was provided to Mr Berry in making his affidavit did not include any reference to these functions.
d)Mr Berry states that determination of boundaries cannot be made based on a single binary value. I agree with this statement. However the Lazer Safe System has more than just the binary value of the obstructed segments.
Acheson # 3
The Patent itself recites that three basic types of safety systems were known and used for press brake operators, namely:
(a)the use of physical guards or tethers;
(b)the use of light beams to create a light curtain;
(c)the use of travelling light beams projected along the leading edge of the tool with the beam deactivated as the tool approaches the work.
These matters may be treated as admissions about the prior art and common general knowledge: Lockwood (No 2) (at [105]).
The Australian market for press brake safety system was very small (about 150 press brakes per year) compared to Europe (up to June 2002 to 2003 with about 4000 to 5000 machines built and sold each year). The US market for safety systems was also small at that time.
There were also several press brake safety systems known to Mr Appleyard, who was a regular from 1999 at international trade shows and exhibitions relating to press brakes and their safety and control systems, as well as meeting press brake manufacturers in Europe. According to the respondent, the prior art systems available in 2002 to 2003 were:
(a)the TIROPS System developed in and sold from about 1996 by STC in Australia: The inventor of the Patent, Mr Davies worked on the development of TIROPS with Mr Appleyard, for which they both received a patent;
(b)the Lazer Safe LZS-003 System developed by, made and sold by the respondent in Australia from about 1999 (and sold in Europe from July 2000) using a ‘planar’ laser light beam and from March 2002 (and sold in Europe shortly thereafter) using a dual laser beam;
(c)the Fiessler AKAS System offered for sale in Australia and Europe from about 1997 and its patent;
(d)the Nuova System offered for sale in Europe from about 1999 and revised Nuova System offered for sale in Europe in May 2002 ;
(e)the Cybelec System described in the Cybelec Patent.
The respondent says that each of the above systems was common general knowledge in Australia as at 11 June 2002; they were each (except Nuova and Cybelec) publicly available in Australia before any of the priority dates and would have been known to a skilled addressee in the small market in Australia for these products at that date.
The respondent, relying on Appleyard # 1, says that the following matters were also common general knowledge in Australia among those involved in the design and manufacture of press brake safety systems at about 11 June 2002:
(a)light emitting and receiving means fixed on either side of the blade such that the region below the blade and perpendicular to the path movement of the blade was illuminated;
(b)a processing and control means which processed information applied received by the light receiving means;
(c)the detection of shadows cast by obstructions between the light emitting and receiving means;
(d)technology which could be used to record and store the images of shadows cast in the region between the light emitting and receiving means;
(e)programming the processing and control means so that it could be used with said technology to determine the boundaries of the shadows cast in the region;
(f)programming the processing and control means so that it stored images and could compare them with other images;
(g)controlling, including stopping, the descent of the blade depending on:
(i)detecting shadows cast by obstructions;
(ii)detecting the shape of the shadows cast by obstructions; or
(iii)detecting the shape of shadows cast by obstructions and comparing them with the shape of other images recorded by the system; and
(h)the option of using a camera to determine the shape of an obstruction.
Mr Appleyard considered that the invention as claimed in claim 1 of the Patent would have been obvious to a person skilled in the art in the light of common general knowledge as referred to above.
Mr Acheson took issue with this conclusion by Mr Appleyard. Mr Acheson argued that many of the matters and systems referred to by Mr Appleyard were not known to him and were not common general knowledge; but even if they were, Mr Acheson still did not consider that the invention claimed in claim 1 would have been obvious in June 2002 or 2003. This is because Mr Acheson asserted that none of the systems referred to by Mr Appleyard suggest that the problems of false triggers mentioned in the Patent could be addressed by providing a system that could provide a level of image information ‘that allowed boundary detection’. In response to this, Mr Appleyard referred to severe limitations on Mr Acheson’s knowledge of prior art systems.
The respondent says with regard to ‘false triggers’, it was common general knowledge that light beam safety systems could experience false triggers by reason of a number of issues with vibration and light bending identified by Mr Appleyard in the context of the development of the Lazer Safe LZS-003 System. Determining boundaries was considered as an option by Mr Appleyard. Such an option was part of the common general knowledge in Australia.
The respondent notes that the applicants do not advance any evidence as to secondary indicia supporting an inventive step, such as the commercial success of products embodying the Patent having been marketed by the applicants showing the satisfying of a long-felt gap in the relevant market. It would be expected, the respondent says, that such a case would be put if the applicants could. The respondent is not aware of any commercially available system which works in the manner described in the Patent.
Common general knowledge plus the Cybelec Patent
Mr Appleyard was aware of the Cybelec Patent by about May 1999 when he was preparing the respondent’s patent application for a planar beam system. He read and understood that patent. The Cybelec Patent disclosed to him an imaging system which was capable of being used as a safety system on a press brake. In reaching this position, Mr Appleyard relied on the following references:
·‘image analyser’;
·‘the analysis of the projected shadow of the profile’;
·‘an electronic image receiver and analysed by a microcoordinator’;
·‘a projected shadow’; and
·‘the microcoordinator is programmed so as to analyse the projected shadow of the profile of the workpiece’.
He concluded that if the use of an imaging system with a press brake safety system was not part of the common general knowledge of a skilled person in press brake safety systems at the priority date, the Cybelec System disclosed to him such a system and it would have been obvious to use such an imaging system with a press brake safety system, as the Cybelec Patent discloses. He noted that the Cybelec System was capable of both detecting shapes and comparing known shapes with shapes of obstructions.
The objections raised by Mr Acheson to the Cybelec Patent in relation to novelty arose out of his assertion that it was not a safety system and, particularly, the Fourth Form of the invention (as identified by Mr Acheson) could not be used as a safety system as described in the Cybelec Patent. The respondent said even if this was the case, a person skilled in the art of press brake safety systems, with the common general knowledge contended for by the respondent above, on reading it would have considered it relevant to such a system and would understand how it, including each of the embodiments or forms, could be used as a press brake safety system.
Common general knowledge plus the SICK Patent
I observe, again, that SICK post-dated the priority date that I have found. Nonetheless, the respondent says the SICK Patent is the sort of document which Mr Appleyard would have come across in researching what the respondent’s competitors were doing; as evidenced by his research before the priority date. Mr Appleyard said that he would possibly have got it translated from German to give him ‘the crux of the information’ contained in it. SICK was of particular interest to the respondent at around that time because SICK was trying to buy into the respondent. Mr Appleyard understood the patent and would have regarded it as relevant. He was aware in 2001 that SICK was developing a safety system involving the use of cameras. The respondent says:
(a)the invention claimed in claim 1 of the Patent would have been obvious to a skilled addressee in the light of common general knowledge together with the disclosure in the SICK Patent;
(b)the SICK Patent disclosed an imaging system which included ‘a memory for storing an image’; ‘a matrix consisting of a large number of light-sensitive elements’, which detected the ‘shape and quality’ of an obstruction, using camera or scanning technology and involving the projection of a shadow (emphasis placed by the respondent); and
(c)the SICK System is capable of detecting shapes and comparing known shapes with the shape of obstructions by comparing the image received from an obstruction ‘with stored image data in the comparing apparatus’.
The respondent says the only integers of the Patent which appear to be genuinely in dispute is whether the SICK Patent discloses a trigger signal which would stop the descent of the blade. If the respondent is wrong in asserting that this would have gone without saying, it would have been obvious to a person skilled in the art in light of the common general knowledge.
Validity of the dependent disputed claims of the Patent
The respondent says the dependent disputed claims are neither novel nor obvious. Comments on each of the dependent claims have been set out by Mr Appleyard, but need not be considered in light of my conclusion on claim 1.
5.4.3Consideration
To the extent that Mr Acheson may not have had sufficient experience at June 2002 and June 2003 to provide the foundation for his opinions in respect of obviousness that does not assist the respondent. The respondent is required to discharge a heavy burden cast upon it in a case such as the present to establish its case on the obviousness of the claims. The question of obviousness is being asked some fifteen years after the priority date and, as the applicants say, the passage of time brings with it the very real risk that opinions are ‘fatally infected by the seductive clarity of hindsight’. In such circumstances, the Court ought treat evidence on the question of obviousness with care.
As noted, in Alphapharm (at [34]), the High Court reiterated that ‘obvious’ means ‘very plain’, as stated in General Tire & Rubber Co (at 497). The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a ‘jury question’ (at [49]). In Lockwood (No 2), the High Court said (at [51]):
Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also ‘one of degree and often it is by no means easy’, because ingenuity is relative, depending as it does on relevant states of common general knowledge. This difficulty is further complicated now by the need, in some circumstances, to consider s 7(3) information as well as common general knowledge.
(citations omitted)
Having identified the relevant claims in the Patent, I consider the subsequent four steps necessary in determining the issue of obviousness sequentially, as laid out by the Full Court in Insta Image and detailed above at [360].
The person skilled in the art (hypothetical skilled worker)
The applicants emphasise that the question is not whether it was or would have been obvious to the inventor or to some other worker in the field, but whether it would have been obvious to the skilled addressee. That is, whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, irrespective of whether they were taken by the inventor: Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 per Aickin J said (with whom Gibbs, Stephen, Mason and Wilson JJ agreed) (at 286).
As to whether something was ‘a matter of routine’ (emphasis added), the majority of the High Court in Alphapharm (at [53]) said that the following reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corp v Biorex Laboratories Ltd [1970] RPC 157 (at 187-188), is an approach that should be accepted:
Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the ‘2’ position in place of the -C1 atom in chlorpromazine or in any other body which, apart from the ‑CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?
(emphasis in original)
The starting point for consideration of the question of obviousness is to identify the person skilled in the art (the hypothetical skilled worker) and consider the common general knowledge of that person at the priority date.
The hypothetical skilled worker is one who is skilled but unimaginative and non-inventive working in the field of the invention; one who has a practical interest in the subject matter of the invention, and has a practical knowledge and experience of the kind of work to which the invention is related.
Just as I preferred Mr Appleyard’s expertise on infringement, I substantially discount his evidence on common general knowledge. Mr Appleyard was not a person who could be regarded as an ordinary or typical hypothetical skilled worker in the field at June 2002 to 2003. Rather, he was actively inventing (and was the inventor on at least three patents). He had substantial experience in the field at that time. In the course of cross-examination, Mr Appleyard confirmed, in effect, the following matters, all of which establish such experience at the priority date in the field of design and development of safety systems for press brakes in Australia:
(a)there were only two companies in Australia that were doing design and development work in this field at that time, of which the respondent was the market leader;
(b)he was the only person in Australia who held his level of experience. He could not think of any other person that had his level of experience;
(c)he was the only Australian appointed to the Committee for the European Standard (EN 12622), and was involved in Committee work on revising and developing the Standard;
(d)he attended international conferences and was the only Australian he recalled at the Bologna conference in May 2002 who had his experience in the relevant field who attended that conference; and
(e)he was aware of one competitor in Australia in the field of safety systems for press brakes as at the priority date, namely Red Eye. Mr Appleyard demonstrated little recall of this company. He could not recall, for example, where they were located, nor much by way of detail regarding their size and operations, although recalled that they had a dozen or so employees. This would make Red Eye a similar size operation to the respondent as at the time (the respondent having 14 employees at that time). His evidence is that Red-Eye at the time was only making light curtain systems.
In the international field, Mr Appleyard, on the evidence, was aware of its status to an extent surpassing any other hypothetical skilled worker in Australia at that time. Others in the field in Australia at the priority date did not possess the same level of knowledge as Mr Appleyard.
Mr Acheson was, by comparison, very much at the beginning of his engineering career. Nonetheless, in my view, he more closely approximated the hypothetical skilled worker by reason of his work in the field as at the priority date. Although his experience at that time was limited, he was working on electrical engineering projects relevant to the field of the present case, being the field of safety systems for machinery including, but not limited to, press brakes.
Further (although unnecessary), the applicants note, and I accept the following:
(a)The TIROPS System: There is no evidence of any knowledge of the TIROPS System in Australia beyond Mr Appleyard’s personal knowledge of that device.
(b)The Nuova System: Mr Appleyard saw the Nuova System at a trade exhibition in Bologna, Italy, on 23 and 24 May 2002. He was the only Australian who attended that conference who had experience of the kind held by him at that time (which is about a fortnight before the priority date of the Patent). He had not seen the Nuova System before that time, but had only heard about it in conversations in about late-2001 or early-2002. When he received the instruction manual for the Nuova System (which could have been as late as January 2005), it was placed in the respondent’s library of manuals. Mr Appleyard’s evidence does not establish the Nuova System was common general knowledge at June 2002 to 2003.
(c)The Fiessler AKAS System: the instruction manual dated 24 January 2001 was obtained by Mr Appleyard in 2001. There is no evidence to suggest its dissemination amongst persons skilled in the art at June 2002 to 2003. Mr Appleyard’s evidence is consistent with the instruction manual forming part of the respondent’s catalogue of instruction manuals. There is no evidence of any knowledge of the Fiessler AKAS System in Australia beyond Mr Appleyard’s personal knowledge of that device.
(d)The Lazer Safe LZS-003 System: There is no evidence of any knowledge of the Lazer Safe LZS-003 System in Australia beyond Mr Appleyard’s personal knowledge of that device.
(e)The Cybelec System: Mr Appleyard was not aware of any use of the Cybelec System in Australia or overseas at any time. There is no evidence of any knowledge of the Cybelec System (as disclosed in the Cybelec Patent) in Australia beyond Mr Appleyard’s personal knowledge of that document.
There is no evidence put forward to support the assertion that these matters, of themselves, formed part of the common general knowledge at the priority date.
Obviousness in light of common general knowledge alone
The test as set out in Wellcome requires an assessment of whether the hypothetical addressee faced with the same problem would have taken, as a matter of routine, whatever steps might have led directly from the prior art to the invention.
The evidence of Mr Appleyard does not identify any such problem. In his affidavit evidence, Mr Appleyard referred to issues he faced when he developed the Lazer Safe LZS-003 System (in the years leading up to the priority date). He specifically identified issues with machine vibration and the bending of light, leading to inaccurate measurements at the light receiver and consequent issues in the accuracy of detecting obstructions. He then stated that the Lazer Safe LZS-003 System he designed addressed the issues of vibration. Mr Appleyard provided no evidence that either he or any other person working in the field of press brake safety systems had identified any specific problem with either the Lazer Safe LZS-003 System, or any of the other systems that Mr Appleyard asserted formed part of the common general knowledge.
The evidence of Mr Appleyard does not disclose any motivation to modify or vary any of the systems. It cannot be the case that any hypothetical skilled worker in the field would be directly led to the invention claimed in the Patent.
I also accept the applicants’ contention that the opinion given by Mr Appleyard that the invention as claimed would have been obvious is heavily influenced by Mr Appleyard’s view that the common general knowledge included the possible use of cameras in press brake safety systems. However:
(a)the only evidence as to the knowledge of the possible use of cameras before the priority date is Mr Appleyard’s own knowledge, which he subsequently discussed with other Lazer Safe employees and with representatives of one other press brake safety system manufacturer (namely SICK, which post-dated the priority date). There is no evidence of any wider knowledge of this matter that would elevate this knowledge to the level of common general knowledge;
(b)Mr Appleyard’s evidence is that he dismissed the use of a camera, and saw no benefit in the use of a camera. His evidence is therefore to the effect that he, regarding himself as a person skilled in the art, would not have taken steps leading to the development of a safety system using a camera, and did not regard this as a pathway having reasonable prospects of success;
(c)Mr Appleyard did not perceive before the priority date, for example, the potential for the use of a camera to provide a solution to the problems of alignment, as identified in the Patent at p 2 lines 18-19. At a time after the priority date Mr Acheson perceived the potential for a camera to provide a solution to this problem, but dismissed it as too difficult and complex;
(d)knowledge of the possible use of a camera does not directly lead a person skilled in the art to the invention as claimed. As both Mr Acheson and Mr Appleyard acknowledge, the incorporation of a camera into a press brake safety system presents a series of challenges.
Patents as s 7(3) information
I also accept the applicants’ contention (at least in this case) that the patent literature does not constitute information as provided for under s 7(3) of the Patents Act. There is no plausible evidence that these Patents would reasonably be expected to have been ascertained, understood and regarded as relevant by these hypothetical skilled workers in the field as at the priority date.
Mr Acheson has given evidence that he did not look at patents. Mr Appleyard said that he looked at patents for the purpose of keeping abreast of competitor activities. His evidence is not consistent with him searching for patents as part of developing new products. To the contrary, Mr Appleyard identified that the activities he engaged in as part of developing new products included attending trade shows, obtaining brochures, and obtaining instruction manuals and information regarding competitor’s products from customers.
In relation to the Cybelec Patent, Mr Appleyard’s evidence was that his patent attorney had provided the document during drafting of the Patent, and after the Lazer Safe LZS-003 System had been devised. In relation to the SICK Patent, Mr Appleyard had no specific recollection of seeing this document before considering it for the purpose of this proceeding.
Additionally with respect to SICK Patent, this was a document published and only available in the German language. The evidence does not establish that a person skilled in the art (if that be Mr Appleyard for inventive step purposes) would, if that person had searched for patents, and found a patent in a foreign language, would then have obtained a translation of that document as part of that person’s inventive process. Indeed there is no evidence that a translation of this document was made until such time as the document was translated for the purpose of these proceedings.
Common general knowledge plus Cybelec Patent
The invention as claimed in the Patent is not obvious in light of the common general knowledge combined with the Cybelec Patent:
(a)the Cybelec Patent discloses a bend angle measurement device, with only a fleeting reference to its possible use as a safety system;
(b)Mr Appleyard’s evidence in cross-examination was that he did not think the system described in the Cybelec Patent would work, and did not undertake any development projects based on the Cybelec Patent;
(c)Mr Appleyard was not aware of any use anywhere in the world of the system described in the Cybelec Patent. This is despite the Cybelec Patent being published in 1988; and
(d)both Mr Appleyard and Mr Acheson acknowledge that the physical apparatus described in the Cybelec Patent is complex, and likely to be unreliable.
I consider, in the absence of any relevant or plausible evidence, that there is no sensible prospect that a hypothetical skilled person in the field would at the priority date have been directly led to the invention as claimed in each of the claims in the Patent based on the common general knowledge combined with the Cybelec Patent.
Common general knowledge plus SICK Patent
Mr Acheson said that the significant omission from the SICK Patent was the absence of disclosure of the system controlling movement of a moving part, i.e. the work tool. He confirmed that significant engineering and integration work would be required to provide the system described in the SICK Patent with the ability to control the tool of the press brake, and that the SICK Patent was silent on this point. Adding the function of controlling the tool of the press brake would be a new invention. The SICK Patent is addressed to the problem of avoiding malfunction due to interference from external environment, or impermissible user manipulation of the system. These are different problems to those identified as being addressed in the Patent. The hypothetical person skilled in the art would have no motivation to follow the teaching of the SICK Patent in order to address the problems that the invention in the Patent attempts to address.
In my view, a hypothetical skilled person in the field would not have been directly led to the invention as claimed in the Patent based on the common general knowledge combined with the SICK Patent.
5.4.4Conclusion
I do not accept that the respondent has established its case on obviousness.
5.5 Fair basis
5.5.1Principles
This is a short point.
Section 40(3) of the Patents Act as it applies in this case (see the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), Sch 1, s 55(1)) was relevantly in the following form: ‘The claim or claims must be … fairly based on the matter described in the specification’. If a claim is based on what has been cast in the form of a consistory clause, it will not be fairly based, if other parts of the specification show that the invention is narrower than that consistory clause: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 (at [99]) (Lockwood (No 1)).
The inquiry is into what the body of the specification read as a whole discloses as the invention, that is, real and reasonably clear disclosure in the specification of what is claimed is required: Lockwood (No 1) (at [69]), citing Fullagar J in Rhône-Poulenc (at 11). The question is whether the claims as expressed ‘travel beyond’ the matters disclosed in the specification: Olin Corporation per Barwick J (at 240), cited with approval by the High Court in Kimberly-Clark (at [15]). These considerations are approached as practical matters and without ‘over-meticulous verbal analysis’: Lockwood (No 1) (at [68]), citing CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 per Spender, Gummow and Heerey JJ (at 281).
The question, to which the parties agree, is whether claim 1 (and all claims dependent on claim 1) are fairly based on the disclosure of the Patent, insofar as they claim integer 1.5 and integer 1.6.
5.5.2The respondent’s contentions
The respondent says that:
(a)internal fair basis objection arises by the terms ‘recognise’ and ‘image information’ (or ‘sufficient image information’) in integer 1.5 and integer 1.6 of claim 1 of the Patent. Putting to one side for the present any clarity objections, the word ‘recognise’ must imply that the system is comparing the obstruction with something which is known (that is, the existing library of shadow maps in the system). However, claim 1 as expressed does not require the system to compare anything such as the shadow of the obstruction with shadow maps (emphasis added). The Patent discloses no other way of the system operating by ‘recognition’. Similarly, the reference to ‘image information’ and particularly the passage that ‘the processing and control means has sufficient image information to determine the boundaries of the or each shadowed region’ necessitates the use of the shadow map system disclosed in the Patent; no other system is disclosed by the Patent involving ‘sufficient’ image information ‘to determine the boundaries of a shadowed region’;
(b)accordingly, claim 1 of the Patent is not fairly based on the disclosure in the body of the specification by reason of the consistency claim in the Patent, which is concerned with describing the use of shadow maps. Claim 1 does not refer to shadow maps (emphasis added) (unless the word ‘recognise’ and the phrase ‘image information’ are interpreted to refer to the shadow map comparison system disclosed). In this sense, the claims ‘travel beyond’ the matters disclosed in the Patent and they are not fairly based. In other words, there is no real and reasonably clear disclosure in the Patent of any claims beyond the shadow map image recognition system disclosed; and
(c)in addition, as to the latest definition of boundary determination advanced by Mr Acheson in oral evidence, Mr Acheson agreed that there was no disclosure in the Patent as a whole as to that feature except in the wording of integer 1.5 and integer 1.6 themselves. Accordingly, if the claims as to boundary determination are construed the way Mr Acheson does, they are not fairly based.
5.5.3Consideration and conclusion
The last point may be disposed of as I have not adopted the construction of boundary definition preferred by Mr Acheson. As to point (a) and point (b), I consider, on applying the cited authorities and in avoiding ‘over-meticulous verbal analysis’, that claim 1 of the Patent is fairly based on the disclosure in the body of the specification by reason of the consistory clause in the Patent (at p 3 lines 6-19). There is nothing in the remainder of the specification that is inconsistent with or exceeds in nature and content, or ‘travels beyond’ the invention described in the consistory clause.
5.6 Clarity
5.6.1Principles
This is the final brief validity contention.
Section 40(3) of the Patents Act as it applies in this case was relevantly in the following form: ‘[t]he claim or claims must be clear’.
They must be clear because ‘readers should be able to ascertain the precise extent of [the] monopoly claimed’: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 per Lindgren J (at 94).
A claim which contains irresolvable ambiguity or uncertainty is liable to be revoked on the ground of lack of clarity: Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214 per Middleton J (at [754]); see also Freeman v TJ & FL Pohlner Pty Ltd (1994) 30 IPR 377 (at 381-382). The adjective ‘irresolvable’ is not without importance. The test is a practical test, not an exercise in semantics.
The question is approaching the matter in a practical way, rather than by searching for an arguable problem. The question is whether the use of the word ‘recognise’ and phrases ‘image information’ and ‘sufficient image information’ in claim 1 is unclear.
5.6.2The respondent’s contentions
The respondent says that:
(a)claim 1 of the Patent lacks clarity (and consequently all the claims which are dependent upon that claim). A skilled addressee is not able to ascertain the precise extent of the monopoly claimed, because the meaning of the following terms in claim 1 is unclear:
(i)‘recognise’ and ‘image information’ (integer 1.5); and
(ii)‘sufficient image information’ and ‘image information’ (integer 1.6).
(b)the ambiguity and uncertainty of ‘recognise’ arises because:
(i)the word ‘recognise’ has an inherent ambiguity, being concerned with knowing something again, having seen it before (not seeing something not previously known, for the first time). However, by its very nature, an obstruction should not be there and is not known to the system (for example, the operator’s finger). Rather it is the fact that the obstruction is not recognised which causes the safety system claimed in the Patent to trigger and stop the descent of the blade (emphasised by the respondent);
(ii)claim 1 of the Patent requires that the image of the obstruction be ‘recognised’ which necessitates a comparison with what is recognised (stored images in the shadow map) and that which is not recognised (the shadow caused by the obstruction). If there is no stored image with which the obstruction can be compared, then the use of the word ‘recognise’ is plainly wrong and misleading – the system disclosed in the Patent works by non-recognition of an obstruction compared to stored images;
(c)in cross-examination, Mr Acheson adopted a meaning of ‘recognise’ which involved a requirement of making a ‘comparison’ with something else; and
(d)the term ‘image information’ is also vague and ambiguous, because the question arises whether the image information comprises just the image information about the obstruction or the image information as well contained in the shadow maps or other image information stored in the memory of the system. Significantly, none of the other claims in the Patent refer to the use of shadow maps and the comparison with a shadow of the obstruction to trigger the safety system, except possibly claim 47 which refers to ‘pre-stored or calculated images’ but ‘of material being bent’. There are claims dealing with how shadow maps can be stored in memory for future use if a shadow is determined to be safe (see claims 9 to 11, which the respondent has not been sued for infringement of). If the concept of ‘shadow maps’ is broadly claimed, it should be found in the wording of claim 1. If claim 1 has any broader meaning beyond the obstruction shadow recognition system disclosed involving shadow maps in the Patent, its meaning is unclear and uncertain, as well as not fairly based.
5.6.3Consideration
It is important that consideration of the expressions be in their full context. I note that despite these complaints, it is not apparent that either Mr Appleyard or Mr Berry, in truth, had any difficulty understanding in context and opining on the meanings of:
(a)‘recognise’;
(b)‘image information’; and
(c)‘sufficient image information’.
In my view, there is nothing in these contentions. Very little was said in support of them in submissions. The complaints are not made out.
5.6.4Conclusion
The attack on lack of clarity fails.
5.7 Conclusion on invalidity
None of the grounds raised has been established.
6. GENERAL CONCLUSION
For the foregoing reasons, each of the claim and cross-claim will be dismissed.
I certify that the preceding four hundred and twenty-two (422) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice McKerracher. Associate:
Dated: 18 May 2018
ANNEXURE A
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