Desaln8 Pty Ltd v Crisalis International Pty Ltd

[2020] APO 30

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Desaln8 Pty Ltd v Crisalis International Pty Ltd [2020] APO 30

Patent Application:                2014271193

Title:Apparatus, system and method for desalination of groundwater

Applicant:  Crisalis International Pty Ltd

Opponent:  Desaln8 Pty Ltd

Delegate:  Dr N. R. Madsen

Decision Date:  24 June 2020

Hearing Date:  7 April 2020 via teleconference

Catchwords:  PATENTS – desalination system for groundwater involving reinjection boreholes – section 59 – opposition to grant of a patent – grounds of clarity, support, clear and complete disclosure, best method, novelty, inventive step, entitlement, manner of manufacture – opposition unsuccessful – no grounds made out – application to proceed to grant – costs apportioned between parties

Representation:  Representation for the opponent: Barry Richards, Managing Director of Mecrus Pty Ltd, operating as Desaln8 Pty Ltd.

Patent attorney for the applicant: Mary Turonek of Wrays Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2014271193

Title:Apparatus, system and method for desalination of groundwater

Applicant:  Crisalis International Pty Ltd

Date of Decision:                   24 June 2020

DECISION

The opposition is unsuccessful.  No grounds are made out.  I direct the application proceed to grant.

Costs are awarded in accordance with the Patent Regulations against the applicant up to the date of filing the request to amend, and against the opponent for the period thereafter.

REASONS FOR DECISION

Background

1. This matter relates to patent application 2014271193 in the name of Crisalis International Pty Ltd (the applicant), having an earliest claimed priority date of 22 May 2013.  The patent application was examined and advertised as accepted on 23 November 2017.  Following this, a notice of opposition was filed on 23 February 2018 by Desaln8 Pty Ltd (the opponent).  The application was filed after 15 April 2013 and consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application.  Thus, the standard of proof that applies in the present case is the balance of probabilities.  Under subsection 60(3A) of the Patents Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.

2. The parties took the opportunity to file evidence in support, answer and reply.  Also, the claims were amended by the applicant by request following the filing of evidence in support.  These amendments were formally allowed on 2 May 2019.  At the hearing the opponent was self-represented by Barry Richards as Managing Director of Mecrus Pty Ltd, operating as Desaln8 Pty Ltd.  The applicant was represented by their attorney Mary Turonek of Wrays.

3. The hearing was initially set to be heard in person in Canberra, but this was changed to a videoconference by IP Australia in a letter of 17 March 2020 implementing measures to minimise the spread of the COVID-19 virus.  On this date, the opponent’s summary of written submissions was due but were not received.  The opponent indicated on 23 March 2020 that they did wish to appear, with the applicant’s summary of submissions being filed on the same day.  In order to ensure effective conduct of the hearing, I provided the opponent with a brief period to file a summary of submissions, with these submissions being received on 31 March 2020.  The hearing was rescheduled for 7 April 2020, and due to technical difficulties, proceeded as a teleconference without video.  In my correspondence confirming the rescheduling of the hearing date and providing an extended period for the opponent to file a summary of submissions I noted that such late filing of submissions could potentially be addressed via costs. 

4. The opponent’s summary of submissions was brief and from discussions at the hearing I understood that the opponent intended to maintain the grounds raised in the Statement of Grounds and Particulars and supported in the evidence.  The applicant’s written summary of submissions addressed each of these grounds.  These grounds were entitlement, novelty, inventive step, manner of manufacture, clear and complete disclosure, clarity, support, and best method.  To frame my approach to this decision I present the opponent’s complete written summary of submissions:   

   “I advise we primarily rely on the 2 previous declarations I have made in opposition to this application.

I have been involved with the company Desaln8 since its inception in or around 2005 and bring over 40 years of engineering services experience to the company.

As previously announced we maintain that the claims made by the applicant are not clear and succinct, whilst not foregoing the information and objections outlined in my already submitted declarations, I wish to provide the further following summary of our opposition to the application 2014271193. As I believe maybe relevant.

·     The apparatus associated with the application is a replication of the system covered under Australian Patent 2005204592 in that the method associated with the desalination of the water through in situ reverse osmosis is the same as that already covered by the registered patent. Attached (Attachment 1) is a copy of the abstract of Patent 2005204592.

·     The outlined process of utilising one or more reinjection bores separate from the processing bore and the utilisation of a number of sealing methods to form physical barriers is not new and has been used in the afore mentioned installation at the VRC in Melbourne to which the applicant has been privy to. Attachment 2 is copies of the reinjection bore designs at this site that were developed and installed in August 2013.

·     Furthermore, we advise that Mr Barber and his associate Mr Dawson undertook a comprehensive Due Diligence process on the Desaln8 company with a view to a proposed purchase 2013 over many months. In that time, they received a large volume of company files and details of specific projects, all of which would have provided technical detail on the installed operations at the time including the VRC Project which installed a multi bore process. This process was conducted under a legally binding Confidentiality Agreement.”

1. A key issue to initially address arising from these submissions is in relation to the inclusion of further documentation that is not in evidence.  The opponent presents copies of reinjection bore design drawings at a site in Melbourne that were developed and installed in August of 2013.  The Patents Regulations at Reg 5.23 provide that the Commissioner may consult relevant documents that are not filed in evidence.  It is established that for me to invoke Reg 5.23, I must decide that the documents are likely to change the outcome of the opposition in a significant way (see Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16). These new documents are clearly discussed as being relevant to a time after the priority date of 22 May 2013. They are further of no probative value as they are not accompanied by any explanatory evidence, nor do they clearly describe the features contained within the two design drawings. Finally, the lateness of filing of such information significantly weighs against my discretion to invoke Reg 5.23. As such, I do not consider it appropriate to invoke the provision.

1. I also note that from the opponent’s submissions and the nature of the conduct of the discussion at the hearing, the main issues before me to consider revolve around construction of the claims, and the issues of novelty, inventive step and entitlement, however I will address all grounds raised in the Statement of Grounds and Particulars.

2. Finally, I note that following the hearing, the applicant via correspondence from Chris Barber (Director of Crisalis International Pty Ltd), filed a document containing further submissions regarding the matters discussed at the hearing.  In formulating my decision, I found no need to refer to these submissions and hence, no need to invoke Reg 5.23 for their inclusion to thereby provide opportunity to the opponent to respond. 

The evidence

1. Evidence in support consists of the following:

·A first declaration by Barry Richards (Richards #1) dated 22 August 2018 with Annexes BR-1 to BR-15.

1. Evidence in answer consists of the following:

·A declaration by Dr Chris Barber (Barber) dated 22 November 2018 with Annex CB-1

·A declaration by Dr Gregory Bruce Davis (Davis) dated 20 November 2018 with Annex GBD-1

1. Evidence in reply consists of the following:

·A second declaration by Barry Richards (Richards #2) dated 22 July 2019 with Annexes BR-16 to BR-19

Specification

1. The invention described in the specification relates to the field of desalination of groundwater wherein water is extracted from subterranean aquifers for domestic, agricultural and industrial use.  Groundwater may be of poor quality, so it is often necessary to decontaminate an overly saline water supply before use.  Where aquifer water is treated and concentrate is reinjected back into boreholes, there are circumstances where increased concentrate return flow may occur.  The specification discusses that this may be where a feed zone of a borehole is of limited depth, and reinjection is similarly limited, or in situations of low hydraulic conductivity (low flow of water through sediment).

2. The specification then notes the need for alternative or improved methods for desalination of groundwater, in particular where groundwater pumping and reinjection of concentrates are spatially separated within the aquifer so as to limit effects of concentrate returns to the feed stream.  This return of concentrate is referred to as dipole flow which can be viewed as the concept of the flow of water from a source to a sink along a gradient.  A further desire is noted in the specification being the limiting of the introduction of air or oxygen into a reinjection borehole to reduce likelihood of undesirable chemical reactions between chemically reduced iron and manganese ions in the concentrate and dissolved oxygen.  These chemical reactions would result in formation of suspended flocs of colloidal materials that may clog parts of the bore system. 

3. Figures are reproduced below to depict the described invention.  Figure 1 depicts a production borehole 130 extending through an impermeable zone 120 to an aquifer 100.  Ground water is drawn into the production borehole through screened section 14.  Treatment of the water occurs within the borehole with permeate and concentrate being sent to the surface.  A reinjection borehole 140 (or plural reinjection boreholes) are located downstream of the production borehole (noting flow gradient 110).  Minimisation of dipole flow can be achieved via this downstream location and the positioning of the reinjection screen 42 at a lower portion of the aquifer than the production screen 14.  Minimisation of dipole flow is important for reducing the potential for mixing between concentrate and groundwater proximal the production borehole.

1. Figure 2 is a detailed schematic showing elements of a production borehole.  A casing 12 is adapted for ingress of water via a screened portion 14. The screened portion has perforations of around 1 to 0.7mm to reject sand particles.  A water treatment system 16 is located within the borehole wherein the water treatment system comprises a vessel 18 with membrane elements 20 arranged therein.  The vessel has an inlet 22 to receive groundwater and outlets 24 for permeate and 26 for concentrate.  A submersible pump 28 is provided in-situ.

2. Figures 3a and 3b represent different forms of reinjection boreholes.  Concentrate is reinjected into the borehole via conduit 38.  A sealing means 44 is provided within the borehole casing through which the concentrate conduit passes.  This adapts the borehole to limit air or oxygen ingress to the area where the concentrate is reinjected into the borehole. 

The claims

15.  The specification as amended on 13 November 2018 includes 17 claims, claims 1 and 14 being independent and reflecting a system and method respectively for desalination of groundwater.  Claim 1 is reproduced below. 

A system for desalination of groundwater, the system comprising:

a production borehole casing disposed, in use, in a production borehole

or well, the production borehole casing being adapted for ingress of groundwater

therein from at least a portion of the depth of the aquifer in which groundwater resides;

a water treatment system, the water treatment system being adapted to

treat groundwater ingress and thereby produce a permeate having a lower concentration of dissolved solids than the groundwater and a concentrate having a higher concentration of dissolved solids than the groundwater;

a permeate conduit configured to transport the permeate produced from the water treatment system to the surface for use above ground; and,

a concentrate conduit configured to transport the concentrate produced

from the water treatment system to one or more reinjection boreholes, the one or more reinjection boreholes being spaced apart from the production borehole at a distance from, and in a direction relative thereto, being adapted for ingress of groundwater and reinjection of concentrate into the aquifer through from at least a portion of the depth of the aquifer as desired to minimise dipole flow of the concentrate from the one or more reinjection boreholes to the production borehole;

wherein the one or more reinjection boreholes are provided, respectively, with a reinjection borehole casing and a seal positionable within the reinjection borehole to limit mixing and reaction between the concentrate and oxygenated water in the reinjection borehole.

The Person Skilled in the Art

16.  The specification is to be construed through the eyes of the person skilled in the art being a notionally non-inventive skilled worker aware of the common general knowledge in the relevant field.  In Root Quality v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:

“In Catnic Lord Diplock said (at 242) that skilled addressees are ‘those likely to have a practical interest in the subject matter of [the] invention’. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”

1. A skilled addressee in the present case will have a practical interest and experience in the design and installation of borehole desalination systems.  More particularly, the applicant submits that:

   “…the skilled addressee is a hydraulic engineer or hydrogeologist working in collaboration with desalination experts.”

2. Mr Richards provides evidence as the Managing Director of Mecrus Pty Ltd which operates in the water industry through Desaln8.  As a result of his position he has an awareness of and has from time to time, been involved in the activities of Desaln8 having full records of the company (Richards #1 at [1]-[3]). 

3. For the applicant, Dr Davis provides a declaration noting that he holds a Bachelor of Science and Doctor of Philosophy in Applied Mathematical Modelling of mine waste rock dumps (Davis at [2.2]).  He is currently a Research Program Director for CSIRO Land and Water with over 35 years’ experience as a research scientist having a deep understanding of pollution behaviour in groundwater and soils which has spanned disciplines of groundwater science (Davis at [2.3]).  It is clear that Dr Davis has extensive experience in the field of hydrology (Davis at [2.4]).  Further for the applicant, Dr Barber has over 35 years’ experience in research and consultancy in groundwater quality issues and is the named inventor of the application that is the subject of the present proceedings (Barber at [1], [5]).  He is the Director and Principle Consultant of Crisalis International Pty Ltd (the applicant), a company that specialises in groundwater resource management and in situ ground water treatment technologies for provision of potable water in saline and arid areas (Barber at [2]).

4. The evidence shows both Dr Davis and Dr Barber have relevant experience in the field of the invention.  This is not so clear regarding Mr Richards as the evidence does not discuss particular technical training and experience.  I will take this into account if necessary when considering the evidence before me.  I also note that Dr Barber and Mr Richards are respective Directors of the applicant and the parent company of opponent, while Dr Davis is somewhat independent, however being involved in a history of collaborative research with Dr Barber (Annex 19 of Richards #2).  I see no substantive basis to consider any of the evidence is to be weighted a particular way due to a lack of independence.        

The Common General Knowledge

21.  In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited(1980) 144 CLR 253 at page 292, Aickin J. stated:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

22.  The evidence in support does not seek to lay out an account of the common general knowledge at the priority date.  An account of common general knowledge is provided by Dr Davis in his declaration.  From that declaration, as a starting point I am satisfied that the following can be considered as relevant part of the common general knowledge:

·     Groundwater is found below the earth’s surface in pores and crevasses of soil and rocks wherein an aquifer is a layer of porous substrate that contains and transmits groundwater (Davis at [3.4])

·     Characteristics of aquifers vary with geology and structure of the substrate and topography in which they occur (Davis at [3.5])

·     Bores and wells are used to extract groundwater from aquifers.  A well typically consists of a vertical bore hole with a diameter 100 to 600mm, within which an extraction pipe is placed that has a perforated section (known as a filter or screen) and a sand trap, surround by filter gravel (Davis at [3.6])

·     A pump is placed in the pumping well, which brings the water to a height at which it can be drained (Davis at [3.6])

·     The groundwater may require treatment before use, to remove or convert pollutants into harmless products or remove microorganisms (Davis at [3.7])

·     Typically, treatment of groundwater is performed on the surface at treatment plants and storage facilities.  Sometimes it is possible to treat groundwater in situ, using injectants to break down contaminants (Davis at [3.8])

·     Large volumes of Australian groundwater have a total dissolved solids (TDS) content above a suitable threshold for a variety of uses.  It is common to pump groundwater and desalinate the groundwater via treatment plants (e.g. reverse osmosis) above ground.  Resulting concentrate is often stored above ground in lagoons or evaporation ponds or if the desalination plant is located near the sea, the concentrate might be discharged into the ocean (Davis at [3.9])

·     In situ groundwater desalination is not at all common, partly because in situ treatments are mainly confined to treating pollutants.  Dr Davis is only aware of the activities of Desalin8 Pty Ltd in respect of in situ ground water desalination (Davis at [3.10])

·     Inflatable packers are a type of seal which are used as valves to restrict or allow flow of feedwater from different portions of the well.  Typically packers are positioned to isolate particular portions of the screen, which may be 20 m or more in length from the top to the bottom, for the purpose of obtaining a certain water quality or specific response from the bore over a time period (Davis at [5.13], [6.10])

·     Before drilling, it is common practice to gather information about the groundwater including: salinity; nature/concentration of dissolved metals and pollutants; size and type of aquifer including layers and degree of heterogeneity, permeability and proximity to pumping wells or sources of contamination (Davis at [3.15])

·     There are software packages to model groundwater flow and transport (Davis at [4.25])

Section 40: Claim Construction/Clarity

23.  I will first seek to construe claim 1 before addressing any specific clarity issues raised in the Statement of Grounds and Particulars.  While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:

"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."

1. I note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). Additionally, Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) IPR 331 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) notes:

   “Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”

2. With reference to claim 1, the invention clearly involves at least one production borehole and one reinjection borehole.  A casing is contained in the production borehole for ingress of groundwater from a particular depth of an aquifer.  A water treatment system treats this ingress of groundwater to produce a permeate with lower concentration of dissolved solids and a concentrate with higher concentration of dissolved solids than groundwater.  Separate conduits then transport permeate and concentrate.  Permeate is transported to the surface for use above ground while concentrate is transferred by a conduit from the water treatment system to one or more reinjection boreholes.  While not determinative of any aspect of this decision, it is clear at this point that the water treatment system need not necessarily be situated within a borehole (in situ).  All that is required from the claim is that permeate is transported to the surface above a borehole for use above ground, via a conduit.

26.  Reinjection boreholes are spaced apart from the production borehole at a distance and a direction such that reinjection of concentrate into the groundwater aquifer can occur so as to minimise dipole flow of the concentrate from one or more reinjection boreholes to the production borehole.  Each reinjection borehole is provided within its casing with a seal positionable within the reinjection borehole to limit mixing and reaction between the concentrate and oxygenated water in the reinjection borehole.   These two achieved effects are key to the present invention and the present opposition.  I will now address these specifically.

Minimising dipole flow

27.  As I understand it, dipole flow is generally the phenomenon of flow from a “source to a sink”.  For example, if water is being injected into an aquifer there exists a source of water flow which has the potential to be captured by a production borehole that is accessing this same aquifer, much like the relationship between a tap and a drain to put it colloquially.  In other words, the source and sink act as two “poles” between which water can flow.  Dr Davis in his declaration at [4.10] and [4.11] points to this concept in the context of the invention:

“My understanding is that the Specification describes an invention which separates the production and reinjection boreholes spatially in plan view within the aquifer, rather than vertically as per the DeSalin8 system, so as to limit the effects of concentrate returns into the feed stream…

I understand the concept of minimising dipole flow to mean minimising the recapture of concentrate in the groundwater withdrawn from the production borehole.”

28.  I accept from the evidence of Dr Davis that the minimisation of dipole flow involves some form of predictive modelling/understanding relating to the hydraulic processes associated with flow restrictions within an aquifer and relative densities of reinjected concentrate and groundwater (Davis at [4.16]).  Dr Davis also notes that he understands “dipole flow” to refer to the movement of a stream or plume having a high salt or contaminant content towards a production borehole where a stream is continuously extracted (Davis at [4.20]).

29.  Furthermore, with reference to the dictionary definition of “minimisation” I note that the claim requires the reduction of dipole flow to the smallest possible amount, and not merely the reduction of dipole flow to a degree by having a reinjection borehole in a separate location.  Here the Macquarie Dictionary (The Macquarie Dictionary, 7^th ed. 2017, relevantly defines the word “minimise” as follows:

“… to reduce to the smallest possible amount or degree.”

30.  There is no evidence from the opponent that would contradict the above understanding of the minimisation of dipole flow. 

Seal to limit mixing between concentrate and oxygenated water

31.  Figures 3a and 3b provide a good depiction of the function of a seal in a reinjection borehole.  As noted above, a sealing means 44 is provided within the borehole casing through which the concentrate conduit passes.  This adapts the borehole to limit air or oxygen ingress to the area where the concentrate is reinjected into the borehole.  As noted by Dr Davis at [4.14] – [4.15] of his declaration:

“[A] production borehole casing may include a screened portion to prevent large solid particulates entering the production borehole casing while still allowing ingress of groundwater.  One or more seals may be provided above or below the screened portion to inhibit mixing of water above and below the seal.  The purpose of the seals is to prevent oxygen or oxygenated water from mixing with the groundwater.  Oxygen can be a problem because it can cause iron oxide formation or stimulate growth of aerobic microorganisms which can form biofilms and slime, thereby fouling the treatment elements of the desalination system, blocking the screens, leading to ongoing maintenance issues”

“The reinjection borehole casing may also be provided with similar screened portions and seals for the same reasons as described above.”

32.  Again, I see no evidence from the opponent to depart from this understanding of the use and function of a seal to limit mixing between concentrate and oxygenated water.

33.  There are clarity issues raised in the Statement of Grounds and Particulars.  There it is said that claim 1 defines that one or more reinjection boreholes are “spaced apart from the production borehole at a distance from, and in a direction relative thereto” and that this term is unclear.  I see no lack of clarity in this phrase.  A production borehole exists in a certain location and one or more reinjection boreholes are located a certain distance and direction in relation to the production borehole, with the result being minimised dipole flow.  It is also said that claim 2 defines a water treatment system that may be disposed in situ in the production borehole casing, noting that it is unclear whether the water treatment system is required to be located in situ or merely that it be capable of being located in situ.  Taking a plain meaning of the word “may” I consider that the claim merely limits to the possibility of disposing the water treatment system in-situ within the production borehole casing. 

34.  Therefore, I find the claims are clear.

Novelty

35.  For the purposes of subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information.  This prior art information may include a publicly available use of the invention. 

36.  It is well established that the general test for anticipation is the reverse infringement test.  The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; 137 CLR 228 at [235]:

“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”

37.  This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; 16 IPR 545 at [549]). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]). As per the General Tire case: “A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”.

38.  I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention.  In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:

“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”

39.  The opponent appears to argue that claims lack novelty in view of:

·     AU 2005204592 published 28 July 2005

·     Groundwater desalination systems at Flemington Racecourse by Desaln8 Pty Ltd

·     US 20120292012 published 22 November 2012

·     A proposed installation of a seawater reverse osmosis desalination plant at Constance Belle Mare Plage Hotel – Environmental impact assessment report (published April 2012)

AU 2005204592

40.  This document is an Australian granted patent in the name of the opponent Desaln8.  The invention described in this document was invented by the afore mentioned Dr Barber, the original applicant being Crisalis International Pty Ltd with an assignment being made to Desaln8 in 2007.  The invention described in this document is well summarised in its abstract:

“An in-situ desalination apparatus comprising a reverse osmosis unit (15) having a reverse osmosis medium, the reverse osmosis unit in use to be located within a body of water under ambient bio-physico-chemical conditions often different from those at the surface,
the unit having an inlet (17) opening to one side of the reverse osmosis medium, in use the inlet to be located below the upper surface of a body of water, the unit having a concentrate outlet (25) opening to the one side of the reverse osmosis medium and opening into the exterior of the unit at a position spaced below the inlet to return concentrate into the water body, the unit having a permeate outlet (27) opening to the other side of the reverse osmosis medium, the permeate outlet communicating with a delivery line extending from the body of water, a pump (23) between body of water and the reverse osmosis unit and adapted to pressurise the water located at the one side of the reverse osmosis medium.”

41.  Importantly, the apparatus described in this document is designed to operate entirely within a single borehole.  Water is extracted from the upper portion of this single borehole and desalinated in-situ (in the borehole) to produce a permeate and a concentrate.  The permeate is transported to the surface and the concentrate is reinjected into a lower part of the same borehole.  Hence the citation does not teach any concept of reinjection of concentrate into separate boreholes as required by the claims.  With reference to the first dot point of the opponent’s submissions above at paragraph [4], while some aspects of the in-situ apparatus of the relevant document may be used in implementation of the claimed invention, there is no disclosure within the document of all of the features of the claimed invention, particularly no disclosure of reinjection boreholes for concentrates, minimising dipole flow between production and reinjection boreholes, or separating oxygenated water and concentrate in a separate reinjection borehole using a seal as claimed.  Therefore, the claims are novel in view of this document.

Groundwater desalination systems at Flemington Racecourse

42.  Regarding systems in use at Flemington Racecourse prior to the priority date the opponent submits that:

“The outlined process of utilising one or more reinjection bores separate from the processing bore and the utilisation of a number of sealing methods to form physical barriers is not new and has been used in the afore mentioned installation at the VRC in Melbourne...”

43.  Two in-situ desalination systems were developed and installed at Flemington Racecourse by Desaln8, engaged by the VRC, prior to the priority date.  Both of these systems involved reinjection bores, the details of which were provided in published reports before the priority date in the form of an Annual Report in 2012 (Annex 2 of Richards #1) and a report to the Victorian Environmental Protection Agency (Annex 3 of Richards #1).  There is no dispute between the parties in relation to the public availability of this documentary information disclosing related systems, nor the prior use of the installations themselves.

44.  It is common ground between the parties that two boreholes were constructed that implemented technology of the AU 2005204592 patent to some degree (Richards #1 at [6]-[9], Davis [7.2]).  Problems were encountered with the installation of the in-situ systems in a single borehole relating to high levels of silt being generated within the groundwater (Richards #1 at [10], Davis at [7.2]).  Following this, the opponent adopted two dual borehole groundwater desalination systems.  This approach was to provide a second borehole so that concentrate could be reinjected into the ground, thereby avoiding problems of concentrate reinjection disturbing the silt near desalination systems operating via a single borehole.   In this regard there is no doubt that two installations at Flemington Racecourse involved the use of reinjection boreholes.  What remains in dispute is whether there is a disclosure of the key features relating to the minimisation of dipole flow, and the presence of a seal in the reinjection borehole to limit mixing between concentrate and oxygenated water. 

45.  In relation to the first of these dual borehole installations the applicant submits:

“The first of the dual borehole groundwater desalination systems (ISD2) installed at Flemington Racecourse in 2010 included an extraction bore (‘new’ ISD2) with a casing and stainless steel screens, a submersible bore pump located in the lower region of the extraction borehole above the screen, and a stainless steel membrane vessel containing four reverse osmosis membranes located in a higher region of the borehole, above the pump (Richards #1, [17]-[18]). The membrane vessel was hung from the bore cap on top of the ‘new’ ISD2 borehole by two stainless steel outlet pipes and the pump in turn hung from the membrane vessel by the pipe connecting the pump to the membrane vessel (Richards #1, [19]). The concentrate was pumped via an underground polypropylene pipeline to a pre-existing GHD bore which was separated from the ISD2 borehole by about 100m (Richards #1, [16]) for reinjection into the aquifer (Richards #1, [18], Annexure 2 Figure 1: Flemington Race Course – Bore location plan).”

46.  Importantly regarding this first installation, the evidence does not establish that the positioning of the GHD bore was arranged in any manner to minimise dipole flow.  As pointed out by the applicant, the opponent’s evidence indicates that borehole GHD was located upstream of ISD2 (Figure 1 of Annexure 3 of Richards #1).  The GHD bore being pre-existing and upstream demonstrates no teaching of the minimisation of dipole flow in accordance with the construction of the feature discussed above.  There is also no disclosure of the use of seals in the GHD reinjection borehole in the manner described in the claim.  Mr Richards responds in his evidence in reply by noting at [7]:

“ISD2 involved a concentrate conduit connected to a sealed head works of the GHD reinjection bore. From the sealed headworks, the concentrate delivered to the reinjection bore was transported to a depth of approximately 25 to 30 meters below ground level where it was released into the aquifer. The combination of the well head seal and the depth to which the concentrate was transported within the GHD reinjection bore casing meant that mixing and reaction between the concentrate and oxygenated water in the reinjection borehole was minimised.”

47.  Importantly this statement does not address the failure of the installation as publicly disclosed, to embody the feature of minimised dipole flow.  Furthermore, while the well head may be sealed at its headworks, I do not see this amounting to a disclosure of the separation of oxygenated water from concentrate within the reinjection borehole using a sealing means as required by the claims.

48.  In relation to the second of the dual borehole installations the opponent describes the implementation at [26] of Richards #1:

“The extracted feed water from the lower aquifer travels from the first bore (ASR)

underground inside a 25mm polypropylene pipe to the reinjection bore. The reinjection bore has a PVC casing which is of 250mm diameter for approximately the first 10m of its depth and then reduces to a 150mm casing for the remainder of the bore depth. This bore was originally intended to be operated as a single bore ISD system and the reduction in bore casing diameter had a functional purpose in the original design. It had no purpose in the two bore solution as implemented. A stainless-steel pressure vessel containing 4 No. (sic) 200mm Reverse Osmosis Membranes was suspended from the bore cap by a 25mm stainless steel pipe which received the water pumped from the extraction bore. The feed water was passed through a stainless steel sealed cap on the reinjection bore. The feed water was pumped into the membrane vessel and processed through the Reverse Osmosis membranes. Processed water (permeate) was recovered to the top of the bore and pumped to holding tanks. The water remaining from processing (concentrate) travelled out of the membrane vessel via a 25mm diameter pipe which extended down deep into the bore passing through a sealing packer and terminating above a slotted screen in the PVC bore casing which allowed the concentrate to discharge back into the aquifer.”

49.  The applicant submits:

“Firstly, the desalination system is located in the reinjection bore not the extraction borehole. Consequently, the concentrate does not have to be transported to the reinjection borehole by a concentrate conduit because the concentrate is produced in the reinjection borehole. Secondly, the positioning of the extraction borehole (pre-existing ASR) and reinjection boreholes (‘new’ ISD1) relative to one another to minimise dipole flow has not been considered (Davis [7.5]-[7.6]). As discussed in paragraphs [157]-[159] of the Applicant’s submissions, with respect to groundwater flow, New ISD1 (reinjection bore) is upstream of ASR and therefore there will be dipole flow of concentrate injected into ISD1 towards ASR (production bore). Further the description of ISD1 is silent in respect of the configuring ASR and ‘new’ ISD1 to prevent ingress of oxygen (Davis [7.6]).”

50.  I agree with the applicant that there is no disclosure of minimisation of dipole flow in this installation and that the concentrate does not travel from a water treatment system to a reinjection borehole via a conduit (instead concentrate is produced in the reinjection borehole).  There is further no clear and unmistakable direction to the prevention of ingress of oxygen in the manner defined in the claims whereby a seal positioned in the borehole separates oxygenated water from concentrate.  The evidence in support in Richards #1 at [26] and reply at Richards #2 at [8] points to the passing of concentrate through a sealing packer before discharge deep in the borehole.  However, it is not clear to me that this seal limited reaction in the manner claimed because the disclosure does not teach the presence of oxygenated water in the reinjection borehole.  Instead there is a sealed cap at what appears to be the top of the borehole which would seem to prevent oxygen from entering. Therefore, I consider the claims are novel in view of these disclosed installations, considering the public prior use of the installations alone, or either of the annexed documents.

US 20120292012

51.  This document provides a desalination subsurface feedwater supply and brine disposal system.  As per the abstract of the document, water is supplied to a desalination plant from a subsurface slant or horizontally drilled well.  Figure 25 shows a reinjection slant well 3a, spaced apart from the production slant well 3. 

52.  Importantly with respect to this figure, the document is entirely silent regarding the nature of the positioning of the well 3a with respect to well 3.  To this end, there is no clear and unmistakable direction to the positioning of a reinjection borehole to minimise dipole flow.

53.  Regarding the construction of a seal within a reinjection borehole to limit mixing as expressed in the claims there is a relevant disclosure at [27] of this document that notes:

“In one embodiment, construction of the slant or HDD well would be the same regardless of its use (extraction well or injection well) and would employ the same method of construction and placement of an artificial filter packer.” 

54.  The applicant points to discussion in Davis at [5.13] where he notes:

“D1 discloses pneumatic (aka inflatable) packers which can be regarded as seals. In D1, the pneumatic packers are used as valves to restrict or allow flow of feedwater from different portions of the slant well along its length. This is a conventional way of using packers. Typically, packers are positioned to isolate particular portions of the screen for the purpose of obtaining a certain water quality or specific response from the bore over a time period. For example, many screens may be 20 m or more in length from the top to the bottom. One or more screens (sic) may be placed at specified intervals along the screen so that water may be pumped from an isolated interval in the borehole rather than the whole 20 m screen. This is consistent with the purpose of the packers in D1 (see paragraph [0076]). From my understanding the slant well can have multiple screened intervals and a dual-packer assembly for providing greater flexibility in feedwater production to minimise cyclical variations in salinity. The packers are not used in D1 to prevent mixing between aerated water or air with water in the borehole and thereby prevent fouling.”

55.  I accept the evidence of Dr Davis.  The opponent’s evidence in reply points to paragraph [27] of the document but does not further address these points raised by the applicant’s expert.  There is no discussion of using the packers of the borehole construction of the relevant document to prevent mixing of concentrate and oxygenated water in a separate reinjection borehole.  I find the claims novel in view of this document.

Constance Belle Mare Plage Hotel Publication

56.  As noted by the opponent in evidence in support, this publication discloses (Richards #1 at [68]-[72]) a reverse osmosis desalination plant that takes seawater to a proposed desalination plant from an extraction borehole lined with a PVC casing having a slotted screen between 14m and 26m of its depth.  The feed water is transferred to a desalination plant which uses reverse osmosis membranes to produce permeate as potable water, along with a diluted concentrate.  The diluted concentrate is injected down an inland borehole drilled to the same aquifer as the feed water intake bore.  The applicant argues that the following features are not disclosed:

·     A concentrate conduit configured to transport the concentrate produced from the water treatment system to one or more reinjection boreholes

·     The one or more reinjection boreholes being spaced apart from the production borehole at a distance from, and in a direction relative thereto, to minimise dipole flow from the one or more reinjection boreholes to the production borehole

·     The provision of a seal positionable within the reinjection borehole to limit mixing and reaction between the concentrate and oxygenated water in the reinjection borehole

57.  Regarding the first dot point, the applicant argues:

“D2 does not describe discharging the concentrate into BH2. Rather, D2 teaches that the concentrate (or brine) is first diluted to a salinity concentration (33900 mg/L, see 3.2.4.1 and 5.2.4 D2) which is similar to the original seawater extracted from BH1 before the diluted concentrate is discharged through BH2. Figure 2 merely depicts a conduit configured to transport diluted concentrate to BH2.”

58.  The document discloses the salinity of the intake water to be 33700mg/l (Table 2).  While similar, this is of a lower concentration than the reinjected diluted brine.  As such, a concentrate of higher concentration than groundwater is transported from a water treatment system via a conduit to a reinjection borehole.  I consider this first feature is disclosed.  

59.  Regarding the second dot point the opponent points to the document at page 5-6 where it is stated that:

“Since the brine is heavier than seawater, best engineering practices require that the reinjection well is deeper than the intake well and located about 30m away one from the other. In the present case, the rejection is 15m deeper than the intake and the distance between the two boreholes is of 85m. The use of this design would guarantee that there is no influence from one borehole to the other.”

60.  In response, the applicant points to the evidence of Dr Davis at [5.17] of his declaration where he states that the salinity concentrations of extracted water and diluted water are so similar, that there would not be any significant observable dipole flow from reinjection borehole to production borehole, regardless of locations.  He adds that the location of the reinjection borehole appears to be to avoid marine environment impact and that there is no clear explanation of the determination and purpose of the spacing between the boreholes nor any associated modelling. 

61.  Dipole flow, as construed earlier in the decision, can be viewed as the degree of flow of injected concentrate from a reinjection borehole to a production borehole.  In other words, movement of a stream or plume of higher concentration of contaminant from reinjection to production. The document clearly discusses locating production and reinjection wells at certain locations such that would guarantee no influence from one borehole to the other.  In this regard, the citation provides a configuration involving a positional location of a reinjection borehole, that I consider to inherently provide a minimisation of flow of concentrate from reinjection to production boreholes as a result of selected spatial separation.  I consider that the relevant feature is disclosed. 

62.  Regarding the third dot point the applicant submits that there is no discussion of the problems of mixing of oxygenated water or air with water in the reinjection borehole such as to construct a reinjection borehole as claimed, including a seal positionable within the reinjection borehole to limit mixing and reaction between the concentrate and the oxygenated water in the reinjection borehole.  The dilution of brine before reinjection would appear to teach away from relevant problem, and it appears that the document advocates for mixing of water in the borehole with diluted brine to assist in accelerated dilution (p 5-6).  The document does not provide a discussion of the construction of the reinjection borehole regarding any sealing mechanisms.  I agree that there is no disclosure of this feature. 

63.  Therefore, I find all claims are novel.

Inventive Step  

64.  The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:

“The test 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, whether they be the steps of the inventor or not.”

65.  The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]-[53]; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:

“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”

66.  The usual approach to determining inventive step is the problem-solution approach.  Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.

67.  In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]- [203] as follows:

“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s ‘starting point’ such as might be gleaned from a reading of the complete specification as a whole.”

68.  In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).

The Problem

69.  The specification discusses problems associated with known desalination systems and particularly regarding the use of single borehole systems for desalination of groundwater such as that described in the patent AU 2005204592 discussed above under Novelty.  Such an in-situ system, as pointed out by the applicant, relies on two factors to limit upward flow of reinjected concentrate towards the upper portion of the borehole where extraction occurs.  These include the natural stratification of the aquifer which limits vertical hydraulic conductivity and the density of concentrate leading to sinking in the aquifer under gravity.  Where the feed zone of the aquifer is of limited depth with similar limitations in the reinjection zone, there may be an undesirable amount of concentrate return flow.  Furthermore, when groundwater is mixed with oxygenated water, dissolved iron and other dissolved metals in the ground water may oxidise and form metal hydroxides which can foul and block the screen of an in-situ system, and dormant aerobic bacteria may also be stimulated leading to biofouling of screens.  Following this the applicant identifies the problem to be solved as:

“…1) how to prevent recapture of the concentrate in the feedzone of the extraction borehole in an aquifer of limited depth or of low hydraulic conductivity and 2) how to prevent ingress of oxygen or inhibit mixing of oxygenated water with groundwater in the boreholes used in the system.”

70.  I am satisfied with this formulation of the problem. 

Prior Art Base

71.  In addition to an attack as to a lack of inventive step on the basis of common general knowledge alone, the opponent presses the information raised and addressed above with respect to novelty, alone or in combination with each other, as the basis for a lack of inventive step.

72. The common general knowledge before me includes the information listed above at [18]. There is no evidence before me that would establish any of the documentary evidence discussed above as common general knowledge. I note in the evidence in reply, the opponent raises a document to address the feature relating to the minimisation of dipole flow. This document is not raised in evidence in support or the Statement of Grounds and Particulars. It is a research paper entitled “Impact of desalination plants brine injection wells on coastal aquifers” published in 2008 (Annex 17 of Richards #2).  I do not consider this single document can establish that it was common general knowledge to conduct modelling or planning regarding production and reinjection borehole locations to minimise dipole flow within an aquifer.  At best, I consider this document is consistent with the evidence of the applicant regarding common general knowledge which identifies that there exist well-known software packages to model groundwater flow and transport.  The incorporation of this document is not likely to change the outcome of the opposition in a significant way so I need not further consider whether it is properly in reply or in need of consideration under Regulation 5.23.

Was the invention obvious?

Common General Knowledge

73.  Firstly, it does not appear routine on the evidence of common general knowledge before me, particularly in situations where there is low hydraulic conductivity or limited depth, to reinject concentrate back into an aquifer.  More likely would appear to be discharge into a surface lagoon, evaporation pond or the ocean.  Furthermore, having a separate reinjection borehole positioned intentionally for disposal of concentrate back into the same aquifer thereby minimising flow between reinjection and production boreholes has not been established as a well-known step.  The opponent does not provide evidence to satisfy me that such a step is routine.    

74.  Mr Richards in evidence in reply at [14] states:

“The alleged description amounts to a direction to perform modelling based on typical aquifer characteristics using well known modelling software. It is self-evident that the distance and direction of separation between the production and reinjection boreholes in such a system will have an effect on dipole flow. It is also self-evident that modelling can be performed to optimise the distance and direction of separation between the production and reinjection boreholes to minimise dipole flow.”

Mr Richards appears to assert that it is self-evident to perform the necessary steps to minimise dipole flow however, absent evidence as to the common general knowledge in regards to the use of reinjection boreholes, I consider the assertion to be made with a degree of hindsight.  The evidence does not establish that it was routine to reinject concentrate into the same aquifer from which it was extracted.  With this in mind, I am not satisfied that the claimed minimisation of dipole flow would have been obvious. 

75.  Furthermore, it does not appear routine to include a seal, positionable within the reinjection borehole to limit mixing and reaction between the concentrate and oxygenated water in the reinjection borehole.  In his evidence in support in Richards #1 at [57], Mr Richards refers to the feature defined by claim 12 prior to amendment as being a matter of routine.  He notes that:

“Claim 12 of AU’193 defines the system of claim 11 in which the one or more reinjection boreholes are provided, respectively, with a seal positionable within the reinjection borehole to limit air or dissolved oxygen ingress into the one or more reinjection boreholes.  The ISDs as originally installed at Flemington racecourse included positionable seals.  I consider that seals as described in claim 12 of AU’193 to be a matter of routine”.

76.  The originally installed ISDs operated as single bore systems (Richards #1 at [6]-[8]).  The currently claimed feature relates to the limitation of mixing using a seal, of oxygenated water with concentrate within a separate reinjection borehole.  The positionable seals of the originally installed ISDs have not been clearly discussed in the evidence as limiting oxygen ingress into concentrate in this manner, instead only separating extracted groundwater from concentrate in the single borehole.  The applicant also makes note of the evidence of Dr Davis at [6.10]-[6.11] of his declaration:

“Claims 11 and 12 define related subject material in respect of the reinjection borehole.  Seals are well known and there are many different types, the most well known being inflatable packers.  They are used in production boreholes to partition them into smaller intervals to obtain a particular response from the borehole, either in terms of water flow or pumped water quality…

…preventing mixing of air or oxygenated water with water in the borehole is not often acknowledged as a problem – it is not obvious to think in those terms.  Therefore, the idea of using seals or inflatable packers to prevent mixing of air or oxygenated water is an original solution in my view.  The problem of ingress of air or oxygenated water is not one that is normally considered or dealt with.”

77.  With reference to the evidence of Mr Richards, Dr Davis also notes at [7.10] of his declaration when discussing seals such as those contained within the ISD boreholes:

“I disagree that using seals to prevent oxygen ingress into the borehole is a matter of routine.”

78.  Considering the evidence, on balance I favour that of Dr Davis, particularly given his noted experience in the art.  I do not see that the evidence establishes the particular claimed function of a single seal as limiting mixing to be routine in a reinjection borehole.  The common function of seals appears more likely for controlling inflow of groundwater in a production borehole, without regard to oxygen ingress.  I note that the opponent’s comments in evidence were made after a reading of the claims so there is the chance they are affected by hindsight.  As a result the evidence does not satisfy me that the claimed feature is routine.   

79.  As such I find the claims inventive in view of common general knowledge alone.

AU 2005204592

80.  This document is directed towards a single borehole solution whereby it contemplates discharge of concentrate into surface ecosystems, the ocean or a salt lake.  For reasons similar to those discussed above regarding common general knowledge, the claims are inventive in view of this document.

Groundwater desalination systems at Flemington Racecourse

81.  As was the case with document AU 2005204592, the public disclosure of the installations at Flemington Racecourse do not disclose minimisation of dipole flow in the manner claimed.  I do note that there is disclosure of reinjection of concentrate into the aquifer, but such reinjection is performed upstream of the production boreholes, hence there is no minimisation of dipole flow disclosed.  Faced with the problem of preventing recapture of the concentrate in the feedzone of the extraction borehole in an aquifer having particular limitations, the person skilled in the art is aware of modelling packages for groundwater systems.  However, the use of such modelling packages to position a reinjection borehole to minimise dipole flow has not been established as routine.  While the opponent appears to assert self-evident obviousness, in light of that which has been established as routine I consider this to be affected by a degree of hindsight that would prevent me from finding the relevant feature as obvious.  Furthermore, the relevant disclosures do not clearly and unmistakably disclose a seal positionable within the reinjection borehole in the manner claimed, nor does the evidence demonstrate this as a matter of routine. 

82.  Similar to the findings above, in seeking to solve the problems associated with the identified aquifer limitations and fouling, the person skilled in the art would not be led by routine steps to the claimed solution.

US 20120292012

83.  This document fails to disclose the same features as the information already discussed for inventive step with respect to the Flemington Racecourse installations.  For the same reasons I find the claims inventive in view of this document.

Constance Belle Mare Plage Hotel Publication

84.  I consider that this document discloses all the features of the independent claims except for the seal positionable within the reinjection borehole to limit mixing and reaction between the concentrate and oxygenated water in the reinjection borehole.  The evidence does not satisfy me that this feature is routine in the art.  I find the claims inventive in view of this document.

85.  In conclusion, I find that the claims are inventive in view of the prior art information raised by the opponent.  Any combination of these documents does not overcome the deficiencies of the evidence when considering information individually.  I further note that the opponent has not raised an argument as to any particular combination.  Hence, I find the ground of inventive step fails. 

Entitlement

86.  In the Statement of Grounds and Particulars, the opponent makes reference to the ISD installations at Flemington Racecourse that were discussed earlier under the grounds of novelty and inventive step, asserting that these installations were designed by employees of Desaln8 Pty Ltd.  The opponent notes that the alleged inventor of the present application (Dr Barber) was a director of Desaln8 up until 7 June 2010 and was aware of the details of these installations, adding that Dr Barber was also aware of the use of a second borehole to reinject groundwater concentrate into the aquifer.  Accompanying these particulars are the submissions made by the opponent at the hearing where Mr Richards argued:

“Mr Barber and his associate Mr Dawson undertook a comprehensive Due Diligence process on the Desaln8 company with a view to a proposed purchase 2013 over many months. In that time, they received a large volume of company files and details of specific projects, all of which would have provided technical detail on the installed operations at the time including the VRC Project which installed a multi bore process. This process was conducted under a legally binding Confidentiality Agreement.”

87.  On these bases, the opponent appears to allege that the nominated person (Crisalis International Pty Ltd) is not entitled to grant of a patent as the named inventor was not the inventor and/or the inventor was at the time of invention, an employee of Desaln8 Pty Ltd.  In addressing this ground it is clear to me that I must approach the identification of inventorship and subsequent entitlement via the guidance of the Full Bench of the Federal Court in University of Western Australia v Gray [2009] FCAFC 116 at [253], whereby it was accepted that entitlement is assessed by considering three matters:

i.Identify the “inventive concept” of the invention as defined by the claims;

ii.Determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from verification and reduction into practice; and

iii.Determine how any contractual or fiduciary relationships give rise to proprietary rights in the invention.

The inventive concept

88.   The applicant in submissions points to Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 at [61] to identify guidance in determining the inventive concept.

“The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claim. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee’s description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that give rise to it. There may be only one invention, but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements. It may be that different persons contributed to that combination.”

89.  On a reading of the specification I agree with the applicant that the inventive concept lies in a groundwater desalination system which uses reinjection boreholes separate from a production borehole, having the following features that are directed to solving the problems of recapture and fouling:

·     A production borehole in an aquifer for withdrawal of groundwater configured with an in situ desalination treatment system and one or more reinjection boreholes spaced apart from the production borehole at a distance and a direction relative to the production borehole to minimise dipole flow of concentrate from the reinjection borehole to the production borehole; and

·     One or more seals provided above or below the screened portion in the production borehole and the reinjection boreholes to inhibit mixing of water above and below the seal so as to prevent oxygen or oxygenated water from mixing with the groundwater.

90.  I note that the opponent has not identified what they consider the inventive concept to be.  Dr Davis at [4.17] of his declaration considers the innovation comprises configuring components to achieve a desalination system which can continuously produce a stream of desalinated water from groundwater over an extended period of time without subsequently recapturing concentrate produced by the desalination process, and to ensure continuous operation by minimising fouling due to oxygen ingress.

The person responsible for the inventive concept

91.  As I have already mentioned in this decision, there is no dispute as to the prior disclosed installation of both single bore in-situ treatment systems the subject of Australian patent AU 2005204592, and dual bore systems involving production and reinjection bores that incorporated elements of the ‘592 patent.  Problems were encountered with the single bore systems involving the disturbing of silt that led to the opponent solving this by relocating concentrate into another pre-existing bore, thus the arrangement of dual bore systems.  However, it is clear from the discussion above regarding novelty and inventive step that the dual bore systems described and used at the Flemington Racecourse prior to the priority date did not teach features of the inventive concept.  Furthermore, as noted by the applicant, the evidence does not demonstrate that these dual bore systems incorporated the use of the seals within the boreholes to separate oxygenated water from groundwater in the borehole.  The applicant notes:

“…the main problem experienced with the Opponent’s ISD was that the reinjection of concentrate into a lower section of the same borehole would disturb silt and cause high levels of silt within the groundwater (Richards #1 [11]). The 2012 AGT Report (Richards, Annexure 2) also mentions the incidence of iron fouling in the new ISD2 bore (i.e. dual bore ISD) as a result of contamination with iron-bacteria. The Opponent has not provided any evidence that this latter problem was addressed by any means.  In fact, the 2012 AGT Report subsequently states that operation of the ISD2 bore was suspended because the GHD bore failed.”

92.  There are some points of note that are valuable to address particularly in regard to the feature of injecting concentrate from in situ production bores into reinjection bores, and locating the boreholes to minimise dipole flow.  In this regard, provided by the opponent is an email from an employee of Desaln8 Pty Ltd (Mr Trevor Ahale) dated 28 October 2009 to Dr Barber stating the opponent’s intention to relocate the concentrate into another bore (Richards #1 at [11], Annex 5).  In this email, Mr Ahale writes to Dr Barber:

“…if it makes mud then we abandon the intention to put concentrate into that bore and consider relocating the concentrate (not the unit) into another bore… downstream and away from the existing ISD1… a distance and location to be determined by the science.”

93.  In response, the applicant argues:

“The email is nothing more than a disclosure of a possible solution to the silting problem to Dr Barber, who was a director of the Opponent at the time but not involved directly with the Flemington site work. It is not evidence that the idea for relocating the concentrate into another bore was conceived by Ahale. Indeed, the Applicant has adduced evidence that Dr Barber and Mr Dawson had previously discussed the discharge of concentrate into a separate borehole as a solution to the problem of pressurisation of the lower aquifer (Barber [33]) and they had additionally discussed the problem of silt mobilisation with Ahale (Barber [32]).  The use of reinjection bores for concentrates disposal was a solution used by commercial operators of desalination plants, albeit in an uncontrolled manner (Barber [33]). There is no evidence that the GHD borehole or any other borehole was selected because it was spaced at a distance from, and in a direction relative to, existing production boreholes to minimise dipole flow. Neither is there any evidence that the reinjection boreholes were provided with a seal positionable within the reinjection borehole to limit mixing and reaction between the concentrate and oxygenated water in the reinjection borehole.”

94.  Dr Barber’s evidence at [33] accepts that the email shows:

“Ahale seems to have suggested this strategy, I believe follow discussion with Mr Dawson, but he may have come to the conclusion separately.”

95.  Noting the absence of any declaratory evidence from Mr Ahale that would shed further light on the nature of the email and the history of discussions, I agree with the applicant that the email does not clearly indicate the originator of the ideas discussed therein, nor does it mention anything about minimisation of dipole flow or the use of seals. 

96.  Also, in his evidence in reply, Mr Richards at [19] states that:

“… as a matter of fact, the spacing of the two borehole systems installed and operated at Flemington Racecourse were sufficient to substantially eliminate the possibility that reinjection of concentrate into the aquifer would increase the salinity of the feed water.”

97.  Firstly, I do not see the idea of “substantially eliminating the possibility” as the same as the feature relating to minimisation of dipole flow.  Elimination of flow between boreholes may occur to a significant degree in the systems referred to by Mr Richards, but I do not consider this to mean that flow has been minimised for the particular aquifer.  I again refer to the construction of the claims above where minimisation is considered to constitute reduction to the smallest possible amount or degree.  Having a reinjection borehole upstream which reduces the possibility does not, in my understanding, equate with minimisation of dipole flow within an aquifer.  Secondly, this statement is not supported by any further evidence as to flow characteristics of the aquifer.  Considering the location of the reinjection bores upstream of production bores, there will prima facie be flow from reinjection to production bore that would appear on balance to have the potential to be minimised.  As a result, I do not give significant weight to the aspect of evidence as being any more than an assertion.

98.  It follows that the evidence fails to establish on balance that anyone other than Dr Barber (the sole named inventor) was responsible for the inventive concept.

Are there any relationships that give rise to proprietary rights in the invention?

99.   From the submissions and evidence, it is clear that there is a history between the relevant parties.  The applicant subcontracted for the opponent until mid-2009 (Barber at [14], [30]), and Dr Barber was a director of the opponent until resigning around June 2010 (Barber at [15).  Dr Barber notes in his declaration (at [38]) that the email referred to above was sent at a time when the applicant was no longer receiving remuneration for work done by him.  He indicates that he was willing to provide free advice to see the project proceed successfully.  At [39] of his declaration Barber adds that he was essentially side-lined from Desaln8 activity from before the Ahale email until June 2010 when he resigned from the board.  Following this, a non-disclosure agreement was signed in 2013 in anticipation of a proposed purchase as noted in the opponent’s submissions between Dr Barber and Desaln8 Pty Ltd, the contents of which would have covered technical detail on the installed operations at the time including the VRC Project which used a multi bore process.  Regarding this agreement, the applicant notes:

“The non-disclosure agreement signed by Dr Barber, on its own, is not evidence that confidential information relevant to the invention subject of the Opposed Application was provided by Desaln8 – it merely indicates that Dr Barber agreed to maintain the confidentiality of the information transferred to him by the Opponent. Richards asserts that the information was specific to work conducted at Flemington Racecourse (Richards #1 [32]), including the configuration of the in situ desalination (ISD) boreholes. The configuration of the ISDs at Flemington Racecourse, as will be discussed in paragraphs [146]-[165] of the Applicant’s submissions, does not anticipate the invention as described and defined in the Opposed Application.”

1. I agree with this assessment.  I also cannot see evidence of a particular arrangement at the time of the email that would give rise to a transfer of proprietary rights, with advice and ideas from Dr Barber appearing to be provided for free.

1. Beyond the information provided regarding the use of the systems installed at Flemington Racecourse and discussed under novelty and inventive step, there is no further information in evidence that would satisfy me that the particular aspects of the inventive concept were incorporated into information provided and covered under the confidentiality agreement to the degree that would determine there to be an alternate inventor or a transfer or rights.  The applicant submits that:

“Dr Barber independently conceived of the invention subject of the Opposed Application in early 2013 (Barber [16]), in the absence of any knowledge of any dual borehole desalination systems at Flemington being operated or installed by Desaln8 after mid-2010. At the time, he was unconstrained by any fiduciary relationship with respect to the Opponent – any such fiduciary relationship had ceased by June 2010 at the latest.”

1. In summary, I am not presented with evidence that would satisfy me that Desaln8 Pty Ltd, or employees thereof, were responsible for the ideas that constitute the inventive concept.  The use of reinjection bores with an in situ production bore has not been shown on balance to be a feature conceptualised by a particular employee of Desaln8 and the implementation of minimisation of dipole flow and the use of the seals forming the inventive concept also appears conceived by Dr Barber, absent any relevantly defined relationship with Desaln8 Pty Ltd.  

1. Therefore, I find this ground of opposition fails and am satisfied that the application is to proceed in the name of Crisalis International Pty Ltd.

Section 40 (Disclosure/Support/Best Method)

Clear and Complete Disclosure and Support

1. Section 40(2)(a) of the Act requires that the specification mustdisclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.  Such enablement must be across the whole width of the claims, without undue burden or the need for further invention.

1. The provisions of s40(2)(a) were considered in detail by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72, who having reviewed several recent UK and EPO decisions and having regard to the guidance they provided, formulated the following test in order to determine whether a specification provides an enabling disclosure as required by section 40(2):

·     Construe the claims to determine the scope of invention as claimed,

·     Construe the description to determine what it discloses to the person skilled in the art, and

·     Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.

1. Section 40(3) of the Act requires that the claim(s) must be supported by matter disclosed in the specification.

1. Similarly, the provisions of s40(3) were considered in detail by the delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72, who formulated the following test in order to determine whether a claim is supported by the description.

·     Construe the claims to determine the scope of the invention as claimed,

·     Construe the description to determine the technical contribution to the art, and

·     Decide whether the claims are supported by the technical contribution to the art.

1. Through both of these tests, a concept of enabling disclosure arises that overlaps these grounds.  Here an enabling disclosure under section 40 is one that provides the person skilled in the art with sufficient information to achieve what is claimed, without undue burden or the need for further invention.  The opponent has led no evidence in relation to these grounds as essentially submits in the Statement of Grounds and Particulars that “in each of the examples described in the specification there is an increase in the total dissolved solids of the groundwater as a result of the dipole flow”, with no further elaboration in submissions at the hearing.  The evidence of Dr Davis at [4.21] – [4.25] of his declaration indicates that he would have no difficulty performing the claimed invention across its full scope.  I note the specification provides detailed modelling results for aquifer properties that would appear to inform the skilled addressee how to go about minimising dipole flow.  Similarly, the figures show how to construct a reinjection borehole to separate groundwater from oxygenated water.  This information in specification appears to me to be prima facie enabling. 

1. I find the invention clearly and completely disclosed and the claims supported.     

Best Method

1. Section 40(2)(aa) of the Act provides that a complete specification must disclose the best method known to the applicant of performing the invention.  The principles regarding best method were unchanged as a result of the Raising the Bar Act.  The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification (Rescare Ltd. v Anaesthetic Supplies Pty. Ltd., 25 IPR 119). If the applicant identifies a better method at a time subsequent to filing, there is no obligation to amend the specification to include that method. As identified by Bennett J at [15]-[16] in Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710:

“…it must be established that there was a better method known to the applicant as at the date of filing of the patent than the one described in the specification.  That is clearly a subjective question.

…it is necessary first to understand what the invention is.  Indeed, this is perhaps the first question that needs to be answered.”

1. The specification contains detailed drawings and models which appear to formulate a method of performing the invention.  As was the case in relation to the other grounds of section 40 mentioned above, there is no evidence to suggest that the applicant knew of a better method of performing the invention at the relevant date. 

1. Thus, I find this ground of opposition fails. 

Manner of Manufacture

1. While there is no definitive test as to whether an invention is directed towards a manner of manufacture, the High Court in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 usefully considered the concept in articulating the following:

“The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art … that its value to the country is in the field of economic endeavour”

1. This concept has been recently expanded upon in D’Arcy v Myriad Genetics Inc [2015] HCA 35, which made it clear that one must look to the substance of the invention rather than its form.

1. I see no question of patentability regarding the technical or material nature of the invention defined in the claims of the present invention.  The invention in substance is clearly directed to a physical system for desalination of groundwater.  It is clearly a manner of manufacture in this regard. 

2. I further note that the Statement of Grounds and Particulars presents the argument that the alleged invention consists of merely addressing the known need to modify a groundwater desalination system by spatially separating the location of groundwater ingress for production from groundwater concentrate by providing spatially separated groundwater production and reinjection boreholes. To this extent, there appears an argument that the invention is obvious on the face of the specification in a manner similar to that discussed by the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449 which provides for a threshold requirement that an “alleged” invention must possess the necessary quality of inventiveness. I see no reason to consider the claimed invention obvious in view of the specification alone, there being no admission in the specification that minimising dipole flow or providing a seal as claimed in the reinjection borehole is obvious or known. The necessary quality of inventiveness is made further clear considering the discussion with respect to the prior art above.

3. Thus, I find this ground of opposition fails.

Conclusion

1. The opposition is unsuccessful, with no grounds being made out.  I direct the application proceed to grant.

Costs

1. The opponent has been unsuccessful in this decision; however, I do note that the opposition has resulted in amendment to the specification that appears to be a result of the evidence filed in support.  As such, the opponent appears successful to this end.  In such a circumstance it would appear reasonable to follow a similar award of costs to that apportioned by the delegate in Voestalpine Schienen GmbH v Nippon Steel & Sumitomo Metal Corporation [2017] APO 32 where costs were awarded against the applicant up to the date of filing the request to amend, and against the opponent for the period thereafter.

1. Also, relevant to consider is the conduct of the opponent in the period leading up to the hearing where they did not file their summary of submissions by the initially required date of 17 March 2020.  The parties were invited on the same date to confirm within 1 week that they wished to be heard by way of either video conference or written submissions.  On 23 March 2020 the opponent indicated they wished to attend by video conference, and on the same day the applicant duly filed their summary of submissions.  Following this, to ensure effective conduct of the hearing, I provided a short period for the opponent to file a summary of submissions and postponed the hearing by 1 week.

2. I do not consider the late filing of submissions, in the present circumstances, warrants a deviation from the approach outlined above.  I can see unusual circumstances because of the COVID-19 situation, and I appreciate that the opponent was not represented by an attorney so may not have understood the requirements. 

3. As such, I award costs against the applicant up to the date of filing the request to amend, and against the opponent for the period thereafter.

Dr N. R. Madsen

Delegate of the Commissioner of Patents