DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd
[2013] FCA 132
•28 February 2013
FEDERAL COURT OF AUSTRALIA
DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132
Citation: DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132 Parties: DSI AUSTRALIA (HOLDINGS) PTY LTD (ACN 115 848 265) and DYWIDAG SYSTEMS INTERNATIONAL PTY LIMITED (ACN 093 424 349) v GARFORD PTY LTD (ACN 009 119 180) File number: NSD 767 of 2010 Judge: YATES J Date of judgment: 28 February 2013 Catchwords: PATENTS – unjustifiable threats to sue for infringement of patent
PATENTS – patent for an apparatus and method for manufacturing multi-strand rock bolts having spaced-apart bulbs – construction – distinction between the invention as claimed and the preferred embodiment – relevance of the “pith and marrow” doctrine – whether patent should be read as part of a complete or automatic machine – whether method claims require apparatus to undertake each step
PATENTS – infringement – whether the alleged infringing apparatus and method possess the essential integers of the claims in suit – whether supply reel essential to the invention as claimed – whether alleged infringing apparatus possesses “feed means” – whether “sensing when the cable has reached a certain position” requires detecting some feature in the cable or can be constituted by monitoring displacement of the cable – whether “stopping movement of the cable” requires complete cessation of movement in the cable
PATENTS – validity – requirement of novelty – whether claims not novel when compared with the prior art base – “paper anticipation” – whether patents existing prior to the priority date disclose the invention as claimed – notional claims
PATENTS – validity – requirement of inventive step – whether combination would have been obvious to the person skilled in the art before the priority date in light of the common general knowledge either separately or together with relevant publication – whether secondary indicia show that the invention is not obvious – relevance of commercial success, “unfelt” want and allegations of copying
PATENTS – validity – secret use – whether the patentee effectively reaped a commercial benefit before the priority date – whether the apparatus and method used earlier by the patentee have the features of the invention as claimed – whether use of the apparatus claimed in the patent before the priority date was directed to reasonable trial only – whether eventual sale of the fruits of the trial renders the use other than for reasonable trial
PATENTS – validity – requirement that invention be a manner of manufacture – whether the inclusion of an earlier patent as prior art in the specification constitutes an admission that there is no new manner of manufacture
PATENTS – validity – requirement of sufficiency of description and best method – whether the person skilled in the art would understand activation of a brake in the preferred embodiment as arresting all movement of the cable
PATENTS – validity – requirement of utility – whether claims lack an essential integer required to make the invention work or point to an embodiment that would be inutile
Legislation: Patents Act 1990 (Cth)
Evidence Act 1995 (Cth)Cases cited: Apotex Pty Ltd v Sanofi-Aventis (2008) 78 IPR 485
Azuko Pty Ltd v Old Digger Pty Ltd (formerly SDS Digger Tools Pty Ltd) (2001) 52 IPR 75
Bristol-Myers Co v Beecham Group Ltd [1974] AC 646
C. Van Der Lely N.V. v Bamfords Limited [1963] RPC 61
Clark v Adie (1875) 10 Ch App 667
E I Du Pont de Nemours and Co v ICI Chemicals and Polymers Ltd (2005) 66 IPR 462
Elconnex Pty Limited v Gerard Industries Pty Limited (1991) 32 FCR 491
Firebelt Pty Ltd v Brambles Australia Ltd (t/as Cleanaway) (2002) 54 IPR 449
Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230
Grove Hill Pty Ltd v Great Western Corporation Pty Ltd (2002) 55 IPR 257
H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151
Haberman v Jackel International Ltd [1999] FSR 683
Hoechst Celanese Corp v BP Chemicals Ltd [1998] FSR 586
ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214
Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86
Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1
Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 169
Lane Fox v Kensington and Knightsbridge Electric Lighting Company [1892] 3 Ch 424
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No. 2] (2007) 235 CLR 173
Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330
Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited (1980) 144 CLR 253
No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231
Olin Corporation v Super Cartridge Co. Pty. Ltd. (1977) 180 CLR 236
PAC Mining Pty Ltd v Esco Corporation (2009) 80 IPR 1
Populin v HB Nominees Pty Ltd (1982) 41 ALR 471
R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565
Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 44 IPR 481
Rodi & Wienenberger A.G. v Henry Showell Ltd [1969] RPC 367
Samsung Electronics Co Ltd v Apple Inc (2011) 286 ALR 257
The General Tire & Rubber Company v Firestone Tyre and Rubber Company Limited [1972] RPC 457Date of hearing: 20, 21, 22, 23, 24 February 2012, 1, 2, March 2012 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 344 Counsel for the Applicants: Mr C Dimitriadis with Mr C Burgess Counsel for the Respondent: Ms S Goddard SC with Mr H Bevan Solicitor for the Applicants: Spruson & Ferguson Lawyers Solicitor for the Respondent: Teller & Associates
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 767 of 2010
BETWEEN: DSI AUSTRALIA (HOLDINGS) PTY LTD (ACN 115 848 265)
First ApplicantDYWIDAG SYSTEMS INTERNATIONAL PTY LIMITED (ACN 093 424 349)
Second ApplicantAND: GARFORD PTY LTD (ACN 009 119 180)
Respondent
JUDGE:
YATES J
DATE OF ORDER:
28 FEBRUARY 2013
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.The parties provide to the Associate to Yates J draft orders reflecting these reasons by 4.00 pm on 10 March 2013.
2.If the parties are unable to agree upon the form of the orders, the applicants and the respondent serve the draft orders they respectively seek by 4.00 pm on 10 March 2013, with copies of those drafts to be provided to the Associate to Yates J at the same time. The draft orders are to be supported by written submissions not exceeding three pages in length.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 767 of 2010
BETWEEN: DSI AUSTRALIA (HOLDINGS) PTY LTD (ACN 115 848 265)
First ApplicantDYWIDAG SYSTEMS INTERNATIONAL PTY LIMITED (ACN 093 424 349)
Second ApplicantAND: GARFORD PTY LTD (ACN 009 119 180)
Respondent
JUDGE:
YATES J
DATE:
28 FEBRUARY 2013
PLACE:
SYDNEY
REASONS FOR JUDGMENT
1This proceeding concerns the infringement and validity of Australian Patent No. 770594 (the patent). The patent claims an apparatus and method for manufacturing multi-strand rock bolts having spaced-apart bulbs. The respondent, Garford Pty Ltd (Garford), is the patentee.
2The proceeding was commenced by the applicants, DSI Australia (Holdings) Pty Ltd (DSI Australia) and Dywidag Systems International Pty Limited (DSI) (together, the DSI parties) who seek relief against Garford for unjustifiable threats of infringement of the patent: s 128(1) of the Patents Act 1990 (Cth) (the Act). DSI is a subsidiary of DSI Australia. They are part of a larger international group of companies, of which Dywidag Systems International, Canada Ltd (DSI Canada) is also a member.
3Garford has cross-claimed against DSI Australia and DSI for infringement of the patent. It alleges that claims 1, 5 to 11 and 12 to 14 have been infringed by, and by the use of, an apparatus which I will call the DSI apparatus. In their joint defence to this cross‑claim, the DSI parties deny infringement and allege that the relevant claims are, in any event, invalid and liable to be revoked. To this end, they have also filed a cross-claim seeking an order revoking all the claims on which they have been sued.
4There is no dispute that Garford has threatened to bring patent infringement proceedings against each of the DSI parties: see paragraph 5 of Garford’s defence. If either DSI Australia or DSI has not infringed the patent (including because the relevant claims are invalid), it will follow that the allegation of unjustifiable threats will have been made out.
5For the reasons that follow, I have found that (a) claims 1, 5 to 11 and 12 to 14 of the patent are invalid because the invention, as claimed, does not involve an inventive step; (b) claims 12 to 14 are invalid because of Garford’s secret use of the methods there claimed; and (c) claim 12 is invalid because the claimed method is not novel. But for these findings, I would have found that claims 1, 7 to 10 and 12 to 14 of the patent have been infringed.
6In light of these findings, the DSI parties’ case of unjustifiable threats has been established.
THE WITNESSES
7A number of witnesses were called for each party.
8The following witnesses gave evidence on behalf of the DSI parties:
·Ernest (Ernie) Walton.
·Peter Gilmour Fuller.
9Mr Walton has worked as a mechanical engineer and design draftsman for more than 30 years. He holds the degree of Bachelor of Engineering (Mechanical) as well as a Mechanical Engineering Certificate. He is a Chartered Professional Engineer. He is a member of a number of professional associations. He has worked on the development and design of mining equipment, as well as a range of other equipment. From 1989 to 1995, he was employed as a Senior Design Engineer in an engineering consulting business based in Newcastle. His focus in that role was mechanical and structural engineering and nearly all his work was related to the mining industry. He worked on the design of a wide range of equipment including flotation cells, industrial access structures, autoclaves, piping systems, specialised handling equipment and glass-reinforced plastic tanks. Some of the work he conducted involved the design of new equipment, while other work involved resolving problems with or improving the performance of existing equipment.
10From 1995 to the present time, he has been the Principal Engineer of DME Technology Pty Ltd, a company which he founded. In that role, he has continued to provide engineering consulting services across a wide range of industries involving the design, modification and testing of various kinds of process equipment. In particular, he has worked on the design of mining equipment, pressure equipment, piping systems, conveyors, lifting beams, augers, shafts, handling equipment, road and rail vehicles, cranes, and specialised structures.
11He has also designed cable bolt production machinery. In 2001, he designed a machine that was capable of forming a single bulb in a length of cable. In 2002, he designed a machine that was capable of forming up to four bulbs at a time in a length of cable.
12Mr Walton made two affidavits and prepared a joint experts’ report with Mr Wightley, to whom I refer below.
13Dr Fuller is a consultant geotechnical engineer. He has worked as a consultant engineer to the mining industry since 1980. He holds the degrees of Bachelor of Engineering (Chemical) and Doctor of Philosophy (Materials Engineering). He is a Fellow of the Australasian Institute of Mining and Metallurgy. He is a member of a number of professional associations. Prior to becoming a consultant, he was employed as a research scientist by CSIRO in the Division of Applied Geomechanics. In this capacity, he led a small team of scientists and technicians investigating the effectiveness and efficiency of rock bolts and cable bolts. Dr Fuller made three affidavits.
14The following witnesses gave evidence on behalf of Garford:
·Allan Neville Hedrick.
·Allan Clifford Wightley.
·Christopher Reginald Windsor.
·Adrian Alington.
15Mr Hedrick is the Managing Director of Garford and the inventor named in the patent. He has 22 years of experience in inventing, developing and making cable bolt manufacturing equipment. Mr Hedrick made five affidavits.
16Mr Wightley is a mechanical engineer and a director of Wightley Engineering Pty Limited. He holds the degrees of Bachelor of Engineering and Master of Engineering. He also holds a Drafting Certificate. He has worked as an engineer for over 40 years. He is a Fellow of Engineers Australia. He is a member of a number of professional associations. He is an Adjunct Professor – Mechanical and Mechatronic Engineering at the University of Technology Sydney. He is a member of the Course Advisory Committee for the Bachelor of Engineering degree at that university. Mr Wightley made three affidavits. As noted above, he prepared a joint experts’ report with Mr Walton.
17Mr Windsor is a research engineer. He holds the degrees of Bachelor of Engineering (Civil Engineering) and Master of Science. He holds the Diploma of Imperial College London. His postgraduate studies focussed on the theoretical and computational modelling of the behaviour of devices used to reinforce planes of weakness such as faults, joints and fractures in rock. He has worked as a research and consultant engineer to the mining industry since 1981.
18Like Dr Fuller, Mr Windsor worked for CSIRO’s Division of Geomechanics. Mr Windsor was a research scientist and, later, a senior research scientist. In 1994, he became the Principal Research Engineer and Manager of the Rock Reinforcement Group in CSIRO’s Division of Exploration and Mining. Between 1995 and 2003, he was a director and employee of Rock Technology Pty Ltd, providing technical advice to mining companies, particularly with respect to rock excavation design and stability and rock support and reinforcement. He remains a director of that company. Since 2003, he has been a Principal Research Fellow and Associate Professor of Engineering and Research at the Western Australian School of Mines at Curtin University. In these capacities, he conducts rock mechanics research for mining and civil engineering industries, as well as rock mechanics education at postgraduate tertiary level. He is a member of a number of professional associations. He made one affidavit.
19Mr Alington is the Manager of Garford. He has had personal experience in the production of continuous bulbed cable, as manufactured by Garford. He made one affidavit.
20All witnesses were cross-examined. Mr Walton and Mr Wightley also gave concurrent evidence.
BACKGROUND
21Mr Hedrick described bulbed cable bolts in the following terms:
Bulbed cable bolts are rock anchors comprising steel tendons with bulbs, which are inserted into bore holes in the roofs and walls of mines and rock tunnels to help prevent cave-ins and rock falls. Typically, such tendons are of steel cable having a central or ‘king wire’ around which further – usually six – steel wires are wound. The bulbed cable bolts are inserted into the bore holes and grout is pumped in under pressure. The grout fills the bore holes and fills the bulbs and also enters any gaps or fissures in the surrounding rock. The force caused by the bulbs against the grout, wedges them into the bore holes. Once set in place, a plate is put over the protruding end of the strand and against the rock and a barrel and wedges are used to hold the strand against the plate and are tensioned.
22This description of cable bolts and their manner of use accords generally with the other evidence given at the hearing. There was no challenge to this description.
23Garford claims to be the leading manufacturer of bulbed cable bolts in Australia. At the hearing, Mr Hedrick gave an account of how, in earlier years, Garford went about manufacturing continuous bulbed cable for use as cable bolts. This evidence was supported by Mr Alington’s evidence. There had been an initial challenge concerning the feasibility of manufacture according to this method – thereby calling into question a claim by Garford that it used the method to make continuous bulbed cable on a commercial scale – but, ultimately, the DSI parties did not persist with that particular challenge.
24The following account represents my findings of fact.
25Until early 1995, the only bulbed cable bolts which Garford manufactured were relatively short, bulbed cable bolts from precut links of steel cable.
26In late 1994, Mr Hedrick conceived the idea that there might be a market for bulbed cable bolts that were formed directly from steel cable (of whatever length) and rolled into coils (continuous bulbed cable). Initially, Mr Hedrick thought that the continuous bulbed cable could be wound onto 1,300 metre coils, with the coils then being sent to mines where the mine operators could cut them into lengths suiting their own requirements for cable bolts. He thought that coils of that length would be suitable because non-rotating framed receiving dispensers used by mine operators to hold plain strand (that is, unbulbed) cable usually held a volume of 2,600 metres of plain strand per coil. He estimated that the volume which the bulbed cable would take up as a coil in one of these receiving dispensers would be about double that of unbulbed cable. In the event, 1,300 metres of continuous bulbed cable, as a coil, fitted well into the receiving dispensers.
27Between January 1995 and October 1999, Garford used a particular method to make continuous bulbed cable from plain strand steel cable placed on a rotatable supply reel. The method required two operators – one engaged principally to operate a bulb‑forming mechanism (which formed three bulbs); the other engaged principally to operate a take-up reel on which the continuous bulbed cable was wound, following bulb formation. Plain strand steel cable was pulled from a rotatable supply reel. This was achieved, at least for some considerable part of the process, by the winding of the formed continuous bulbed cable onto a take-up reel. By this means, the plain strand steel cable was pulled into a bulb‑forming mechanism from the supply reel. The bulb-forming mechanism was placed between the supply reel and the take-up reel. It is not in question that the manner in which the bulbs were formed was substantially in accordance with the general method described in the first Garford patent (to which I make further reference below) using apparatus of the general kind there described. The apparatus included an hydraulic valve which was operated manually.
28Mr Hedrick described the process in the following terms:
One man principally operated the bulbing mechanism and the other principally operated the take up reel. Movement of the steel cable was stopped manually for the formation of each set of 3 bulbs, and was re-started manually after the bulb-forming operation was complete. The man operating the bulbing mechanism would walk forward to the take up reel after each set of bulbs formed and watch for the last bulb to reach the stop mark and then tell the man winding to stop. Then the first man would return to form another set of 3 bulbs and the process would be repeated. The distance from the last bulb in the set of 3 bulbs to the position enabling the next bulb to be formed was measured manually, initially with chalk marks and later (to enable changes of bulb frequency per metre) by using a sliding metal adjustable bar.
A ratchet with a stopper on the take up reel prevented any unravelling of cable from the take up reel or any reverse movement and the leading end of the cable was attached to the take up reel with a barrel and wedges to prevent dislodging.
The 2 men could operate the apparatus without over exertion of effort and certainly without health or safely concerns …
[As in original]
29I accept this evidence. Mr Hedrick provided other details about the specific manner in which the take-up reel was operated. It is not necessary for me to descend to any further detail in that regard.
30In about 1996, Mr Hedrick experimented by fitting a small motor and gearbox to the shaft of the winder on the take-up reel to assist in winding the continuous bulbed cable. The operator was required to turn the motor on and off each time the set of three bulbs was made. The motor had to be turned off early so that the take-up reel did not continue to wind and cause the cable to run past the stop marker. It was therefore necessary for the operator to continue to wind the winder manually for some part of the progress of the cable. Mr Hedrick came to the view that this modification would not be practical or efficient in a fully‑automated machine.
31From 1995 until 1997, all completed coils of continuous bulbed cable manufactured by Garford were 1,300 metres in length. These coils were loaded onto pallets and sent to mining sites. Mine operators dealt with them using their existing equipment. Although there is no direct evidence on the matter, Mr Hedrick said that, so far as he was aware, these mine operators would use their standard non‑rotating, square-framed dispensers, from which the continuous bulbed cable was pulled from a central axis. There was no challenge to this evidence as representing the likely state of affairs. The continuous bulbed cable was cut to a desired length and installed in a manual process which was slow and labour-intensive.
32Early in 1997, Mr Hedrick decided to adapt a machine called a Tamrock Cabolter to be used with continuous bulbed cable. Up to that time, the Tamrock Cabolter had been used at mining sites to install cable bolts made from plain strand cable. The machine operated by boring a hole into the mine wall or roof; forcing a tube to the top of the hole; filling the hole with grout or resin under pressure; and then pushing the cable bolt into the hole through the grout or resin. The machine operated with an attached cassette to receive coils of cable. It is my understanding of the evidence that, in operation, the Tamrock Cabolter cut the bulbed cable to a desired length for use as a cable bolt.
33The process of bulbed cable bolt installation using the modified Tamrock Cabolter was less labour-intensive and approximately three times faster than the manual method by which these bolts had been installed previously. As a result, demand for continuous bulbed cable increased and, from April 1997, Garford started to receive and fill orders for continuous bulbed cable coils in lengths of less then 1,300 metres (generally under 700 metres) to suit appropriately modified Tamrock Cabolter machines.
34Using the particular method of production I have described, Garford was capable, if required, of manufacturing 650,000 metres of continuous bulbed cable per year. However, Garford was never required to manufacture to this capacity, and not all lengths were made to order. Demand was not predictable and fluctuated from month to month. In this period, Garford made continuous bulbed cable in lengths of 1,300, 700, 600, 550 and 500 metres and stored it on site in advance of receiving orders, so that it could meet demand in a timely fashion.
35The continuous bulbed cable made by Garford in the period 1995 to October 1999 was supplied to a number of customers in the mining industry. There is no doubt in my mind that this supply was on a significant commercial scale. I am satisfied that Garford manufactured and sold hundreds of kilometres of continuous bulbed cable in this period. The particular method by which Garford carried out this manufacture was not, however, made public.
36With the increasing orders for continuous bulbed cable brought about by the modifications to the Tamrock Cabolter, Mr Hedrick turned to consider the building of a machine that would enable Garford to achieve increased output and efficiency.
37He described the development of this machine in the following terms:
For approximately 2 years leading up to September 1999 I was working when I could, between other work, to create and build a new machine.
I knew that the inclusion of an accurate, reliable and consistent automated means of bulb spacing measurement was crucial. This is because the mining industry requires bulbs at different set lengths along the cable bolt to suit different rock contexts. If the distances between bulbs were variable, the bulbed cable bolt may not be suitable for the rock contexts in which they are to be installed. Bulb spacing is therefore a critical quality control issue which changes in accordance with each customer’s assessed requirements.
I realised that obtaining accurate measurements could be complicated by a number of factors, including over-run of the take up reel, general slippage of the cable, and movement of the cable during bulb formation. I realised, in particular, that the interaction of the measurement means and the take up reel was crucial.
From my experience in operating the manual method I also realised that we needed a way to get the plain strand from the 3 tonne coils of cable as delivered to us into the machine in an automated and reliable and even manner without twisting the cable and that the measurement means and the take up reel had to be fully synchronized.
I made the entire new machine from scratch. I could not just buy off the shelf components for the machine. The only components I could buy were the hydraulics, pneumatic cylinders, bearings, valves, fittings hoses, electrics, switches, chains and sprockets. The remainder of the new machine, including frames, guide wheels, pusher wheels, the mechanism for blocks for cylinders, supply reel, supply reel gates and expanding leaves, fastening devices to clamp the inside end of the strand onto the supply reel, gripping jaws, bulb sensing device, brake, bail arm, bail arm frame, take up reel and take up reel gate, air valve cabinet, hydraulic cabinet and attachments, motor and gear box attachments for bail arm, bail arm, linear breaking frame were all designed and built by me.
It took me about 2 years to develop and build the new machine, working between other jobs, with many months spent by me in designing, making prototypes, trialling, testing, fixing and changing plus, I estimate, the equivalent of at least 7 months of full time work just to manufacture all the components for and put together the machine. I developed the design for the new machine by making and testing prototypes not by the use of drawings. As stated already, this work was done by me in the Garford factory which was not open to the public and only accessed by employees of Garford.
[As in original]
38I accept this evidence.
39There was some controversy in the evidence as to when the new machine was deployed to manufacture commercial quantities of continuous bulbed cable. Garford’s case was that production of this kind did not take place until around the second week of October 1999, after the priority date of the claims (13 September 1999). The DSI parties submitted that the new machine was deployed for purposes other than reasonable trial or experiment before the priority date. I will return to this controversy when considering the case on secret use advanced by the DSI parties.
THE PATENT
40The patent is a standard patent. It was applied for on 5 September 2000 and granted on 14 June 2001. As I have noted, the priority date of the claims is 13 September 1999. On 17 April 2001, the complete specification of the patent was published as open to inspection.
41The patent specification has 11 apparatus claims and three method claims.
42Claims 1 to 11 are the apparatus claims. Claims 2 to 11 are dependent, directly or indirectly, on claim 1.
43Claim 1 is as follows:
An apparatus for manufacturing multi-strand rock bolts having spaced apart bulbs formed therein, characterised by a feed means for supplying a multi-strand cable from a rotatable supply reel, a means for forming the cable with bulbs at spaced intervals and a means for determining the position of the cable to stop operation of the feed means to enable a further bulb to be formed.
44Claims 5 and 6 characterise the “feed means”. These claims are as follows:
An apparatus according to any one of the preceding claims, characterised in that the feed means has a plurality of rollers which clamp the multi stand [sic] cable to cause it to be fed from the supply reel.
An apparatus according to claim 5, characterised in that at least one of the rollers of the feed means is rotatably driven by a drive means.
45Claim 7 characterises the means for forming a bulb. It is accepted that these means were publicly known as at the priority date.
46Claim 8 further characterises the apparatus claimed in one or more of the earlier claims by providing means for collecting the multi‑strand cable formed with bulbs at spaced intervals on a take-up reel. Claim 9 is as follows:
An apparatus according to Claim 8, characterised in that there is provided an axially rotatable bail arm having a bail member which guides the multi strand cable onto the take up reel.
47Claims 10 and 11 further characterise this bail member so that, in operation, the bail member can travel along the shaft of the rotatable bail arm (claim 10) for a predetermined distance using a timer cooperating with a trip member associated with the take-up reel (claim 11).
48Claims 12 to 14 are the method claims. Claim 13 is dependent on claim 12. Claim 14 is, in turn, dependent on claim 13.
49Claim 12 is as follows:
A method of manufacturing a multi strand rock bolt having spaced apart bulbs formed therein characterised by feeding a multi strand cable from a rotatable supply reel, sensing when the cable has reached a certain position and stopping movement of the cable, forming a bulb in the stopped cable, recommencing movement of the cable and repeating the cycle.
50Claim 13 characterises the method by providing for collection on a take-up reel of the cable formed with the bulbs. Claim 14 characterises the method in claim 13 in that the cable is fed onto the take-up reel over a predetermined width to collect the cable substantially evenly across that width.
51 The complete specification contains a brief description of the invention. It describes the invention as providing an apparatus:
… which is for the manufacture of multi-strand rock bolts formed with bulbs in which the feed material is fed from a rotatable reel.
52The brief description then sets out a number of consistory statements which find expression in each of claims 1 to 10 and 12. The invention is described in terms which show that it has two broad aspects – an apparatus aspect and a method aspect.
53The invention is then described more fully by reference to a single embodiment illustrated in two drawings. The complete specification makes clear that this embodiment is an “example” and that “[m]odifications and variations as would be apparent to a skilled addressee are deemed to be within the scope of the present invention”. Recognising this fact, it is nevertheless instructive to summarise the features and workings of this embodiment, in the way in which it is described in the complete specification. In the following summary, I adopt the numerical references used in the complete specification to relate various features to the patent drawings. The patent drawings are reproduced in Schedule 1 to these reasons.
54The apparatus is said to include a rotatable supply or feed reel (13) on which a multi‑strand cable (11) is wound. This is the “rotatable supply reel” or “supply reel” referred to in the claims.
55The multi-strand cable is fed from the supply reel by a “displacement device” (20). This device is the “feed means” referred to in the claims. Except for the consistory clauses, the expression “feed means” is not used in the body of the specification itself.
56In the preferred embodiment, the displacement device has upper and lower rollers (22 and 24), one of the lower rollers being driven by a chain or belt from a separate drive wheel (28). The upper and lower rollers are urged together (such as by one or more pneumatic cylinders) to “clamp or grip” the multi-strand cable between them. When the driven roller rotates, the multi-strand cable is “pulled off” the rotatable supply reel. The multi-strand cable is “thereby caused to be fed off the supply reel” through various componentry between the supply reel and the displacement device, and then through the displacement device itself, to pairs of jaws (30 and 32). One pair of jaws (32) is arranged to be moved longitudinally (in a direction generally parallel to the direction of travel of the multi-strand cable) towards, and away from, the other pair of jaws (30). This movement is effected by a ram (38) associated with the first pair of jaws (32). The first pair of jaws is located upstream from the second pair of jaws.
57There is a point in time when the multi-strand cable is stationary. This occurs when the drive to the rollers of the displacement device is discontinued and a brake (16) is applied to engage the multi-strand cable, to arrest its movement.
58At that point, the pairs of jaws grip the multi-strand cable and the (upstream) first pair of jaws is pushed by the ram towards the (downstream) second pair of jaws. This action forces the multi-strand cable to expand laterally to form a bulb (12).
59Once the bulb is formed, the pairs of jaws are withdrawn from the multi-strand cable and the (upstream) first pair of jaws is pulled away from the (downstream) second pair of jaws.
60The rollers of the displacement device are then caused to rotate again and the brake is released. The complete specification says that the apparatus is started again “by any convenient means such as manually, by means of relays with timers, or by computer timing control”.
61The multi-strand cable is then moved along longitudinally until the newly‑formed bulb encounters the downstream “sensor means” (40), also referred to in the complete specification as the “switch means”. In the preferred embodiment, the sensor means includes a pair of rollers (50). These rollers are forced apart by the newly-formed bulb. This causes a signal to be sent from a switch (52) to the drive wheel to stop drive to the rollers. The brake is then hydraulically activated to arrest movement of the multi-strand cable. A signal is also sent to stop the drive of a motor (47) associated with a take-up reel (46) onto which the multi‑strand cable with formed bulbs is received. When the multi-strand cable is stationary, the pairs of jaws are again activated and a further bulb is then formed, as previously described. This cycle is repeated to form bulbs at spaced intervals. It is in this sense that the complete specification says that “the present invention provides a continuous means for the manufacture of multi strand rock bolts with bulbs formed at spaced intervals”.
62Downstream from the sensor means, a bail arm (44) directs the multi-strand cable (with formed bulbs) so as to ensure that it is received on the take-up reel “across a predetermined width of the reel”, rather than being taken up “in an unduly narrow portion of the reel”.
63The bail arm includes a threaded shaft (54) with which a bail member (56) is “threadingly engaged”. When the shaft rotates (by means of a belt attached to a motor), the bail member moves along the bail arm and thus guides the cable onto the take-up reel.
64Modifications and variations to the preferred embodiment are exemplified by reference to the means by which movement of the cable can be arrested. In the preferred embodiment, this is achieved by application of the brake and the discontinuance of the drive to the wheels of the displacement device. The complete specification says that the movement of the multi-strand cable could also be arrested for bulb formation by means of a timer mechanism or by means of a trip means on a wheel to cause the apparatus to stop at each revolution of the wheel.
65The patent specification says that the present invention provides a more efficient means for manufacturing multi-strand rock bolts than “prior art methods”. The only prior art identified by the patent specification is Australian Patent No. 640906 which is said to describe an apparatus for the manufacture of a multi‑strand rock bolt formed with bulbs. Garford was the patentee of that patent (the first Garford patent). Mr Hedrick was named in that patent as the inventor. The first Garford patent was granted on a PCT application. The DSI parties rely on the publication of that application as part of their case that the invention as claimed in claims 1 and 5 to 7 of the patent is not novel.
66The patent specification also refers to an advantage of the present invention being that the take-up reel containing the multi-strand rock bolts can be sold directly to customers. There is nothing in the patent specification that characterises the take‑up reel in any specific way so as to provide this advantage.
SOME ISSUES OF CONSTRUCTION
67The general principles relating to the construction of patent claims have been discussed in a number of cases in this Court. They are well-known. There is no dispute about them in the present case. It would be a work of supererogation to attempt to provide a further summary of them. The following cases identify the principles to which I have had regard in construing the claims in the present case: H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151 at [118]-[120]; PAC Mining Pty Ltd v Esco Corporation (2009) 80 IPR 1 at [26]-[29]; Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 at [67].
68The parties were at issue as to the construction of a number of features of the claims. The debate on these issues is best identified and determined when I consider the question of infringement. There are, however, six general conclusions concerning the construction of the patent and its claims which I should express at the outset.
69First, I do not read any of the relevant claims as confining the claimed apparatus and methods to the preferred embodiment, with all its particularly described features and specific mode of operation. In describing the invention, the body of the specification makes clear that there are a number of preferred, but not necessarily essential, features of the invention. The preferred embodiment is expressly given as an example only. The body of the specification states that “modifications and variations as would be apparent to a skilled addressee are deemed to be within the scope of the present invention”. This statement, of course, cannot expand Garford’s patent monopoly beyond that which is properly defined by the claims themselves. But the statement nevertheless makes clear that there is nothing in the description of the invention that should confine the invention to its, or any, preferred embodiment.
70Secondly, although the invention, as claimed, is not confined to its or any preferred embodiment, I am satisfied that where features of the apparatus or method are specifically identified by successive claims, each of these features is an essential feature of the invention that is defined by the particular claim.
71Thirdly, there was a theme in Garford’s case – expressed principally through Mr Wightley’s evidence and advanced in Garford’s opening and closing submissions – that the apparatus claimed in claim 1 of the patent “must be read as part of a complete machine, operating continuously making bulbed cable in an automatic process”.
72It would be an error to approach the construction of claim 1 or any other claim of the patent on that basis. Although the claims of the patent should be construed in light of the specification as a whole, neither the wording of the claims themselves, nor the context provided by the description of the invention in the body of the specification, would warrant Garford’s particular approach to the construction of the claims in the present case.
73As the DSI parties correctly pointed out, nowhere in the body of the specification (and perhaps more importantly, nowhere in the claims themselves) is there a requirement, expressed as an essential feature of the invention, that there be an “automatic” or “complete” apparatus, whatever additional meaning these words might impart. The body of the specification itself makes clear that aspects of manual operation of the apparatus might be present. Moreover, although the body of the specification refers to the invention providing “a continuous means for the manufacture of multi strand rock bolts with bulbs formed at spaced intervals”, the context in which that statement appears makes clear that this is a reference to the repetitive or cyclic formation of bulbs in a continuous length of cable – in the order of 850 to 1,300 metres – taken from a supply reel.
74Fourthly, where the apparatus claims of the patent refer to the means by which the apparatus is characterised, they are referring, in each case, to an essential feature of the apparatus itself that provides the means by which the apparatus functions in that regard. However, the precise manner in which these means might operate is limited only by the words of the claim itself. Human intervention might be involved.
75Fifthly, the method claims are not confined to a sequence of steps that is carried out by a single apparatus. They only require the presence of an apparatus to undertake a particular step in the method where the claims themselves identify the apparatus to carry out that step. Importantly, claim 12 does not claim, for example, a method of manufacturing a rock bolt using the apparatus claimed in claim 1 of the patent. Had that been the patentee’s intention, it would have been an easy thing for the draftsman to have said so. Indeed, the wording of claim 12 is conspicuous in that it is not, in terms, limited to the operation of the apparatus claimed in claim 1 or, indeed, to the operation of any other single apparatus.
76Sixthly, although the patent describes and claims apparatus and methods for manufacturing multi-strand rock bolts having spaced-apart bulbs, it is clear that this refers to, and would be understood by the person skilled in the art as referring to, bulbed cable manufactured for use as rock bolts. The person skilled in the art would understand that, strictly speaking, a section of the continuous bulbed cable only becomes a rock bolt when it is cut to a desired length from the cable to be used as a rock bolt.
THE DSI APPARATUS
77The DSI apparatus and its mode of operation can be described by reference to a diagram prepared by Mr Wightley. He used this diagram to describe his observation of the working of the DSI apparatus in the course of a court-ordered inspection. His diagram is reproduced in Schedule 2 to these reasons.
78The operation of the DSI apparatus, as inspected by Mr Wightley, was also recorded in a format that enabled it to be shown to the Court by means of a DVD during Garford’s opening: Ex A.
79It is not in dispute that the DSI apparatus is one for manufacturing multi‑strand rock bolts (cable bolts) having spaced-apart bulbs. The supply reel (or pay-out reel, as designated in the diagram) and the take-up reel are driven by variable frequency control electric motors through roller chain drives. The supply reel and take-up reel operate at variable speeds. Mr Wightley’s evidence was that, in operation, the supply reel and the take-up reel almost come to a stop during the bulb‑forming process.Certainly my own observation (based on viewing the DVD during the course of Garford’s opening) was that, although its speed was variable, the supply reel did not stop rotating during bulb formation. In that sense, its rotation and the supply of cable from it, was continuous. As pointed out in Mr Walton’s evidence, the point at which the supply reel slows down is not immediately before bulb formation, but after bulb formation has begun. Once the bulb is formed, the rotation of the supply reel speeds up again.
80The DSI apparatus has two accumulators. One is located between the supply reel and the cable drive (the upstream accumulator); the other is located between the bulb-forming device and the take-up reel (the downstream accumulator). The accumulators are operated by pneumatic cylinders. The upstream accumulator takes up the slack that occurs when the movement of a portion of the cable is arrested and that portion is stationary to enable bulb formation in it to take place. The downstream accumulator gives up slack when the cable is stationary during bulb formation. Thus, the balance of the cable towards each end of the apparatus (that is, upstream of the upstream accumulator and downstream of the downstream accumulator) continues to move throughout the process. Mr Walton described the effect of this as follows:
In the [DSI apparatus], the supply reel and the take up reel are decoupled by the accumulators from the part of the apparatus that forms the bulbs, so that the movement of the supply reel (and the take up reel) is independent of the bulb forming process. This enables the supply reel to continue to rotate throughout the entire process, thus avoiding the need for it to be stopped and re-started repeatedly. By contrast, in the apparatus described in the [patent], the cable is fed directly from the supply reel into the bulb forming apparatus, so that the supply reel must stop when a bulb is being formed. This creates inefficiencies because of the energy required to overcome static friction and start the supply reel moving again after every bulb is formed. Similar comments apply in relation to the take up reel, which kept moving in the [DSI apparatus] but must stop while a bulb is being formed in the apparatus described in the [patent].
81A cable drive (also referred to as a caterpillar drive) indexes the cable to the bulb-forming device. The caterpillar drive comprises a system of rollers and caterpillar belts which are in contact with the cable. One caterpillar belt is above the cable and the other is below. The cable is “sandwiched” between the belts. The caterpillar belts are endless and, in each case, pass around three rollers or pulleys (I will refer to them as rollers) that are associated with it. In each caterpillar belt/roller set, one of the three rollers (the drive roller, also referred to as a head roller) is driven by a motor acting directly on its axle. Each drive roller is offset (in a direction away from the cable) from the other rollers with which it is associated. The other two rollers in each caterpillar belt/roller set were referred to in the evidence as a snub pulley (closest to the drive roller) and a tail pulley (distal from the drive roller). In each caterpillar belt/roller set, there is also a series of further “lazy” rollers which are non-driven. The lazy rollers lie between the snub pulley and the tail pulley and apply a compressive load on the belt, thereby pressing the belt against the cable. The drive rollers do not apply any compressive load on their associated belts to press them against the cable. In this configuration, the drive rollers do not themselves clamp the cable in any way. The belts grip the cable under the influence of the other rollers (the snub pulley and the tail pulley) and the lazy rollers associated with each of them, with sufficient force to move the cable towards the bulb‑forming device.
82The indexing of the cable by the caterpillar drive is achieved through the operation of a device which is located between the caterpillar drive and the bulb‑forming device. This device has two toothed belts in contact with the cable – one belt on top of the cable; the other, underneath the cable. The belts are held in place by pneumatic cylinders. The toothed belts pass over four flat-toothed pulleys. One of these pulleys is fitted with a revolution counter. The counter sends a signal to a programmable logic controller. This controller then sends a signal to the caterpillar drive to stop and start the caterpillar drive at a location that is programmed to achieve formation of the bulb at the correct location along the length of the cable. Mr Wightley referred to this as a “location or position sensor device”. Mr Walton disagreed with this description of the device. He said that this device does not “sense” the location or position of the cable. Rather, the programmable logic controller is preprogrammed to allow the cable to move forward during each iteration until the shaft encoder has undergone a preset rotational displacement. This will equate to a fixed displacement of the cable, assuming there is no slippage of the cable. There was no disagreement between the witnesses as to how the device works. The only dispute concerned the aptness of the description “location or position sensor device”.
83During operation, the pulleys of the caterpillar drive rotate forward while indexing of the cable takes place. When the cable is stopped, the pulleys are stopped. Mr Wightley’s evidence was that, during bulb-forming compression (described below), “the pulleys move forward a small distance” and that “the pulleys move backwards a shorter distance during spring-back after the bulb-forming compression”. The pulleys again rotate forward as the cable is indexed.
84As I have stated, during bulb formation, a portion of the cable is stopped. It is clamped by a pair of jaw sets – one upstream, the other downstream. A bulb in the cable is formed when the upstream set of jaws is moved toward the downstream set of jaws, which remains stationary. This movement is brought about by the action of an extending rod of an hydraulic cylinder. A compressive force is thereby exerted on the cable. The resulting strain causes the strands of the cable to move into their plastic zone and to splay outwards, forming a bulb. Mr Wightley’s evidence was that the outside diameter of the bulb reduces in size as the upstream set of jaws is moved away from the downstream set of jaws. This is what he termed “spring-back”. The cable is released from each jaw set by the operation of the pneumatic cylinders. The upstream jaw set is then moved back to its original position. The cable is indexed along. The bulbed cable is then wound evenly onto the take-up reel. This is achieved by a level wind device which consists of four grooved sheaves between which the cable passes. The sheaves are mounted in the one vertical plane within a housing. There is a female‑threaded nut underneath the housing which engages with a male‑threaded shaft at right angles to the cable. As the threaded shaft rotates, the nut transits along the shaft and takes the housing and the sheaves with it, thus exerting a sideways force on the cable, forcing it to form a uniform layer across the take-up reel.
INFRINGEMENT
Claim 1
85The DSI parties submitted that claim 1 of the patent is not infringed because the DSI apparatus does not have a feed means for supplying a multi-strand cable from a rotatable supply reel, whose operation is stopped to enable a further bulb to be formed. In this connection, they emphasised the distinction between the drive motor associated with the supply reel of the DSI apparatus and the caterpillar drive also present in that apparatus. They submitted as follows:
… [the DSI apparatus] includes two separate components, being a drive motor that drives the supply reel and thereby supplies cable from it, and a caterpillar drive that indexes cable into the bulb forming unit. These two components are physically separate and operate independently of each other, in the sense that the drive motor operates and causes the supply reel to feed cable at all times, whereas the caterpillar drive stops operation repeatedly to enable each bulb to be formed. Neither is connected in terms of the speed and velocity of their operation. The accumulators manage this process by taking up the slack, de-coupling the process of bulb formation from the supply of cable.
86They also submitted:
The components of the [DSI apparatus] and method (including the cable reel drive motor, the caterpillar drive – also referred to as the “cable drive” – and the accumulators) interact differently to the apparatus and method of [the patent] to produce a new and different combination. In particular, because the supply of cable from the reel is continuous and de-coupled from the process of bulb formation, the elements of the combination interact to produce the new result that movement of a short length of cable only (7 or 8 m) is stopped to enable each bulb to be formed. This gives rise to two benefits of substance compared with [the patent], which by comparison involves stopping and restarting the whole length of cable on the supply reel and the take-up reel (which may be 1300 m or 2600 m in length).
87The DSI parties identified these benefits to be, first, a more rapid production rate and, secondly, energy and efficiency savings associated with avoiding the supply reel repeatedly coming to a stop and having to restart every cycle.
88The essence of the DSI parties’ submission was that the drive motor corresponded to the feed means referred to in claim 1 of the patent because that was the component that caused the cable to be fed off the supply reel. They also submitted that claim 1 does not require the supply reel to be part of the apparatus. In this connection, they submitted that it was sufficient that the feed means be capable of supplying multi-strand cable from a rotatable supply reel.
89Whilst I accept that the DSI apparatus functions in the manner described by the DSI parties, I do not accept that the feed means referred to in claim 1 is one that is required to cause the cable to be fed off the supply reel; nor do I accept that the supply reel is not part of the apparatus that is claimed.
90In this latter connection, it is my view that claim 1 can only be sensibly read in the context of the specification as a whole if a rotatable supply reel is an essential feature of the apparatus that is claimed. The following integer of claim 1:
… feed means for supplying a multi-strand cable from a rotatable supply reel …
defines the apparatus as one that contains a feed means and a rotatable supply reel. This construction is available not only as a matter of the ordinary language of the integer quoted above, but is supported by the ordinary language of the statement of the invention in the body of the specification (at page 1 lines 16-18), namely:
The present invention provides an apparatus which is for the manufacture of multi‑strand rock bolts formed with bulbs in which the feed material is fed from a rotatable reel.
[Emphasis added]
91It is plain from both the language of claim 1 and the description in the specification that it is an essential feature of the apparatus that the cable is fed from a rotatable reel, not from any other source. The construction advanced by the DSI parties requires the supply reel to be present for the working of the claimed apparatus but, apparently, does not require the reel to be a feature of it. Such a construction involves deliberately leaving out of the claim the essentiality of the supply reel, but not the cable sourced from the supply reel. In my view, that would be a contrived construction. It is not one that I am able to accept.
92As will be apparent from the above, my analysis of the words of the claim itself, read in the context of the specification as a whole, leads to this construction of the relevant integer. It is also supported, however, by a reading and comparison of the claims as a whole. In this connection, claim 5 is dependent on claim 1. Claim 5 proceeds on the existence of the supply reel in the apparatus claimed in claim 1. However, it does not, by its own terms, add that feature. Rather, claim 5 further characterises the feed means itself, a matter to which I shall return.
93The plain words of the integer require an association between the feed means and the rotatable supply reel in relation to the multi-strand cable. However, this association is not the one for which the DSI parties contended. The integer simply means that the feed means functions to supply a multi-strand cable, and that the cable it supplies comes from a rotatable supply reel. No closer association is required between the feed means and the rotatable supply reel. The feed means is not itself characterised in claim 1, beyond answering the description of a “feed” means and functioning in the apparatus to “supply” cable, although that particular function, for the person skilled in the art, would be implicit in the description “feed” itself. In context, the feeding which is referred to is the feeding of the cable for bulb formation. In the passage quoted above (from page 1 lines 16-18 of the specification), the feed material is the cable. Thus, the feed means is the means by which the cable is fed for bulb formation.
94I therefore reject the DSI parties’ submission that the apparatus claimed in claim 1 is characterised by feed means that causes the multi-strand cable to be fed from the supply reel. The apparatus for claim 1 could be one in which the feed means does cause the multi-strand cable to be fed from (in the sense of taken from) the supply reel, but that is not an essential feature of that particular apparatus.
95In this connection, the apparatus defined in claim 1 is to be distinguished from the apparatus claimed in claim 5, which further characterises the apparatus in three respects: the feed means must have a plurality of rollers; the rollers must clamp the multi-strand cable; and the action of this clamping must cause the multi-strand cable to be fed from the supply reel.
96Here, the word “supplying” in claim 1 and the word “fed” in claim 5 (which is dependent on claim 1) should not be confused for one another. The apparatus claimed in claim 5 is one where the feed means functions in the apparatus to supply the cable and, having the constructional features set out in claim 5, to cause the cable to be fed from (in the sense of taken from) the supply reel, when the apparatus is in operation. In short, there is required a specific causal relationship between the feed means (having those particular constructional features) and the feeding of the multi‑strand cable from the rotatable supply reel, in that particularly claimed embodiment.
97The preferred embodiment described in the complete specification is characterised in this particular way. In the preferred embodiment, the displacement device (which functions as the feed means) is described as pulling off the multi‑strand cable from the supply reel, by means of rollers gripping the cable. But claim 1 does not claim the described preferred embodiment. There is no legal requirement that it should.
98In my view, the DSI apparatus includes a rotatable supply reel, and means for supplying a multi-strand cable from that supply reel. The feed means, however, is not the drive motor associated with the supply reel, but the caterpillar drive that indexes the cable into the bulb-forming unit. It is accepted that the operation of the caterpillar drive is stopped to enable a bulb to be formed in that part of the cable which the caterpillar drive has supplied to the bulb-forming unit. I accept that, in the DSI apparatus, the drive motor associated with the supply reel, rather than the caterpillar drive, is responsible for causing the cable to be fed from the supply reel by causing the supply reel to rotate. But, in my view, it is not to the point, for the purposes of claim 1, that the caterpillar drive does not cause the cable to be fed from the supply reel or is not otherwise adapted to perform that particular function.
99For completeness, I am satisfied that all other features of the apparatus claimed in claim 1 of the patent are present in the DSI apparatus.
Claim 5
100Claim 5 requires the apparatus to have feed means characterised by a plurality of rollers which clamp the cable to cause it to be fed from the supply reel.
101The DSI parties submitted that this feature is not present in the DSI apparatus because, first, the caterpillar drive in that apparatus does not cause the cable to be fed from the supply reel and, secondly, the rollers of the caterpillar drive do not clamp the cable. By way of elaboration of the second point, the DSI parties submitted that the drive operates by means of caterpillar belts which come into contact with and clamp the cable.
102I accept that, in the DSI apparatus, the caterpillar drive does not cause the cable to be fed from the supply reel. In operation, the drive motor associated with the supply reel rotates it, such that the cable is fed from the supply reel and taken by the upstream accumulator. The caterpillar drive than takes the cable from the upstream accumulator and supplies it to the bulb-forming unit. In that way, it could be said that, in operation, the caterpillar drive is pulling the cable from the upstream accumulator. It cannot be said, however, that the caterpillar drive, functioning as the feed means, also causes the cable it supplies to be fed from the supply reel. The cable is fed from the supply reel by operation of the drive motor associated with the supply reel which, during bulb formation, operates continuously. The slack in the cable is managed by the upstream accumulator.
103Thus, I am not satisfied that the DSI apparatus possesses this feature of claim 5. This finding is sufficient to deny a finding of infringement of claim 5. It is not necessary, therefore, for me to consider the second matter raised by the DSI parties. However, for completeness, I find that the DSI apparatus does possess feed means which has a plurality of rollers which clamp the cable. In this connection, it makes no difference that the caterpillar drive of the DSI apparatus functions with caterpillar belts. The belts are brought into contact with the cable by the pressure exerted by the rollers – specifically, the snub pulley, the tail pulley and the lazy rollers, but not the drive roller of each caterpillar belt/roller set acting cooperatively. These rollers thus clamp the cable, albeit in association with their corresponding caterpillar belts. The degree of clamping is not defined or described in claim 5 beyond the fact that, in that condition, the feed means must cause the cable to be fed from the supply reel. It is idle to speculate whether that degree of clamping is present in the caterpillar drive of the DSI apparatus because, as configured, the caterpillar drive does not cause the cable to be fed from the supply reel.
Claim 6
104Claim 6 further characterises the feed means in that at least one of the rollers of the feed means is rotatably driven by a drive means. It is not in question that two of the rollers associated with the caterpillar drive (the drive rollers) are rotatably driven by a drive means. However, as I have noted, these rollers are offset from the rollers that work cooperatively to clamp the cable. The DSI parties submitted that the feature added by claim 6 is not present in the DSI apparatus because, as claim 6 is dependent on claim 5, at least one of the rollers which clamp the multi-strand cable to cause it to be fed from the supply reel must be rotatably driven by a drive means. According to this submission, the only rollers in the DSI apparatus that are driven are those that are also offset and thus do not clamp the cable.
105Attractive though this submission might sound at first blush, I do not accept it. It ignores the presence of the snub pulley and the tail pulley in each caterpillar belt/roller set. Each of these is a roller that clamps the cable. Each of these is also rotatably driven by a drive means. This is because the caterpillar belt in each caterpillar belt/roller set that is driven by the drive roller also drives the snub pulley and the tail pulley by the action of the caterpillar belt on these pulleys. In principle, this is no different from the preferred embodiment described in the patent where the drive roller is driven by means of a drive wheel and belt arrangement which causes the drive roller to rotate.
106Despite this finding, the DSI apparatus does not possess the features of claim 6 simply because claim 6 is dependent on claim 5. If the DSI apparatus does not possess the features of claim 5, claim 6 cannot be infringed.
Claim 7
107Claim 7 requires the apparatus to have means for forming a bulb characterised in a specific way which involves the use of pairs of opposed jaws. The DSI parties do not dispute that the features of claim 7 are present in the DSI apparatus.
Claim 8
108Claim 8 requires the apparatus to have means for collecting the bulbed cable at spaced intervals on a take-up reel. The DSI parties do not dispute that the features of claim 8 are present in the DSI apparatus.
Claims 9 and 10
109Claim 9 further characterises the collecting means by providing that the apparatus has an axially rotatable bail arm having a bail member which guides the multi-strand cable onto the take-up reel. One issue of construction that arises is whether claim 9 requires the bail member to be part of the bail arm and, therefore, be rotatable itself.
110The DSI parties submitted that certain affidavit evidence given by Mr Walton should be understood as stating that such an arrangement was possible. I do not read Mr Walton’s evidence in that way. I only understand him to have said that it would be possible to have a bail member that is part of the rotatable bail arm, not that it would be possible to have such a bail member that could also be rotatable with the bail arm. Mr Walton’s evidence, as I understand it, was simply addressing the issue of whether claim 9 requires the bail member to be integral with the bail arm (in the sense that the bail arm and bail member are composites) or whether it permits a configuration in which the bail arm and the bail member are separate components. In my view, claim 9 includes a configuration in which the rotatable bail arm and the bail member work cooperatively to collect the bulbed cable at spaced intervals on the take-up reel, albeit that, as a matter of analysis, they could be regarded as separate components. This construction is supported when the claims are considered as a whole. In this connection, claim 10 is dependent on claim 9. Claim 10 further characterises the apparatus of claim 9 by stipulating that “the bail arm has a axially rotatable threaded shaft and the bail member is threadedly engaged with the threaded shaft such that the bail member can travel along the shaft as the latter rotates”. Thus, claim 9 at least includes an apparatus in which the bail arm and the bail member function cooperatively in a manner illustrated by the apparatus of claim 10.
111The DSI parties did not advance a positive submission that the DSI apparatus does not possess the characteristic specified in claim 10. Mr Wightley’s evidence was that the level wind device of the DSI apparatus included a threaded shaft which rotates on its axis and would be identified as a bail arm. He said that the combination of the sheaves mounted in the housing with the nut operated in the same way as a bail member. This was because, in operation, as the threaded shaft rotates, the nut transits along the shaft and takes the housing (containing the sheaves) with it, thus exerting a sideways force on the cable and forcing it to form uniform layers of bulbed cable across the take-up reel. Mr Walton agreed with that description. Both Mr Wightley and Mr Walton agreed that the DSI apparatus possessed the feature characterised in claim 10 of the patent.
112Although, in simple form, a “bail” is a hoop-like feature, the person skilled in the art would not read claims 9 and 10 as requiring a bail having any particular shape or configuration beyond that described in these claims. A person skilled in the art would understand the expression “bail member” as meaning a feature that functions like a bail to provide for the collection of the bulbed cable on the take-up reel at spaced intervals. In my view, the sheaves mounted in housing in the DSI apparatus is a bail member within the meaning of claims 9 and 10. I am satisfied, therefore, that the DSI apparatus possesses the particular characteristics set out in claims 9 and 10 of the patent.
Claim 11
113Claim 11 further characterises the collecting means by providing for a bail arm timer. Although Garford alleged that the DSI apparatus infringed claim 11, it did not advance any submission as to why this was so. I am not satisfied that the DSI apparatus possesses a bail timer.
Claims 12 to 14
114The DSI parties submitted that the method of claim 12 of the patent was not infringed because, in operation, the DSI apparatus does not involve the integer of “sensing when the cable has reached a certain position and stopping movement of the cable”.In that connection, they distinguished this particular feature from the following feature of claim 1:
… means for determining the position of the cable …
115In relation to that feature of claim 1, they pointed to the fact that Mr Walton and Mr Wightley had agreed that the means for determining the position of the cable may include a shaft encoder, timer or mechanical stop. The specification itself exemplifies the use of a timer mechanism as a means by which the movement of the cable could be arrested in order for a bulb to be formed in the stopped cable. The specification does not explain the difference between the notions of “determining the position of the cable” and “sensing when the cable has reached a certain position.” Claim 2 illustrates that the claims do distinguish between means for determining the position of the cable and means for sensing the position of a formed bulb. Claim 2 claims:
An apparatus according to Claim 1, characterised in that the means for determining the position of the cable comprises means for sensing the position of a formed bulb.
116In the context of a claim (such as claim 2) that defines the characteristics of an apparatus, it is clear that the sensing means (in that case, to sense the position of a formed bulb) must be an apparatus feature. But, the DSI parties submitted that there was nothing in the method of claim 12 that required the sensing of the position of the cable to be done by an apparatus. They submitted, nonetheless, that the sensing referred to in claim 12 must mean the detection of some feature or property of the cable itself to ascertain when it has reached a certain position. They submitted that such sensing might be, for example, by physical contact or by sight. They submitted that the requirement of sensing referred to in claim 12 was not satisfied by simply monitoring the displacement of the cable, such as by the location or the position sensor device of the DSI apparatus. In other words, determining the position of the cable by a calculation based on monitoring rotation of the shaft encoder could not satisfy the requirement of “sensing when the cable has reached a certain position”.
117This position was supported by Mr Walton’s evidence. The DSI parties also drew attention to Mr Wightley’s affidavit evidence that “some property of the raw cable must be ‘sensed’ …”. It is clear, however, that Mr Wightley was not intending to use the word “property” with the meaning intended by the DSI parties because, in this part of his evidence, he was stating that a revolution counter or shaft encoding device mounted on the axle of a wheel of fixed diameter, or even a timer device, would constitute an indirect means of sensing when the cable has reached a certain position (assuming no slippage).
118The DSI parties also invoked the example of an odometer: an odometer might calculate the distance a car has travelled (by measuring the number of revolutions of a component such as the output shaft on a gearbox), but would not sense the position that the car has reached on the road.
119In my view, it is clear that claim 12 does not require the sensing of the position of a formed bulb in the cable: cf claim 2. All that is required is “sensing when the cable has reached a certain position”. The claim does not define any particular means or way by which that might be done in the method which it otherwise defines. Thus, the step does not require sensing means in the form of an apparatus, although a step carried out by such means would fall within the scope of the claim. Claim 12 does make clear that this step is the precursor to stopping movement of the cable so that a bulb can be formed in the stopped cable. In context, it seems to me that the word “sensing”, as used in claim 12, refers to no more than perceiving or estimating or, indeed, determining when the cable has reached a position in which it is intended that a bulb be formed so that, at that point, movement of the cable is stopped.
120The question for infringement that arises in this regard is whether the method of manufacturing bulbed cable carried out by the DSI apparatus contains the step of “sensing when the cable has reached a certain position”. In the DSI apparatus, the cable is indexed linearly to the bulb-forming means. The extent of the cable’s intended displacement is determined by the location or position sensor device I have described. Given the configuration of the DSI apparatus, the extent of the intended displacement of the cable equates with “a certain position” of the cable within that apparatus, under normal operating conditions. The certain position is the position of that part of the cable in which it is intended that a bulb be formed, relative to the bulb‑forming means itself. By displacing the cable linearly by a certain distance, the DSI apparatus has, in a practical way, “[sensed] when the cable has reached a certain position”, so as to then stop movement of the cable by stopping the operation of the feed means.
121The example of the odometer calculating the distance a car has travelled, but not sensing the position that the car has reached, is a flawed analogy. It is, nevertheless, illustrative. It proceeds on the basis that the distance that the car has travelled does not necessarily equate with “a certain position”. So expressed, that proposition may be accepted. But if it is known that the car will proceed linearly in a given direction for a given distance so as to arrive at an intended and known place, the odometer will register the distance that has been travelled and, upon reaching a set distance, it will be known that the car has arrived at its intended destination. Under these particular conditions, there is a known relationship between the distance travelled and a particular location or position. Thus, in a real and practical way, the arrival of the car at its intended position will be known from a particular reading given by the odometer. Equally, this is true when a cable is advanced linearly in a given direction for a given distance so as to arrive at an intended position for bulb formation. The location device of the DSI apparatus measures the distance that has been travelled under these conditions, and by its readings, senses when the cable has reached its intended position to stop the operation of the caterpillar drive. Therefore, I am satisfied that the step of “sensing when the cable has reached a certain position” is present in the operation of the DSI apparatus.
122The DSI parties also submitted that the method of claim 12 was not infringed by the operation of the DSI apparatus because it did not include the step of “stopping movement of the cable”. In this connection, the DSI parties pointed to the continued paying-off of the cable from the supply reel even when movement of part of the cable is stopped for bulb formation. In short, they submitted that the claimed method requires all movement of the cable be stopped, and then recommenced.
123I do not accept that submission. The claimed method requires the steps (amongst others) of, sequentially, “stopping movement of the cable, forming a bulb in the stopped cable, recommencing movement of the cable and repeating the cycle”. In my view, on its proper construction, claim 12 does not require all movement of all parts of the cable to be stopped. Rather, it requires that that part of the cable that is presented for bulb formation be stopped. In my view, this is made sufficiently clear by the integer “forming a bulb in the stopped cable”. There is no dispute that, in the operation of the DSI apparatus, that part of the cable that is presented for bulb formation is stopped to enable that step to be performed. The movement of that part of the cable is then recommenced after the bulb has been formed. This aspect of the operation of the DSI apparatus is undertaken cyclically. I am satisfied, therefore, that the step of “stopping movement of cable” is present in the operation of the DSI apparatus.
124Claim 13 claims a method according to claim 12, characterised in that the cable formed with bulbs is collected on a take-up reel. Claim 14 claims a method according to claim 13 characterised in that the cable is fed onto the take-up reel over a predetermined width in such a manner as to collect the cable substantially evenly across that width. The DSI parties did not dispute that these steps are present in the operation of the DSI apparatus.
125I am satisfied, therefore, that the operation of the DSI apparatus has resulted in an infringement of claims 12 to 14 of the patent.
Other aspects relating to the question of infringement
126Apart from disputing that a number of features of the claims were not present in the DSI apparatus or in its mode of operation, the DSI parties advanced a separate submission that infringement could not be established in any event because the DSI apparatus was a “new and different combination”. In this connection, they pointed to the specific difference in the way in which the DSI apparatus operates compared with the description in the body of the specification of the way in which the preferred embodiment operates. In support of this submission, the DSI parties relied upon the following well-known passage in the judgment of James LJ in Clark v Adie (1875) 10 Ch App 667 at 675:
The patent is for the entire combination, but there is, or may be, an essence or substance of the invention underlying the mere accident of form; and that invention, like every other invention, may be pirated by a theft in a disguised or mutilated form, and it will be in every case a question of fact whether the alleged piracy is the same in substance and effect, or is a substantially new or different combination.
298Garford criticised Dr Fuller’s evidence in this regard, principally in relation to the process he was asked to undertake and the manner in which he undertook it. I do not propose to detail all of those criticisms. I do not think that they materially diminish the evidence he gave. The thrust of a number of these criticisms was that Dr Fuller was led in the way that he conceived certain aspects of his design. I do not accept these submissions. I am satisfied that his design was entirely his own conception, unaided by others.
299Garford also criticised Dr Fuller’s design because it contained a number of alternatives. I do not accept that, simply because Dr Fuller conceived of alternatives within his own design, the significance of his evidence is diminished accordingly. In this vein, Garford also submitted that, ultimately, Dr Fuller’s apparatus is “no more than a wish list of assorted parts that likely as not will not work together”. That submission is really directed to a number of very specific design features which Mr Hedrick criticised and which Dr Fuller maintained were appropriate for the task. Once again, Garford’s submission ignores the fact that Dr Fuller’s apparatus was characterised by a substantial number of the features identified in the challenged claims. If, viewed at the level of generality of the claims, Dr Fuller’s apparatus is a wish list of assorted parts that will not work together, then the same would be true of the claimed apparatus. In the end result, I do not think that this characterisation of Dr Fuller’s apparatus is warranted when the true significance of his evidence is appreciated.
300Dr Fuller’s evidence does not stand as the reason why I regard the invention, as claimed in the challenged claims, to be obvious. I regard the invention, as so claimed, to be obvious in light of the common general knowledge, for the reasons I have given above. I have reached that conclusion independently of Dr Fuller’s evidence. Nevertheless, the way in which Dr Fuller was readily able to describe the components and working of an apparatus that would function to manufacture bulbed cable in continuous form suitable for use as rock bolts – being the apparatus I have discussed above – supports my conclusion that, before the priority date, the invention, as claimed, was obvious.
Other evidence
301Mr Windsor was cross-examined about the manufacture of continuous bulbed cable by reference to the period before September 1999. The following exchange took place:
... I now want to ask you some questions, if I may, about the manufacture of the continuous bulbed strand on a reel. Do you understand? Yes.
... And again, I would like you to answer these questions based on the knowledge and experience you had prior to September 1999? Yes.
Now, you were aware – I think you’ve indicated before September 1999 – that continuous bulbed strand was available on a reel, correct? I have seen – I saw continuous bulbed strand on a reel, yes.
Before September 1999? Yes.
... And you were also aware before September 1999 that plain strand could be supplied on a reel. Is that correct? Yes.
And you understood – is this right – before September 1999 that in order to make continuous bulbed strand on a reel you would start with plain strand on a reel. Is that a reasonable proposition? Yes.
Thank you. You would do that, wouldn’t you, because you would need a length of plain strand sufficient to form the bulb strand and wind that onto a reel to have the finished product? Yes. Yes.
And that was your understanding before September 1999? Yes.
And indeed, if you had wanted, yourself, to make some bulbed strand before that date, that’s how you would have done it, isn’t it, starting with a reel of plain strand? I believe so, yes.
... Now, in order to do that, in order to make some continuous bulbed strand on a reel, starting with a reel of plain strand, you would have to feed the plain strand from the reel of plain strand, correct? You may, rather than feed, you may draw.
Draw it off? Draw.
Okay. So you would taking – in some way, you would take the strand off the reel of plain strand, correct? Yes. I believe that I would draw it off.
Draw it off. And you would then carry out the bulb forming process in some way on the strand? Yes.
And then you would feed the strand onto the reel which it was going to be collected on as bulbed strand, correct? I think I would wind it under tension onto the
... So you would wind it onto the other reel, correct? Yes.
And for the purposes of that process, you would have the reels rotatable. Is that right? Yes.
So you would rotate the first reel, draw off the plain strand, conduct the bulb forming process and then wind the bulbed strand onto the other reel which was also rotatable? Yes.
... And that’s the case, based on your knowledge and experience before September 1999? That’s what I guessed would be happening, and that’s what I would do if I was asked to do it.
302Garford called into question the weight to be given to this evidence, principally because of the leading nature of the questions that were asked. There is some force in that criticism. Even so, as with Dr Fuller’s evidence, Mr Windsor’s evidence supports the conclusion I have reached, independently, on the question of obviousness.
Secondary indicia
303In Lockwood [No. 2], the High Court (at [115]) said:
Something further also needs to be said about secondary evidence. Secondary evidence, such as commercial success, satisfying a long-felt want or need, the failure of others to find a solution to the problem at hand and copying by others such as competitors, has a role to play in a case concerning an inventive step. In Molnlycke AB v Procter & Gamble Ltd [No 5], Nicholls V-C warned that secondary evidence should not be permitted to "obscure the fact that it is no more than an aid in assessing the primary evidence". That observation can be compared with the treatment of secondary evidence in the United States of America. Under § 103 of the Patents Act 1952 (US) it is necessary to make a number of factual inquiries when making a determination of invalidity based on obviousness. The primary considerations include determining the scope and content of prior art, identifying the differences between the prior art and the advance over the prior art which is claimed and assessing the level of ordinary skill in the art. Secondary considerations of non-obviousness, if any, are also to be determined. In Graham v John Deere Co of Kansas City the Supreme Court of the United States identified the role of secondary evidence:
“Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc, might be utilised to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.”
Since Graham, the inquiry into secondary considerations of non-obviousness has been treated as being an important inquiry which must be taken into account because prior art cannot be evaluated in isolation.
[Footnotes omitted]
304In the present case, Garford submitted that there were secondary indicia that the invention, as claimed in the challenged claims, was not obvious. It relied on:
·The commercial success of its sales of continuous bulbed cable.
·“Unfelt” want (that is, nobody, other than the patentee, sensed that such an invention would be useful).
·The absence of evidence of any other person attempting to design a process for manufacturing continuous bulbed cable.
·An allegation that the DSI parties “copied” a machine for making continuous bulbed cable that had been made and supplied by Garford overseas.
305I am not persuaded that any of these matters shows that the invention, as claimed in the challenged claims, was other than an obvious combination.
306No doubt the development and use of Garford’s new apparatus enabled it to produce continuous bulbed cable more efficiently, and in greater quantities to meet demand, than its previous method involving the manual intervention of the two operators. However, it is important, in my view, to distinguish between the commercial success of continuous bulbed cable and the commercial success of the invention as claimed.
307I would accept that increasing sales of bulbed cable reflects the commercial success of that particular product. But there may be a number of reasons for that success. Mr Hedrick’s evidence was that, prior to making the new apparatus, the demand for continuous bulbed cable had increased and was increasing because of adaptations he had made to the Tamrock Cabolter. This, it seems to me, was an important development that enhanced the utility of bulbed cable bolts in mining operations. It must have contributed to the increased sales of continuous bulbed cable. The commercial success of Garford’s continuous bulbed cable may also have been assisted by its holding of the first Garford patent, which did not expire until 2009. There may be a number of other sound reasons for the increasing volume of Garford’s sales, including, perhaps, good marketing. These matters were simply not explored in the evidence.
308In Firebelt Pty Ltd v Brambles Australia Ltd (t/as Cleanaway) (2002) 54 IPR 449, the High Court quoted with approval the following passage from Haberman v Jackel International Ltd [1999] FSR 683 at 699, which is apposite to the present case:
If skilled workers in the art had looked at the priority date both at the prior art relied on and had turned their minds to solving a known problem their reactions would come closer to showing what would have been the approach of the hypothetical skilled man. Unfortunately evidence in that form rarely exists. However some insight into the thinking of those in the art at the priority date can be provided by evidence of commercial success. To this end patentees sometimes prove schedules of sales to support their claims to inventiveness. In most cases this type of evidence is of little or no value because it does no more than show that a particular item or process which employs the patented development has sold well. The mere existence of large sales says nothing about what problems were being tackled by those in the art nor, without more, does it demonstrate that success in the market place has anything to do with the patented development nor whether it was or was not the obvious thing to do. After all, it is sometimes possible to make large profits by selling an obvious product well. But in some circumstances commercial success can throw light on the approach and thought processes which pervade the industry as a whole.
309Importantly, in the present case, there is no evidence that Garford is in the business of manufacturing and supplying apparatus to manufacture continuous bulbed cable. Thus, there is no measure of the commercial success of the invention that is claimed, beyond the recognition that it allows for better commercial production of an apparently successful, and possibly increasingly successful, product. That certainly signifies that its new apparatus is useful to that end. It does not follow, however, that the invention as claimed (which should not be confused with a particular working embodiment of the invention) possesses the necessary quality of inventiveness to support the grant of a patent.
310Garford’s assertion of “unfelt” want, and the absence of evidence of others seeking to design a machine for making continuous bulbed cable, must be seen in a similar light. The existence of the first Garford patent may well have been a deterrent to others to attempt to enter the field. Indeed, the mere existence of the subject patent may itself have been a deterrent. There may be other explanations of a commercial nature which acted as a disincentive to others to attempt to enter the field. Thus, Garford’s reliance on these two matters provides a fragile basis to suggest, contrary to the other evidence to which I have referred, that the invention as claimed possesses an inventive step.
311As to copying, Garford submitted that the DSI parties had an opportunity to copy and did in fact copy an asserted embodiment of the invention, having regard to certain events that occurred in Canada. The brief facts are as follows.
312Camada Technology International Pty Limited (Camada), an Australian company, entered into a joint venture agreement with Thiessen Equipment Ltd (Thiessen), a Canadian company, for the manufacture and supply of Garford cable bolts to certain distributors in Canada and the western region of the United States of America. Garford had previously appointed Camada its licensee. For this purpose, Garford built and supplied Thiessen with a machine for making continuous bulbed cable which Thiessen used in Canada. Garford did not seek to establish the particular features of that machine beyond Mr Hedrick’s assertion that it was “Garford’s patented apparatus”. That self-serving description does not convey, in any meaningful way, the features of the machine in question.
313 In March 2004, Mr Hedrick was informed by one of Camada’s directors that Camada had terminated its joint venture arrangement with Thiessen and was proposing to enter into a sub-licence with a DSI Canadian company. The evidence is unclear as to the identity of that company. It is likely that it was DSI Canada. I will proceed on that basis. DSI Canada subsequently purchased either Thiessen’s assets or its shares. In any event, it seems to have gained possession of the machine that Garford had supplied to Thiessen. Thereafter, DSI Canada manufactured and supplied continuous bulbed cable using this machine. It paid royalties to Camada under a licence arrangement. Camada, in turn, paid royalties to Garford. After DSI Canada’s licence with Camada expired (it seems by effluxion of time), DSI Canada commenced negotiations with Garford for a further licence. Those negotiations did not proceed to a concluded licence. DSI Canada then offered to purchase Garford’s assets. That offer was rejected. DSI Canada continued to make continuous bulbed cable. The identity of the machine used for that purpose is not clear. It could have been the machine originally supplied by Garford; it may not have been. Garford subsequently sued DSI Canada for infringement of Garford’s Canadian patent rights.
314Garford sought to use this evidence in various ways, including in relation to its case on infringement. This evidence is plainly not relevant to that question. But evidence of this nature can be relevant to the issue of obviousness. Its probative value, however, depends on the facts of the particular case. For example, if a rival has sought to solve a problem for some time and, upon publication of a patent, copies the alleged invention that is disclosed, the inference might be irresistible that the disclosure is truly inventive: see the discussion in Elconnex at 510-511. Those are not the facts in the present case. The more likely complexion to be placed on the facts of the present case is that, after manufacturing continuous bulbed cable in Canada, and after having failed to reach appropriate commercial arrangements with Garford in respect of the continued use of the machine that had originally been supplied to Thiessen, DSI Canada simply decided to continue to engage in manufacture. The evidence does not establish what machine was used for that purpose. If it was the original machine supplied by Garford, the evidence does not enable me to conclude that it had the features of the invention as claimed. I am not prepared to speculate on that matter. In any event, no relationship between the features of that particular machine and the features of the DSI apparatus, the subject of the present infringement proceeding, has been established. In the end result, I would not infer from these facts that the invention, as claimed in the challenged claims, possesses an inventive step.
MANNER OF MANUFACTURE
315An invention will not be a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, is not a manner of manufacture within the meaning of s 6 of the Statute of Monopolies: s 18(1)(a) of the Act.
316This challenge to validity by the DSI parties concerns claims 1 and 5 to 14 of the patent.
317In essence, the DSI parties submitted that, because the specification of the patent mentions the first Garford patent as prior art, and because the first Garford patent uses an arrangement to produce bulbs that would fall within at least claims 1 and 5 to 7 of the patent, an admission has been made that, at least so far as those claims are concerned, there is no new apparatus. Consequently, they submitted, there was no manner of manufacture within the meaning of s 6 of the Statute of Monopolies.
318I do not accept this submission. First, I cannot accept that any such admission is made on the face of the specification. Secondly, I do not accept that the arrangement to produce bulbs disclosed in the first Garford patent is conterminous with the invention claimed in claims 1 and 5 to 7 of the patent. Thirdly, and in any event, this particular contention is one that is properly characterised as being directed to a lack of novelty, not that the invention as claimed is not a manner of manufacture for the purposes of s 18(1)(a) of the Act. I have rejected the challenge to novelty respecting the apparatus claims considered against the disclosures of the Garford No. 1 Application (which the parties have accepted are the same as the disclosures in the first Garford patent).
319The DSI parties submitted, alternatively, that the invention claimed in claims 1, 5 to 10 and 12 to 14 of the patent is a mere new use of an apparatus already known, being the use of the apparatus already disclosed in the first Garford patent, to produce a known product and is thus not a manner of manufacture. I do not accept this alternative submission. It fails on the same basis as the DSI parties’ first submission.
320I am satisfied that the invention as claimed in claims 1 and 5 to 14 of the patent constitutes a manner of manufacture for the purposes of s 18(1)(a) of the Act.
SUFFICIENCY OF DESCRIPTION AND BEST METHOD
321The validity of a patent can be challenged on the ground that the specification does not comply with, for example, s 40(2) of the Act: see s 138(3)(f) of the Act. As I have noted, s 40(2)(a) of the Act provides that a complete specification must describe the invention fully, including the best method known to the patent applicant of performing the invention.
322As ultimately argued, this ground of invalidity was distilled into two contentions. The first contention related to the brake which forms part of the preferred embodiment described in the specification. In that connection, the specification says:
If it is desired to arrest movement of the multi strand cable 11 the relatively reciprocable members 18 of the brake 16 are moved hydraulically relative to one another to engage the multi strand cable 11. In this case, the drive to the rollers 24 would be discontinued.
323I accept that, in context, the word “if” commencing this passage, must be understood as meaning “when”. The specification then describes the bulb‑forming process, after which it describes the continued operation of this particular embodiment as follows:
Further, the rollers 22 and 24 are caused to rotate again, the brake 16 is released and the takeup reel 46 is caused to rotate again. The multi strand cable 11 is then moved along longitudinally until the newly formed bulb 12 encounters the switch means 40 and the cycle is repeated.
324The DSI parties submitted that, because the specification describes the brake as arresting the movement of the cable prior to bulb formation, the preferred embodiment will not work. According to the DSI parties, this is because once the brake is applied and the movement of the cable is arrested, it would not be possible for the bulb-forming unit (which is downstream from the brake) to compress the cable in the particular manner described – which would require further movement of the cable when the upstream pair of jaws is moved towards the downstream pair of jaws.
325The DSI parties’ submission is certainly supported by the evidence given by Dr Fuller, and by Mr Wightley in particular. Mr Wightley suggested that the brake might be applied only when the operator of the apparatus wanted to arrest movement of the cable (otherwise than for the purpose of bulb formation). Mr Wightley’s explanation is clearly not the operation of the brake that is described in the specification, although, no doubt, it could be used in that way.
326Mr Wightley also said that, if the brake were to be applied other than in the way he suggested, a bulb could not be formed unless one of two “unlikely” events occurred – either the cable stretched or the cable slipped in the brake, which Mr Wightley said would be “bad from a maintenance point of view”.
327The specification must be read in a commonsense way. Plainly, the person skilled in the art would understand that, although in the preferred embodiment the general movement of a cable has been arrested, the cable must nevertheless be capable of some further movement sufficient to enable the upstream pair of jaws (which has gripped the cable) to be moved closer to the downstream pair of jaws, to form the bulb. Therefore, despite Mr Wightley’s evidence on this point, I am satisfied that on reading the specification, the person skilled in the art would understand that the brake is not arresting movement of the cable in some absolute sense, such as to prevent the limited movement of the cable that is necessary to form a bulb.
328Mr Hedrick said that in the machine used by Garford, the brake has a regulator which allows the hydraulic pressure operating on it to be adjusted. The brake will clamp with sufficient pressure to stop the general movement of the cable, but not to stop the cable going through it when the ram associated with the upstream pair of jaws moves that pair of jaws towards the downstream pair of jaws. In this connection, I have no doubt that the person skilled in the art would understand that the forces acting on the cable to move it at that point in the process would be far greater than the motive forces acting on it at other times.
329Mr Hedrick’s explanation of the mode of operation of the brake is not explicit on the face of the specification. But I am not satisfied that, for that reason, the specification fails the requirements of s 40(2)(a) of the Act.
330In Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1, the High Court quoted with approval (at [25]) the following observations of Romer LJ in No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 (at 243):
[I]n other words, [it is essential] that the patentee should disclose his invention sufficiently to enable those who are skilled in the relevant art to utilise the invention after the patentee's monopoly has come to an end. Such disclosure is, indeed, the consideration that the patentee gives for the grant to him of a monopoly during the period that the patent would run. …
It is not necessary that he should describe in his specification the manner in which the invention is to be performed, with that wealth of detail with which the specification of the manufacturer of something is usually put before the workman who is engaged to manufacture it.
331The High Court then said:
The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?
332In the present case, I am persuaded that this question should be answered affirmatively. As I have said, the person skilled in the art would understand that the brake is not arresting movement of the cable in some absolute sense. Furthermore, the fact that pressure acting on an hydraulic brake can be adjusted to regulate the force with which it clamps could hardly be a matter that would not be known to the person skilled in the art at the priority date and readily applied by that person to provide a working example of the preferred embodiment. It is not necessary for the specification to give details which the person skilled in the art could supply for himself or herself. Mr Wightley thought that slippage of the cable through the brake would be undesirable for maintenance reasons. I would assume from Mr Hedrick’s evidence that he would disagree, because he said that that was, indeed, the way that Garford’s machine works. He said that the brake acts as a drag brake. But whether the operation of the brake in that manner presents a maintenance problem or not, it does not follow that the invention has not been fully described or that the best method of performing it, as known to the patentee, has not been given.
333The second contention related to Mr Hedrick’s criticisms of the apparatus that Dr Fuller designed. The DSI parties submitted that if Mr Hedrick’s criticisms are to be accepted, it followed that the patent must be invalid for want of sufficient description of the invention and the best method of performing it. In my view, that simply does not follow at all.
334The patentee’s obligations under s 40(2)(a) of the Act do not extend to describing or cautioning against something that will not work. The patentee’s only obligation is captured by the question posed by the High Court in Arico which I have quoted above. Whatever criticisms Mr Hedrick has of particular features of the specific design of Dr Fuller’s apparatus (a matter to which I shall return below), I am satisfied that the specification complies with the requirements of s 40(2)(a) of the Act.
UTILITY
335An invention will not be a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, is not useful: s 18(1)(c) of the Act.
336This challenge to validity by the DSI parties concerns claims 1 and 5 to 14 of the patent. The DSI parties’ case on invalidity on this ground was advanced on the same basis as their case on insufficiency. However, the two bases of attack are different. The distinction between the two is summarised in T.A. Blanco White, Patents for Inventions, 5th ed (1983) (Blanco White) at 4-404:
The distinction between inutility and insufficiency is in principle clear: insufficiency is when you can’t make the thing, inutility when you can but it doesn’t work when you have.
337In my view, the case on utility cannot be sustained. The question of utility is directed to the claims themselves and not to the description of the preferred embodiment in the specification. Specifically, the question is whether any embodiment of the invention made within the claims will work: Lane Fox v Kensington and Knightsbridge Electric Lighting Company [1892] 3 Ch 424 at 431; Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 336. The issue is further explained in Blanco White at 4-409 as follows:
The function of a claim is to delimit the monopoly given by the patent, not to give instructions for the working of the invention, and it is consequently not necessary that the claim should contain these instructions; even the body of the specification is required to contain only those instructions that the reader cannot supply for himself. It would be unreasonable to expect the claims to contain more. A distinction should accordingly be drawn between cases in which the invention claimed is not useful unless an additional feature or features be added to those claimed (the claim then being invalid), and cases where the qualifications and expedients necessary to make the article claimed work can be, and on a true construction of the claim are, left to the reader to supply for himself. Since in cases where the reader can make the thing work the courts tend wherever possible to construe claims as requiring him to do so, it is not in practice enough to ask whether the claim includes things that are not useful; it is necessary to ask also whether there is anything in the language of the claim positively pointing to some useless construction. The successful utility attacks are nearly always in cases of that sort.
338In my view, it cannot be said – and, indeed, it has not been argued – that any of the challenged claims lacks an essential integer that is required to make the invention, as claimed, useful or that there is anything in the language of the challenged claims that points to anything that is inutile. That, it seems to me, marks the end of the DSI parties’ case on this ground.
339In any event, this part of the DSI parties’ case rests on an acceptance of the proposition that the apparatus designed by Dr Fuller will not work for the intended purpose of making a multi-strand rock bolt having spaced-apart bulbs. Despite Mr Hedrick’s criticisms of Dr Fuller’s design, that proposition has not been established on the evidence. Furthermore, a patent is not rendered inutile simply because the claims present the public with choices by which, depending on the choices that are made, the invention can work with greater or lesser efficiency.
ADDITIONAL MATTERS
340Given my findings on the validity of the claims asserted against the DSI parties, there can be no liability on their part for infringement of those claims. It is unnecessary for me to decide two additional issues which were raised at the hearing, namely, whether DSI Australia was liable for infringement on the basis of authorisation (it being conceded by DSI that it was the party who made and operated the DSI apparatus) and whether a case for additional damages has been established.
341Finally, at the hearing, I made a number of rulings by which evidence was admitted provisionally: see s 57 of the Evidence Act 1995 (Cth). My rulings in that regard are included in Administrative Exhibit 1. The parties were content for me to consider the unconditional admissibility of that evidence when preparing these reasons.
342When all the evidence is considered, I am not satisfied that the following evidence (which had been provisionally admitted) passes the test of relevance: the affidavit of Allan Clifford Wightley sworn 11 October 2011 (paras 44, 45, 59 (second sentence, the words “As stated above”) and 61 (fourth sentence)); the affidavit of Christopher Reginald Windsor sworn 31 October 2011 (paras 23 to 31, 33 and 34); and Exhibit K tabs 2 to 12, 14, 20, 21, 31, 33, 34 and 35. I therefore reject that evidence. I admit unconditionally the other evidence that had been admitted provisionally.
343There is an aspect of this evidence (now unconditionally admitted) to which I should make reference. Exhibit B is a copy of International Patent Application WO 2010/071935 A1 (the DSI patent application). David Evans is named as an inventor in that application. Mr Evans is also DSI’s Engineering and Technical Manager. He has held that position since November 2007. Prior to that time, he held a number of other engineering-related positions within DSI, which he joined in 1998. Mr Evans swore an affidavit in which he said that the DSI apparatus had the features of the apparatus described in the DSI patent application. He also said that the DSI apparatus operated in accordance with the method described in that application. This assertion was also made in correspondence by DSI’s solicitors. In order to establish its case on infringement, Garford sought to rely on certain statements made in the DSI patent application as admissions. Notwithstanding these statements, I am not satisfied that the DSI apparatus has precisely the same features as the apparatus described in the DSI patent application or that it operates in precisely the same way as described in that application. This finding does not lead to a rejection of Ex B. Overall, however, I have relied on Mr Wightley’s and Mr Walton’s description of the DSI apparatus and its operation. That description accords with my viewing of Ex A, Mr Wightley’s diagram and certain still images of the DSI apparatus. It also accords with what I understand to be the common position of the parties.
DISPOSITION
344The parties are to bring in draft orders giving effect to these reasons within 10 days. If they are unable to agree upon the form of the orders, they are to provide, within the same period, drafts of the orders they each seek, supported by written submissions. The submissions are not to exceed three pages in length.
I certify that the preceding three hundred and forty-four (344) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates. Associate:
Dated: 28 February 2013
SCHEDULE 1
The patent drawings
SCHEDULE 2
The DSI Apparatus
SCHEDULE 3
Notional Claims for the IRF Application
The claims defining the invention are as follows:
1.An apparatus for manufacturing a rock anchor of the type comprising a cable having a plurality of strands and a plurality of bulbous portions formed in different parts of the cable;
characterised by a feeding means for feeding a cable having a plurality of strands from a spool or reel;
a first holding means which allows the cable to pass therethrough in a forward direction and which holds the cable and substantially prevents the cable from moving in a reverse direction when a force tending to move the cable in the reverse direction is applied to the cable, a second holding means for selectively clamping and unclamping the cable, wherein the first holding means and the second holding means are moveable relative to one another to form bulbous portions in different parts of the cable; and
means for determining when said cable has passed through the apparatus to a sufficient extent to stop operation of the feeding means to enable a further bulbous portion to be formed.
2.An apparatus according to claim 1;
characterised in that the feeding means comprises a pinch roller arrangement which pinches the cable to cause it to be fed from the spool or reel.
3.An apparatus according to any one of the preceding claims;
characterised in that the first holding means has a first pair of opposed collet pieces defining a first aperture therebetween for passage of the cable, the first pair of opposed collet pieces initially being in a first position in which the first aperture is sized to allow the cable to pass therethrough,
the second holding means has a second pair of opposed collets which are initially in a retracted position;
the first pair of opposed collets being arranged to be brought together to reduce the size of the first aperture so as to grip the cable;
the second pair of opposing collets being arranged to close so as to grip the cable;
and the first and second pairs of opposing collets being subsequently arranged to be moved to reduce the distance therebetween so as to form a bulbous portion in the cable;
and the first pair of opposing collets being arranged to subsequently allow the cable to be pulled therethrough and to be moved to the first position;
and the second pair of collets being arranged to subsequently release the cable and to be moved back to the retracted position.
4.A method of manufacturing a rock anchor of the type comprising a cable having a plurality of strands and a plurality of bulbous portions formed in different parts of the cable;
characterised by feeding a cable having a plurality of strands from a spool or reel;
determining when the cable has been fed to a correct position for formation of a bulbous portion and stopping movement of the cable;
forming a bulbous portion in the stopped cable; and
recommencing movement of the cable and repeating the cycle.
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