FEDERAL COURT OF AUSTRALIA
Fieldturf Tarkett Inc v Tigerturf International Limited [2014] FCA 647
Citation: Fieldturf Tarkett Inc v Tigerturf International Limited [2014] FCA 647 Appeal from: Fieldturf Tarkett Inc v Tigerturf International Limited [2011] APO 2;
Fieldturf Tarkett Inc v TigerTurf International Limited [2011] APO 3Parties: FIELDTURF TARKETT INC v TIGERTURF INTERNATIONAL LIMITED File number(s): NSD 96 of 2011; NSD 227 of 2011 Judge(s): JAGOT J Date of judgment: 20 June 2014 Catchwords: PATENTS – patent consisting of combination of integers – lack of novelty – lack of inventive step – lack of clarity – prior art – anticipation by prior document or prior publication – anticipation by prior use or prior act – enabling disclosure – whether documents or information publicly available – whether information common general knowledge – effect of hindsight on reliability of evidence as to anticipation by prior act Legislation: Patents Act 1990 (Cth) ss 7(1), 7(2), 18(1)(b)(i), 18(1)(b)(ii), 40(3), 60(4) Cases cited: Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628
Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411; [2002] HCA 59
Alphapharm Pty Ltd v H Lundbeck A/S (2008) 76 IPR 618; [2008] FCA 559
Apotex Pty Ltd (formerly Genrx Pty Ltd) v Sanofi-Aventis (2008) 78 IPR 485; [2008] FCA 1194
Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52; [2010] FCA 1061
Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420; [2005] FCA 805
Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (2012) 210 FCR 21; [2012] FCA 944
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (2012) 290 ALR 47; [2012] FCA 467
British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221
C Van der Lely NV v Bamfords Ltd (1962) 1A IPR 86
Commissioner of Patents v Microcell Ltd (1958) 102 CLR 232; [1959] HCA 71
Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160; [1970] HCA 38
Dynamite Games Pty Ltd v Aruze Gaming Australia Pty Ltd (2013) 103 IPR 373; [2013] FCAFC 96
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173; [1992] FCA 556
Eli Lilly & Company Ltd v Apotex Pty Ltd (2013) 100 IPR 451; [2013] FCA 214
F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56; [2000] FCA 283
Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels Pty Ltd (1993) 26 IPR 565; [1993] FCA 340
Fomento Industrial SA v Mentmore Manufacturing Co Ltd [1956] RPC 87
General Tire & Rubber Co v Firestone Tyre and Rubber Co [1972] RPC 457
Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106; [1999] FCA 742
H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151; [2009] FCAFC 70
Hill v Evans (1862) 1A IPR 1
Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20; [2008] FCAFC 139
Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155; [2005] FCAFC 90
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274; [2004] HCA 58
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173; [2007] HCA 21
Lux Traffic Controls Ltd v Pike Signals Ltd [1993] RPC 107
Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31; [2006] FCAFC 91
Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1995) 33 IPR 1
Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248; [2002] FCAFC 315
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253; [1980] HCA 9
New England Biolabs Inc v F Hoffman-La Roche AG (2004) 141 FCR 1; [2004] FCAFC 213
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513; 16 IPR 545; [1990] FCA 40
Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43; [2000] FCA 676
PLG Research Ltd v Ardon International Ltd [1993] FSR 197
Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11; [2013] FCA 368
Re Bristol-Myers Co’s Application [1969] RPC 146
Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577; [1996] FCA 1544
Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98; [1961] HCA 39
Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496; [2011] FCA 1002
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588; [1961] HCA 91Windsurfing International Inc v Petit (1983) 3 IPR 449
Date of hearing: 17, 18, 19, 24, 25, 26 March and 7, 8 April 2014 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 189 Counsel for FieldTurf Tarkett Inc: N R Murray Solicitors for FieldTurf Tarkett Inc: Herbert Smith Freehills Counsel for TigerTurf International Limited: J Cook and L Barnett Solicitors for TigerTurf International Limited: A J Park
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 96 of 2011
ON APPEAL FROM THE COMMISSIONER OF PATENTS
BETWEEN: FIELDTURF TARKETT INC
ApplicantAND: TIGERTURF INTERNATIONAL LIMITED
Respondent
JUDGE:
JAGOT J
DATE OF ORDER:
20 JUNE 2014
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.Subject to the amendment in order 2, the appeal be allowed.
2.Leave be granted to the applicant, Fieldturf Tarkett Inc, to amend claim 21 of its patent application no. 2004201711 (the 2004 application) by deleting the words “1/4 inch (0.365 cm)” and replacing them with “5/8 inch (1.588 cm)” so that claim 21 reads:
A surface as claimed in claim 20, wherein the ribbons extend between 5/8 inch (1.588 cm) and 1 ½ inches (3.81 cm) above the layer of particulate material.
3.Subject to the amendment in order 2, the decision of the Commissioner of Patents given on 18 January 2011, allowing the respondent’s opposition to the 2004 application, be set aside to the extent that it found:
(a) the invention as disclosed in claims 3, 4 and 5 of the 2004 application lacked novelty;
(b) the invention as disclosed in claims 3, 4 and 5 of the 2004 application lacked an inventive step;
(c) claims 11 and 21 of the 2004 application lacked clarity.
4.Subject to the amendment in order 2, the 2004 application proceed to grant.
5.The cross-appeal be dismissed.
6.The respondent, Tigerturf International Limited, pay the applicant’s costs as agreed or taxed.
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 227 of 2011
ON APPEAL FROM THE COMMISSIONER OF PATENTS
BETWEEN: TIGERTURF INTERNATIONAL LTD
ApplicantAND: FIELDTURF TARKETT INC
Respondent
JUDGE:
JAGOT J
DATE OF ORDER:
20 JUNE 2014
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1. The appeal be dismissed.
2.The applicant, Tigerturf International Ltd, pay the respondent’s costs as agreed or taxed.
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 96 of 2011
ON APPEAL FROM THE COMMISSIONER OF PATENTS
BETWEEN: FIELDTURF TARKETT INC
ApplicantAND: TIGERTURF INTERNATIONAL LIMITED
Respondent
NSD 227 of 2011
ON APPEAL FROM THE COMMISSIONER OF PATENTS
BETWEEN: TIGERTURF INTERNATIONAL LTD
ApplicantAND: FIELDTURF TARKETT INC
Respondent
JUDGE:
JAGOT J
DATE:
20 JUNE 2014
WHERE MADE:
SYDNEY
REASONS FOR JUDGMENT
1. THE APPEALS
These proceedings involve appeals against decisions of the Commissioner of Patents under s 60(4) of the Patents Act 1990 (Cth) (the Act) in respect of two patent applications relating to artificial turf. FieldTurf Tarkett Inc (FieldTurf) is the applicant for each patent. TigerTurf International Limited (TigerTurf) is the opponent of the grant of the patents.
In proceedings NSD 96 of 2011, FieldTurf appeals against the Commissioner’s decision in respect of FieldTurf’s patent application No 2004201711 (referred to as the 2004 application or the 711 application in the evidence and submissions) ([2011] APO 2). The Commissioner decided that claims 3, 4 and 5 of the 2004 application lacked novelty and an inventive step and that claims 11 and 21 lacked clarity. FieldTurf contends to the contrary in the appeal. TigerTurf opposed the grant of the 2004 application before the Commissioner and, in the appeal, contends that claims 1 to 8, 19 to 23 and 25 to 28 lack novelty, claims 1 to 9 and 19 to 28 lack an inventive step, and claims 11 and 21 lack clarity.
In proceedings NSD 227 of 2011, TigerTurf appeals against the Commissioner’s decision in respect of FieldTurf’s patent application No 2006201560 (referred to as the 2006 application or the 560 application in the evidence and submissions) [2011] APO 3. The Commissioner decided that the 2006 application should proceed to grant. TigerTurf contends that claims 1 to 5 and 7 of the 2006 application lack novelty. FieldTurf contends to the contrary.
Although the appeals were heard together, with evidence in one appeal being evidence in the other, it is convenient to deal separately with the issues concerning the 2004 application and the 2006 application.
In the following reasons, I refer to the evidence of the witnesses only insofar as necessary to resolve the issues in dispute. Some of the evidence, such as that of Darren Gill, the Vice President Global Marketing for FieldTurf, was relevant only if other issues were resolved in a particular way. As those issues were not so resolved, Mr Gill’s evidence became of marginal relevance and is not addressed. The same applies to some of the other evidence including some evidence from Philip Rossi (the Managing Director of a yarn manufacturing company who has expertise in yarns), Frederikus Oudendyk (who has worked in the synthetic turf industry since 1990), and Robert Jones (who has worked in the worked in the synthetic turf industry in New Zealand since the mid-1970s and in New Zealand and Australia since 1989). The witness whose evidence must be considered in detail is that of John Rooks (who worked in the synthetic turf industry between 1979 and 2002).
2. THE 2004 APPLICATION
2.1 General
The 2004 application was filed on 23 April 2004. Although FieldTurf claimed a priority date of 10 March 1997, the Commissioner decided that the claims were entitled to a priority date of 9 October 1997. Some of the evidence refers to circumstances as at 10 March 1997 for this reason. However, it was common ground between the parties that there was no relevant change in circumstances between 10 March and 9 October 2007.
2.2 The specification
The title of the specification is “synthetic surface”. The field of the invention is said to be directed towards “synthetic grass surfaces”, more particularly towards “improved, synthetic grass sports surfaces”.
The section on background art, following a disclaimer of any admission that the prior art forms part of the common general knowledge, records that:
Synthetic grass sports surface are well known. They are used to replace natural grass surfaces which do not stand up well to wear and which require a great deal of maintenance. Also, natural grass surfaces do not grow well in partly or fully enclosed sports stadiums. The synthetic grass surfaces stand up to wear much better than the natural grass surfaces, do not require as much maintenance, and can be used in closed stadiums. Some synthetic grass surfaces comprise rows of strips or ribbons of synthetic material, extending vertically from a backing mat with particulate material infilled in between the ribbons on the mat. The ribbons of synthetic material usually extend a short distance above the layer of particulate material and represent blades of grass. The particulate material usually comprises sand, as shown by way of example in U.S. Patents 3,995,079, 1976, Haas, Jr. and 4,389,435, 1983, Haas, Jr., but can comprise other materials or a mixture of sand and other materials, as shown in U.S. Patent 4,337,283, 1982, Haas, Jr., by way of example. The particulate material provides resiliency to the synthetic grass surfaces, and the surfaces are often laid on a resilient pad to provide further resiliency to the surfaces.
The known sand-filled synthetic grass sports surfaces have some disadvantages. The surfaces usually become hard after extended use because the sand, between the rows of ribbons, becomes compacted. Compacting occurs, in part, because the rows of ribbons are quite close together, and the sand cannot spread a great deal laterally during use. Compacting also occurs, in part, because the close spacing of the ribbon rows traps debris, worn and torn off the ribbons, in the sand, even when the particulate material comprises rounded sand particles. With an increase in compaction, the surface becomes progressively harder and less resilient. The performance of the surface is shortened, and it has lessened playing qualities. The surfaces also become harder after use because the resilient pads, if used, slowly collapse under use, becoming denser. …
Another problem with the known synthetic grass sport surfaces is the problem of drainage. Water flow through the surfaces has generally been slow. The ribbons are usually attached to the mat by tufting them through the mat, and then the bottom of the mat is coated with a bonding layer to bond the ends of the ribbons to the mat. The bonding layer is non-porous. To provide adequate porosity, the coated mat is punctured to provide holes. However, the particulate material often flows into these holes, plugging them up and thus reducing the drainage qualities of the surface. The loss of the particulate material into and through the holes also requires that it be replaced on top of the mat, adding to the costs of maintaining these surfaces. Compaction of the surface also inhibits drainage.
The known synthetic surfaces also have relatively poor playing qualities. When infilled with rounded sand particles more rounded than angular, because the rounded particles are thought to compact less and cause less abrasion, the surface can become too slippery, particularly when the ribbons are only slightly longer than the thickness of the layer of particulate material. Also, the closely spaced fine ribbons, if penetrated, can tightly grip the cleats and do not tear as easily as grass, thus making release of the cleats more difficult and making playing on the surface more difficult and dangerous than when playing on grass. …
The known synthetic surfaces, with closely spaced rows of ribbons, also increase the speed of a rolling ball from the speed with which it rolls on natural grass. The closely spaced ribbons create an almost solid, low resistance surface for a rolling ball, thus adversely affecting the playing qualities of the surface. If the surfaces are employed with a resilient base pad, balls bounce more on the surfaces than on grass, subtly changing the nature of the game. The low resistance surface also makes it more slippery for tennis players.
The known surfaces have other disadvantages. Usually the ribbons employed are quite narrow, and they can curl creating an appearance unlike grass. The narrow ribbons also abrade easier, creating debris that can increase compaction of the surface. The close spacing of the ribbon rows also causes skin abrasion on players falling or sliding on the surfaces.
The object of the invention is stated as follows:
It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative.
The summary of the invention includes the following statements:
In accordance with a first aspect of the present invention there is provided a synthetic surface comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2 ¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.
In accordance with a second aspect of the present invention there is provided a synthetic surface for a sports playing field comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other, whereby the relationship of the length of the ribbons and the spacing between the rows is
2A ≤ L
such that the length of the ribbons is at least twice the spacing; where A is the spacing between the rows, and L is the length of the ribbon measured from the flexible backing, whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.
…Improved synthetic grass surface may be provided by employing relatively widely spaced rows of ribbons. The wider spacing of the ribbon rows reduces the compaction of the infill that normally occurs with more closely spaced rows, thus extending the life of the surface with respect to resiliency. Reduced compaction also ensures better drainage. Wider row spacing should also ensure less wear and abrasion of the ribbons, extending the life of the surface and minimising the formation of ribbon debris which affects compaction and drainage. Wider row spacing also allows better cleat penetration and allows the cleats to release easier, thus improving the playing qualities and reducing the risk of injury. Wider ribbon row spacing can also cause balls on the surface to roll more like they roll on grass, thus improving playing qualities. Wider ribbon row spacing also makes it easier to loosen the particulate material if it does start to compact, and to clean or replace it. Wider ribbon row spacing also reduces abrasion to the players when contacting the surface. Wider ribbon row spacing can make it easier to seam the surface.
It has been found that an improved synthetic grass surface can be provided by providing ribbons having a length about twice as long as the spacing between the rows of ribbons. The preferred embodiment employs ribbons that are quite long compared to the ribbons now employed. The longer ribbons allow a thicker layer of particulate material to be used which can eliminate the need for a resilient pad and make installation of the surface simpler and cheaper. A thicker layer of particulate material or infill promotes better drainage because of the higher water head created by water on the synthetic grass. Preferably, the layer of particulate material has a thickness at least two-thirds the length of the ribbons. The longer ribbons can also provide more ribbon material above the infill for certain sport surfaces, creating a more realistic grass-like surface that, in combination with the wider spacing of the ribbon rows, allows a player’s cleats to both penetrate the surface for traction but also easily release. The player’s cleats can move the ribbons and infill material sideways to allow easier release.
…
Improved drainage properties may also be obtained by having at least one of the backing layers, a needle punched fabric, provided with fuzzy fibers on one or both surfaces. The fuzzy fibers improve the drainage qualities of the backing layer, and thus of the surface, since the fuzzy fiber ends wick away the moisture.The surface may be provided with an improved infill layer of particulate material. The infill preferably comprises a mixture of silica sand and cryogenically ground rubber particles. The cryogenically ground rubber particles wet more easily than non-cryogenically ground rubber particles and thus allow faster drainage. The ratio of sand to rubber can be varied depending on the end use of the surface; the more resilient surface required, the more rubber employed. …
The mode for carrying out the invention is described by reference to nine figures depicting the invention. Relevant statements include:
While the backing member 3 has been shown as comprising two layers, it can also be formed from one layer or more. One or more of the layers in the backing member 3 can be a needle punched woven fabric to provide better drainage, the fabric being relatively thick if used only as a single layer. At least one of the layers 11 in the backing member 3 can be needle punched with synthetic, fuzzy fibers (flw) 15, as shown in Fig. 2, to provide means to wick moisture through the layer. The fuzzy fibers further improve drainage of the surface.
…The spacing of the rows of ribbons is dependent on the activity to be performed on the field. For instance, cleats worn on the shoes of athletes for different sports have a spacing on the average of about three-quarters of an inch. Football cleats or soccer cleats may be wider than baseball cleats. The spacing is in relation to the type of sport to be played on the field and is a consequence of the spacing of the cleats on the shoes of the players. Likewise, in sports such as horse racing, it is contemplated that much wider spacing will be required between the rows to accommodate the wider hooves of the horses. Thus, it is contemplated that for horse racing, a spacing between the rows of up to 2-1/4 inches would be necessary with a proportionally longer ribbon of up to 5 inches.
…The relatively wide spacing between the rows of ribbons has several advantages. The wide spacing reduces the tendency of the surface to compact. If the tendency to compact is reduced, drainage of the surface is improved. The wide spacing also reduces the amount of material required for the ribbons. The wide spacing further enhances the playing qualities of the surface. A player playing on the surface is able to obtain better traction because the player’s cleats are better able to dig into the particulate material between the ribbon rows. At the same time, the cleats release better because there is more room between the rows to move the particulate material during release. …
The length of the ribbons is also an important feature of this embodiment of the invention. The length “L” of the ribbons 7, that is, the distance from the backing member 3 to the free ends 17, is at least twice the spacing “A” between the rows 5 of ribbons and preferably between three and six times the spacing “A”. …
The layer 9 of particulate material preferably comprises a mixture of a hard sand, such as silica, and cryogenically ground crumb rubber. Cryogenically ground crumb rubber is preferred because the particles are rounder, minimizing abrasion and also lessening compaction. …
The mix of sand and resilient material can vary depending on the end use of the surface. More rubber is used if the surface requires more resiliency.
The disputed claims are as follows:
1.A synthetic surface comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2 ¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, whereby the synthetic surface can receive an infill of particular [sic] material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.
2.A synthetic surface for a sports playing field comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other, whereby the relationship of the length of the ribbons and the spacing between the rows is
2A ≤ L
such that the length of the ribbons is at least twice the spacing; where A is the spacing between the rows, and L is the length of the ribbon measured from the flexible backing, whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.
3.A synthetic surface having a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2 ¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, the surface including a layer of particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member.
4.A synthetic surface for a sports playing field wherein the synthetic surface comprises a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other, the surface including a relatively thick layer of particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member, whereby the relationship of the length of the ribbons and the spacing between the rows is
2A ≤ L
such that the length of the ribbons is at least twice the spacing; and the particulate material having a thickness, T, which is substantially equal to 2/3 the length, L, of the ribbons, where A is the spacing between the rows, L is the length of the ribbon measured from the flexible backing and T is the thickness of the layer of particulate material.
5.A surface as claimed in any one of the claims 1 to 4, wherein the length of the ribbons, extending upwardly from the backing member, is from between 1 ½ inches (3.81 cm) and 5 inches (12.7 cm).
6.A surface as claimed in any one of the claims 1 to 5, wherein the ribbon has a width of about one-half of an inch (1.27 cm).
7.A surface as claimed in any one of the claims 1 to 6, wherein the backing member is a single layer of permeable fabric.
8.A surface as claimed in any one of the claims 1 to 6, wherein the backing member is a double layer of permeable fabric.
9.A surface as claimed in any one of the claims 1 to 6, wherein the backing member is a triple layer of permeable fabric.
…
11.A surface as claimed in claim 10 [(being a surface as claimed in any of claims 1 to 6, wherein the backing member comprises one or more layers of fabric, at least one of which is needle punched to produce fuzzy fibres on its surface)], wherein at least one of the layers of permeable fabric is needle punched to produce fuzzy fibres on its surfaces [sic].
…
19.A surface as claimed in any one of claims 5 to 18 when dependant [sic] on claim 2 or 4, wherein the dimension A is between 5/8 inch (1.588 cm) and 2 ¼ inches (5.715 cm) the dimension L is between 1 ¼ inches and 5 inches (3.175 cm and 12.7 cm).
20.A surface for a sports field as defined in claim 19, wherein L is in a range of between 3A and 6A.
21.A surface as claimed in claim 20, wherein the ribbons extend between ¼ inch (0.635 cm) and 1 ½ inches (3.81 cm) above the layer of particulate material.
22.A synthetic surface as claimed in any one of claims 19 to 21, wherein the particulate material comprises a mixture of resilient particulate material and hard particulate material wherein the particles are in a range of between 4 to 70 mesh.
23.A surface as defined in claim 22, wherein at least the resilient particles are spherical.
…
25.A surface as defined in any one of claims 22 to 24, wherein the resilient particulate material is selected from a group having the properties of cryogenically ground rubber such as cork, styrene, epdm rubber, used tires and neoprene, while the hard particulate material is selected from a group containing silica sand, graded stone and hard and heavy plastics.
26.A surface as claimed in claim 25, wherein the particulate layer is a mixture of cryogenically ground rubber and sand.
27.A synthetic surface substantially as described herein with reference to and as illustrated in the accompanying drawings.
28.A synthetic surface for a sports playing field surface substantially as described herein with reference to and as illustrated in the accompanying drawings.
2.3 The onus of proof and evidentiary matters
It was common ground between the parties that, as TigerTurf put it:
appeals of this nature are in the original jurisdiction of the Court and are conducted as hearings de novo [F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56; [2000] FCA 283 at [29] and New England Biolabs Inc v F Hoffman-La Roche AG (2004) 141 FCR 1; [2004] FCAFC 213, at [23]-[45]]. The opposition will be upheld only where it is “practically certain” or ”clearly satisfied” that the patent, if granted, would be invalid [Commissioner of Patents v Microcell Ltd (1958) 102 CLR 232 at 244–5; [1959] HCA 71; Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106; [1999] FCA 742 at [17]; Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52; [2010] FCA 1061 at [33]-[35]]. The primary facts are to be established on the balance of probabilities, but the ultimate facts must be proved to the level of practical certainty [Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420; [2005] FCA 805 at [12]; Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52; [2010] FCA 1061 at [ [35].].
TigerTurf’s case of lack of novelty is based on prior art information comprising both acts and documents. The acts concern four installations of synthetic turf in the mid-1980s. There is no dispute between the parties that each installation occurred. The dispute concerns the features of each installation. The primary evidence on which TigerTurf relies about the installations and their features is that of Mr Rooks who was involved, one way or another, in each of the installations at the time they were carried out some 25 or more years ago. Mr Rooks, now retired, worked for a company, Supergrasse Pty Ltd (Supergrasse) between about 1979 and 1990. He was the company’s installation manager and then general manager responsible for the manufacture, installation and sale of Supergrasse’s various synthetic surfaces throughout the period 1984 to 1990. After Supergrasse went into liquidation in 1990, the business and name were acquired by another company, Balsam Pacific Pty Ltd (Balsam) in 1991. During 1990, Mr Rooks worked for himself conducting synthetic turf installations for about 12 months and from 1991 worked for another company known as Evergreen Action Grass Pty Limited (Evergreen) which was a competitor to Supergrasse. Balsam subsequently also acquired Evergreen in about 1992 and Mr Rooks continued to work for Balsam until his retirement in 2002 overseeing and advising on the manufacture, design and installation of Balsam’s synthetic grass surfaces.
FieldTurf submitted that evidence of prior uses gives rise to evidentiary considerations potentially different from those where the prior art consists of the publication of a document. In the latter case, the document is available to be construed as it would have been by the notional skilled addressee at the date of publication; as such, there can be no doubt about the terms of the document. In the former, the evidence proving the prior acts may be documentary but also may consist of oral evidence from witnesses who observed or were otherwise involved in those acts. Oral evidence of this kind, particularly where based on recollections from years before, FieldTurf submitted, should be weighed with caution, citing in support Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43; [2000] FCA 676 (Old Digger) and Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52; [2010] FCA 1061 (Aspirating IP).
In Old Digger at [156] Von Doussa J said:
The onus of proof is on the respondents to establish a clear case of invalidity: see Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593 at 595-596 per Gibbs J. The evidence adduced by the respondents as to the prior use of the invention is the oral evidence of witnesses to the alleged use based on their recollections of events years beforehand. The alleged use is said to have taken place in the course of trialling reverse circulation percussive hammers incorporating prototype face sampling drill bit assemblies. The particular assemblies have not been produced in evidence. Oral evidence led in these circumstances must be viewed with particular caution, partly for the reason that the memory of the witnesses is likely to have been influenced by other products seen in the meantime, and to reflect reconstruction on the basis of these later observations: see Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 at 165-166, and Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 525 per Gummow J.
In Aspirating IP at [199] to [202] Besanko J said:
[199] The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.
[200] The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago. In Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 (at 165–166) Menzies J said:
It is not that I dismiss the evidence as deliberately untruthful — although I am disposed to think that the evidence relating to Ex 8 and Ex 9 — which was a less than accurate representation of Ex 8 — was not wholly frank — it is rather that I cannot accept as reliable, oral evidence relating to particular pieces of equipment to which some reference has been found in the records of the defendant company, and then, as if by unaided recollection of observations made up to twenty-eight years ago, that equipment has been identified and described by the witnesses. It is apparent that during the long period since the equipment was seen, the witnesses must have looked at hundreds, if not thousands, of unremarkable pieces of similar equipment, and I have no confidence in their stated recollections of particular pieces of equipment among those numbers.
[201] In Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at 556–557 Gummow J said that proving an alleged anticipation by the recollection of witnesses and by drawings in catalogues and brochures is to be approached with “some caution”.
[202] In Windsurfing International Inc v Petit (1983) 3 IPR 449, Waddell J (at 489) referred to the need to scrutinise evidence of an alleged prior public use with great care and said that such a use should be strictly proved.
I accept these principles. They are to be kept in mind when assessing the disputed factual issues.
2.4 Two construction issues
There were two issues of construction between the parties. Given my conclusions about the evidence below, it is not apparent to me that either issue is determinative. Nevertheless, it is appropriate to record my conclusions about those issues.
First, an integer of claims 1 and 2 and dependent claims is that the “synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill” (emphases added).
TigerTurf submitted that the word “can” ought to be understood as meaning “capable of”, as this “meaning is consistent with the meaning of the word as a matter of ordinary English. The Macquarie Dictionary [Sixth Edition (2013)] defines “can” (relevantly) as “to be able to; have the strength, means, authority to””. Accordingly, “claims 1 and 2 do not require the claimed synthetic surface to have a level of infill to approximately 2/3 height of the ribbons but rather to have a gauge and length whereby the synthetic surface is capable of receiving an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill” (original emphasis).
FieldTurf submitted that this does not mean that “the synthetic surface is capable of receiving sufficient infill to extend two-thirds up the length of the ribbon. Rather, the height of the infill is but one element of a combination…interacting with other elements, to achieve the benefits of the invention. Thus “can receive” in the claims means “is designed or intended to receive””. Otherwise, the integer would include any surface with infill up to any level provided the surface was capable of receiving infill to extend two-thirds up the length of the ribbon, which is an unlikely construction given the claimed benefits of the invention.
I prefer FieldTurf’s construction. The claims are to be construed in context. The invention concerns a field of practical application. It is not concerned with hypotheses or potentialities. In this context, which includes a detailed discussion of preferred infill characteristics (including the two-thirds infill ratio) and associated benefits, the integer is not satisfied by a theoretical potential for the surface to receive the two-thirds infill or for the ribbons to overlap. The integer requires that the surface be designed or intended to receive the two‑thirds infill and the ribbons designed or intended to overlap.
Second, claims 2, 4 and dependent claims relate to a synthetic surface for a “sports playing field”.
TigerTurf submitted that a “sports playing field”, construed in the context of the specification as a whole, should not be construed narrowly so as to exclude areas for activities such as horse racing and golf. In particular, “as a matter of ordinary English, the word “field” is not limited to an area where a team sport involving a ball is played. The Macquarie Dictionary [Sixth Edition (2013)] defines “field” (relevantly) as “a piece of ground devoted to sports or contests”. Further, the specification refers to “sports such as horse racing” and “a surface that is used for less physical activity, such as a golf green for example, and a larger spacing being used where more physical activity is encountered, such as a race track for horses”. Golf players, like those playing ball sports, wear cleats. Balsam created a document entitled “A complete guide to sports facilities” which included synthetic surfaces for equestrian applications. TigerTurf also contended that:
Claims 1 and 3 claim synthetic grass surfaces for any application. Claims 2 and 4 claim a synthetic surface for any sports playing fields. The difference between the respective claims is between a synthetic grass used for sports (claims 2 and 4) and any application including but not limited to sports (claims 1 and 3). It follows, therefore, that where there is a reference to any sports in the specification (including horseracing tracks and golf) it must apply to any of claims 1-4.
FieldTurf submitted that the claims to a “sports playing field” should be understood as narrower claims than those to “a synthetic surface” so that, construed in the context of the specification, a sports playing field means “a defined area on which players participate in a sports game, ordinarily a team sport involving a ball and often one in which players wear footwear containing cleats, such as football, soccer or baseball, and does not extend to a horse racing track or a golf tee area”.
I prefer TigerTurf’s construction. The claims distinguish between “a synthetic surface” and “a synthetic surface for a sports playing field”. Although meaning is to be given to the phrase “sports playing field” on the basis of all of its elements, not just the word “field”, the relevant distinction in the claims appears to be between non-sports surfaces and sports surfaces. The specification refers to “synthetic grass surfaces” and “synthetic grass sports surfaces”. It is true that the concept of a “synthetic grass sports surface” appears broader than a synthetic grass “sports playing field”. A sports surface, without doubt, is any surface on which a sport is played. It is also true that the claims could have used the phrase in the specification “sports surface”, rather than “sports playing field”, but did not do so. However, there is nothing in the latter formulation in the context of the claims or the 2004 application as a whole to support the narrow reading for which Fieldturf contends. Read in context, the words “sports playing field” at least include a surface on which sports are played within a dedicated area. Horse racing and golf are sports and thus surfaces for horse racing and golf are each a sports surface. Once it is accepted that horse racing and golf are sports, it must also be accepted that they are contests or games which are played out on a dedicated area. In the context of the specification, surfaces for golf and for horse racing or other equestrian activities fall within the term “a sports playing field”.
2.5 Lack of novelty?
2.5.1Provisions and principles
An invention will only be a patentable invention for the purposes of a standard patent if the invention, as claimed, is novel when compared with the prior art base as it existed before the priority date of the claim: s 18(1)(b)(i) of the Act.
Section 7(1) of the Act, in its relevant form at the time the 2004 application was filed, provided that:
For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a)prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b)prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c)prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of “prior art base” in Schedule 1.
The Full Court of this court in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20; [2008] FCAFC 139 (Insta Image) considered the concept of “publicly available” by the doing of an act, summarising the relevant principles at [124] as follows:
• The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it (PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 226 per Aldous J cited in Jupiters [Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155; [2005] FCAFC 90 (Jupiters)] at [141]). (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887 in Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen LJ).
• It is immaterial whether or not the invention has become known to many people or a few people (Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 at 111 per Windeyer J). As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality (Fomento Industrial SA v Mentmore Manufacturing Co Ltd [1956] RPC 87 at 99–100; Re Bristol-Myers Co’s Application [1969] RPC 146 at 155 per Parker LJ).
• The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity (Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31; [2006] FCAFC 91 (Merck) at [98]–[103]).
• In order to be “available”, information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention (cf RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 593–594).
• In order to be “available”, information said to destroy novelty must “enable” the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point ( [Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 581–582; [1996] FCA 1544 (Stanway Oyster)]).
The parties emphasised other principles relevant to anticipation or prior disclosure of an invention such as to destroy novelty by an act.
Seeking to support its proposition that “the use of measuring devices such as a ruler, a probe, a skewer, a depth gauge or vernier calipers were standard tools of the trade that were available and used by skilled addressees before the priority date to ascertain various features of synthetic grass surfaces such as the height of the ribbon, gauge, level of infill and width of the ribbon” and that such uses to ascertain features of the prior acts relied upon should be understood to be orthodox, TigerTurf made the following points:
(1)In Jupiters, the Full Court held at [138] that what is required to satisfy anticipation by an act is an “enabling disclosure” of the invention by the prior conduct and, in the course of its reasoning, referred to a number of UK decisions including PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 225 (PLG Research) (unaffected by the subsequent appeal [1995] RPC 287) and noted (at [141]) that Aldous J held that a skilled addressee may use “available investigation techniques to analyse samples of product and glean the information that could be so gleaned”, an approach confirmed by Lord Hoffmann in Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1995) 33 IPR 1 at 11.
(2)The Full Court in Jupiters also referred to Lux Traffic Controls Ltd v Pike Signals Ltd [1993] RPC 107 (Lux Traffic) where Aldous J at 133 said:
It is settled law that to invalidate a patent a disclosure has to be what has been called an enabling disclosure. That is to say the disclosure has to be such as to enable the public to make or obtain the invention. Further it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public. Thus an anticipating description in a book will invalidate a patent if the book is on a shelf of a library open to the public, whether or not anybody read the book and whether or not it was situated in a dark and dusty corner of the library. If the book is available to the public, then the public have the right to make and use the information in the book without the hindrance from a monopoly granted by the State.
(3)At 134 in Lux Traffic, Aldous J made this point:
In the case of a written description, what is made available to the public is the description and it is irrelevant whether it is read. In the case of a machine it is that machine which is made available and it is irrelevant whether it is operated in public. A machine like a book can be examined and the information gleaned can be written down. Thus what is made available to the public by a machine, such as a light control system, is that which the skilled man would, if asked to describe its construction and operation, write down having carried out an appropriate test or examination. To invalidate the patent, the description that such a man would write down must be a clear and unambiguous description of the invention claimed.
(4)In Insta Image, the Full Court held at [124] that:
[i]n order to be “available”, information said to destroy novelty must “enable” the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point (Stanway Oyster at 581–2; 35 IPR 71 at 75-6).
(5)This limitation derives from Hill v Evans (1862) 1A IPR 1 at 6 (Hill v Evans). However, the “further experiments” do not include those that formed part of standard procedure, common general knowledge or ordinary means of trial and error but rather experiments with a view to discovering something not disclosed: C Van der Lely NV v Bamfords Ltd [(1962) 1A IPR 86] at 90; H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151; [2009] FCAFC 70 (Lundbeck) at [173]-[192].
I accept these submissions. I accept also that the kinds of activities necessary to determine the features of artificial turf which were central to these appeals – the gauge or distance between the rows of ribbons, the overall length of the ribbons, the extent of the ribbons above the infill, the depth and general constitution of the infill, and the nature of the backing layer or layers – would all be readily ascertainable by a person skilled in the art if presented with a sample or an installation of artificial turf.
FieldTurf emphasised that s 7(1) does not treat information made publicly available in a document differently from information made available by the doing of an act. In both cases, as stated in Hill v Evans at 1A IPR 7, the prior art information:
must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. … Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited and accurate, and gives a specific rule of practical application.
To the same effect, in Lundbeck at [190], the Full Court of this court said:
the Court … must determine whether the prior disclosure is sufficient to enable the skilled addressee to perceive, understand and, where appropriate, apply the prior disclosure necessarily to obtain the invention.
Accordingly, the statement in General Tire & Rubber Co v Firestone Tyre and Rubber Co [1972] RPC 457 (General Tire) at 485 to 486 applies to not only prior publications but also prior acts, that statement being:
If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. …[I]f carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which…would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented… A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
Further, Lux Traffic at [1993] RPC 134 provides a useful guide:
Thus what is made available to the public by a machine … is that which the skilled man would, if asked to describe its construction and operation, write down having carried out an appropriate test or examination. To invalidate the patent, the description that such a man would write down must be a clear and unambiguous description of the invention claimed.
FieldTurf also stressed that where the nature of the invention claimed comprises a combination of features, in order to properly anticipate the invention, the prior art must disclose all of the essential integers together in that combination, citing in support the observation of Lockhart J in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517; 16 IPR 545; [1990] FCA 40 (Nicaro) that:
In the case of combination patents cross-references in one specification which has some of the elements of a combination patent to another specification which has other elements do not disclose the combination. The essential point is that it is the combination which must be disclosed in the case of a combination patent.
FieldTurf’s final main point of principle was that the cautions against hindsight often found in the context of resolving claims of obviousness or lack of inventive step are relevant to the skilled addressee’s ascertainment and understanding of prior art documents and prior acts. Both are to be assessed at the date of publication of the document or the doing of the act (General Tire at 485; Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (2012) 210 FCR 21; [2012] FCA 944 at [213]-[214] and Aspirating IP at [168]).
In Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420; [2005] FCA 805 (Austal Ships) at [156] Bennett J characterised a witness’s evidence as an attempt to be objective in circumstance where the witness was:
looking for the integers of the claims in the…article and trying to find them, if necessary by combining different parts of the article without explanation of why he would have done so at its publication date in the absence of knowledge of the claims.
This, said Bennett J, was evidence that “could not be said to have weight as evidence of what the article would have disclosed at the relevant time or what would have been read out of the article at that time without knowledge of the patent application”.
According to FieldTurf:
Hindsight is just as “insidious” in a novelty context as with obviousness because the invention cannot have “been before made known” if one uses (even subconsciously) one’s knowledge of the invention as claimed in the patent in suit to identify the relevant features in the prior art.
I accept FieldTurf’s submissions in this regard. In particular, I accept that the invention as claimed involves a combination of integers including the relationship between the specified distances between the rows (or the gauge) and the length of the ribbons (the length must be at least twice the gauge) together with the relationship between the depth of the infill and the length of the ribbons extending beyond the infill (a surface designed or intended for infill of two-thirds the height of the ribbons so that the free length of ribbon extending above the infill can overlap with the corresponding free length of ribbon from adjacent rows) so as to encapsulate the infill.
2.5.2Prior acts said to destroy novelty
TigerTurf identified each of the following acts as one which resulted in enabling disclosure or anticipation of the invention:
(1)the installation of a synthetic grass surface by Supergrasse at Randwick Racecourse in or around 1986 (the Randwick Installation);
(2)the installation of a synthetic grass surface by Supergrasse at Cronulla Golf Club in or around 1988 (the Cronulla Golf Installation);
(3)the installation of a synthetic grass surface by Supergrasse at Gold Coast Turf Club in or around 1986 (the Gold Coast Installation);
(4)the installation of a synthetic grass surface by Supergrasse at the Cronulla Rugby League Club, commonly known as Endeavour Fields, in or around 1986 (the Cronulla Rugby Installation); and
(5)the display at the premises of Supergrasse of samples of the synthetic grass surface used in the Randwick Installation, which were shown to customers of Supergrasse including officials of Randwick Racecourse and the Cronulla Rugby League Club (the Supergrasse samples),
as well as a combination of related acts, being:
(6)the Supergrass samples and the Randwick Installation; or
(7)the Supergrasse samples and the Cronulla Rugby Installation.
Mr Rooks gave evidence about each of these installations and samples. There are also some documentary records relating to the installations and samples.
Some facts about the installations are not in dispute.
It is common ground that:
(1)Supergrasse installed an artificial turf crossover at Randwick Racecourse in November 1986. The crossover was installed at the 2000 metre mark of the racetrack and was used by pedestrians and cars to cross over the racetrack into and out of the car park which was located at the centre of the racetrack.
(2)Supergrasse installed an artificial turf crossover at the Gold Coast or Southport Racecourse in early 1986. The crossover was used by pedestrians and cars to cross over the racetrack into and out of the car park which was located at the centre of the racetrack.
(3)Supergrasse installed a strip of artificial turf at the Cronulla Rugby League Club in November or December 1986.
(4)Supergrasse installed synthetic grass surfaces as practice tees at the Cronulla Golf Club in 1988.
Leaving aside Mr Rooks’ evidence as to his recollections of the installations, there is some other evidence about them which should be identified.
Randwick Installation: On 23 August 1987, the Sydney Morning Herald (the SMH) published an article about three installations of artificial turf at the Randwick Racecourse, including the Randwick Installation. The SMH article said the first crossings were at the 2000 (the Randwick Installation) and 1600 metre marks. Wood fibre surfaces had previously been used for the three crossings, but had been covered by the “nylon-type Supergrasse strip”, which was intended as a “temporary measure only”. The article continued:
Supergrasse is polypropylene fibre. It is woven into rubberised backing and looks like grass. The millions of green strands measure about 9cm and resemble a carpet of green.
After being laid the tiny spaces between the strands are filled with sand which keeps them perpendicular.
Photographs of the Randwick Installation show the crossover. It is not possible to discern from these photographs anything other than the surface on which the turf was laid and the turf itself. The turf looks like grass with no sand or infill obviously visible.
Gary Waterford, the former Managing Director and owner of Supergrasse, produced four boxes of samples to the court under subpoena. From those four boxes, Mr Rooks identified one sample which he believed exhibited the features of the artificial turf at the Randwick Installation (Exhibit 4). As this evidence depends on Mr Rooks’ evidence of recollection it is not the same type of evidence as the SMH article and is encompassed by the discussion of Mr Rooks’ evidence below.
Exhibit 11 is a Balsam product specification dated November 1995. One specification relates to equestrian turf for track crossover. The specification includes features being twisted polypropylene tape, a pile height of 72 mm +/- 3%, a machine gauge of 9.52 mm (approximately 3/8 of an inch), a polypropylene and rubber latex backing, with infill of fine graded silica sand.
Exhibit 12 is a Balsam publication from April 1996 entitled “A Complete Guide to Sports Facilities”. The document includes a section entitled “Equestrian”. That section states:
1. SUPERGRASSE RACE TURF
1.1. History
•Supergrasse Race Turf was developed in the mid 1980’s as a durable, physically friendly and aesthetically pleasing surface for horses.
1.2. Overview
•72mm sand filled synthetic grass over an optional 50mm Elastic Layer (E‑Layer)
...
1.6. Installation
•Loose laid and sand filled over compacted earth, roadbase, asphalt or concrete.
•If laid over E-Layer it may be glued down and sand infilled.
1.7 References
Country City Project Name Australia Gold Coast Southport Racecourse Sydney Randwick Racecourse Sydney Horse World Equestrian Centre Canberra Canberra Racecourse
The specification in this section of Exhibit 12 relates to equestrian turf for track crossovers. The specification includes the same features as Exhibit 11.
Exhibit 14 is a sample of artificial turf. It was produced in response to a subpoena to Mr Waterford requiring, relevantly, production of a sample of the synthetic turf installed at Randwick Racecourse in 1986. The sample as produced has a tag on it, the admissibility of which is in dispute. The tag bears handwriting in pencil and in pen. The pencil states “Royal Randwick” and “Flemington Caulfield” and the pen, in a different hand, states “2-3-4D”. The gauge of the sample is 3/8 of an inch or 9.52 mm, in other words, the same gauge as described in the Balsam documents. The length of the ribbon is 55 mm. The tag is undated. No evidence was given as to the identity of the author or authors of the handwriting. It may be supposed that the marking “2-3-4D” was intended to be a reference to categories 2(d), 3(d), and 4(d) of the subpoena which call for production of “a sample of the synthetic turf product(s) installed” at various locations including the Randwick Racecourse.
If the tag on Exhibit 14 is admissible to prove the truth of the statements on the tag, then it cannot prove that Exhibit 14 is a sample of the artificial turf as laid in the Randwick Installation. This is because there were three installations at Randwick around 1986 to 1987 and the alleged prior use is the first of those installations only. At best, the tag represents Mr Waterford’s opinion that Exhibit 14 is a sample of what was installed at Randwick on one occasion in 1986. Mr Waterford was not called to give evidence. His opinion, if admissible, is untested. The statements are also untested hearsay, their provenance entirely speculative. They could have been made at any time during the 24 to 28 years since the installations referred to in the subpoena. For these reasons, if admissible, the tag is not reliable evidence. All that Exhibit 14 proves is that, among the Supergrasse samples Mr Waterford held, at least one is for artificial turf with a gauge of 3/8 of an inch or 9.52 mm and a ribbon length of 55 mm.
Apart from this, the evidence about the Randwick Installation depends on Mr Rooks’ evidence. The overall effect of Mr Rooks’ evidence is that, insofar as material to the dispute between the parties, the Randwick Installation had a flexible backing member made from a single layer of woven polypropylene material (itself a permeable material) with its underside coated with latex (which, according to Mr Rooks, although not permeable, could be made permeable by perforating the latex using needles), a gauge of 3/4 inch, a pile height of 75 mm, a capacity to receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill could overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill, and had an infill layer substantially equal to 2/3 the length of the ribbons, consisting of a combination of sand and cryogenically ground rubber.
Gold Coast Installation: Photographs of the Gold Coast Installation show the artificial turf being laid in squares. The ribbon length looks relatively long compared to the other grass visible.
The Gold Coast Installation was also the subject of various contemporaneous articles. One, in a newspaper, described the installation as a test strip of artificial turf about 12 metres wide by 30 metres long.
Another roughly contemporaneous article in a racing publication about the Gold Coast Installation said that the synthetic turf used in racing was very different from other applications such as tennis courts and hockey fields. Thus:
The “turf” used in the world of thoroughbreds is very different; it gives the appearance of long (6” – 8”) of synthetic fibres bonded together in tufts. They are joined to matting of incredible durability and sand is spread over the section.
Six to eight inches is 152.4 mm to 203.2 mm.
Photographs in the racing publication show horses racing across the Gold Coast Installation. These display the artificial grass as having a mottled appearance with sand visible at the surface across the installation and, where the horses are racing, sand being kicked up.
The Balsam publications, which reference the Gold Coast Installation, are referred to above.
Mr Rooks identified one sample produced in Mr Waterford’s four boxes which he initially believed to be a sample of the Gold Coast Installation. In a subsequent affidavit, he concluded that, while the sample exhibited a number of features of the artificial turf at the Gold Coast Installation, it had a different backing and did not have twisted ribbons. Ultimately, Mr Rooks concluded that the sample was not a sample of the Gold Coast Installation.
Apart from the photographs and publications, the evidence about the Gold Coast Installation depends on Mr Rooks’ evidence. The overall effect of Mr Rooks’ evidence is that, insofar as material to the dispute between the parties, the Gold Coast Installation had a flexible backing member made from a single layer of woven polypropylene material with its underside coated with latex, a gauge of 3/4 inch, a pile height of 90 mm, a capacity to receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill could overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill, and had an infill layer substantially equal to 2/3 the length of the ribbons, consisting of a combination of sand and cryogenically ground rubber.
Cronulla Rugby Installation: The Cronulla Rugby Installation was publicised in a television news feature in 1987. The news feature shows three samples of Supergrasse, two in perspex boxes with infill and one loose sample without infill. The loose sample is depicted adjacent to a fourth sample of artificial turf (also without infill) displaying a much shorter pile. Later in the video, the strip of installed Supergrasse is shown adjacent to the natural grass playing field at Endeavour Field.
Apart from this, the evidence about the Cronulla Rugby Installation depends on Mr Rooks’ evidence. The overall effect of Mr Rooks’ evidence is that, insofar as material to the dispute between the parties, the Cronulla Rugby Installation had a flexible backing member made from a single layer of woven polypropylene material with its underside coated with latex, a gauge of 3/4 inch, a pile height of 65 mm, a capacity to receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill could overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill, and had an infill layer substantially equal to 2/3 the length of the ribbons, consisting of a combination of sand and cryogenically ground rubber.
Cronulla Golf Installation: There are no contemporaneous documents relating to the Cronulla Golf Installation.
There are other documents which are potentially relevant to the Cronulla Golf Installation, however.
A Supergrasse publication about golf from 1988 refers to 75 mm pile height sand filled polypropylene Supergrasse. The publication includes a diagram showing a tee driven into the infill between the ribbons. A version of the drawing, to scale, is in evidence (exhibit 16). It depicts the pile height as 75 mm and the infill height as 64 mm or about 85% infill. If the infill height were materially lower, at 2/3 (50 mm) or 66% (49.5 mm), the tee as shown could not readily be embedded in the infill and still project above the height of the ribbons so as to enable the ball to be teed up.
A Supergrasse “Technical information” brochure which can be dated to the period between 1987 and 1990 includes a “Golf Tee Installation Procedure” showing a diagram of 75 mm sand filled synthetic turf with a 5 mm un-sanded pile. The height of the infill is thus 70 mm, being approximately 93% the height of the ribbons.
A set of Supergrasse “Manufacturing Quality Control Sheets” for “Golf Turf Tee” refers to a pile height of 50 mm and a gauge of 3/8 inch.
A Balsam publication “Guide to Golf” from the early 1990s refers to pile heights up to 50 mm and infill of either graded silica sand or rubber granulate (not sand and rubber granulate).
Exhibit 12, Balsam’s “A Complete Guide to Sports Facilities”, has a section dealing with golf tees which refers to long pile, sand filled synthetic grass and includes specifications of 50 mm pile height with a gauge of 9.52 mm or 3/8 inch. This publication also discusses the use of rubber granules as a substitute for sand in Korea.
Apart from this, the evidence about the Cronulla Golf Installation depends on Mr Rooks’ evidence. The overall effect of Mr Rooks’ evidence is that, insofar as material to the dispute between the parties, the Cronulla Golf Installation had a flexible backing member made from a double layer of polypropylene material with its underside coated with latex, a gauge of 3/4 inch, a pile height of 75 mm, a capacity to receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill could overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill, consisting of a combination of sand and cryogenically ground rubber.
Supergrasse samples: The Supergrasse samples are two of the samples of Supergrasse turf shown on the news feature about the Cronulla Rugby Installation, being one of the samples in a perspex box (with infill) and the loose sample (without infill). Leaving aside Mr Rooks’ evidence about those samples, it may be accepted that various customers of Supergrasse saw those samples when they visited Supergrasse’s premises in and around 1986 to 1987. Those customers could have ascertained from the samples their features including the length of the ribbon, the depth of the infill, the length of the exposed ribbon extending above the infill, the gauge, and the general composition of the infill. Insofar as what those features were, again leaving aside Mr Rooks’ evidence, all that can safely be said is that the samples show a much longer pile than the adjacent sample indicated as representative of the turf used in American football. There is some evidence (dealt with below) that suggests the pile length is at least 10 times that of the adjacent short pile sample, an estimate that I accept. The sample in perspex also shows sand infill. There is some evidence about the height of that infill from Mr Rooks which is dealt with as part of the assessment of his evidence. Based on nothing more than a visual estimate of the screen shots, it is apparent that the infill is unevenly distributed but clearly extends towards the top of the perspex box. To the extent that it was submitted that a person could ascertain that the sample in the top box showed a 2/3 infill from the news feature, as opposed for example to some higher level infill such as 3/4 or 4/5, I do not agree.
It is now necessary to consider Mr Rooks’ evidence.
Mr Rooks worked in the industry between 1979 and 2002. I infer that during this period he must have seen many hundreds, possibly thousands, of samples of artificial turf and numerous installations across a wide range of venues. As he put it in an affidavit he made in 2004:
I have been directly involved in the manufacture and installation of hundreds of synthetic grass surfaces that have been installed over the years for use on tennis courts, hockey pitches, bowling greens, cricket pitches, golf greens, golf tees, horse racing tracks, dog racing tracks, athletic tracks, netball courts, basketball courts, baseball diamonds, children’s playgrounds, leisure areas and croquet greens in Australia prior to 1997.
Mr Rooks retired in 2002.
It appears that Mr Rooks was first requested to provide evidence relating to his recollections of Supergrasse’s products in the context of a proceeding commenced in 2002 between FieldTurf and Mr Rooks’ former employer, Balsam, which opposed the grant of a FieldTurf patent, Australian patent No 730904 (the 904 application), the parent of the 2004 application. Mr Rooks provided an affidavit in that proceeding in 2004. For that purpose he was provided with the 904 application which claimed, amongst other things, a synthetic turf having an infill substantially equal to 2/3 of the length of the ribbons. In this affidavit (Rooks 1) Mr Rooks referred to the Randwick and Gold Coast Installations, as well as the Cronulla Golf Club Installation. He did not mention the Cronulla Rugby Installation. He also referred to a sample that he found in his garage which he said was a sample of the turf installed in the Randwick Installation.
In 2006, he made another affidavit in respect of a proceeding in Canada. Again, FieldTurf was the applicant for patents including the Canadian equivalent of the 904 application. In this affidavit (Rooks 2), he referred to a number of installations including the Randwick Installation, the Gold Coast Installation and the Cronulla Golf Club Installation. No reference was made, however, to the Cronulla Rugby Installation.
In October 2011, he made an affidavit in this proceeding (Rooks 3). For the purpose of doing so he re-read Rooks 1 but not the 904 application. In this affidavit, he referred to the Randwick Installation, the Gold Coast Installation and the Cronulla Golf Club Installation. He also referred to the sample identified in Rooks 1 and said an equivalent sample was used in discussions concerning the Randwick Installation. He said samples of each installation were used in discussions with racing officials prior to the installation. He referred also to a sample produced by Mr Waterford (presumably in the four boxes of samples which Mr Waterford produced under subpoena) which Mr Rooks said matched the artificial turf used at the Gold Coast Installation.
In another affidavit made later in 2011 (Rooks 4), he dealt with the samples in more detail. He also dealt with the 2004 application with which, by that time, he had been provided.
In yet another affidavit made later again in 2011 (Rooks 5), Mr Rooks dealt with two Canadian patents relied upon by TigerTurf as prior art disclosing the invention claimed in the 2004 application.
In 2012, Mr Rooks made an affidavit in reply (Rooks 6) in which, amongst other things, he dealt with Randwick Installation and a sample, Exhibit 3, which he said “has all of the characteristics of” the Randwick Installation.
In December 2013, Mr Rooks made another affidavit (Rooks 7). In this affidavit he dealt with a request from TigerTurf’s lawyers that he review the news feature relating to the Cronulla Rugby Installation, which reminded him of that installation. He discussed his recollections of the Cronulla Rugby Installation and the other installations in that context.
In his final affidavit made in 2014 (Rooks 8), Mr Rooks dealt with the samples shown in the news feature and further recollections about each of the four installations, the Randwick Installation, the Gold Coast Installation, the Cronulla Golf Club Installation and the Cronulla Rugby Installation.
TigerTurf submitted that Mr Rooks’ evidence should be accepted. As TigerTurf put it, Mr Rooks “was no longer involved in the synthetic turf industry and had nothing to gain financially or otherwise from these proceedings (or the Canadian proceedings or the 2004 Balsam proceedings)”. Further, Mr Rooks’ evidence was consistent about the characteristics of the installations and corroborated by other evidence.
To the extent that corroboration is called in aid, some observations should be made, excluding those comments about other sources of evidence already made above.
TigerTurf submitted that Exhibits 3 and 19 are “powerful evidence corroborating Mr Rooks’ consistent evidence as to the features of the Randwick Installation (including the 3/4 inch gauge and 75 mm height)”. Exhibit 3 is a small and rather dilapidated section of artificial turf which has a 3/4 inch gauge and 75 mm ribbon length. Exhibit 19 is a subpoena to the solicitor in the 2004 proceeding requiring production of the sample Mr Rooks exhibited to his 2004 affidavit as turf having the same characteristics as the Randwick Installation. Exhibit 3 was produced in response to this subpoena. The relevant fact is that it was Mr Rooks who first identified this sample, found in his garage, as being a sample of the Randwick Installation. No evidence, save that he located the sample in his garage, was given as to how Mr Rooks identified the sample. Mr Rooks’ own evidence was that he could not confirm, one way or the other, whether Exhibit 3 was in fact the sample exhibited to his 2004 affidavit, the 2004 exhibit being “a brand new sample” and “much larger” than Exhibit 3. Mr Rooks’ basis for concluding that Exhibit 3 may be the 2004 sample is that Exhibit 3 “has all of the characteristics of” the Randwick Installation. However, under cross-examination, Mr Rooks agreed that Exhibit 3 had a green backing which was not latex, whereas the Randwick Installation had a black latex backing. To the extent that it may be inferred from the subpoena that Exhibit 3 was in fact the 2004 sample, the corroboration remains only as good as Mr Rooks’ recollection in 2004 about those characteristics of an installation that occurred in 1986. TigerTurf’s submission is that it “is no coincidence that the sample produced by Ms Platt had the same features as the Randwick Installation as evidenced by Mr Rooks (including a gauge of 3/4 inches and a height of 75 mm)”. This submission overlooks the original source of the sample, Mr Rooks. He recollected what he believed the characteristics of the Randwick Installation to be and then located a sample that matched. It is not clear what other samples, if any, Mr Rooks had available in 2004. What is clear is that Mr Waterford at least retained numerous samples of artificial turf exhibiting many different characteristics. Accordingly, apart from Mr Rooks’ recollection, all that can be said is that Exhibit 3 shows that Supergrasse products included a product which has a 3/4 inch gauge and 75 mm ribbon length.
TigerTurf said also that it was “no coincidence” that Exhibit 4, another sample with a 3/4 inch gauge and 75 mm ribbon length, was produced by Mr Waterford under subpoena. The import of this submission is unclear. As discussed, it is apparent that Supergrasse products included turf with a 3/4 inch gauge and 75 mm ribbon length. Hence, it is no surprise that Mr Waterford produced this sample. The relevant point is he did so amongst four boxes of samples in circumstances where the samples tendered in evidence show many different characteristics. The identification of Exhibit 4 as having the same characteristics as the Randwick Installation and the Cronulla Golf Installation does not emerge from the sample itself. It is dependent on Mr Rooks’ recollection.
As to claim 21, FieldTurf acknowledges that the the reference to “1/4 inch (0.635 cm)” is incorrect. Claim 19, upon which claim 21 depends, involves a range starting at 5/8 inch or 1.588 cm. Accordingly, the range in claim 21 should also start with 1.588 cm.
TigerTurf’s submission that FieldTurf should not be given any opportunity to amend claim 21 lacks merit. Given its appeal against the Commissioner’s decision, it was convenient for and sensible of FieldTurf to defer any amendment application to the conclusion of the appeals. No possible prejudice to TigerTurf is apparent. FieldTurf should be given an opportunity to apply to amend claim 21 of the 2004 application.
2.8 Another matter
One other matter should be noted. The Commissioner decided that claim 4 of the 2004 application lacked novelty and an inventive step in light of the so-called Desso specifications. In the appeals, TigerTurf did not rely on the Desso specifications. The parties also tendered a concession by TigerTurf that, for the purpose of these proceedings, if the court finds claim 4 of the 2004 application otherwise valid without consideration of the Desso specifications, then it may allow FieldTurf’s appeal in respect of claim 4.
I consider it appropriate to rely on this concession. Neither party said anything substantive about the Desso specifications. Such evidence as there was about them was not read. Both parties were legally represented during the hearing. Accordingly, I consider that FieldTurf’s appeal should be allowed for the reasons already given including in respect of claim 4. TigerTurf’s appeal should be dismissed also for the reasons already given.
3. THE 2006 APPLICATION
3.1 The specification and claims
The 2006 application is said to be:
This application is a divisional application of Australian Patent Application No. 2004201711, whose contacts are hereby incorporated by reference.
The specification, under the heading “Technical Field”, states:
This invention is directed toward improved synthetic surfaces. The invention is more particularly directed toward improved synthetic grass surfaces, including synthetic grass sport surfaces.
The invention has been developed primarily for use as a synthetic grass sports surface. However, it will be appreciated that the invention is not limited to this particular field of use.
In the section entitled “Background Art”, the specification states:
Synthetic grass sports surfaces are well known. They are used to replace natural grass surfaces which do not stand up well to wear and which require a great deal of maintenance. Also, natural grass surfaces do not grow well in partly or fully enclosed sports stadiums. The synthetic grass surfaces stand up to wear much better than the natural grass surfaces, do not require as much maintenance, and can be used in closed stadiums. …
The known sand-filled synthetic grass sports surfaces have some disadvantages. The surfaces usually become hard after extended use because the sand, between the rows of ribbons, becomes compacted. …
Another problem with the known synthetic grass sport surfaces is the problem of drainage. …
The known synthetic surfaces also have relatively poor playing qualities. …
The specification continues as follows:
Object of the Invention
It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative.
It is an object of the present invention in at least one preferred form to provide a synthetic surface that can be tailored to meet a required surface texture or playing quality of the surface.
Summary of the Invention
In accordance with the present invention there is provided a synthetic surface comprising a flexible backing member and rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the surface including a layer of particulate material on the backing member supporting the synthetic ribbons in a relatively upright position relative to the backing member, all of the synthetic ribbons extending above the particulate material a predetermined distance and the synthetic ribbons comprising a mixture of stiffer ribbons and softer ribbons to provide a surface texture for a predetermined field requirement.
…
Preferably, the ribbons are mixed with the stiffer ribbons and softer ribbons to provide a specific surface texture for a predetermined sports playing field. The proportion of stiffer ribbons and softer ribbons is preferably 1:1.Preferably, the alternate ribbons are stiff and soft. Preferably, the tufts of ribbons have soft and stiff ribbon portions.
Preferably, the stiffer ribbons have at least an 11,000 denier and a thickness of 100 microns. The softer ribbons preferably have from 5,600 denier to 10,000 denier and a thickness of about 80 microns.
…
It has been found that the synthetic surface in another embodiment advantageously can be provided with ribbons having a length about twice as long as the spacing between the rows of ribbons. The preferred embodiment employs ribbons that are quite long compared to the ribbons now employed.In the section dealing with the “Mode for Carrying Out the Invention”, these statements appear, cross-referring to certain figures:
The synthetic grass surface 1, as shown in FIG. 1, has a thin, flexible, backing member 3 with parallel rows 5 of strips or ribbons 7 projecting upwardly from the backing member 3. A relatively thick layer 9 of infilled particulate material is provided on the backing member 3 supporting the ribbons 7 in a relatively upright position on the backing member 3.
All of the ribbons 7 extend above the particulate material a predetermined distance L - T in the embodiment. The ribbons 7 are also mixed in terms of their thickness. For instance, depending on the type of field required, i.e., a field where the ball will roll more slowly than others, stiffer and softer ribbons are mixed together. Stiffer ribbons tend to have more memory and, therefore, return the ribbons back to an upright position, relatively speaking. …
Any combination of these more rigid and softer ribbons would be determined by the particular requirements of the playing field. The ratio of stiff to soft ribbons may be 1:1. These stiff and soft ribbons may be alternating or part of the same tuft.
…The spacing of the rows of ribbons is dependent on the activity to be performed on the field. For instance, cleats worn on the shoes of athletes for different sports have a spacing on the average of about ¾ inch. Football cleats or soccer cleats may be wider than baseball cleats. The spacing is in relation to the type of sport to be played on the field and is consequence of the spacing of the cleats on the shoes of the players. Likewise, in sports such as horse racing, it is contemplated that much wider spacing will be required between the rows to accommodate the wider hooves of the horses. Thus, it is contemplated that for horse racing, a spacing between the rows of up to 2 1/4 inches would be necessary with a proportionally longer ribbon of up to 5 inches.
…The mix of sand and resilient material can vary depending on the end use of the surface. More rubber is used if the surface requires more resiliency. …
In accordance with another embodiment of the invention, lines for marking out a playing area can be formed in the surface by joining the adjacent edges of surface sections with a specific seam. As shown in FIG. 8, a seam band 51 is placed under the adjoining but spaced-apart edges 53, 55 of adjacent surface sections 57, 59 respectively to be joined. The seam band 51 has rows 61 of tufted ribbons 63 in its central section 65 but no ribbons on its wide side sections 67, 69. The central section 65 is located between the edges 53, 55 of the surface sections 57, 59, and the tufted ribbons 63 in the central section 65 can have a different colour and/or a different height from the ribbons 7’ in the surface sections 57, 59 to form a line 71 for marking a playing field. …
The claims defining the invention are as as follows:
1.A synthetic surface comprising a flexible backing member and rows of synthetic ribbons representing blades of grass projecting upwardly from the backing member, the surface including a layer of particulate material on the backing member supporting the synthetic ribbons in a relatively upright position relative to the backing member, all of the synthetic ribbons extending above the particulate material a predetermined distance and the synthetic ribbons comprising a mixture of stiffer ribbons and softer ribbons to provide a surface texture for a predetermined field requirement.
2.A surface as defined in claim 1, wherein the ribbons are mixed with stiffer ribbons and softer ribbons to provide a specific surface texture for a predetermined sports playing field.
3.A surface as defined in either claim 1 or 2, wherein the proportion of stiffer ribbons and softer ribbons is 1:1.
4.A surface as defined in any one of claims 1 to 3, wherein the alternate ribbons are stiff and soft.
5.A surface as defined in any one of claims 1 to 4, wherein the tufts of ribbons have soft and stiff ribbon portions.
6.A surface as defined in any one of claims 1 to 5, wherein the stiffer ribbons have at least an 11,000 denier and a thickness of 100 microns while the softer ribbons have from 5,600 denier to 10,000 denier and a thickness of about 80 microns.
7.A synthetic surface substantially as described herein with reference to and as illustrated in the accompanying drawings.
3.2 Discussion
3.2.1TigerTurf’s contentions
TigerTurf contends that claims 1 to 5 and 7 of the 2006 application lack novelty on the basis of Japanese patent application H7-48778 (JP 778), Japanese patent application H7-331607 (JP 607), Japanese patent application H4-37923 (JP 923), and German patent application DE 3525441 (DE 441), each of which was publicly available before the priority date in 1997.
3.2.2Construction issues
TigerTurf submitted that:
Claim 1 and dependent claims include the feature “all of the synthetic ribbons extending above the particulate material a predetermined distance”. When read in the context of the specification, it is plain that this feature includes where each ribbon extends above the particulate material a predetermined distance whether or not that distance is the same or different to other ribbons.
The submission was founded upon that part of the specification which refers to “the tufted ribbons 63 in the central section 65 can have a different colour and/or a different height from the ribbons 7 in the surface sections 57, 59 to form a line 71 for marking a playing field”. I do not consider this part of the specification supports TigerTurf’s submission. The context of the statement is the marking out of a pitch by various methods. That part of claim 1 and dependent claims which refers to “all of the synthetic ribbons extending above the particulate material a predetermined distance”, when construed in the context of the specification as a whole, does not contemplate that the ribbons may be of different lengths. This conclusion, I should note, is material to certain alternative arguments TigerTurf put about the prior art insofar as that art discloses different lengths of fibres in the one installation.
I accept that stiffness and softness are terms of art in the synthetic turf industry and are concerned with the resilience of the yarn or its capacity to bounce back when put under load and then released. I accept also that the specification uses the terms “stiffer ribbons” and “softer ribbons” as relative terms so that “softer ribbons” refers to ribbons that are less “stiff” (resilient) than other ribbons.
As to claim 1 and dependent claims which include the feature “to provide a surface texture for a predetermined field requirement” and claim 2 and dependent claims which include the feature “to provide a surface texture for a predetermined sports field”, TigerTurf contended that “this feature describes providing a surface texture to address any requirement or desired outcome for a field, including a sports field”. According to TigerTurf:
In the context of the discussion in the background art and the objects of the invention, it is plain that the use of stiffer and softer ribbons to provide a surface texture for a predetermined field requirement/sports playing field is capable of including a broad range of possible requirements to improve the use/playing qualities of the surface e.g. to improve the playing qualities of the field or sports playing field.
…
Examples of predetermined field requirements [forming part of the common general knowledge prior to the priority date] included:
(a)a surface that was less abrasive by using softer ribbons;
(b)a surface that provided better sliding by using softer ribbons;
(c)a surface on which a the ball rolled faster by using softer ribbons;
(d)a surface that had better wear resistance (longevity);
(e)a surface that looks like natural grass.
FieldTurf submitted that:
The claimed invention provides a synthetic surface that can be tailored to meet a required surface texture, that is a required playing quality, through the particular combination of integers in the claims.
The surface texture or playing qualities are distinguished in the specification of [the 2006 application] from other characteristics of surfaces, such as:
(a)hardness (caused by sand compaction);
(b)drainage; and
(c)appearance.
According to FieldTurf:
Given the discussion in the specification, the requirement in the claim for the surface to provide “a surface texture for a predetermined field requirement” is properly understood as a reference to the playing quality of the surface. This would include, for example, the slipperiness of the surface, the abrasiveness of the surface, the speed which balls move across the surface and the degree to which players’ cleats get caught in the surface.
I accept Field Turf’s submission that “a surface texture for a predetermined field requirement” is properly understood as a reference to the playing quality of the surface However, I do not agree with FieldTurf that matters such as compaction level, drainage and appearance fall outside the scope of provision of a surface texture for a predetermined field requirement. This is because anything that might impact on the playing quality of the surface is capable of being a part of a surface texture for a predetermined field requirement. All of the examples noted by TigerTurf, in my view, relate to the playing quality of the surface. I thus agree with TigerTurf that there would be a broad range of possible requirements to improve the use/playing qualities of a surface which might form part of a predetermined field requirement.
3.2.3The prior publications
I do not deal with all integers of the 2006 application in this section. It is sufficient to say that FieldTurf’s submissions focused only on those integers said to be missing from the prior art. Given the conclusions reached, I adopt the same approach.
JP 778: FieldTurf’s case is that JP 778 does not teach stiffer and softer ribbons all extending above a particulate infill a predetermined distance. According to FieldTurf:
The teaching of JP 778 would not give a person skilled in the art any indication that this is an important consideration. To the contrary, the different embodiments suggest that the presence of an infill and the height of any such infill are not important considerations in the context of the invention the subject of JP 778. The document is solely focused on the mixing of polyamide and polyethylene fibres as a means of producing an improved synthetic surface.
TigerTurf relies on Mr Rossi’s evidence, to support the proposition that Figure 1 in JP 778 teaches that the level of sand infill is to be approximately half the length of the ribbons. I am not persuaded by this aspect of Mr Rossi’s evidence. The specification for JP 778 is to be construed as a whole. JP 778, as FieldTurf said, involves a number of embodiments:
(a)A first embodiment in which polyamide and polyethylene yarns are implanted in a polypropylene base, to achieve a pile length of 25 mm, with a sand infill having a particle size of up to [2 mm] and spread at a rate of 30 kg/m2.
(b)A second embodiment in which polyamide and polyethylene yarns are twisted together to achieve a pile length of 13 mm. This surface does not have a sand or other infill.
(c)A third embodiment in which polyamide and polyethylene yarns are twisted together to achieve a pile length of 25 mm, in which the polyethylene fibres were made to “contract by heating”. The embodiment includes a sand infill having a particle size of up to [2 mm] and spread at a rate of 30 kg/m2.
Figure 1 is not to scale. It happens to show infill which looks like about 50% of the pile height. However, the text describing Figure 1 says nothing about the infill height or the relationship between the infill height and the length of ribbon exposed above the infill. The reference to the weight of sand required per square metre is not a teaching about infill height. The resulting height of infill from that requirement, as FieldTurf said:
…depends on the total amount of space available between the tufts of grass to accommodate the infill. The total amount of space is determined by factors such as the thickness of the ribbons, the number of strands of yarn in each tuft, the gauge and the stitching rate. The height of the infill will also vary depending on the grade of sand used. There is therefore insufficient information in the description of the first embodiment to determine the height of the infill, and the infill may vary, in any event, depending on the grade of sand used.
Moreover, construed as a whole, and as FieldTurf submitted, “the different embodiments suggest that the presence of an infill and the height of any such infill are not important considerations in the context of the invention the subject of JP 778”.
For these reasons JP 778 does not disclose the invention claimed in the 2006 application. An integer, “all of the synthetic ribbons extending above the particulate material a predetermined distance”, is not present. That integer would not be filled in by the notional skilled addressee by reason of common general knowledge or any matter of routine (Nicaro at 91 ALR 530-531). It follows that JP 778 does not anticipate the 2006 application.
JP 607: JP 607, entitled “Artificial turf structure” relates to artificial turf for applications including athletics, ball games and leisure pursuits. According to TigerTurf:
Exemplary Embodiment 1 describes an installed surface, including the sand infill. That is, it is describing an embodiment for the purpose of testing the cushioning effect, which necessarily requires it to be a finished surface with infill installed. It is apparent from this description of Exemplary Embodiment 1 that the specification is directing that both the crimped yarn fibres and the straight yarn fibres, in the installed surface to be tested, are to have a length of 25 mm after installation (see for example [0015] “the length of fibres 4, 5 was 25 mm”). Accordingly, when the direction in relation to the sand infill is followed, each of the crimped yarns, and the straight yarns, will extend above the sand infill 5 mm (after installation).
Further, Figure 2…clearly depicts (in particular by the straight upper boundary) that the straight yarns and the crimped yarns extend above the height the same predetermined distance after installation. This is consistent with Mr Jones’ understanding of [0015] and Figure 2…. [00017] also refers to Figure 2 “with the length of the fibres 4, 5 being 25 mm and the amount of dry sand filling being 20 mm”.
… Mr Rossi’s cross-examination proceeded on a false premise, namely, that the specification was directing the length of the respective yarns at the manufacturing stage and not the installation stage. It clearly is not.
I am not persuaded by these submissions. I do not consider that the specification can be understood as suggesting that the straight and crimped fibres are 25 mm in height above the backing layer. This would require the crimped fibres to have started life longer than the straight fibres so that, after crimping, each fibre (despite any vagaries in the crimping process) would be 25 mm. Mr Rossi’s evidence was clear. The straight and crimped fibres are cut under tension so they start life at the same length. A fibre that started life at 25 mm (while straightened) will necessarily become shorter than 25 mm when it returns to its shorter, crimped form. Figure 2 is diagrammatic. It is not intended to be understood as teaching that the crimped and straight fibres are the same height above the infill.
There is no teaching in JP 607 of stiffer and softer ribbons all extending above a particulate infill a predetermined distance. This is sufficient to reject TigerTurf’ claim of lack of novelty by reason of prior disclosure in JP 607. That said, I do not accept FieldTurf’s submission that JP 607 does not disclose a surface to “provide a surface texture for a predetermined field requirement”. Preventing hardening of sand, maintaining elasticity to allow movement and ensuring safety when a user falls, as referred to in JP 607, are all part of predetermined filed requirements.
JP 923: JP 923, entitled “Sports field with artificial turf”, relates to artificial turf with sand which “can be used in different types of sports fields beginning with tennis courts or football pitches”.
TigerTurf submitted that:
Example 1 directs that upon manufacture and installation but before use the nylon fibres are all of the same length, and the polypropylene fibres are all of the same length, albeit the nylon fibres are slightly longer than the polypropylene. Example 1 then teaches that after the synthetic surface has been used the “polypropylene (5) will become slightly higher, or both fibres (4, 5) will be almost the same height…”. Accordingly, the specification is teaching that after use the nylon ribbons will be of the same predetermined distance above the infill as each other and that the polypropylene ribbons will be of the same predetermined distance above the infill as each other and that the polypropylene ribbons will either be the same predetermined distance above the infill as the nylon ribbons or slightly higher.
…
Example 2 directs that upon manufacture and after installation but before use the nylon ribbons and the polypropylene ribbons will be of the same length such that they will be the same predetermined distance above the infill. Example 2 then teaches that after use the nylon ribbons will all be the same predetermined distance above the infill and the polypropylene ribbons will all be of the same predetermined distance above the infill albeit the nylon ribbons will be higher.
Fibre length is measured under tension. That was clear from the evidence of Mr Rossi, but also the way in which each witness measured a fibre when asked. The witnesses all stretched the fibre out and measured it. They never attempted to measure a piece of fibre not under tension. It is clear from Example 1 of the specification of JP 923 that the polypropylene fibres are cut longer than the nylon fibres. When not under tension, the polypropylene fibres curl over, including when trodden on and due to wear. But that does not mean the polypropylene and nylon fibres are ever the same length, even though, due to the curling over of the polypropylene fibres, they may appear to be almost the same height after use or the polypropylene fibres slightly higher. In Example 2, the polypropylene and nylon fibres are cut to almost the same length but the nylon fibres protrude slightly above the polypropylene fibres, which curl over when used, so as to prevent wear of the polypropylene fibres. Insofar as the claims of JP 923 deal with height of the fibres, claim 3 says that the “real height of the aforementioned polypropylene fibres is slightly higher than the real height of the aforementioned nylon fibres”. As the specification discloses, the purpose of this is to ensure that when the polypropylene fibres curl over in use, the nylon fibres can be nearly as high or higher than the polypropylene fibres to give good wear resistance (nylon) and softness (polypropylene). Further, the sand infill in JP 923 is to “the tips of the leaves of the artificial turf”, with the sand described as being at the same height as the fibres, being 20 mm. It follows that JP 923 is not teaching ribbons all extending the same height above the infill. It is teaching that ribbons of different heights, in fact slightly different heights, are beneficial. This is sufficient to conclude that JP 923 does not anticipate the claims of the 2006 application. Otherwise, consistent with the reasoning above, I do not accept that the stated purpose of JP 923, good wear resistance, is not a predetermined field requirement because it is unconnected to the playing qualities of the field.
DE 441: DE 441 relates to
a ground covering having a backing in which pile threads which extend upwards are secured. In particular, the invention relates to what is known as a plastic lawn, as is used as a ground covering for sports facilities but also for the domestic and garden sector.
As FieldTurf said, DE 441 describes achieving underfoot qualities closer to natural lawn than previous plastic lawns by a surface comprising two types of pile threads, with the second type of pile threads “forming a layer of crimped threads on the backing. The first pile threads thus form a kind of nap, while the second pile threads form a cushioning layer.” The second type of pile threads are described as being “highly shrunk”. The crimped threads form a layer above which the first pile threads project. As FieldTurf also said:
The surface may or may not include a sand infill. DE 441 describes that “[t]he layer of crimped or tangled threads according to the invention [intrinsically] makes a filling of the above-described kind superfluous”. However, a filling may be used. Where it is, “the height of the filling should be less than 1/3 of the height of the first pile threads, and the height of the layer of the crimped threads should then be approximately 50% of the height of the first pile threads”.
I accept FieldTurf’s submission that DE 441 does not “give clear and unmistakeable directions to produce a surface that contains an infill”. I accept also that “to the extent that an infill might be used, it is clear that the two types of fibres will extend above the infill to considerably different extents”. TigerTurf accepts this is so. It relied on its construction of the 2006 application about different fibre lengths to support its argument about anticipation by DE 441. I did not accept the construction argument and thus do not accept the alleged anticipation. DE 441 is teaching different fibre lengths. It also teaches that infill is unnecessary or, if used, infill to lless than the height of the crimped fibres and preferably no more than 1/3 of the height of the first pile threads. It thus teaches away from the invention claimed in the 2006 application.
4. CONCLUSIONS
For these reasons TigerTurf’s appeal should be dismissed and, subject to the amendment foreshadowed, FieldTurf’s appeal should be allowed. Orders will be made accordingly.
I certify that the preceding one hundred and eighty-nine (189) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot. Associate:
Dated: 20 June 2014
- AGLC
- Fieldturf Tarkett Inc v Tigerturf International Ltd [2014] FCA 647
- Case
- [2014] FCA 647
- Decision Date
CaseChat Overview and Summary
The court was required to decide whether the invention claimed in the 2004 application was novel, involved an inventive step, and was clear. The court had to assess whether prior art or prior publications anticipated the claimed invention and whether the invention was enabled by prior knowledge or was common general knowledge. The court also had to consider the effect of hindsight on the reliability of evidence as to anticipation by prior act.
The court found that DE 441 did not give clear and unmistakable directions to produce a surface that contained an infill, and that it taught away from the invention claimed in the 2004 application. The court accepted Fieldturf’s argument that DE 441 did not anticipate the claimed invention. The court also found that the Commissioner’s findings on novelty, inventive step, and clarity were incorrect. Fieldturf’s appeal was allowed, subject to the amendment of claim 21 of the 2004 application. Tigerturf’s appeal was dismissed, and it was ordered to pay Fieldturf’s costs.
Fieldturf Tarkett Inc’s appeal was allowed, subject to the amendment of claim 21 of its patent application 2004201711. The decision of the Commissioner of Patents was set aside, and the 2004 application proceeded to grant. Tigerturf International Ltd’s appeal was dismissed, and it was ordered to pay Fieldturf’s costs.
Orders
Orders of the court
1. Subject to the amendment in order 2, the appeal be allowed.
2. Leave be granted to the applicant, Fieldturf Tarkett Inc, to amend claim 21 of its patent application no. 2004201711 (the 2004 application) by deleting the words “1/4 inch (0.365 cm)” and replacing them with “5/8 inch (1.588 cm)” so that claim 21 reads:
A surface as claimed in claim 20, wherein the ribbons extend between 5/8 inch (1.588 cm) and 1 ½ inches (3.81 cm) above the layer of particulate material.
3. Subject to the amendment in order 2, the decision of the Commissioner of Patents given on 18 January 2011, allowing the respondent’s opposition to the 2004 application, be set aside to the extent that it found:
(a) the invention as disclosed in claims 3, 4 and 5 of the 2004 application lacked novelty;
(b) the invention as disclosed in claims 3, 4 and 5 of the 2004 application lacked an inventive step;
(c) claims 11 and 21 of the 2004 application lacked clarity.
4. Subject to the amendment in order 2, the 2004 application proceed to grant.
5. The cross-appeal be dismissed.
6. The respondent, Tigerturf International Limited, pay the applicant’s costs as agreed or taxed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
1. The appeal be dismissed.
2. The applicant, Tigerturf International Ltd, pay the respondent’s costs as agreed or taxed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
Ratio Decidendi
Legal Principle Established
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