Globaltech Corporation Pty Ltd v Reflex Instruments Asia Pacific Pty Ltd
[2022] FCA 797
•12 July 2022
FEDERAL COURT OF AUSTRALIA
Globaltech Corporation Pty Ltd v Reflex Instruments Asia Pacific Pty Ltd [2022] FCA 797
File numbers: NSD 1745 of 2019 Judgment of: JAGOT J Date of judgment: 12 July 2022 Catchwords: PATENTS — infringement of patent for optical device in borehole drill equipment — respondent admits infringing patent but claims patent invalid for lack of novelty and inventive step — where prior art documents do not deprive claimed invention of novelty — common general knowledge — cross-claim dismissed Legislation: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Patents Act 1990 (Cth) ss 7(1), 7(1)(b), 7(2)–(3), sch 1
Cases cited: Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59; (2002) 212 CLR 411
Apotex Pty Ltd v Sanofi-Aventis [2008] FCA 1194; (2008) 78 IPR 485
AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324
AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356
Attorney‑General v Prince Ernest Augustus of Hanover [1957] AC 436
Australian Mud Company Pty Ltd v Coretel1 Pty Ltd (No 4) [2015] FCA 1372
Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 2) [2018] FCA 1109; (2019) 134 IPR 359
Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2018] FCA 1839; (2018) 138 IPR 33
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651; (2015) 113 IPR 280
Catnic Components Ltd v Hill & SmithLtd [1982] RPC 183
CCOM Pty Ltd v Jeijing Pty Ltd [1994] FCA 396; (1994) 51 FCR 260
Convatec Ltd v Smith & Nephew Healthcare Ltd [2011] EWHC 2039 (Pat); [2012] 129 RPC 182
Decor Corporation Pty Ltd v Dart Industries Inc [1988] FCA 682; (1988) 13 IPR 385
Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21; (2002) 188 ALR 280
General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457
Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; (2014) 222 FCR 336
Hickton’s Patent Syndicate v Patents and Machine Improvements Company Ltd (1909) 26 RPC 339
Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461
JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474; (2005) 67 IPR 68
Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155
Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46; [2005] 1 All ER 667
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 CLR 173
Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151
Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; (2020) 155 IPR 1
Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253
Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 37; (1990) 91 ALR 513
Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2
NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited [1993] FCA 583; (1993) 44 FCR 239
Pharmacia Italia SPA v Mayne Pharma Pty Ltd [2005] FCA 1078; (2005) 222 ALR 552
R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd [1989] FCA 57; (1989) 25 FCR 565
Re Raychem Corp’s Patents [1997] EWHC 372; [1998] RPC 31
Reflex Instruments Asia Pacific Pty Ltd v Borecam Asia Pte Ltd [2017] APO 51
Reflex Instruments Asia Pacific Pty Ltd v Minnovare Pty Ltd [2018] APO 70
Reflex Instruments Asia Pacific Pty Ltd v Minnovare Pty Ltd [2018] APO 71
Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 177 ALR 231
Stanway Oyster Cylinders Pty Ltd v Marks [1996] FCA 527; (1996) 66 FCR 577
The Wellcome Foundation Limited v VR Laboratories (Aust) Proprietary Limited [1981] HCA 12; (1981) 148 CLR 262
Vehicle Monitoring Systems Pty Ltd v Sarb Management Group Pty Ltd [2020] FCA 408; (2020) 150 IPR 216
Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59
Woolworths Ltd v W B Davis and Son Ltd Inc (1942) 16 ALJ 57
Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 520 Date of hearing: 6–9, 13 December 2021 Counsel for the Applicant/Cross-Respondent: Mr A Ryan SC with Mr A Fox SC Solicitor for the Applicant/Cross-Respondent: Bird & Bird Counsel for the Respondent/Cross-Claimant: Mr J Hennessy SC with Ms P Arcus and Ms A Campbell Solicitor for the Respondent/Cross-Claimant: Gilbert + Tobin
Table of Corrections: 18 July 2022 Second sentence of [292] amended to remove reference in parentheses to patent area. 18 July 2022 Second sentence of [311] amended to remove repeated reference to “armed with the common general knowledge” in parentheses. ORDERS
NSD 1745 of 2019 BETWEEN: GLOBALTECH CORPORATION PTY LTD ACN 087 281 418
Applicant
AND: REFLEX INSTRUMENTS ASIA PACIFIC PTY LTD ACN 124 204 191
Respondent
AND BETWEEN: REFLEX INSTRUMENTS ASIA PACIFIC PTY LTD ACN 124 204 191
Cross-Claimant
AND: GLOBALTECH CORPORATION PTY LTD ACN 087 281 418
Cross-Respondent
ORDER MADE BY:
JAGOT J
DATE OF ORDER:
12 JULY 2022
THE COURT ORDERS THAT:
1.The cross-claim be dismissed.
2.The cross-claimant pay the cross-respondent’s costs of and in connection with the cross-claim as agreed or taxed.
3.Within 14 days of today’s date, the parties confer and submit agreed or competing orders finalising the matter including as to costs.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
JAGOT J:
1 THE PROCEEDING
[1]
2 THE PATENT
[3]
3 NON-EXPERT EVIDENCE
[25]
4 THE EXPERT EVIDENCE
[35]
4.1 Professor Tapson
[35]
4.1.1 Expertise
[36]
4.1.2 Sources of information
[40]
4.1.3 Common general knowledge
[41]
4.1.3.1 Downhole instruments
[41]
4.1.3.2 Wired systems for communicating and/or transmitting data downhole
[45]
4.1.3.3 Wireless systems
[46]
4.1.3.4 Magnetic Communication
[47]
4.1.3.5 Handsets or hand-held devices
[50]
4.1.4 Designing a downhole instrument for transferring data
[52]
4.1.5 Reflex EZ-TRAC Manual
[69]
4.1.6 The patent
[71]
4.1.7 Novelty
[81]
4.1.7.1 Iizuka
[82]
4.1.7.2 Bergren
[88]
4.1.7.3 Sun
[95]
4.1.8 Inventive step
[101]
4.1.9 Professor Tapson’s response to Professor Dupuis
[103]
4.2 Professor Dupuis
[123]
4.2.1 Expertise
[124]
4.2.2 Basic information in the field of mineral exploration
[127]
4.2.2.1 The mineral industry and drilling
[128]
4.2.2.2 Borehole orientation devices
[131]
4.2.2.3 The invention in the patent
[135]
4.2.2.4 Downhole equipment/downhole probes
[140]
4.2.2.5 Borehole
[142]
4.2.2.6 Azimuth
[146]
4.2.2.7 Core and core drill
[147]
4.2.2.8 Depth
[148]
4.2.2.9 Drill bit or cutting head
[149]
4.2.2.10 The patent – tube/barrel
[150]
4.2.2.11 Tools and instruments
[153]
4.2.2.12 Wired systems for communicating and/or transmitting data downhole
[158]
4.2.2.13 Unwired systems for communicating and/or transmitting data downhole
[160]
4.2.3 Designing a downhole instrument for transferring data
[169]
4.2.4 Novelty
[176]
4.2.4.1 Iizuka
[176]
4.2.4.2 Bergren
[179]
4.2.4.3 Sun
[180]
4.2.5 Inventive step
[184]
4.2.6 Response to Mr Brown
[185]
4.3 Joint expert report
[193]
4.3.1 General
[194]
4.3.2 Device
[196]
4.3.3 Downhole equipment
[198]
4.3.4 Electronics unit
[200]
4.3.5 Optical device
[205]
4.3.6 Light path
[207]
4.3.7 Electromagnetic signal direction altering means
[208]
4.3.8 Downhole data gathering system
[212]
4.3.9 Communication device
[216]
4.3.10 Wireless communication or communicate wirelessly
[219]
4.3.11 Iizuka
[221]
4.3.12 Bergren
[224]
4.3.13 Sun
[228]
4.3.14 Inventive step
[230]
4.4 Oral evidence of experts
[237]
4.4.1 Expertise and related matters
[238]
4.4.2 The patent
[241]
4.4.3 Inventive step
[263]
5 CONSTRUCTION OF THE PATENT
[270]
5.1 Principles
[270]
5.1.1 General
[270]
5.1.2 Some observations about ss 7(1)–(3)
[287]
5.2 Some observations about the experts
[293]
5.3 Mining and oil and gas exploration
[307]
5.4 The common general knowledge
[337]
5.5 Downhole equipment
[343]
5.6 Optical device
[356]
5.7 Electronics unit
[368]
5.8 Electromagnetic signal direction altering means
[374]
5.9 Downhole data gathering system
[391]
5.10 Communicate wirelessly and wireless communication
[404]
5.11 Professor Tapson’s design exercise
[411]
6 NOVELTY
[415]
6.1 Principles
[415]
6.2 General
[420]
6.3 Iizuka
[424]
6.3.1 Downhole equipment
[427]
6.3.2 Optical device
[431]
6.3.3 Electromagnetic signal direction altering means
[435]
6.3.4 Electronics unit
[437]
6.3.5 Other claims
[438]
6.3.6 Conclusions
[440]
6.4 Bergren
[441]
6.5 Sun
[455]
6.6 Conclusions
[471]
7 INVENTIVE STEP
[472]
7.1 Principles
[472]
7.2 Common general knowledge alone
[476]
7.3 Common general knowledge and prior art
[516]
8 CONCLUSIONS
[520]
1. THE PROCEEDING
Globaltech Corporation Pty Ltd contends that Reflex Instruments Asia Pacific Pty Ltd has infringed Globaltech’s Australian Standard Patent No 2012297564 for the invention titled “Optical device for use with downhole equipment” (the patent). Reflex admits that it has infringed the patent by supplying in Australia downhole survey instruments under the brand names “EZ-GYRO” and “EZ-TRAC”, when such instruments are supplied with optical devices as claimed in claim 1 of the patent and described by Reflex as the “IRDA Device” and the “IR Coupling” (“IR” meaning infrared, and “IRDA” referring to the Infrared Data Association Standard). However, Reflex also contends by its cross-claim that the patent is invalid for lack of novelty and lack of inventive step.
I consider that Reflex has not established that the invention as claimed in the patent is invalid for lack of novelty or lack of inventive step. In summary:
(1)the three prior art documents (referred to as Iizuka, Bergren, and Sun) do not anticipate the invention as claimed in the patent for numerous reasons in each case and, accordingly, do not deprive the claimed invention of novelty; and
(2)the inventive step in the present case was the perception and the related idea at the priority date that existing downhole tools could be improved by an arrangement that enabled the light signal within the optical device to be reflected to an infrared communication port on the side of the instrument housing, which would mean that when the instrument was brought to the surface for data communication, the end of the housing did not need to be uncoupled to enable access to the infrared port for the data to be obtained, as it could be communicated from the side port to a hand-held communication device. This perceived capacity for a material improvement to existing devices was not obvious at the priority date. While the method chosen to effect this improvement would have been obvious to a person skilled in the art who had been asked to make that particular improvement at the priority date, there was no such problem perceived with the existing designs and no need felt to improve the designs in this or any similar manner. The inventiveness of the perception and related idea to improve the existing designs in this or some similar manner is sufficient to sustain the inventive step of the invention as claimed.
2. THE PATENT
The claimed priority date of the patent is 15 August 2011.
The inventors are Gordon Stewart and Michael Klass, both current directors of Globaltech.
The field of the invention relates to “devices enabling data to be transmitted to and from downhole equipment, such as core orientation units and borehole telemetry probes”: p 1 [0001].
The background to the invention at pp 1–2 explains that:
[0002] Core orientation is the process of obtaining and marking the orientation of a core sample from a drilling operation.
[0003] The orientation of the sample is determined with regard to its original position in a body of material, such as rock or ore deposits underground.
[0004] Core orientation is recorded during drilling, and analysis is undertaken during core logging. The core logging process requires the use of systems to measure the angles of the geological features, such as an integrated core logging system.
[0005] Whilst depth and azimuth are used as important indicators of core position, they are generally inadequate on their own to determine the original position and attitude of subsurface geological features. Core orientation i.e. which side of the core was facing the bottom (or top) of a borehole and rotational orientation compared to surrounding material, enables such details to be determined.
[0006] Through core orientation, it is possible to understand the geology of a subsurface region and from that make strategic decisions on future mining or drilling operations, such as economic feasibility, predicted ore body volume, and layout planning.
[0007] In the construction industry, core orientation can reveal geological features that may affect siting or structural foundations for buildings. Core samples are cylindrical in shape, typically around 3 metres long, and are obtained by drilling with an annular hollow core drill into subsurface material, such as sediment and rock, and recoverying [sic] the core sample.
[0008] A diamond tipped dril [sic] bit is used at the end of the hollow drill string. As the drill progresses deeper, more sections of hollow steel drill tube are added to extend the drill string. An inner tube assembly captures the core sample. This inner tube assembly remains stationary while the outer tubes rotate with the drill bit. Thus, the core sample is pushed into the inner tube.
[0009] A ‘back end’ assembly connects to a greaser. This greaser lubricates the back end assembly which rotates with the outer casing while the greaser remains stationary with the inner tubing.
[0010] Once a core sample is cut, the inner tube assembly is recovered by winching to the surface. After removal of the back end assembly from the inner tube assembly, the core sample is recovered and catalogued for analysis.
[0011] Various core orientation systems have previously been used or proposed. Traditional systems use a spear and clay impression arrangement where a spear is thrown down the drill string and makes an impression in clay material at an upper end of the core sample. This impression can be used to vindicate the orientation of the core at the time and position the spear impacted the clay.
The patent explains that prior art devices have limitations, including that (at p 3 [0015]):
…The orientation unit is connected to the greaser by a screw thread and o-ring seal arrangement. In the harsh down hole environment within the drill string, it has been realised that the o-ring seals are not always effective and can let fluid into the space between the orientation unit and the greaser.
Further, “the orientation unit must be disassembled from the greaser unit before the display and orientation unit can be viewed, rotated and the required core orientation displayed”: p 4 [0015]. It then states (p 4):
[0016] Similar issues arise with downhole probes that are used to obtain borehole telemetry data to determine drilling progress, such as depth and direction of the borehole and change in surrounding magnetic field.
At p 4 [0017] the patent records that:
Typically the downhole equipment is brought to the surface once sufficient data is gathered or task completed, such as obtaining a core sample. It is common practice to manually have to separate the backend assembly from an electronics package used for gathering downhole data. This task involves unscrewing the backend assembly from the electronics package, which takes time and risks thread damage as well as resulting in risk of ingress of dirt and water into the thread. Also, o-ring seals protecting the electronics unit may be compromised through separation and refitting of the backend assembly and electronics unit. Similar issues exist with separating the electronics unit of a downhole probe from its backend assembly.
Page 4 [0018] says:
It has been found desirable to provide means of obtaining signals/data from or providing signals/data to downhole equipment electronics units, such as used in core sample orientation units or downhole probes.
The background to the invention section ends with this statement (p 5 [0020]):
With this in mind, it has been found desirable to provide improved means for obtaining signals/data from or providing signals/data to an electronics unit of downhole equipment.
The summary of the invention in the patent includes at p 5 [0021]:
With the aforementioned in mind, in one aspect the present invention provides a device that transfers at least one electromagnetic signal to or from an electronics unit of downhole equipment, the device including a body and an electromagnetic signal direction altering means, the body having a light path arranged to allow the electromagnetic signal from an electromagnetic wave source associated with the electronics unit to pass to the electromagnetic signal direction altering means, the electromagnetic signal direction altering means causing the electromagnetic signal to change direction of travel, the device, in use, configured to transmit or receive the electromagnetic signal through at least one aperture through a side wall of a component of downhole equipment.
At pp 7–9 the summary records that:
[0037] An advantage of the present invention is that the greaser or other equipment to which the electronics unit attaches does not need to be separated from the electronics unit in order to obtain access and communicate with the device to obtain data. This avoids needing to unscrew components of the downhole equipment and risk ingress of dirt/water or damaged threads, as well as reduces time taken to obtain data.
[0038] In addition, the electronics unit can be started or stopped remotely and at the most opportune time. For example, in known devices an operator usually delays turning on the electronics unit until the last minute in order to conserve the unit's onboard battery power. The operator then starts the electronics unit and assembles the unit to the other equipment, such as a greaser or probe assembly.
[0039] The present invention avoids the need for such urgent activity by allowing an operator to switch the unit on or off by sending an optical signal from a hand held device to the optical device through an overlying aperture, the device then transmitting the optical signal to the electronics unit to activate/deactivate the unit. Data to/from the unit can also be sent/received utilising the same optical device.
…
[0042] A further aspect of the present invention provides downhole equipment having an electronics unit configured to obtain data relating to a borehole into which the electronics unit is inserted or to obtain data relating to equipment used within the borehole system, and an optical device associated with the electronics unit, and an optical device according to any one of the preceding claims configured to enable optical signals to be transmitted to or received from the electronics unit whilst the electronics unit is connected to the downhole equipment.
At p 9 [0044] the summary records:
A still further aspect of the present invention provides a downhole data gathering system, including a communication device arranged to communicate wirelessly with an electronics unit of downhole equipment, the downhole equipment including an electronics unit configured to obtain data relating to a borehole into which the electronics unit is inserted or to obtain data relating to equipment used within the borehole system, and a device that transfers electromagnetic signals to or from the electronics unit of the downhole equipment, the device including a body and an electromagnetic signal direction altering means, the body having a light path arranged to allow the electromagnetic signals from an electromagnetic wave source associated with the electronics unit to pass to the electromagnetic signal direction altering means, the electromagnetic signal direction altering means causing the electromagnetic signal to change direction of travel and wherein the device is configured to enable the electromagnetic signals to be transmitted to or received from the electronics unit whilst the electronics unit is connected to the downhole equipment, the device enabling transmission of the electromagnetic signals from the electronics unit to the wireless communication device, or from the wireless communication device to the electronics unit, through at least one aperture in a side wall of the downhole equipment.
The patent includes the following figures described in a section entitled “Description of the preferred embodiment” (p 10):
Figure 1 shows an end on view of a core sample orientation device or downhole probe having an indicator window whereby indicator lights provide optical signals to an optical device according to an embodiment of the present invention: p 10 [0047]. In figure 1, the indicator window end 12 of an electronics unit of a core sample orientation data gathering device 10 includes a window 14. Indicator lights 16, 18 can be seen through this window at least when illuminated. The window end is sealed by a retaining plate 20: p 10 [0051].
Figures 2a and 2b below show an electronics unit 30 for gathering data downhole which houses the light emitters 16, 18. Light from these emitters (eg, LEDs,or light emitting devices) passes through the window 14 (shown in figure 1). Reference arrow A refers to the drill bit end direction, and reference arrow B refers to the backend assembly direction. An optical device 32 according to an embodiment of the present invention is provided at the end 34 of the electronics unit 30 and which device extends into the greaser unit 36 of the backend assembly when connected thereto. The optical device has a body 38 and a light path altering means 40. The body also defines a light path therethrough (see figure 3 below) arranged to allow the optical signal from a light source(s) 16,18 associated with the electronics unit to pass to the light path altering means. The light path altering means 40 can be arranged to cause the optical signal from/to the electronics unit to change direction of travel and emit out of the body/into the body of the optical device. The greaser unit 36 has apertures 42 that allow light therethrough. Light from the emitters is directed onto at least one light path altering means of the device. The emitted light can be observed through the apertures 42 in the greaser: pp 11–12 [0058]–[0064].
Figure 3 below shows a particular embodiment of an optical device 32 for use with a downhole electronics unit. The optical device is shown in side, profile view. In practice, the device is cylindrical in cross section A–A. The optical device has a body 44 of a transparent machined plastics material, such as polycarbonate, acrylic, nylon etc. Glass may also be used, though a plastic material is preferred. The body has annular grooves 46 therearound to receive o-rings for sealing the device within a housing or casing of a downhole unit, such as an electronics unit. In this embodiment, the transparent material of the body allows light to pass therethrough. At least a portion of the body is shaped to fit within a housing or casing of a component of downhole equipment, such as an electronics unit or a greaser unit or extension piece etc. A first end 48 of the body is shaped so that an end surface 50, in use, faces the light emitters 16, 18 or other light emitters depending on the equipment used and required application. Light from one or more such emitters is transmitted by the light path through the body to impinge on a light path altering means 52. In this embodiment, the light path altering means includes a reflector 54. The reflector reflects some or a majority of the light impinging upon it, and said reflected light is re-directed sideways (S) with respect to a longitudinal direction (L) of the device. The light path altering means may be provided, as in this embodiment, by forming a recess in its second end 56. The recess may form a conical surface 58 to which a reflective material is applied, such as a silvery coating: pp 14–15 [0071]–[0077].
Figure 4 below shows an alternative embodiment of the present invention which works in the same manner as that of figure 3. This alternative form of optical device 60 is provided as an insert for use with a downhole probe. Again, this device as the one above in figure 3, is shown in side view but is a cylinder with a circular cross section B–B. Light 62 entering the device 60 passes through the body 64 material and reflects off of a protrusion 66 into the envelope of the cylinder. The protrusion is a machined surface coated from the exterior with a reflective material. A conical surface 68 assists in diffracting light sideways (S). The light path altering means may be a dished or domed end to the device and which is coated or covered in a reflective material. The optical device can be inserted into a downhole component and removed from replacement or access to an end of the electronics unit as required. Otherwise, the optical device can be left in situ to transmit light from/to the electronics unit. This can avoid the need to disassemble the electronics unit from the backend assembly, greaser unit or probe etc to which it is connected. The electronics unit can be switched on or off by sending a controlling optical signal to the electronics unit through the optical device. The optical device may be formed of one or multiple parts. For example, the optical device may be machined as a monolithic component or may be formed of multiple sub-components brought together, which may be bonded together or simply abutting in use. Light impinging on the light path altering means can be emitted sideways omni-directionally. Thus, and of great benefit to an operator, the optical device needs no alignment with the at least one aperture of the downhole assembly through which the light is to be transmitted: pp 15–16 [0078]–[0085].
The claims in contest are claims 1, 5, 7, 8, 9, 10, 12, 17, 21, 22, 24, 25, 26, 27 and 29.
Claim 1 in the patent is to:
A device that transfers at least one electromagnetic signal to or from an electronics unit of downhole equipment, the optical device including a body and an electromagnetic signal direction altering means, the body having a light path arranged to allow the electromagnetic signal from an electromagnetic wave source associated with the electronics unit to pass to the electromagnetic signal direction altering means, the electromagnetic signal direction altering means causing the electromagnetic signal to change direction of travel, the device, in use, configured to transmit or receive the electromagnetic signal through at least one aperture through a side wall of a component of downhole equipment.
Contested claims 5, 7, 8, 9, 10, 12, and 17 are dependent on claim 1.
Claim 21 is to:
A downhole data gathering system, including a communication device arranged to communicate wirelessly with an electronics unit of downhole equipment, the downhole equipment including an electronics unit configured to obtain data relating to a borehole into which the electronics unit is inserted or to obtain data relating to equipment used within the borehole system, and device-that [sic] transfers electromagnetic signals to or from the electronics unit of the downhole equipment, the device including a body and an electromagnetic signal direction altering means, the body having a light path arranged to allow the electromagnetic signals from an electromagnetic wave source associated with the electronics unit to pass to the electromagnetic signal direction altering means, the electromagnetic signal direction altering means causing the electromagnetic signal to change direction of travel and wherein the device is configured to enable the electromagnetic signals to be transmitted to or received from the electronics unit whilst the electronics unit is connected to the downhole equipment, the device enabling transmission of the electromagnetic signals from the electronics unit to the wireless communication device, or from the wireless communication device to the electronics unit, through at least one aperture in a side wall of the downhole equipment.
Contested claims 22, 24, 25, 26, 27, 28 and 29 are dependent on claim 21.
3. NON-EXPERT EVIDENCE
Kelvin Brown is the Global Lead (Directional Drilling) of Reflex. Reflex is a wholly owned subsidiary of Imdex Ltd (Imdex). He has over 20 years’ experience in mineral exploration drilling. He has acquired knowledge and experience in all major aspects of exploration drilling, including auger drilling, rotary-percussion drilling and diamond core drilling, and the downhole equipment and instruments used in those drilling programmes. He regularly observed competitors’ products being used on Reflex customers’ sites and was given an opportunity to operate them. He also maintained a familiarity with competitors’ products by attending mining events, doing online research on competitors’ websites, LinkedIn and social media accounts, via customer contacts who would inform him of competitors’ products, through marketing collateral including mining and geology publications and by way of membership with the Deep Exploration Technologies Cooperative Research Centre (DETCRC).
Mr Brown said that downhole equipment refers to equipment used down boreholes, which includes core orientation tools and survey tools.
Mr Brown identified that the Imdex range of instruments being manufactured in Western Australia as at 30 June 2011 comprised: (a) ACT II RD – rapid descent core orientation instrument, (b) EZ-SHOT – single shot magnetic survey instrument, (c) EZ-AQ – magnetic survey instrument specifically designed for AQ sized boreholes, (d) EZ-TRAC – multi shot magnetic survey instrument, (e) MAXIBOR II – optical non-magnetic survey instrument, (f) Reflex Gyro – gyroscopic survey instrument, and (g) customised directional motors.
Mr Brown said that with the exception of the EZ-SHOT and the customised directional motors, each of the above instruments used wireless handsets for communication and data transmission. The ACT II RD, EZ-AQ, EZ-TRAC and MAXIBOR II used wireless infrared communication. The Reflex Gyro used Bluetooth communication.
According to Mr Brown, core orientation tools and survey tools are complementary products. The borehole used in the core orientation process is required to be surveyed at some point in order to determine the geospatial position of the oriented core. The survey process is undertaken either before or after the process of orientating the core. Core orientation tools are used to indicate the orientation of a core sample in its original underground location and provide that orientation data to the operator. Survey tools are primarily used to measure changes in inclination and azimuth (deviation) along a drill hole. It is typical for drilling rig operators to require supply of both core orientation tools and survey tools before commencing drilling operations.
Core sample orientation is the process of obtaining and marking the orientation of a core sample from a drilling operation, which is typically an approximately three metre length of solid cylindrical core. Core orientation procedures are required to be carried out because, once detached from its parent rock and retrieved to the surface, the recovered sample will not reflect its original orientation underground. In order to re-orientate the sample, it is typically necessary to include an orientation tool in the drilling assembly unit between the greaser unit and inner core tube holding the core sample. The purpose of the orientation tool is to indicate the orientation of the core sample in its original underground location and provide that orientation data to the operator.
The process of orientating drill samples allows geologists to correlate recovered samples with one another to reveal trends in rock strata and predict whether resource mining is worthwhile, and if so, where, in what direction, and how deep below the surface. Core orientation is an important process as it allows geologists to build a three-dimensional profile of subsurface resource deposits, such as iron ore or diamonds. As metal-bearing deposits are often determined by the structural compositions of their enclosing rocks, it is important for the geologist to understand these structural elements in order to estimate the likely location of mineral bearing ore deposits, and once located, determine the likely position, size and composition of the deposit. If a valuable ore seam is found, it is vital that the core has been orientated properly so that a true picture of the ore body can be investigated, located and estimated.
Prior to and/or during any drilling operation, there is often a need to obtain more information from the borehole being drilled, as boreholes frequently deviate from the projected path. As such, there is a need to know in which direction the hole is on/off track and by how much, and if the course should be re-routed. A downhole or borehole survey is therefore a geophysical survey carried out by a specialised technician which involves putting digital geophysical equipment down exploration drill holes to gather magnetic, radiometric or electrical information from the rocks adjacent to the hole.
The geologist will have plotted the desired trajectory of the drill path before the coring operation begins. After the drill hole has sufficiently advanced, the geologist will direct the drilling crew to lower a survey instrument into a desired location of the borehole to ensure that the drill path has not deviated from its planned trajectory.
Downhole survey data provides geospatial data, namely the dip and azimuth of the axis of the core, which can then be used by a driller. However, downhole survey data does not provide orientation information to fully orientate the cylindrical sample of the core.
4. THE EXPERT EVIDENCE
4.1 Professor Tapson
The following sections primarily consist of extracts from Professor Tapson’s affidavit evidence, relied on by Reflex.
4.1.1Expertise
Jonathan Tapson is an electrical and electronic engineer. He was a Professor of Electrical and Electronic Engineering at Western Sydney University and became Visiting Professor of Electronics and Information Technology at the University of Technology, Sydney. He has worked as the Chief Scientific Officer for GrAI Matter Labs in San Jose, California. He holds a PhD in Engineering from the University of Cape Town, obtained in 1994. He has 32 years of experience in electrical and electronic engineering, primarily in the field of sensors and instrumentation. This includes designing and building orientation systems for the mining and resources industry, including in drilling applications.
Professor Tapson has previously been engaged on behalf of Reflex in the following proceedings: Australian Mud Company Pty Ltd v Coretel1 Pty Ltd (No 4) [2015] FCA 1372, Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 2) [2018] FCA 1109; (2019) 134 IPR 359, Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2018] FCA 1839; (2018) 138 IPR 33, Reflex Instruments Asia Pacific Pty Ltd v Borecam Asia Pte Ltd [2017] APO 51, Reflex Instruments Asia Pacific Pty Ltd v Minnovare Pty Ltd [2018] APO 70, and Reflex Instruments Asia Pacific Pty Ltd v Minnovare Pty Ltd [2018] APO 71. He has also been engaged by the respondent in two ongoing matters, one in the United States (by a related Imdex subsidiary) and one in Australia in this Court.
Professor Tapson is a named inventor of a number of patents including two patent applications filed by the respondent, being: (a) Australian provisional application 2016905363 (363 application) in the name of Imdex Global BV filed on 23 December 2016, and (b) Australian standard patent application 2017381411 (411 application) in the name of Reflex Instruments Asia Pacific Pty Ltd (formerly Imdex Global BV) filed on 22 December 2017 which claims priority from the 363 application. Professor Tapson was not aware of these applications before they were filed and was first informed about them in around August 2017. He has no contractual or financial connection with Reflex or its related companies other than his remuneration to act as an expert in the various proceedings identified and has not been remunerated for his inventive contribution to the 363 and 411 applications.
Before being provided with the patent, Professor Tapson was informed that the patent in dispute related to downhole instrumentation used in the mining industry, including techniques for data transmission. He was asked to complete a design task based on only the common general knowledge in the field described as “the methods for communicating and transmitting data in devices which are designed to operate in a geological drilling environment” at the priority date of August 2011. After completing the design task he was provided with the patent.
4.1.2Sources of information
Professor Tapson referred to the resources relevant to the identified field that he and colleagues would have had access to, and consulted as at the priority date. He and colleagues in the field regularly attended instrument, measurement and position-sensing conferences. They also read and referred to papers delivered at these conferences. They regularly read and referred to other papers in peer-reviewed journals, trade journals and industry-specific journals. He has also reviewed patents since the early 2000s. He considered it common for people working in the field to use patent databases and specifications as a resource to assess technology and the commercial risks associated with particular designs. He and his colleagues engaged with industry representatives including geophysicists and drilling operators in relation to the design of mining instrumentation. They also regularly reviewed information about sensors, downhole instruments and componentry (including specifications, data sheets, user guides and operational manuals) published by suppliers of such products and componentry. They monitored internet forums provided by product and componentry suppliers, on which instrumentation systems and componentry information and knowledge were disseminated and exchanged.
4.1.3Common general knowledge
4.1.3.1Downhole instruments
Professor Tapson said that the common general knowledge (as he was instructed, the background knowledge and experience which is available to all in the field) at the priority date included that downhole instruments are tools that are used down boreholes. These tools include survey tools, core orientation tools, drilling tools, geophysical probes and gyroscopes. Survey tools and core orientation tools are usually both present at drilling sites and are often used in tandem in drilling operations.
A core orientation tool is one that provides information as to the orientation of a core sample drilled from a borehole. Core orientation does not generally require a measurement of azimuth or direction.
A survey tool is a tool that provides information to plot a borehole trajectory and path, usually including azimuth and direction and usually using a compass or a gyroscope or other deviation methods.
Since the 1990s, there has been a continuing evolution towards digitisation of these tools. By the 2000s, the use of electronic tools downhole started to overtake the use of pre-existing mechanical methods. This development was accompanied by the use of new methods of communication to extract data obtained by these tools downhole once back at the surface. This was a trend not only in downhole tools but in all areas of industrial automation around this time.
4.1.3.2Wired systems for communicating and/or transmitting data downhole
The available options included:
(1)Electrical port on the instrument housing: this option involved placing a sealed waterproof and pressure-proof electrical port on the external housing of the downhole instrument. In particular, the instrument would be sealed at the surface in an external housing and sent downhole to gather data. The data could then be read after the downhole instrument had returned to the surface or alternatively, the instrument could be removed or partially unsealed from the housing. This method had two disadvantages. The first is that waterproof and pressure-proof electrical ports were not particularly reliable in the drilling environment. The second is that unsealing and re-sealing a port or housing seal introduced a delicate and potentially unreliable action into a busy and robust workflow. Introducing such a step in a drilling workflow created a likely point of failure, which could be expensive should the instrument be flooded after seal failure.
(2)Electrical conductor on the drill string: this option involved placing a conductor in the metal drill string or using the metal of the drill itself as an electrical conductor. There were a number of so called single-wire techniques for using a single conductor to transmit data. He was aware of a number of efforts to use this method as at the priority date, but not aware of any that was particularly reliable or allowed a high data rate.
(3)Permanent cable integrated into an instrument: this option involved integrating a permanent connection between the instrument and drill string. In such a design the instrument and drill string would have a permanent multi-wire communications cable integrated into it. While electronically satisfactory, this was unlikely to prove viable for reasons of cost, complexity and reliability in geological drilling.
4.1.3.3Wireless systems
The available options included:
(1)Acoustic systems: acoustic systems cover a wide range of possibilities, including transmission by pulses in liquid, and acoustic and ultrasonic transmission in air and water. The early reliable logging while drilling (LWD) devices created pulses in the drilling fluid (mud) being pumped from the surface. These pulses were readable at the surface as pressure pulses at the mud pump. This method is called mud-pulse telemetry.
(2)Ultrasonic transducers: a second acoustic possibility is to use ultrasonic transducers to communicate from within the housing to the exterior (at the surface). Ultrasonic communication was well established as a method for underwater communication between sealed vessels at least 50 years ago. Each device in the transmission will have a small ultrasonic transceiver (which can be thought of as a combination of speaker and microphone, operating at inaudible frequencies). The transmitter will broadcast the data as modulated sounds, and the receiver will receive the data as a sound stream and decode it. An advantage of ultrasonic links is that ultrasound in sufficient volume penetrates through most solids and liquids for a moderate distance, and hence can be transmitted from inside a housing without breaking the seal. There were many variations on these methods.
(3)Optical devices: the use of optical systems to bridge gaps which are not tractable with electrical conductors is a mature art, with optocouplers, photocouplers and opto-isolators being commonplace in electronics since the semiconductor boom of the 1970s. While much of the technology focuses on guided optical transmission (eg, through optic fibres) there is an entire field of electronics that focuses on unguided transmissions (ie, where there is no bespoke optical system connecting the transmitter and receiver, and transmissions take place through whatever natural medium lies between the two systems). This is called optical wireless communication. It was largely a fringe technology until the invention of the IRDA standard in the early 1990s, at which point it became commonplace – including use in television remote controls and similar devices for short range communication. The advantage of optical wireless communication is that the electro-optical devices that transmit and receive light can be placed behind a clear pressure-proof window, which will not significantly distort or disrupt short range communications.
4.1.3.4Magnetic Communication
Magnetic communication or strictly, near-field magnetic induction communication, makes it possible to transmit information by means of a modulated magnetic field. This is quite straightforward and is not very different from wireless communication.
Magnetic communication has the advantage that magnetic fields are not significantly attenuated in water or soil or other dielectric media, so has often been used as a means of underwater communication (to submarines, for example). It is possible to fabricate magnetic antennas which are robust enough to be integrated into the exterior of a pressure housing, as they consist of coils of wire which can be deeply embedded in a protective epoxy, for example.
The disadvantage for all magnetic communication and instruments is that they are each susceptible to interference from man-made or natural magnetism which will interfere with the communication and result in incorrect measurements. Additionally, magnetic communication has the disadvantage that unless a very high-power signal is transmitted, it is only effective over short range, and because of the intrinsic inductance of magnetic antennas, it is not possible to sustain a high data rate with magnetic communication.
4.1.3.5Handsets or hand-held devices
A wireless communication system would typically use an interface such as a handset or hand-held device to communicate with the downhole instrument. The use of hand-held devices to display orientation information or measurements from sensors and instruments was increasingly common amongst mining engineers and surveyors before the priority date particularly with the introduction of the Apple iPhone in 2007.
The Apple iPhone was increasingly used as a hand-held human-machine interface (HMI). HMIs include the keyboard, or mouse, and display which are used to interact with any given machine. Mining survey instruments started to include a remote display (via HMI) for various reasons including (a) safety: often the sensor or instrument must be placed in a position, such as closely adjacent to a rotating machine shaft, that would be hazardous for a human operator. Under these circumstances, the use of a remote display makes the instrument safe to use. Also, in hazardous environments where the presence of flammable gas or powders create a risk of explosion, it is often safer to keep electronic instruments within their sealed explosion-proof housings and interrogate them wirelessly with a remote display, (b) accommodation: the volume of space available to house the instrument may not be sufficient for a human operator, or access may not be possible (for example, the interior of a drill pipe), (c) ergonomics: in some cases, the instrument may be placed in a position which is either uncomfortable for the operator, or does not allow them to access the controls which they require to make use of the instrument information, and (d) workflow: a wireless remote enables the operator to work more quickly because there is no need to remove or access the instrument, which might cause lost drilling through downtime.
4.1.4Designing a downhole instrument for transferring data
Professor Tapson described the steps he would have taken to design a downhole instrument for transferring data based on the common general knowledge at the priority date.
Professor Tapson identified the factors that had to be considered in the design as being the hostile borehole environment from liquid and very high pressure. Accordingly, the downhole instrument must be waterproof at the depth to which it is anticipated the drill will go. Other design issues include: (a) at drilling depths, the ambient temperature can be extremely high, which can affect the performance of polymer seals as well as electronics, (b) the drilling environment is extremely harsh physically (ie, involving being dropped onto hard surfaces from a significant height), and (c) if the instrument is to be integrated into the drill string for any kind of operation during or concurrent with borehole drilling, it will be physically isolated from the outside by the metal structure of the drill string into which it is integrated.
For these reasons, downhole instruments are generally placed in housing designed to protect the instrument while still allowing it access to the external environment for communications and sensing purposes. Communicating between an instrument in a sealed housing and an external device was well-known before the priority date. These methods included either use of wired devices or systems (meaning there is at least one physical electrical conductor connecting the instrument and the external device) or wireless devices or systems (which are similarly divided into multiple classes according to the medium of communication).
There are two possible requirements (purposes) of downhole instruments intended for communicating or transmitting data to and from the surface: (a) first, to communicate from the instrument to the surface while drilling (measurement while drilling (MWD) or LWD), and (b) secondly, to communicate between a housed instrument and another device at the surface.
Professor Tapson would have preferred a wireless communication method over a wired communication method. A wired downhole system has many disadvantages. Even with good conductors (a drill string and the rock body are not good conductors) the transmission rate is low, because data going in both directions must share the same signal line. This is called half-duplex communication and is not efficient. The signal lines must somehow be connected to the downhole instrument system while that system is protected from the drilling environment. A protective housing for the downhole instrument system is therefore required. If a waterproof and pressure-proof bulkhead with a conductor is provided, the bulkhead represents a point of probable failure in circumstances of robust handling, and the permanent wired connection is inconvenient in drilling operations if the system is integrated into a drill string. This is shown in figure 2 below:
Where LWD is not required, but data can be retrieved at the surface at a later time, an option is to disconnect the wires and fully protect the instrument. As shown in figure 3 below, the instrument is fully enclosed in the housing, with a removable port cover that can be opened to expose an electrical connector on the housing.
The main drawbacks of the figure 3 design are: (a) when the housing is opened at the surface, the instrument is exposed to dirt and liquid and other physical damage which may be unavoidable in the drilling environment, (b) opening and closing the port, and plugging and unplugging the connector add steps to the drilling workflow that will slow the operation down, and (c) the electrical connector and the port are inevitable points of failure, given that dirt may get into the joint faces of either, and any misalignment in insertion will also cause failure.
Abandoning the permanent wired connection makes it possible to use a multi-wire communications system, allowing full duplex (simultaneous bidirectional) data communication. The disadvantages above suggest the use of a wireless communications method is more appropriate for downhole environments. Given that the housing is metal, electromagnetic (radio) transmission from inside to out is not possible (the housing is a so-called Faraday cage, fully shielding the circuit inside from any radio signals produced outside, and vice-versa).
The most easy and straightforward communication method is to use optical wireless communication. The most suitable form of optical communication would be infrared radiation. Infrared radiation is a type of optical signal or light wave. Infrared light has good transmission through humid temperatures and many instrument components can transfer or transmit infrared signals. There is no need to use optical (visible) light unless a human is required to see the light (eg, an entry light or a flashing light).
The optical wireless communication method is illustrated in figure 4 below. It requires including a transparent window in the protective housing, so that the light signals can be transmitted.
This system (in figure 4) is excellent from a workflow point of view because it does not require any fine manipulation of connectors. There are also no connectors to be removed, which would have been a point of vulnerability. The system at figure 4 also allows for very quick transfer of data because all that is required for communication is for the user to bring the downhole instrument system and surface control system into optical alignment. This way, there is very little wait time involved whilst downloading the data from the downhole instrument system.
However, any time there is a sealed lid or cap that has to be unscrewed or unfastened, the design introduces a point of vulnerability which means that dirt can be introduced into the seal and there is always a risk that the seal will fail as a result. Professor Tapson’s design in figure 4 is also consistent with the well-established principle that a designer does not want to introduce dirt into sealed instruments. This is especially the case in a drilling environment, where it is always very dirty, and the drilling crew are in a hurry to continue with the drilling operation.
Professor Tapson considered that the only remaining point of mechanical failure is that the optical window (which may be waterproof and pressure-proof) is necessarily made from a material such as glass or acrylic plastic, which is not as strong as the metal housing, and susceptible to abrasion and fracture. As a further improvement, it could therefore be covered with a protective metal cover, as indicated in figure 5 below, when communication is not required. The protective metal cover in figure 5 can then be removed manually when communication with the surface control system is required. This protective cover does not need to be water or pressure tight, as it is only protecting the window from mechanical damage.
In all of these figures, the downhole tool is shown as a rectangle with the long side being conceptually the axis of drilling, as illustrated in figure 6 below, consistent with using a cylindrical housing which is either integrated into the drill string, or freely lowered into the borehole.
Professor Tapson said that while it may make sense for the communication access to be placed at the end of the housing in cases where there is a semi-permanent connection, as in MWD or LWD or post-drilling logging, it does not make sense where the isolated instrument is enclosed within the drill structure. This is because the ends of the cylinder are the easiest (and often, only practical) places to couple the housing to the rest of the system, and also because the ends are likely to receive more mechanical abuse in general handling. It would be preferable not to uncouple or otherwise interfere with the coupling of the housing in order to communicate with the instrument. It would therefore be advantageous to access the instrument through the side wall rather than the ends of the housing. With optical wireless communications, this is easily achieved either by rotating the transmitter-receiver pair through 90 degrees, or simply bending the optical axis 90 degrees by means of a mirror, as shown in figure 7 below. The latter method has the advantage that the basic instrument board does not need to be modified from the above system and can be used in both cases. In typical IRDA-type optical wireless communication, the transmitted optical beam is quite wide, perhaps 20–30 degrees, so some misalignment from the direct optical axis is tolerable.
Professor Tapson said that after he provided the above evidence, Reflex’s lawyers asked him to describe in further detail the nature and function of the optical mirror.
In response to this request, Professor Tapson said that if the optical signal path is short so that the surface control system is close to the instrument (eg, 10cm or 20cm), a high-quality mirror is not required because there is enough light bouncing around inside the instrument. If the optical signals need to be transmitted over a longer distance (eg, 5m) then a high-quality mirror is required. If a mirror is not available, other reflective surfaces which could be used are polished metal, acrylic, or aluminium foil over plastic. The result from each of these alternatives should not be dramatically different.
4.1.5Reflex EZ-TRAC Manual
Although Professor Tapson had the Reflex EZ-TRAC Manual before undertaking his design, he did not read it until after completing his design task. The EZ-TRAC instrument had the following features as at 2009: (a) optical wireless (infrared) communication which was used to communicate and transfer data to and from the downhole instrument (see 8.1.3 of the EZ-TRAC Manual), (b) a handset, “EZ-COM” which had an integrated infrared port on the top of handset for wireless communication with the downhole instrument (see 7.2 and 8.1 of the EZ-TRAC Manual), and (c) the infrared port on the EZ-COM needed to be directed to a corresponding infrared port on the downhole instrument for communication and data transfer (see 8.1.3 of the EZ-TRAC Manual).
The EZ-TRAC instrument did not have: (a) a window in the side wall, which Professor Tapson considers to be a rudimentary improvement in his preferred designs over the EZ-TRAC instrument, or (b) a mirror, which as shown in Professor Tapson’s second alternative design at figure 7 he considered is a routine improvement over the EZ-TRAC instrument.
4.1.6The patent
Professor Tapson’s understanding of terms used in the patent as at the priority date follows.
Azimuth is the angle with respect to magnetic north or geographic north.
Backend assembly is a component of the core drill. The backend assembly connects the inner and outer tubes, and incorporates a bearing or other mechanism for restricting relational movement and allows retrieval of the inner tube following breaking off of the bottom, namely, the detachment of the core from the body or parent rock.
Bore hole or borehole is any hole drilled into the earth using a drilling machine for the purposes of geological investigation, petrochemical investigation or resource extraction.
Core drill refers to the conventional core drilling assembly used in mineral exploration for drilling a core sample, which includes, among other things, a backend assembly, an inner tube, a core lifter, an outer tube and a drilling bit.
Core sample, or simply core is a cylindrical core of rock drilled using a core drill from the ground. Geologists can analyse the core sample to determine the composition and other attributes of rock under the ground.
Depth is the distance from the surface to a position either along or at the bottom of a borehole.
Professor Dupuis considered that at the priority date designers did not in fact perceive that the axial communication port involved any disadvantage or that the design of downhole instruments could be improved by a side communication port. He did not accept that it was obvious to seek to effect such an improvement to the existing designs. I agree; on this key issue, the evidence supports the position of Professor Dupuis.
Professor Dupuis also considered that if a person had the idea at the priority date, the means to effect the improvement he would have chosen is the first alternative in figure 7 (the left hand side using the rotated transmitter-receiver pair) and not the second alternative (using a reflector/mirror). What is critical, however, is that his acceptance that both alternatives to effect the improvement were logical and obvious, pre-supposed that the idea for the improvement existed. This is clear from the way in which the questions were put to Professor Dupuis which assumed that the goal was to redirect the signal out of the side wall of the instrument and the designer needed a radial communication port (see above). Professor Dupuis’ unchanged view was that at the priority date the scope for the improvement or the need or the goal that Reflex assumed in its questions of him was not obvious. I agree.
Professor Dupuis’ evidence that “[f]rom what we’ve discussed up to now, I can see the advantages of putting a window in the side wall” also does not suggest that it was obvious to the person skilled in the art at the priority date that downhole instruments could be improved by a side communication port.
Globaltech submitted that this case was analogous to Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848 in which Bennett J said that the invention (a plumbing valve) was simple and may have “come easily” to the inventor, but the inventive step lay in “the idea of the combination in a single valve” in order to satisfy an “unfelt want”: [229]. Globaltech relied on the evidence of Mr Brown as disclosing the position of the person skilled in the art at the priority date. Mr Brown said:
(1)Reflex’s development design team involved all different disciplines as required;
(2)Reflex’s most successful device at the time was the ACT device which was updated from ACT I, to ACT II, to ACT III (the latter being released in Australia after the priority date in 2014);
(3)design development is all market driven;
(4)Reflex did not release the EZ-TRAC with the IR coupling and the EZ-GYRO with the rota-lock with the side IR window (which Reflex accepts infringe the patent, if the patent is valid) until 2016, five years after the priority date; and
(5)this was because “having a feature of side communication in a survey tool [eg, the EZ-TRAC and the EZ-GYRO] is natural and obvious and makes much more sense as opposed to a core tool [eg, the ACT tools]”. He did not see any competitive advantage in having the side communication feature in the ACT tools. Given that Reflex was “enjoying 100 per cent market share. It tells you that it’s not broken. Don’t fix it”.
This supports the conclusions I have reached above.
Globaltech submitted that Reflex had not proved the tools which were part of the common general knowledge as at the priority date other than the ACT I. I agree.
Globaltech submitted that Mr Brown’s evidence revealed that no new devices entered the Australian marketplace between 2009 and the priority date. This, said Globaltech, supported an inference that “device designers were content to rely on their existing product offerings”. I agree.
Globaltech said that Reflex:
… has not established a sufficient evidentiary framework for the common general knowledge for the purposes of its s 7(2) case. That evidentiary hiatus ought be a sufficient basis upon which to reject the obviousness case so far as it relies upon the common general knowledge alone.
I have not proceeded on this basis (as apparent from the discussion above). I agree that the evidence of the common general knowledge is far from ideal. Caution is required in respect of the evidence of Professor Tapson and Professor Dupuis, for the reasons already given. But the issue of inventive step is to be determined on the whole of the evidence.
Reflex submitted that:
There is no evidence that Reflex tried and failed to solve the Problem before the PD. Reflex was not attempting to solve the Problem in its development update of the ACT. When Reflex did seek to address the Problem [in effect, the uncoupling requirement], and ‘improve robustness and save workflow’ in its survey tools, the modification to the couplings for its survey tools to create a side IR window was ‘natural and obvious’ in a survey tool in that context.
The fact that there is no evidence that Reflex tried to solve the uncoupling problem confirms that there was no perceived problem at the priority date. There was no perception that there was scope or a need for such an improvement. The fact that there is no hint in the evidence that Reflex perceived the ACT could be improved in any way similar to the invention at the priority date, despite the ACT being under design consideration and re-design throughout the period before and after the priority date, also indicates that there was no perceived problem at the priority date. If there was no such problem or room for improvement perceived (as I consider to be the case), then the perception or idea of the problem or scope for the improvement may well be inventive. That is the case here.
I did not find one part of Mr Brown’s evidence persuasive. He said that there was a material difference of some kind between modifying the EZ-TRAC tools to include the integers of the claimed invention because they were survey and not core orientation tools (in contrast to the ACT tools) and that the modification to the EZ-TRAC tools was “natural and obvious” because it was a survey and not a core orientation tool. His evidence was that it was not natural and obvious (and, indeed, made no sense) to modify the ACT tool to incorporate a side port and avoid the decoupling of the end of the instrument housing. I consider that:
(1)it is clear from the evidence that Mr Brown (and thus Reflex) knew about Globaltech’s Orifinder tool which embodied the invention before Reflex modified the EZ-TRAC tool;
(2)while it may be accepted that it cannot be found that Reflex copied Globaltech’s Orifinder tool, Reflex could not have missed seeing the side communication port and the fact it removed the need to uncouple the top section of the device;
(3)accordingly, the fact that Reflex found it “natural and obvious” to modify the EZ-TRAC tool does not support the conclusion that the invention was obvious at the priority date, as the inventive step lies in the idea that such tools could be improved in the particular manner embodied in the invention; and
(4)I do not accept Mr Brown’s evidence of some meaningful difference between a survey tool and a core orientation device in this context.
Reflex submitted that the person skilled in the art must be taken to be:
motivated to improve on existing devices or systems for obtaining or providing data to and from downhole equipment. It is with this in mind that the skilled team considers the disclosure of each of the prior art patents: see AstraZeneca HC at [18] (French CJ) and [69]–[70] (Kiefel J): Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2020] FCA 408 at [196].
However, in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356 at [18] French CJ did not suggest that the person skilled in the art is taken to be motivated to improve the existing technology in cases where there is no evidence to support any perceived need for improvement. Nor did Kiefel J (as her Honour then was) at [69]–[70]. At [69], Kiefel J said that the prior art base and the common general knowledge are used to “look forward from the prior art base to see what the skilled person is likely to have done when faced with a problem similar to that which the patentee claims to have solved with the claimed invention”. This is necessarily so if the common general knowledge includes the existence of the problem (as the emphasis on “when faced with a problem” in this passage reinforces). But the High Court did not suggest that invention might not lie in the identification of a problem or of something only seen to be a problem in hindsight. To the contrary:
(1)in Lockwood Security Products at [59], Gummow, Hayne, Callinan, Heydon and Crennan JJ cited with approval Fletcher Moulton LJ in Hickton’s Patent Syndicate v Patents and Machine Improvements Company Ltd (1909) 26 RPC 339 at 348 that “invention may lie in the idea, and it may lie in the way in which it is carried out, and it may lie in the combination of the two”;
(2)in Lockwood Security Products at [85], their Honours said that as the problem in that case was well-known, the perception of the problem was not inventive and inventiveness, if anywhere, must be found in the solution to the problem; and
(3)in Alphapharm HCA at [51] Gleeson CJ and Gaudron, Gummow and Hayne JJ cited with approval Aickin J in Wellcome Foundation at 280–281 including that “[i]t may be that the perception of the true nature of the problem was the inventive step which, once taken, revealed that straightforward experiments will provide the solution”.
Ultimately, the motivation of the person skilled in the art to improve existing technology and the direction such improvement might take are matters for evidence. It may be accepted that, “when faced with a problem”, the person skilled in the art is not to be assumed to be indifferent or idle. It should not be accepted that, if the evidence indicates that the person skilled in the art saw no problem, that the identification of the problem and an idea for fixing it is obvious (even if the means chosen to fix the problem are themselves obvious). That would be to assume away the invention itself. In the present case, the weight of the evidence is against any inference that the perceived problem or need for improvement was itself part of the common general knowledge or would itself have been obvious to the person skilled in the art at the priority date.
Accordingly, and in summary having regard to the whole of the evidence, I consider that:
(1)it was common general knowledge at the priority date that the instrumentation in the housing of downhole instruments had to be protected from water and dirt ingress in the harsh downhole environment;
(2)it was common general knowledge at the priority date that seals and other points of detachment were potential vulnerable points in the design of the external housing protecting the instrumentation;
(3)there is a material difference between the general recognition of the issues referred to in (1) and (2) above and the drawing of an inference that it was common general knowledge that existing designs could be improved by re-aligning the light signal within the housing so that it existed through a side port and that this would remove the need for uncoupling the end of the instrument to obtain access to the communication port. To the contrary, there is no evidence suggesting that it was common general knowledge that there was any such problem or even a hint of a need for this improvement over existing designs at the priority date;
(4)specifically, there was no perceived need at the priority date to improve the existing designs of downhole instruments by arranging the instrumentation, either by reflecting mirror or transceiver placement and design, to carry the light signal to a port on the side of the device so as to avoid the need to uncouple the end of the housing to access the communication port;
(5)if asked to improve existing designs to avoid the need for the uncoupling of the top of the housing, Professor Tapson and Professor Dupuis both knew or would have known at the priority date that a design solution generally as shown in the two options in figure 7 (in the design exercise) would have advantages and be preferable in design terms. Further, to them these design solutions would have been logical and obvious had they been tasked with improving the existing designs for such equipment to avoid the need for the top uncoupling at the priority date;
(6)however, there is no persuasive evidence (apart from the invention itself) that at the priority date the person skilled in the art perceived any need or particular advantage in giving a person such as Professor Tapson and Professor Dupuis such a design task; and
(7)Reflex itself (with its overwhelmingly dominant market share) did not perceive the invention as meeting an unfelt need or as having any worthwhile commercial advantage to it until it adopted the integers of the invention in two of its products in 2016.
In circumstances where a “scintilla of invention” is sufficient to defeat a claim of lack of inventive step I am not persuaded that the invention claimed in the patent (which includes the idea that existing designs of downhole instruments could be improved by a side communication port and includes a means to achieve the redirection of the light signal to that side communication port) would have been obvious to the person skilled in the art (whether inside or outside of the patent area) at the priority date. This is because, as in Zetco, it was inventive simply to have the idea that the existing designs could be improved by re-aligning the light signal to exit the device via a side port so there was no need to uncouple the end of the housing to access the side communication port. That is, the idea of the potential improvement was not obvious at the priority date.
I accept, however, that once the relevant idea had been conceived that an improvement could be effected by a side communications port, the methods to achieve the improvement by either design in figure 7 (rotating the transmitter-receiver pair through 90 degrees or bending the optical axis 90 degrees by means of a mirror) would have been obvious at the priority date. That is, once the person skilled in the art had the idea that the side communication port would be an improvement as it would avoid the need for uncoupling the top of the device, both designs in figure 7 involve routine steps that the person would have been directly led as a matter of course to try in the expectation that it might well produce a useful alternative to or better device than the existing devices.
The fact that I cannot infer that the embodiment of the invention, when released onto the market in 2016 (the Globaltech Orifinder tool), materially diminished the market share of Reflex’s ACT tool does not undermine the conclusions reached above. Commercial success may be an indicator of the meeting of an unfelt need, but lack of commercial success does not prove lack of inventive step. Further, Reflex ultimately reached the view that the development of a side port was useful in respect of its survey tools in 2016, which Reflex admits infringes the patent. It is not to the point that I cannot infer that Reflex copied the Orifinder device. The relevant point is that Reflex ultimately perceived that there was a genuine improvement that could be made to these kinds of devices. Reflex may have reached this perception independently, but this does not mean Globaltech’s perception five years earlier was not inventive.
For these reasons, Reflex’s s 7(2) case fails. This is a case in which the inventive step was the perception that an improvement on existing devices could be achieved by simple means.
7.3 Common general knowledge and prior art
To the extent it was suggested (which is not apparent), I would not accept that the person skilled in the art could reasonably be expected to have combined information in the three prior art documents, Iizuka, Bergren, and Sun as referred to in s 7(3)(b) of the Patents Act. Even if this could be reasonably expected, I do not accept that the invention claimed in the patent lacks an inventive step by reason of being obvious when considered in the light of the common general knowledge and the combined information in Iizuka, Bergren, and Sun.
Of the three prior art documents two manifestly involve a different field (Bergren and Sun), and all teach away from the invention in the patent. Iizuka is a wireline telemetry tool. The tool provides a continuous image from down the borehole via wireline telemetry. It has nothing to do with improving a tool that must be brought to the surface to obtain data and therefore nothing to do with improving such a tool by moving the infrared communication port to the side and to avoid the need to uncouple the end of the device for access to the port. Bergren and Sun also bear no resemblance to the invention claimed in the patent. This is not just because they are for use in the exploration and extraction of hydrocarbons. Figure 5 in Bergren, representing the embodiment including reflectors, has nothing to do with a reflector inside or at the edge or surface of the body of the device. The reflectors are on arms extending from the sides of the device. Their purpose is to enable the signal to travel through the surrounding fluid in the hole to determine the concentrations of oil and water in the surrounding fluid. Similarly, Sun has no “electromagnetic signal direction altering means” within the meaning of the patent.
I do not see how the person skilled in the art would combine anything from the three prior art documents with the common general knowledge and, on that basis, reach the invention claimed in the patent as an obvious step.
For these reasons, Reflex’s s 7(3) case also fails.
8. CONCLUSIONS
Reflex has not established that the invention claimed in the patent is not novel or lacks an inventive step. Accordingly, the cross-claim should be dismissed with costs. The parties will be given an opportunity to submit agreed or competing orders in respect of Globaltech’s claims for infringement.
I certify that the preceding five hundred and twenty (520) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Jagot. Associate:
Dated: 12 July 2022
5
9
2