Grove Hill Pty Ltd v Great Western Corporation Pty Ltd

[2002] FCAFC 183

FEDERAL COURT OF AUSTRALIA

Grove Hill Pty Ltd v Great Western Corporation Pty Ltd [2002] FCAFC 183

INTELLECTUAL PROPERTY – patents - infringement - specification - whether sufficient description of invention in complete specification - whether invention is substantially more than the claims made - priority - not based solely on filing date - whether claims fairly based on matters disclosed in provisional application - whether all matters upon which the claims were based were disclosed - secret use - whether prior use by inventor was for reasonable trial and experiment only - onus on the party alleging the secret use to demonstrate disqualifying secret use - novelty - whether invention was anticipated by prior art - inventive step - assessed with reference to the common general knowledge at the time - whether combination of known integers obvious - whether combination obvious to an unimaginative but skilled person in the relevant field - whether obviousness is assessed by reference to the claims or the commercial embodiment of the invention

Patents Act 1990 (Cth) s 117
Patents Regulations 1991

Bristol-Myers Squibb Company v FH Faulding & Co Ltd (2000) 97 FCR 524 cited

Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 cited; referred to
Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156 cited; followed

Dynasty Pty Ltd v Coombs (1995) 138 ALR 64 cited

Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079 cited; referred to
Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 cited; referred to

Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 cited; considered

Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 followed
Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 75 ALJR 518 referred to
Winner v Ammar Holdings Pty Ltd (1993) 41 FCR 205 considered
Abbott Laboratories v Corbridge Group Pty Ltd (No 2) [2001] FCA 810 considered
May v Higgins (1916) 21 CLR 119 referred to
Interlego AG v Toltoys Pty Ltd (1972 - 1973) 130 CLR 461 referred to
Fallshaw Holdings Pty Ltd v Flexello Castors and Wheels PLC (1993) 26 IPR 565 referred to
F Hoffman-La Roche & Co AG v Commissioner of Patents (1970-71) 123 CLR 529 applied
Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 considered
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 considered
Olin Corporation v Super Cartridge Co Pty Ltd (1977) 51 ALJR 525 referred to; 180 CLR 236 referred to
Stauffer Chemical Co’s Application [1977] RPC 33 considered
Cooper’s Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 considered
Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593 considered
International Paint Co Ltd’s Application [1982] RPC 247 considered
Dunlop Holdings Ltd’s Application [1979] RPC 523 considered
Watts v Rake (1960) 108 CLR 158 applied
Purkess v Crittenden (1965) 114 CLR 164 applied
Longworth v Emerton (1950 - 1951) 83 CLR 539 considered
Ramset Fasteners (Aust) Pty Ltd v Advanced Building System Pty Ltd (1999) 44 IPR 481 referred to; 164 ALR 239 referred to
Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 considered
Radiation Ltd v Galliers & Klaerr Pty Ltd (1938) 60 CLR 36 referred to
Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 referred to
Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 cited
Windsurfing International Inc v Petit [1984] 2 NSWLR 196 applied
Martin Engineering Co v Trison Holdings Pty Ltd (1988) 81 ALR 543 referred
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 cited
ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc (2000) 181 ALR 635 cited
Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 followed
Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 cited
Allsop Inc v Bintang Pty Ltd (1989) 15 IPR 686 followed
Biogen Inc v Medeva plc [1997] RPC 1 referred to
Aktiebologet Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375 referred to

TA Blanco White, Patents for Inventions, 5^th ed, par 3004

GROVE HILL PTY LTD v GREAT WESTERN CORPORATION PTY LTD

Q 106 OF 2001

FRENCH, DOWSETT & GYLES JJ
13 JUNE 2002
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q 106 OF 2001

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	GROVE HILL PTY LTD APPELLANT
AND:	GREAT WESTERN CORPORATION PTY LTD RESPONDENT
JUDGES:	FRENCH, DOWSETT & GYLES JJ
DATE OF ORDER:	13 JUNE 2002
WHERE MADE:	BRISBANE

THE COURT ORDERS THAT:

1.The action be stood over so that the parties may bring minutes of order into court, such minutes to be provided no later than Thursday 20 June 2002.

Note:   Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q106 OF 2001

BETWEEN:	GROVE HILL PTY LTD APPELLANT
AND:	GREAT WESTERN CORPORATION PTY LTD RESPONDENT

JUDGES:	FRENCH, DOWSETT AND GYLES JJ
DATE:	13 JUNE 2002
PLACE:	BRISBANE

REASONS FOR JUDGMENT

FRENCH J:
Introduction

1. In 1997, an Australian Petty Patent was granted for an invention entitled “Improvements in or in relation to a Row Cultivator”.  In 1999, a Standard Patent was granted in respect of that invention.  The row cultivator is loosely described as a set of cutting and digging tools fixed via a pair of plates to a vertical shank which is in turn attached to a transverse frame, part of a wheeled assembly towed behind a tractor.  The cultivator was described by its inventor as used to cultivate and condition soil prior to the planting of row crops and for the planting and fertilising of such crops. 

2. Great Western Corporation Pty Ltd (Great Western) is the company which holds the patent rights from the inventor, Peter Mansur.  It brought infringement proceedings in this Court against Grove Hill Pty Ltd (Grove Hill) in relation to that company’s products known as the Terminator and the Versasweep.  The Terminator is a frame assembly and the Versasweep is a shank and tool arrangement which can be attached to it.  The proceedings related to both the Petty Patent and the Standard Patent.

3. The infringement proceedings succeeded before a single judge of the Court and a claim for revocation of the patent was dismissed.  Grove Hill now appeals by leave to this Court.

4. I have had the advantage of reading draft reasons for judgment prepared by Dowsett and Gyles JJ and I agree generally with their Honours’ reasons and the orders they propose.  I wish however to refer to certain of the constructional issues which underpin much of the argument in this appeal.  The combined result of our reasons is:

   1.That contrary to her Honour’s conclusion the Versasweep did not infringe claims 1 to 3 of the Patents because it lacked an essential feature of those claims, namely a lower shank section formed by a single pair of plates. 

   2.That although her Honour made no findings as to the alleged infringement of claims 4 and 10 to 13 of the Standard Patent, the Versasweep did infringe claims 4, 10, 11 and 13.

   3.That claims 1 to 3 are not invalid on any of the grounds raised by Grove Hill.

   4.That the validity of claims 4 to 13 not having been decided by her Honour, should be remitted to her for determination.

   Factual Background

5. Peter Mansur is a farmer who came from California to Australia in 1984.  He brought with him a background of experience in the design and building of farm machinery and the associated skills of drafting, machining and engineering.  He farms at Mudgee in New South Wales and carries on a business known as Excel Agriculture through his company Great Western Corporation. Mansur is the inventor of a piece of farm machinery called a Row Cultivator which is marketed under the name “Cleansweep”.  In affidavit evidence at the trial of the action he explained the concept of row cultivation and the function of a Row Cultivator. 

6. Row crop farming involves the cultivation of plants grown in wide rows such as vegetable crops, maize, corn, soya beans and cotton.  It is to be distinguished from broadacre farming in which seeds are planted in very narrow rows or are scattered making mechanical cultivation impractical or impossible after planting.  A row crop is one through which a tractor can drive without destroying plants.  The spaces between the rows of plants can be flat or furrowed like a channel.  Row cropping may occur on dry land with flat spaces between the rows of plants, on irrigated land with furrows or channels separating each row and on irrigated land with flat beds and furrows or channels alternating between the rows.

7. Row crop cultivation on irrigated land involves six stages most, but not all of which, are also applicable to row crop cultivation on non-irrigated or dry land:

   (a)       field preparation prior to planting;
   (b)       cultivation and soil conditioning prior to planting;
   (c)       planting and fertilising;
   (d)      cultivating the established crop;
   (e)       harvesting the crop;
   (f)       renovation and hill-busting.

   The row cultivator devised by Mansur was directed to cultivation and soil conditioning prior to planting and to planting and fertilising.  It was his evidence that it is only these steps which are referred to and generally understood in the industry as row cultivation or inter row cultivation - the terms being interchangeable.

8. Mansur prepared a diagram depicting what he described as “the traditional rig”, a traditional tool set up for row cultivation.  The tools used in such cultivation were discs and knives and a species of shovel known as an Alabama.  Attached to these reasons is a copy of part of a diagram which he prepared to demonstrate the traditional rig.  The diagram is redrawn for the purpose of clarity of reproduction.  On a traditional rig as described by Mansur, the tools could be mounted in fixed positions on a number of transverse tool bars or mounted on one tool bar with a device, in the vertical plane, known as a parallelogram, to keep them moving through the ground at a constant depth. 

9. The discs, knives and Alabama sweep were mounted in that sequence.  There was evidence that a forward cultivating sweep or digging point might be used in lieu of the discs.  The function of the discs was to break up the soil and to eliminate weeds growing closest to the plants.  The sweep or digging point cultivated the base of the furrow.  The knives would cut weeds from the sides of the furrow and would overlap with the Alabama sweep.  The sweep would eliminate weeds at the base of the furrow, reshape disturbed soil and clear the way for irrigation waters to flow along the furrow. 

10. Another device commonly used in conjunction with these tools was the friction trip assembly.  It was described by the trial judge as “…a mechanism which tilts on a centre pivot when the front of the tool to which it is attached hits an obstruction in the soil”. 

11. Mansur gave evidence of the difficulties connected with the cultivation of row crops.  Much time, he said, was taken in setting up the assembly and adjusting it in the course of operation.  The discs and knives were commonly held in place by a clamp and wedge which easily worked loose.  In moist conditions lines of weeds would remain in the furrows because their taproots, struck by the knives at their extremities, would simply be pushed out of the way rather than cut.  Under moist conditions also the Alabama sweep did not operate well particularly where the soil was heavy or there was a significant number of weeds.  It essentially carried out a bulldozing action and it was common for a build up of weeds and earth to accumulate on its leading edge.  This would cause it to ride up missing weeds and altering the furrow shape.  The Alabama could also skid or ride out of the soil resulting in uneven depth and inefficient weeding.  Vines would tend to rap around the tool shanks.  The knives and discs could not work close to growing plants as the shanks would damage the plants. 

12. Mansur sought to develop a new mechanism for row cultivation to overcome these perceived difficulties.  On 22 December 1993, Great Western filed at the Australian Patent Office a provisional specification for an invention entitled “improvements in relation to row cultivator”.  A complete specification was filed on 22 December 1994.  A complete specification for a Petty Patent for an invention entitled “Improvements in or in relation to a Row Cultivator” was filed on 6 November 1996.  A further complete specification for the Standard Patent was filed on 16 January 1997.  The Petty Patent was granted on 15 May 1997 for a term of twelve months.  It expired on 15 May 1998.  It was Australian Petty Patent No 678130.  The Standard Patent was granted on 26 August 1999.  It was Australian Patent No 705201. 

13. The complete specification for the Standard Patent describes the disadvantages of row cultivators which the invention sought to address.  Typical tooling for the cultivation of row crops was said to consist of five vertical shank assemblies per row of crop with a tool comprising either “L” shaped knives or a single disc attached to the end of the shank.  Each tool’s position could be independently adjusted vertically and horizontally.  The main problems with this kind of arrangement were said to be:

    (i)        The difficulty in adjusting the shank assemblies;

    (ii)The narrow knives or discs allow weeds to bend around the tooling if the weed is not struck “dead centre”. 

    A further disadvantage was said to arise with shear release arrangements for the release of shanks.  Under existing shear release arrangements where a tool struck an underground obstacle such as a rock or root, a horizontally extending transverse bolt was sheared and the shank would swing backwards about a transversely extending horizontal pivot.  Repair after such an event was a very time consuming process as when the bolt was sheared it did not shear cleanly and its removal was difficult resulting in a long period of down time for the cultivator.   According to Mansur it took him about four years to develop his product.  He claimed that it overcame all the difficulties which he had described in his evidence. 

14. In the complete specification for the Standard Patent the inventor is said to have  devised a number of improvements which alleviate the problems identified by the specification.  It is said that although the improvements can be used independently it is preferable to use them in combination for the overall benefit they provide.  The trial judge found that the evidence generally supported the existence of the pre-existing problems relating to difficulties in adjusting shank assemblies and the bending of weeds around the knives or discs if they were not struck “dead centre”.  The additional problem relating to shear release arrangements was said not to be relevant for the purpose of these proceedings.

15. For a complete description of the claimed invention it is necessary to turn to the complete specification and the claims in the Standard Patent.  It is sufficient for present purposes however, to refer to its most general definition in the first claim. This also reflects the terms of the first claim set out in the Petty Patent.  It defines the invention thus:

    “A row cultivator having a transverse tool bar and a plurality of tool carrying shanks mounted on and projecting downwardly from the tool bar, each shank having a pair of plates mounted to the shank on opposite sides of the shank and forming a lower shank section, the lower shank section having a forwardly projecting portion fitted with a leading blade and a pair of rearward cutting blade attachment means having respective cutting blades attached thereto so as to be spaced rearwardly from and separate of the leading blade, the leading blade being followed by the pair of cutting blades, the cutting blades being adapted to travel just below soil level to sever weeds on either side of the leading blade, the cutting blades having respective leading edges diverging rearwardly and outwardly on opposite sides of the leading blade.”

    The definition of the invention is better understood, albeit it is not limited by, the drawings attached to the complete specification.  Figures 1 and 2 appear as Attachment 2 to these reasons and Figures 3 and 4 appear as Attachment 3.

16. According to Mansur’s evidence the front sweep of his invention would penetrate the base of the furrow where an Alabama sweep would often ride up leaving the weeds uncultivated.  The rear blades would slide under the soil allowing a much shallower cultivation than had been the case with discs and Crescent knives which, even when properly adjusted, needed to penetrate deeper in order to cut the weeds.  That deeper penetration would interfere with feeder roots and moisture.  The continuous blade formed by the sweep overlapping the rear blades did not allow the weeds to slide away and avoid being cut as had been the case with the Crescent knife or disc.  With the Cleansweep assembly there was a far wider “kill area” and very few weeds could escape other than in a 30 mm band at the top edge near the plant line where weed growth is minimal anyway because of plant shadow.  He also said that his invention involved a very long backward angle to the rear blades which ensured weeds which were not cut by them but were pulled out would still clear around the ends.  The function of the Alabama set up to follow his Cleansweep assembly if used in conjunction with his row cultivator would be restricted to reshaping the furrow rather than being a weed killing tool.  He said that the Cleansweep, by having a front sweep and rear blades adapted to travel just below the surface of the furrow gives continuous coverage between the rows, provides minimal soil disturbance, allows precision cultivation close to the rows and can conform to all furrow shapes. 

17. Following the lodgment of the provisional specification Great Western began marketing the row cultivators.  This was done principally by word of mouth and field demonstration.  Mansur built his first four cultivators with a man called Phil Gale at a workshop at Inverell.  He said his brother then hired a mini bus and brought a dozen farmers down to their property at Mudgee where he demonstrated the machines in the field.  He said that in the following month he sold twenty cultivators and thereafter stopped taking orders because he was concerned about production capacity.  They set up a commercial workshop.

18. Ken Wells, a commercial agricultural dealer in Wee Waa, visited Mansur’s farm when he was setting up production with Gale.  Mansur and Wells agreed that Wells would manufacture rear blades for him.  He manufactured the rear blades for the row cultivator from April 1994 to April 1995.  At this time Great Western was trading under the name “Excel”.   The trial judge found that Wells, who supplied the blades to Mansur between April 1994 and April 1995, was also permitted to sell the complete product.  This arrangement however was terminated because of Mansur’s concerns about delays in Wells’ production of the blades. Mansur thereafter arranged for supply of the blades direct from a foundry.  However he continued to supply Wells with the Cleansweep products for resupply by sale until 22 December 1995.

19. According to Mansur, from late 1995, Wells was copying the Cleansweep as produced by him and negotiating for its production and sale by Grove Hill trading as Gessner Bros Inc.  Under an agreement made between Ken Wells Pty Ltd and Grove Hill, the Wells’ company purported to licence Grove Hill to manufacture what was described in a recital to the agreement as “a ground engaging footpiece known as the Versafoot Assembly, being an article of agricultural machinery”.  The licence came into operation on 1 April 1996.  According to the recital the product had been designed by the Wells’company. 

1. The principals of Grove Hill are Lindsay John Gessner and his brother, Noel Stanley Gessner.  The brothers were raised on a family farming property at Norwin near Cecil Plains in Queensland.  According to Lindsay Gessner, his father was one of the earliest farmers on the Darling Downs to pioneer the use of the row crop irrigation method in the mid to late 1960s.  Lindsay Gessner completed an apprenticeship as a welder, fitter and turner at Janke Bros engineering works at Mt Tyson near Cecil Plains.  Janke Bros were agricultural equipment manufacturers.  After finishing his apprenticeship there in 1971 he continued to work for the company until 1974.  He worked on the construction of various types of agricultural machinery including implement hitches.  These were large frame assemblies pulled by tractors to which multiple narrower width implements could be attached.  According to his evidence, Janke Bros were innovators in the design and manufacture of row crop cultivation equipment in the 1970s.  He assisted in the design of such equipment and particularly shank assemblies for row crop cultivation.  His brother Noel also trained as a welder, fitter and turner at the same company. 

2. In 1975, the Gessners commenced business in partnership together as agricultural equipment manufacturers under the name Gessner Bros.  In 1976 or 1977 they began designing and manufacturing tillage equipment, initially for broad acre cultivation, and subsequently for row crop cultivation.  In 1979, they relocated to Toowoomba and in 1981 formed the company Grove Hill which continued to trade under the name Gessner Bros.  In 1996 the business name was changed to Gessner Industries.

3. Grove Hill has manufactured and sold two products which are said to infringe Great Western’s Petty and Standard Patents.  They are a product called the Terminator and a product called the Vera-Sweep or Versasweep.  As described by Lindsay Gessner, the Terminator is a parallelogram row cultivation frame assembly including a transverse tool bar to which is  attached a series of row units or “gangs” by respective parallelogram linkages.  A copy of a drawing of a side elevation of a row unit component of a Terminator is attached to these reasons (Attachment 4).  The hatched portions are the constituent parts of the Terminator row unit.  A typical Terminator frame assembly will have a number of these row units linked by a transverse bar.  Each unit includes a longitudinal tool bar with a forward rubber depth wheel.  The longitudinal bar can support a variety of row crop tools such as cut away discs, Crescent knives and a rearward shank with a friction trip mounted Alabama blade or sweep. 

4. Gessner said that Grove Hill has sold the Terminator in Australia since 1995, initially under the name “Rowmaster 2000”.  It was made available for public inspection at equipment exhibitions from August and September 1995.  It was a redesigned version of a product called the “Pioneer Rowmaster” which was originally manufactured and sold by Pioneer Industries Pty Ltd in Brisbane.   Grove Hill purchased the business associated with the manufacture and sale of that product.  It was a cultivator frame assembly with a transverse tool bar to which was attached a series of independent tool carriers.  Gessner said the Terminator did not have a guidance system and had never been sold fitted with one.

5. The Versasweep product was described by Gessner as an adjustable tool assembly for mounting on an industry standard shank and friction trip of a row cultivator.  It comprises two plates for adjustable mounting on a tool shank to which are attached a pair of removable sweep blades which can be adjusted to many different angles and on different planes.  The design of the Versasweep was said to be such that the mounting plates on the shank assembly could be adjusted independently of any other tools mounted on the tool shank.  Further, independently of the mounting plate “angle”, the sweep blades could be suitably angled to cater for a wide variety of furrows and ground conditions.  Although the product was often displayed or depicted in Grove Hill’s promotional literature as mounted on a tool shank also carrying a forward blade or point, neither the shank nor the forward blade or point, including the friction trip, constituted the Versasweep product.

   The Infringement and Revocation Proceedings

6. Great Western instituted the present proceedings against Grove Hill in 1997.  In its final amended application dated 5 October 1999 it claimed declarations that Grove Hill had infringed Australian Registered Petty Patent No 678130 and Australian Registered Standard Patent No 705201.  In addition it claimed injunctive relief and damages or an account of profits for infringement of both the Petty and Standard Patents.  Relief by way of delivery up of infringing items was also sought.

7. In its amended statement of claim Great Western alleged infringement of claims 1, 2 and 3 of the Petty Patent from a date no later than in or about June 1997. Particulars of infringement referred to the offering for sale and sale of the Terminator and Vera-Sweep at agricultural shows in Toowoomba and Gunnedah in June and August 1997. It also alleged infringement of claims 1, 2, 3, 4, 9, 10, 11, 12 and 13 of its Standard Patent from at least June 1997. The particulars of infringement of claims 1 to 3, which also appear in the Standard Patent, were those relied upon in the allegation of infringement of the Petty Patent. Reliance was also placed upon the manufacture, assembly, offering for sale and sale of the Terminator row cultivator when fitted with the Versasweep assembly and the Versasweep assembly when offered for sale or sold with the Terminator. The latter particular was put on the basis that Grove Hill’s Versasweep assembly could only be used in a row cultivator and had no other useful purpose, by its sale anticipated an infringement of claims 1, 2 and 3 of the Patent and was a contributor infringement of the Patent to which s 117 of the Patents Act 1990 applied.  Separate particulars were given in relation to the other claims mentioned. 

8. By its second amended defence and cross-claim, Grove Hill denied that its products infringed the Petty Patent.  It referred to claims 1 to 3 of the Petty Patent as directed specifically to “a row cultivator” that is, to the frame assembly and tool attachments.  The Terminator product manufactured and sold by Grove Hill was said not to have the guidance system features described in the complete specification.  The Versasweep products were said to be tools and not a row cultivator as claimed by the Petty Patent.  The Petty Patent was also said to have been invalid, the grounds of invalidity as set out in the particulars separately filed were:

   1A.Failure to comply with the requirements of ss 40(2) and 40(3) of the Patents Act 1990 in relation to the description of the alleged invention, its definition, the width of the claims of the complete specification, the lack of clarity and succinctness of the claims and the fair basing of the claims.

   1B.The Petty Patent was obtained on false suggestions or misrepresentations.

   2.Want of novelty.

   3.Obviousness and want of an inventive step.

   4.The invention was not a manner of manufacture within the meaning of s 6 of the Statute of Monopolies.

9. In addition to the plea of invalidity, Grove Hill denied loss or damage on the part of Great Western and any profit on its own part.  It alleged that Great Western is estopped from denying that all of the alleged inventive features defined in claims 1 to 3 of the Petty Patent are disclosed in United States Patent 2487737 known as the Skinner Patent.  It was also claimed that the Petty Patent ceased to have effect from 15 May 1998 by reason of Great Western’s withdrawal of its application to extend the term of the patent, which withdrawal was said to have been notified to IP Australia by letter dated 3 September 1999. 

10. By way of cross-claim, declarations were sought that the offering for sale and sale of Grove Hill’s products described as “Terminator” and “Versasweep” were not infringements by Grove Hill of any claim of the Petty or Standard Patent.  Declarations were sought that both patents were and always had been invalid.  An order was sought revoking the Standard Patent.  Separate particulars were delivered of the alleged grounds of invalidity of the Standard Patent.  These were, in summary:

    1.The complete specification did not comply with the requirements of ss 40(2) or 40(3) of the Patents Act 1990.

    2.Want of novelty.

    3.Obviousness and want of an inventive step.

    4.        The invention is not a manner of manufacture within s 6 of the Statute of Monopolies.
    An amended reply and defence to the cross-claim were filed and a reply and rejoinder to the amended reply and defence to cross-claim.

    The Witnesses

11. It is sufficient for present purposes to indicate the various witnesses called at the trial of the action which, in the result, was limited to the questions of infringement and validity.  The witnesses were:

    Clifford Lance Carew - Patent Attorney retained by Great Western.
    Carew filed three affidavits and gave opinion evidence that the Grove Hill Versasweep product embodied each of the integers in the claims of the Petty Patent and claims 4, 9, 10, 11, 12 and 13 of the Standard Patent.  He also said, having compared the claims with the Provisional Specification, that the priority date for the claims was 22 December 1993.

    Lindsay John Gessner - Director of Grove Hill
    Gessner gave evidence, already outlined, of the development and history of the Terminator and Versasweep products and how they did not infringe the Great Western patents.  He also referred to affidavit evidence of other witnesses.

    Barry Keith McFarlane - Consultant to Grove Hill
    McFarlane was involved in manufacture of row crop cultivation equipment.  He consulted to Grove Hill from 1991.  He was involved in the redesign and development of the Terminator row cultivator from 1994.  He gave evidence going to the validity of the Great Western patents.

    William John Ernst Martin - Former Farmer with extensive experience in row cultivation
    Gave evidence for Grove Hill going to the validity of the Great Western patent.

    Kevin John Weston - Managing Director of Pioneer Industries Pty Ltd
    Gave evidence for Grove Hill going to the validity of the Great Western patent.

    Allan James Yeomans - Director of Yeomans Plow Co Pty Ltd
    Gave evidence for Grove Hill going to the validity of the Great Western patent.

    James Ross Murray - Senior Lecturer in Farm Mechanisation at University of Queensland
    Gave evidence for Grove Hill going to the validity of the Great Western patent.

    Robert Eugene Penick - Managing Director of Mooki Manufacturing Pty Ltd
    Gave evidence for Grove Hill in relation to prior art in a promotional brochure.

    Peter Mansur - Director of Great Western and Inventor of the subject invention

    John William Woodward - Consultant
    Extensive experience in design, manufacturing and marketing of farm machinery.  He gave evidence for Great Western going to the validity of the patent.

    Chris McCosker - Cotton Farmer
    Gave evidence for Great Western going to the validity of the patent.

    Peter Wylie - Agricultural Consultant
    Gave evidence for Grove Hill going to infringement and validity.

    Reasons for Judgment of the Primary Judge

12. The reasons for judgment at first instance began with a discussion of the practice of row cultivation and the term “row cultivator”.  That term, her Honour said, referred to:

    “…the equipment used in row crop cultivation and comprises both the tool- carrying system and the tools attached to it.”

    The problem which had led to the development of the Great Western invention and the claims of the patent were then set out.

13. Her Honour’s general assessment of the witnesses led her to accept Mansur and Woodward as reliable witnesses although she did not rely on Mansur’s evidence in relation to the inventive step question.  Generally she found the evidence of Grove Hill’s witnesses to be of limited assistance or unreliable.  In relation to three of them she found a partisan or combative approach which affected her assessment of their evidence.  She relied upon Carew’s evidence as identifying the essential integers of the Great Western patent which integers she listed in her judgment.

14. Great Western’s infringement case was based on the evidence of advertisements of the Terminator and its attachments and invoices of sales of the Terminator with the Versasweep. It contended that Grove Hill infringed its patent by selling the Terminator with the Versasweep and by selling the Versasweep alone.  The principal defence to the infringement case was that neither the Terminator nor the Versasweep was sold as a product or assembly which combined a “forwardly projecting portion fitted with a leading blade” and a pair of rearward cutting blade attachment means within the meaning of the claims of the Great Western patent.  In this respect Gessner’s evidence was that the Terminator was sold separately from the tools which were ordered by the customer.  The Versasweep was first sold in 1996 both with the Terminator and separately.  It was said by Gessner to comprise only a pair of rear blades and a friction trip mechanism to which they were attached.  A forward blade or sweep, manufactured by Grove Hill, could be ordered by a client and sold with the Versasweep. 

15. Her Honour found that the sales invoices produced in evidence showed that during the period relevant to the Petty Patent, Grove Hill sold the Terminator together with a number of Versasweeps and that the Versasweeps were sold independently of the Terminator.  There was nothing to indicate that when the term “Versasweep” was used, without more, it was a reference to the rear blades section alone.  Advertisements and illustrations in evidence depicted both forward and rear parts attached to a Terminator, sometimes with an Alabama added at the rear.  Her Honour inferred that Grove Hill had marketed the Versasweep as a product combining both forward and rear tools.  She rejected Gessner’s evidence that the Versasweep did not include the forward leading blade portion.  She discussed his evidence that when a Terminator was ordered with tooling, it left the factory with the tooling attached.  The reference in the invoices to the supply of a Terminator complete with Versasweep was likely to fall into this category.  In some cases the Versasweep might not be fitted and would be supplied in kit form.  In that event it was supplied in parts on separate pallets.  Her Honour also rejected as fanciful the suggestion for Grove Hill that it could have no idea what farmers might do with the parts.  She found that the assembly could only be put to one use.  It had not been suggested that the parts could not be put together by purchasers.   Even without diagrams or illustrations a farmer would readily understand how the tools were to be fitted together.

16. Her Honour referred to s 117 of the Patents Act and to the judgment of the Full Court in Bristol-Myers Squibb Company v FH Faulding & Co Ltd (2000) 97 FCR 524 at 557-8. If the Versasweep assembly were to be regarded as “the product” for the purposes of s 117 it was capable of only one reasonable use. Grove Hill’s submissions sought to narrow the reference in the section to “the product” to a singular or assembled product, but there was nothing to suggest that such a limitation was necessary.

17. Grove Hill submitted that its products were outside the claims in the patent in two respects:

    1.Because the Terminator did not employ a guidance system as depicted in Great Western’s specifications and drawings; and

    2.Because Grove Hill’s Versasweep employed two pairs of plates to make up the lower shank section.

    This involved construction of the claims.  As to the first point there was no reference to a guidance system in claim 1 and nothing to indicate that it must have been intended as part of the claim.  Reference was made to it in Figure 1 and in the discussion of that drawing in the complete specification.  However, a preferred embodiment could not be taken as adding to, or limiting, the claim itself.

18. On the second point, her Honour accepted that it was common ground that “a pair of plates” was an essential feature of the patents.  Each shank mounted on the tool bar was to have a pair of plates mounted to the opposite sides of the shank and forming a lower shank section.  Grove Hill’s assembly employed two pairs, one sitting over the other.  Great Western said that the words of the claim did not require the lower shank section to be formed solely by a single pair of plates.  Grove Hill argued that singularity was an essential feature of the claims read in light of the specification.  Her Honour found that while it was essential that the lower shank section be formed by plates and that as a minimum there must be a pair, it was not essential that there be only one pair performing this function.  Two pairs overlapping could make up the section.  The section itself, however, was to be singular.

19. The evidence and arguments on invalidity were then considered.  The grounds of invalidity relied upon by Great Western were identified as follows:

    1.A failure sufficiently to describe the invention.

    2.The complete specification was misleading with respect to its description of prior art and common general knowledge.

    3.The claims were not fairly based upon the specification.

    These matters were dealt with under the heading “Invalidity” in the reasons for judgment.  Novelty, prior use, false suggestion and  lack of inventive step were dealt with separately.

20. Her Honour found Grove Hill’s complaints concerning the sufficiency of the description of the invention to have been changeable and that there was confusion as to what issues remained.  She referred to the contention that the specification was unclear and misleading as to prior art and that it was not possible to discern what the invention was.  It became clear that what was complained of was a failure to describe the inventive step, not that the specification failed to make plain what was comprised in the invention or how it was to be performed. 

21. Her Honour did not think the pre-existing problem claimed in the specification was negated by the fact that some farmers could better manage their equipment so that weeds did not become caught around the cutting discs which follow the knives.

22. Specific particulars relating to insufficiency of description were pleaded but not taken up in argument. Their relevance appears to have been as to their essentiality as features.  The use of the term “adapted to travel” in claim 1 of the specification was raised.  This term, as Woodward had explained, referred to the blades being shaped to incline so as to travel under the soil surface from the base of the furrow and up the sides of the furrow.  The claim did not limit the need to travel below soil level to a flat inter-row space. The row cultivator was to be used in both types of inter-row spacing.  The blades had to be adaptable to handle the range of possibilities.  This required an element of adjustability of the blades.  The respondent’s witness, Murray, had agreed that the Petty Patent provided a person skilled in the art with sufficient information to make the apparatus.  Murray had later attempted to reduce the effect of the evidence, but her Honour did not accept that he misunderstood what had earlier been put to him.

23. Additional claims of ambiguity with respect to claims in the Standard Patent were not developed in the submissions at trial save for that relating to the term “a bifurcated lower shank section”.  Her Honour found that the meaning of “bifurcated” was apparent.  If it were not, the description and drawings made it plain.  Other complaints, concerning particular words assessed largely devoid of context, were insubstantial.

1. The principal complaints under the heading of “Fair Basing” in relation to claims 1 to 3 were restatements of Grove Hill’s arguments about the construction of the claims raised in connection with infringement.  The complaints that the pivotal mounting of the pair of plates and the bifurcated lower shank section, contained in claims 4 and following of the Standard Patent, were not disclosed in the provisional specification were found not to be made out particularly when regard was had to the drawings and to the understanding of the skilled addressee reading them.  The balance of the contentions for a later priority date on account of some disconformity between the provisional specification and the later complete specification turned upon the construction of claims for which Grove Hill contended and which her Honour did not accept.  She found that a reference to the provisional specification, including the drawings  of the tool, provided a reasonably clear disclosure of what was later claimed. 

2. She dealt with the contention that the complete specification added for the first time a reference to the lower shank section and to its being comprised of a pair of plates and that on this basis there should be a later priority date.  Her Honour said that there was no reference to a bifurcated lower shank section in the provisional specification.  What was later called a lower shank section and the plates comprising it was disclosed in the drawings throughout the process even if the terminology changed.  So much, she said, was acknowledged by Grove Hill.

3. Her Honour considered novelty and referred to a number of prior publications said to constitute prior art.  These were:

   1.The Lodwig (Beet Plow) - US Patent 1279733.

   2.Lane - US Patent No 1851190.

   3.Seaholm - US Patent 2266818

   4.Skinner: US Patent No 2487737.

   5.The Martin Multi-Till.

   6.The Pioneer Supersweep: Australian Design Registered No 114093.

   7.The Orthman Row Crop Cultivator/Supersweep.

   8.Buffalo 6200 Cultivator and Sweep.

   9.The Goertzen Quick Sweep.

   10.The Keech  Shank Accessory - KAG 110 Mould Blade Assembly.

   None of this prior art was found to have amounted to an anticipation of the patent. 

4. She then turned to prior use. Grove Hill, although having pleaded invalidity on account of public demonstration for commercial purposes, did not pursue that allegation in evidence. Rather, it contended that Mansur’s prior use of the equipment on his farm went beyond the reasonable trial and experiment permitted by the Act. Its case fastened upon the third prototype completed by Mansur in September 1992. Her Honour found that, even assuming the prototype contained all of the features of the invention, Mansur’s evidence explained the need for testing it over almost one year, that is to say, two seasons. He needed to assess its performance over that period and in the changing conditions which occur throughout the seasons.

5. Her Honour rejected the plea of false suggestion.  Grove Hill’s pleading did not identify with precision what the suggestion was.  It seemed to amount to no more than the denial by Great Western’s patent attorney that the Skinner Patent was relevant.  That accorded with her Honour’s finding but even without that finding, she held it could not have been said that the application had no reasonable basis for the argument it put forward. 

6. In relation to the inventive step requirement of the Act, Grove Hill’s case focussed largely upon the contention that the various elements of the alleged invention were old. Even considered individually this was not entirely accurate. The rear blades did not equate with knives and the friction trip assembly was substantially modified. Moreover, such an approach did not address the combination of integers. No witness had been able to explain how an imaginative but skilled person might draw together aspects of known tools and usage, put them together in a new way and modify them to achieve efficiency and adaptability. Her Honour referred to the formation of the lower shank section by plates having additional functions, the use of a friction trip substantially modified to carry blades and the positioning of the blades with respect to each other. The combination, she held, amounted to more than Grove Hill’s description of it as an adapted friction trip assembly. The assertion that the combination of forward and rear blades was well-known, was half accurate and did not properly address what was here employed. If it were accepted that the T-shaped section was one obvious solution to the requirement of adjustability, the other features of the combination were not.

7. Her Honour rejected Grove Hill’s claims of invalidity.  Its defences were not made out.  The evidence showed infringing sales and advertisement in the Petty Patent period and since the Standard Patent came into force.  Her Honour found for Great Western on infringement and adjourned the matter of damages and other relief to a date to be fixed.

   The Orders Made by the Trial Judge

8. The orders made by her Honour were in the following terms:

   “The Court declares that:

   1.The respondent infringed Australia Registered Petty Patent No 678130 during its term.

   2.The respondent has infringed Australia Registered Patent No 705201.

   The Court orders that:

   3.The respondent, by itself, its servants or agents or howsoever be restrained from infringing Australia Registered Patent No 705201.

   4.The issue of damages or other relief consequent upon infringement is adjourned to a date to be fixed.

   5.The respondent pay the applicant’s costs of and incidental to the proceedings.”

   The Grounds of Appeal

9. The grounds of appeal were lengthy and heavily particularised.  They may be summarised as follows:

   Part 1 - Witnesses
   Her Honour was said to have erred in her assessment of the reliability of Grove Hill’s witnesses and in accepting Woodward’s evidence.  This ground was abandoned at the appeal.

   Part II - Grove Hill Apparatus - Versasweep Product

   Under this heading Grove Hill challenged the findings that the Versasweep product included the forward leading blade portion. Her Honour should have found that the Versasweep assembly comprised only certain components identified in the Grove Hill Parts Catalogue as the Versasweep assembly. These grounds were directed to her Honour’s findings relevant to s 117 of the Patents Act.

   Part III - Construction of claims
   Her Honour’s findings as to the construction of claims 1 to 3 of the Petty and Standard Patents were comprehensively challenged in connection principally with the issues of infringement and want of novelty.  Ground 4 in Part III, involving the contention that the guidance system was an essential part of the invention as claimed in claim 1, was not pressed.  It was also said that her Honour erred in failing to construe at all claim 4 and dependent claims 5 to 13 of the Standard Patent as relevant to the issues of infringement and validity and the relief which was awarded. Constructions which should have been adopted in  respect of claims 4, 5 and 12 were advanced under this heading.

   Part IV - Infringement
   The grounds relating to the infringement findings began with the general contention that her Honour erred in holding that Grove Hill infringed claims 1 to 3 of the Petty and Standard Patents so as to support the declarations and orders of the Court made on 17 April 2001. 

10. Having made no finding that Grove Hill infringed any of claims 4 to 13 of the Standard Patent, her Honour was said to have erred in making any infringement declaration or order comprehending the infringement of those claims of the Standard Patent and particularly claims 5 to 8 thereof when infringement of those latter claims was not alleged.  (Part IV ground 2).  Her Honour also erred, it was said, in finding an infringement to be proven when Great Western had not proved any instance of infringement alleged in the particulars of infringement and there was no evidence at all of the use of the Grove Hill apparatus after sale and delivery out from the Grove Hill premises.  The finding of infringement based upon Carew’s listing of the integers of claims 1 to 3 was erroneous, this grouping only having been submitted by Grove Hill as reflecting the syntax of the claims.  Her Honour was also said to have erred to the extent that she relied upon the decision of Lord Diplock in Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242-3 to support a conclusion of infringement based on purposive construction. The doctrine of “purposive construction”, it was said, is not available to avoid the requirement that to succeed on infringement the patentee must establish that the alleged infringer has taken all the essential features of the claim or claims. The doctrine is not available where the alleged infringing apparatus is a “variant” which has a “material effect upon the way the invention worked”. The Grove Hill apparatus even if in two parts as constructed and in operation was such a variant.

11. It was then asserted that her Honour should have found no infringement of claims 1 to 3 for a variety of reasons related to their construction and the nature of the Grove Hill apparatus.  A contention that the Grove Hill Terminator row cultivator had no guidance system which on a true construction of claim 1 of the Petty Patent, was an essential feature of the row cultivator, was not pressed.  It was also contended that, on a proper construction of the claims 4 and 9 to 13, and having regard to the nature of the Grove Hill apparatus, her Honour should have found there was no infringement of those claims.

12. Contributory infringement at common law, a subheading of Part IV of the grounds which comprise grounds 8 to 12 was not pressed. Under the heading “Contributory Infringement : Section 117”, her Honour was said to have erred in relation to her finding that the offering for sale and selling by Grove Hill of its apparatus as components on pallets in unassembled form supported a finding of infringement of claims 1 to 3 of the Petty and Standard Patents or any of claims 4 to 13 of the Standard Patent based on s 117 of the Act.

    Part V - Failure to Comply with Section 40

13. The grounds under this head raised contentions going to validity for failure to comply with s 40. The points taken under this heading were, in paraphrase, as follows:

    A. Sami Svendsen - the Trial judge was said to have erred in considering non-compliance with s 40(2) of the Act as an issue of lack of inventiveness rather than lack of specification. Moreover the complete specifications were of the same nature as found to be invalid in Sami S. Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156.

    B.       Independent Adjustability - Front and Rear Blades (Claims 1 to 4) - The feature of independent adjustability of the front and rear blades in claims 1 to 4 was neither described nor illustrated by Figures 3 and 4 in the complete specification nor in any of the priority documents and had no basis in the words “adapted”, “adaptable”, or “the blades and sweep can be tilted as desired”.

    C.       Guidance System.  This point was not pressed.

    D.       Claim 4.  The trial judge was said to have erred in finding any of claim 4 and any of its dependent claims to be fairly based because none had the feature of at least “a pair of plates” found to be an essential feature of the invention.  Nor was there any description supporting the word “adaptable” in claim 4 as relevant to cutting blades as meaning “adjustable” in use or independent of the leading blade.

    E. Bifurcated Lower Shank Section (Claim 4). The trial judge was said to have erred in finding that any meaning could be given to the expression "bifurcated lower shank section” appearing in claim 4 of the Standard Patent or to the word “bifurcated” in such expression or that claim 4 and its dependent claims comply with s 40 of the Act.

    F. Grove Hill Apparatus (Claims 1 and 4) The trial judge is said to have erred in finding the complete specifications complied with ss 40(2) and 40(3) because on the construction of claim 1 are found to comprehend the Grove Hill apparatus in forward and rear parts, there was no description at all in the complete specifications or in any of the priority documents supporting any construction of the apparatus of the invention to a two part apparatus of the nature comprehended by the Grove Hill apparatus.

    G.       Priority Dates - Selection Among Preferrments - Petty Patent.  The trial judge should have found the priority date of claims 1 to 3 of the Petty Patent not to have been earlier than 21 January 1997. 

    H.       Priority Dates - Selection Among Preferrments - Standard Patent.  The trial judge ought to have found that the priority date of claims 1 to 13 of the Standard Patent was not earlier than 9 March 1999.

    Part VI - Prior User

14. There were five grounds under this head going to the judge’s findings as to the reasonableness of trials of the invention conducted by Mansur.

    Part VII - Lack of Novelty

15. There were three grounds under this head. 

    1.        The trial judge erred in finding the invention in claims 1 to 3 of the Petty and Standard Patents and 4 to 13 of the Standard Patent to be novel over each of the pieces of prior art (when read with the common general knowledge) relevant to the invention.  This error was said to be based in the trial judge’s application of the relevant legal tests for novelty to the disclosures of the prior art, her failure to properly consider the features of the claims against the relevant disclosure and her erroneous importation into the claims of features, limitations or glosses which were not open or against the evidence or inconsistent with the trial judge’s reasons.

    2.        The trial judge should have found on a true construction of claims 1 to 3 of the Patents that the invention was not novel by reason of various pieces of prior art considered individually when read with common general knowledge.  The pieces of prior art relied upon in this respect were:

    Skinner (US Patent No 2487737)
    The Martin Multi-Till
    The Pioneer Supersweep
    The Orthman Row Crop Cultivator/Supersweep
    The Buffalo 6200 Cultivator and Sweep

    3.        The trial judge should have found on a true construction  of claims 4 to 13 that the invention was not novel at the earliest priority date by reason of the following pieces of prior art when read with the common general knowledge:

    Lane (US Patent 1851190)
    Pioneer Supersweep
    The Orthman Row Crop Cultivator/Supersweep
    The Goertzen Quick Sweep
    Buffalo 6200 Cultivator and Sweep

    The parties had indicated at the hearing of the appeal that a list of prior art agreed as common general knowledge would be supplied.  That list was supplied on 3 May 2002 and comprised the following:

    1.Yeomans’ Shank Assembly (Physical Exhibit) - AJY4 (BKM9) (with Cocks Comb attachment for adjustable attachment of rear blades) and Yeomans’ Wombat Digging Point - AJY4A.

    2.Keech Assembly (Physical Exhibit) - (Top and Front Views) - BKM14 (including L-shaped Bracket(s) for rear blades).

    3.Gessner Maxitill - (BKM26) AB3, 322 (including L-shaped blades and also Shear Bolt release (top RHS).

    4.Martin Multi-Till - (WJEM2, 3) (JRM11, 13) AB8, 1747-1749.

    5.Pioneer Supersweep (Physical Exhibit) - BKM17

    Great Western did not agree that the assemblies referred to in the list (except for the Pioneer Supersweep) are row cultivators or tools for row cultivators.

    Part VIII - Lack of Inventive Step

16. There were some five grounds in this Part.  These attacked the trial judge’s approach to assessing inventive step against the state of common general knowledge applicable at the relevant time.  She should have found that the invention was obvious and lacked any inventive step because the tool of the claims of the Petty and Standard Patents was no more than a friction trip assembly (pair of plates) well known to the prior art to which was attached forward blades and a pair of sweep or rear blades in forms and positions well known to the prior art.  In addition it was said the trial judge should have found obviousness on the basis that on her own findings of infringement the claims of the Petty and Standard Patents comprehended the Grove Hill apparatus.

    Part IX - No Manner of Manufacture

17. The trial judge was said to have erred in making no finding at all on this issue as raised in the particulars of grounds of invalidity.  She should have found that the invention described and claimed lacked inventive merit or sufficient quality of invention so that there was no manner of manufacture.  As to claims 1 to 3 of the Petty and Standard Patents and claim 13 of the Standard Patent, there was merely a collocation and no combination in the patent law sense.  She should also have found that those claims which comprehended the Grove Hill apparatus lacked inventive merit or sufficient quality of invention and were not a manner of manufacture.

    Part X - Conduct of the Trial

18. These grounds were not pressed.

19. Parts XI and XII of the notice of appeal dealt with the orders that her Honour made and the orders that ought to have been made.

    The Claims of the Patent

20. The relevant claims of the Standard Patent were in the following terms:

    “1.A row cultivator having a transverse tool bar and a plurality of tool carrying shanks mounted on and projecting downwardly from the tool bar, each shank having a pair of plates mounted to the shank on opposite sides of the shank and forming a lower shank section, the lower shank section having a forwardly projecting portion fitted with a leading blade and a pair of rearward cutting blade attachment means having respective cutting blades attached thereto so as to be spaced rearwardly from and separate of the leading blade, the leading blade being followed by the pair of cutting blades, the cutting blades being adapted to travel just below soil level to sever weeds on either side of the leading blade, the cutting blades having respective leading edges diverging rearwardly and outwardly on opposite sides of the leading blade.

    2.A row cultivator according to claim 1 wherein the pair of plates are pivotally mounted on the shank so that the inclination of the cutting blades can be adjusted.

    3.A row cultivator according to claim 1 including means for changing the inclination of the blades.

    4.A tool for a row cultivator, the tool comprising:

    an elongated shank having an upper shank section and a bifurcated lower shank section pivotally coupled to the upper shank section, the lower shank section comprising leading blade attachment means projecting in a forward direction from the shank, and a plurality of cutting blade attachment means physically separated from the leading blade attachment means in a rearward direction from the leading blade attachment means;

    a leading blade for cultivating a furrow, said leading blade being mounted to the leading blade attachment means of said shank, and having a rear end; and

    a pair of cutting blades, adaptable to travel just below a soil level to sever weeds on either side of the leading blade, the pair of cutting blades having respective forward ends and leading edges diverging rearwardly and outwardly on opposite sides of a line passing through the leading blade, and being secured to the respective cutting blade attachment means such that the rear end of the leading blade is physically separated from respective front ends of the cutting blades.

    5.A tool according to Claim 4, wherein the lower shank section comprises a blade carrier unit secured to the upper shank section, the carrier unit having a forward leading blade attachment means and a rearward cutting blade attachment means, the rearward cutting blade attachment means comprising a pair of spaced vertical plates receiving a cutting blade carrier unit in the form of an inverted generally T-shaped plate. 

    6.A tool according to Claim 5, wherein each cutting blade is tapered, having a broad forward cutting edge portion located behind and inside a periphery of the leading blade.

    7.A tool according to Claim 5, wherein each cutting blade has a forward portion located within a shadow of the leading blade.

    8.A tool according to Claim 5, including means for changing an inclination of the blades.

    9.A tool according to Claim 4, wherein each cutting blade is tapered, having a broad forward cutting edge portion located behind and inside a periphery of the leading blade.

    10.A tool according to Claim 4, wherein each cutting blade has a forward portion located within a shadow of the leading blade.

    11.A tool according to Claim 4, including means for changing an inclination of the blades.

    12.A tool according to Claim 4 wherein the lower shank section comprises interfitting plates, said cutting blade attachment means comprising a pair of lobes for separate attachment of the respective cutting blades to the lower shank section.

    13.A row cultivator employing a tool according to any one of claims 4 to 12.”  

    The claims of the Petty Patent are in the same terms as claims 1 to 3 of the Standard Patent.

    The Integers of Claims 1 to 3 of the Patents

1. Carew gave evidence of the integers of the claims 1 to 3 which her Honour accepted.  The integers were in the following terms:

   (a)       A row cultivator having a transverse tool bar;
   (b)       and a  plurality of tool carrying shanks;
   (c)       mounted on;
   (d)      and projecting downwardly from the tool bar;
   (e)       each shank having a pair of plates;
   (f)       mounted to the shank on opposite sides of the shank;
   (g)       and forming a lower shank section;
   (h)       the lower shank section having a forwardly projecting portion;

   (i)        fitted with a leading blade;
   (j)        and a pair of rearward cutting blade attachment means;
   (k)       having respective cutting blades attached thereto;
   (l)        so as to be spaced rearwardly from;
   (m)      and separate of the leading blade;
   (n)       the leading blade being followed by the pair of cutting blades;

   (o)the cutting blades being adapted to travel just below soil level to sever weeds on either side of the leading blades;

   (p)the cutting blades having respective leading edges diverging rearwardly and outwardly on opposite sides of the leading blade.

   The preceding sixteen integers are the essential integers set out in claim 1.  Claim 2 has the additional integer:

   (q)A row cultivator according to claim 1 wherein the pair of plates are pivotally mounted on the shank so that the inclination of the cutting blades can be adjusted.

   Claim 3 also has the additional integer:

   (r)A row cultivator according to claim 1 including means for changing the inclination of the blades.

   The lower case alphabetical lettering of the integers appears to have been adopted by her Honour in dealing with them in the body of her judgment, albeit not in the listing of them as given by Carew.

   The Statutory Framework

2. The relevant provisions of the Patents Act 1990 are referred to in the judgments of Dowsett and Gyles JJ and it is not necessary to set them out here.          

   Function of Court on Appeal

3. The grounds of appeal have already been referred to in outline in these reasons.  They were not expressed with clarity and seemed to show little discrimination between points of substance and points which had none.  That criticism is not answered by the appellant’s claim of compliance with the observations of the Full Court in Dynasty Pty Ltd v Coombs (1995) 138 ALR 64 at 70-71. The concern in that case was that “…the draftsperson [had] closely examined the learned trial judge’s judgment and listed every comment and finding of his Honour which he or she did not regard with favour”.

4. The trial judge in a case of this kind is “…educated in the issues, including the technical issues in a comprehensive and orderly fashion which is difficult if not impossible to recreate on appeal… This has significance even where… the question is to a large extent one of construction of the specification and claims” - Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079 at [152] (Gyles J). An appellant in proceedings of this kind should be focussed on matters which are capable of characterisation as errors of substance and in respect of which the grounds of appeal and submissions in support of them identify the asserted errors succinctly and clearly. Voluminous grounds of appeal which appear to take every conceivable point, (“kitchen sink” grounds) suggest from the outset that matters of substantive error have been difficult to ascertain.

5. The grounds set out in the notice of appeal are dealt with separately below.  Those on which no reliance is now placed are also identified in that sequence for the sake of completeness.

   Part I - Witnesses

6. This ground was not pressed.

   Part II - Grove Hill Apparatus - Versasweep Assembly

7. This ground concerned the trial judge’s findings about the nature of Grove Hill’s Versasweep product and whether it incorporated two integers of claims made in the Petty and Standard Patents.

8. Her Honour described the Great Western infringement case as conducted on the basis that Grove Hill “infringed the patent by selling the Terminator with the Versasweep, and also by selling the Versasweep alone, since it could only be used as a row cultivator”.  The principal defence to the infringement case, identified by Her Honour, was that neither the sale of the Terminator nor the Versasweep constituted the sale of a product or assembly which combined “a forwardly projecting portion fitted with a leading blade” and “a pair of rearward cutting blade attachment means”.  These repeated integers  (h), (i) and (j) of claims 1, 2 and 3 of both the Petty Patent and the Standard Patent as listed by Carew and accepted by her Honour. By reference to Grove Hill’s advertisements, catalogues and brochures, Her Honour drew “ The clear inference…that [Grove Hill] has marketed the Versasweep as a product combining the forward and rear tools”. [26]   These findings were said to be contrary to the evidence.

9. Grove Hill’s submissions invited the Court into a detailed review of the evidence relevant to the nature of the apparatus.  The submissions attached a five page annexure setting out what was said to be “A summary of the evidence concerned with the Grovehill product components (including Terminator row cultivator), invoices and promotional activities…”.  Grove Hill accepted that the sale of Terminator row cultivators with Versasweep assemblies on the tool shanks when advertised in newspapers, catalogues or brochures and sold and delivered as such could be comprehended by the “row cultivator” claims of the Petty and Standard Patent.  However, while there was evidence of sale and delivery of Versasweep assemblies as separate components on pallets, without a Terminator row cultivator, there was said to be no evidence at all of either the assembly or the use of those components once delivered. 

10. The Versasweep product was said, on the basis of the evidence at trial, to be “…an adjustable tool assembly for mounting on to an industry standard shank and friction trip of a row cultivator”.  It was essentially to comprise a friction trip assembly to which was attached a pair of sweep blades.  The assembly was to be mounted independently and adjustably on to a tool shank.  The sweep blades were removable and replaceable and would independently be adjusted to many different angles and on different planes.  An example of the Versasweep was in evidence, exhibited to Lindsay Gessner’s affidavit.  A photograph of the product was also exhibited.

11. Reference was also made by Grove Hill to evidence concerning:

    1.        The design and operation of the Versasweep.

    2.        Its marketing, promotion and sale.

    3.        The predominance of dealer resellers among Grove Hill’s customers.

    4.        Grove Hill’s parts catalogue.

    5.        Orders, invoices and ex-factory delivery by Grove Hill.

    6.The fact that Grove Hill does not issue or publish instructions for the assembly or use, as assembled, of the Versasweep product.

    7.The absence of any evidence of the manner in which components constituting the Versasweep assembly were used after supply and delivery whether supplied direct to customers or to dealers.

12. As to the design and operation of the Versasweep it was submitted by reference to the evidence of Grove Hill’s consultant, McFarlane, in cross-examination, that the product, as a single sweep unit or assembly, can be fitted by a user to industry standard tool shanks such as a tool shank with spacer plates or carrying an industry standard friction trip assembly with a forward blade. He said that because the Versasweep is a stand alone unit and the sweeps could be adjusted at any inclination it did not have to be mounted specifically on a shank with multiples of other tools.  It could be mounted on one shank immediately behind another shank which might have the leading blade on it.  He accepted in cross-examination that this was his idea.  He also accepted that to mount the Versasweep on a standard 3” x 1” shank it would be necessary to utilise spacer plates or to manufacture the product in a narrower form.

13. It was evidently accepted that Grove Hill does not make or sell spacer plates.  Carew, Great Western’s patent attorney, agreed with the proposition put to him in cross-examination that if it were desired to create a spacer plate, so that the rear assembly could fit on a shank without any forward blade mechanism, this could be done using an oxy torch to cut the friction trip immediately below the bolt. 

14. It was submitted by Grove Hill that the Versasweep product can be independently and pivotally mounted as an assembly on an industry standard tool shank and friction trip of a row cultivator by an overlapping alignment of the two plates of the Versasweep friction trip with the two plates of the friction trip on the tool shank.  By alignment of those four plates with the hole on the tool shank a pivot bolt could be inserted.  The respective two sets of overlapping plates would then be pivotally secured on to the tool shank.  They could be secured to prevent or minimise rotation by a further standard securing bolt passing through the sets of plates and the tool shank within the arcuate slots at the top of the respective friction trip assemblies.  It was also said that if a Versasweep product is mounted on a standard tool shank and friction trip assembly carrying a leading blade the assembly would then look like the two dimensional drawing of Grove Hill’s product prepared by Carew and exhibited to his affidavit. The Versasweep product, it was said, can also be mounted separately on a tool shank behind a separate tool shank carrying a leading blade.

15. The thrust of these submissions and the references to the evidence at trial appears to be that the Versasweep product can be used in ways that do not answer the description given by her Honour in her findings under challenge in this ground of appeal.

16. In relation to the marketing, promotion and sale of Versasweep products, the evidence was said to show that the Versasweep product was first sold by Grove Hill in about 1996 as part of a Terminator row cultivator and has also been sold separately or with other shank assemblies since that time.  In Grove Hill’s promotional literature it was said the Versasweep product is displayed or depicted mounted.  The relevant literature describes the resultant “product” as “Versasweep Adjustable Cultivator Shank System”.  In Grove Hill’s promotional literature the Versasweep shank system is shown in connection with the Terminator product with a single Versasweep system mounted on the longitudinal tool bar of a Terminator Inter-row cultivator. 

17. Under that part of Grove Hill’s submissions dealing with its clients, the evidence was said to show that the company designs, manufactures, assembles and sells its products in Toowoomba and as a manufacturer in response to client orders. It sometimes makes sales direct to farmers but most of the sales of product are to its dealers who then resell the product to their customers.  There are eighty such dealers.  In the Grove Hill Parts Catalogues the Versasweep assembly was listed, catalogued and sold as a separate unit available for purchase in conjunction with other component parts such as tool shanks and friction trips to make up a Versasweep shank assembly.

18. In reply to Grove Hill’s submissions on the nature of its product, Great Western referred to Mansur’s evidence that the Versasweep is capable of only one reasonable use, that is row cultivation as part of a row cultivator.  The proposition that the apparatus marketed by Grove Hill as the Versasweep, constituted only those parts making up the physical exhibit to Lindsay Gessner’s affidavit, had been rejected by the primary judge.  The primary judge found that Grove Hills’ catalogues and brochures did show a rear blade or blades attached only to a friction trip but they also showed it combined with a forward blade.  Combined in this way it would suit a Terminator.  It was also shown attached to other shank assemblies or tool bars.  The clear inference, in her Honour’s opinion, was that Grove Hill had marketed the Versasweep as a product combining the forward and rear tools.  Her Honour referred to Gessner’s evidence that although the advertisements and drawings would suggest the contrary, the Versasweep product did not include the forward leading blade portion.  However, no other evidence was said to support such an assertion.  Wells was hardly likely to have designed the rear blade portion in a vacuum.  The rear blades could only be used in conjunction with the forward part.  If the rear blades were used on their own they would simply “plug up”, a reference to weeds becoming caught around the blades. 

19. No error is shown.  In my opinion the Court is being invited to review a finding of fact based in part upon the credit of witnesses as well as her Honour’s evaluation of the evidence.  The finding she made was plainly open and this Court should not interfere with it.

    Part III - Construction of the Claims

20. There was a large number of constructional points set out in this part of the grounds of appeal - at least twenty five concerned with particular terms of integers of the claims.  Each related ultimately to either or both infringement and validity.  Her Honour’s statement of  general principles of construction was accepted by Grove Hill in its submissions.  Without referring to the authorities set out in her Honour’s reasons for judgment, the principles she relied upon were the following:

    1.The claims must be construed according to their terms upon ordinary principles.

    2.It is not permissible to confine or add to the claims by reference to some limitations or gloss found in the body of the specification but which cannot, by proper inference, be reproduced in the claims themselves.

    3.Resort may be had to the body of the specification to define or clarify the meaning of words used in a claim when an expression is not clear.

    4.Where the question which arises is purely verbal or grammatical ordinary principles dictate that it be resolved by those means.

    5.It would not be necessary to resort to expert evidence except as to the accepted meaning of technical terms and to explain how things actually work.  Such evidence may be given by a person to whom the specification can be taken to be addressed, that is to say a person skilled in the art or science to which it relates. 

    Great Western in its submissions also referred to the proposition that a construction according to which the invention will work is to be preferred to one according to which it may not do so - Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 81 (Lindgren J).

    Part III Ground 2(a) - “Row Cultivator” - Integer (a)

21. Grove Hill began its constructional contentions by reference to the term “row cultivator” used in claim 1.   It sought to attribute to this term a wider generic meaning than that adopted by her Honour.  This went to the question of novelty and whether the invention was anticipated by prior art said to be comprised in that genus.  The term “row cultivator” it was submitted, refers to no more than an item of cultivating apparatus suitable for cultivation activities associated with crops grown in rows.  It does not define or require that the row cultivator or tool be useful for any particular crop cultivated land situation, furrow shape or size and does not define the placement of the tool shanks on the tool bar and particularly not in any part of a furrow.

22. Her Honour distinguished row cropping and row cultivation early in her reasons for judgment.  Row cultivation refers primarily to the killing of weeds in furrows between rows of plants after planting.  It can also be applied to the aeration of the soil or warming the soil for seeding prior to planting.  It applies to the cultivation of both flat beds and grooved furrows.  Against this background she said:

    “A “row cultivator” refers to the equipment used in row crop cultivation and comprises both the tool-carrying system and the tools attached to it.  It may be a number of transverse tool bars with tools fixedly mounted to each tool bar, or a transverse tool bar with tools mounted onto a parallelogram arrangement, which provides for independent height adjustment.” [5]

    There was ample evidence in the testimony of Messrs Mansur, Woodward and McCosker to support her Honour’s construction. 

23. Her application of the construction she adopted appears in her findings, in connection with prior art relied upon by Grove Hill, that:

    1.The Lodwig (Beet Plow) US Patent 1279733 was “a plough to be used to break up the ground and remove beets, potatoes and similar vegetables”.  It was “not a tool for a row cultivator”. [78]

    2.The Lane US Patent No 1851190 referred to an apparatus in the nature of a plow drawn by an animal and “fails to describe a row cultivator”. [80]

    3.The Martin Multi-Till is a tool which is not for use in inter-row cultivation.  It is used for lightly ripping the soil and for planting in standing stubble.  It is in that sense only a cultivating machine.  Integer (a) is missing. 

    4.The Keech Shank Accessory, KAG 110 Mould Blade Assembly, is for deep tillage purposes and not inter-row cultivation.

    Her Honour’s construction of the term “row cultivator” and its application to the prior art was open on the evidence.  No error is shown in her approach to the construction of this integer.

    Part III Ground 2(b) - Placement of Tool Shanks - Integer (b)

24. The next point is that her Honour should have found that the “tool” as defined in claims 1 to 3 must be fitted to at least a “plurality of tool carrying shanks mounted on and projecting downwardly from the tool bar” of the “row cultivator” but does not define the placement of the tool shanks on the tool bar.  It may be accepted that claim does not in terms define the placement of the shanks on the tool bar save that they are “mounted on and projecting downwardly” from it.  However this ground does not demonstrate any error going to either infringement or validity.

    Part III Ground 2(c) - “Pair of Plates” - Not Necessarily Independent - Integer (e)

25. Under this ground it is said the primary judge should have found that claims 1 to 3 so far as they relate to a “pair of plates” mounted to the shank does not require them to be of any particular form or independent of each other, it being sufficient compliance with the integer if the plates are joined and are part of a casting or are part of a fabricated assembly. The ordinary construction of the term “a pair of plates” requires at least two planar surfaces. This ground is evidently directed to her Honour’s finding that the Martin Multi-Till lacks a pair of plates [92] as does the Buffalo 6200 Cultivator and Sweep [97]. I agree with the reasons of Dowsett J on this issue in relation to those two pieces of prior art.

    Part III Ground 2(d) - A Single “Pair of Plates” - Integer (e)

26. There is one question of construction, critical to the question whether the Versasweep infringes Great Western’s patents and that is whether the “pair of plates” appearing in claims 1 and 2 and, by incorporation from claim 1, in claim 3 refers only to a single pair of plates.  Grove Hill contended before her Honour that the Versasweep did not infringe the patents because it employed two pairs of plates to make up its lower shank section.  Her Honour said:

    “It seems to me that whilst it is clearly essential that the lower shank section be formed by plates, and that as a minimum there must be a pair, it is not essential that there be only one pair performing this function, two pairs overlapping can also make up the section.  The section itself however is to be singular.” [45]

27. Grove Hill submitted that the syntax of claim 1 requires that the lower shank section is formed by “a pair of plates mounted to the shank on opposite sides of the shank”.  There is no syntactical reason advanced for reading “a pair of plates” as “at least one pair of plates” or “one or more pair of plates”.  There was no room for any relevant ambiguity in the language of the claim.  It was limited to an apparatus having only one pair of plates mounted to the shank on opposite sides of the shank to form the defined “lower shank section”, that is a section constituting a singularity. 

1. It is also contended that, as it was held there is no reference to a guidance system in the claim and nothing to indicate that it must have been intended as part of the claim, the claims so construed are too wide and do not contain all of the features of a row cultivator described and illustrated as being the invention in the Petty Patent. The way it was put in the particular grounds of invalidity was based upon s 40 and was as follows:

   “the Complete Specification is unclear in its references to the guidance system of Figures 1 and 2 as being in accordance with the invention.  This aspect of the description has carried through from the Provisional Specification PM3104 and to the Complete Specification as filed (AU-A-70615/96).  As described, the guidance system appears as an essential feature of the invention.  However, the same is not clearly incorporated into the claims.  If the applicant contends that the guidance system of Figures 1 and 2 is not an essential feature of the invention then the Complete Specification is unclear and ambiguous as to the precise “invention” which is the subject matter of the Letters Patent 678130.”

   The most that can be said is that one feature of a cultivator which is said to have advantages is disclosed but not claimed.  This is no basis for invalidity, for the reasons discussed by the Full Court in ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc, particularly at [104]-[112]. See also per Gummow J in Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd at 497, affirmed on appeal, Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 143.

2. An argument is sought to be made concerning independent adjustability. This point is somewhat unusual. It was not a particular of invalidity. The argument for the appellant is that the primary judge erred in finding that the complete specifications of the Petty and Standard Patents complied with s 40(2) or s 40(3) of the Act because the feature of independent adjustibility of the front and rear blades, on the construction found by the primary judge to be a feature of the claims of the Petty and Standard Patents:

   (a)is neither described nor illustrated by the drawings figures 3 and 4 relevant to the preferred embodiments in the final (as accepted and as granted) forms of the complete specifications of the Petty and Standard Patents;

   (b)is neither described nor illustrated by the drawings figures 3 and 4 of any of the Priority Documents;

   (c)has no basis at all in the words “adapted”, “adaptable” or “the blades and sweep can be tilted as desired”.

   The primary judge’s findings appear at [57]-[65] of the reasons.  Paragraph [58] is as follows:

   “In evidence an issue was raised as to the meaning to be given to “adapted to travel”.  It is not entirely clear whether it was intended to be further pursued and if so whether it is said that the invention description is insufficient, or whether the claim itself was not clear or lacked definition.  The applicant has however addressed argument to an issue of ambiguity and I will attempt to deal with it and the further issue raised concerning independent adjustment of the front and rear blades.”

   I have difficulty in seeing the relevance of these issues as such.  I can see that there may be a question as to the correctness of the findings on this point.   I can see that these questions of construction may have had relevance to other issues such as novelty or obviousness, and that they may have had an impact upon the assessment of the evidence of various witnesses, in particular Mr Woodward.  However, the issues were not raised in the particulars of invalidity.  They were not relied upon by the respondent as giving rise to essential integers of the claims or in any other way directly relevant to validity.

3. The foregoing discussion as a whole disposes of any argument that the claims of each patent in suit are not fairly based upon the complete specification of each.

   Secret Use

4. I agree with Dowsett J that, regardless of where the onus lay, the use by the respondent was for reasonable trial or experiment.

   Novelty

5. I will apply the reverse infringement test which is now the established test for anticipation.  I will only deal with the prior art pressed in submissions.

   Pioneer Supersweep

6. This does not have a pair of rearward cutting blade attachment means having respective cutting blades attached thereto so as to be spaced rearwardly from and separate of the leading blade, the leading blade being followed by a pair of cutting blades.  The rearward blades are simply welded to the leading blade attachment means.

   Martin Multi-till

7. I agree with the primary judge that this assembly does not disclose a pair of rearward cutting blade attachment means.  It discloses a single plate with a pair of blades bolted to it.

   Skinner Patent

8. The gist of the submission for the appellant was that the primary judge was mistaken as to the description “cutting blades” in the patent in suit.  It was contended that, in context, the reference is to cutting through the soil below the surface, which would have the effect of severing (in the sense of uprooting or detaching) weeds from the soil and that “cutting” does not refer to cutting or severing the individual weeds.  If this were so, it is submitted that the point of distinction drawn by the primary judge between Skinner and the patent in suit disappears.  It is submitted that the circumstance that Skinner does not expressly refer to the cutting of weeds is of no significance, as the device is clearly depicted and one of the purposes of cultivation by movement of soil is the disturbance of and severing of weeds from the soil. 

9. It is not clear to me that the primary judge took the restricted view of “cutting” that is suggested by counsel for the appellant.  In any event, the gravamen of the reasoning of the judge is captured at [89]:

   “The effect of the evidence of Mr Murray and Mr Woodward was that it is possible that the wings on the Skinner apparatus might perform as cutting blades, if they were raked at a particular angle.  There was extensive cross-examination of Mr Woodward as to the depth at which the lead blade operated and how the rear wings or blades were positioned.  The effect of it seemed to be that either the tool depicted would be working at too shallow a depth to be effective or, if it were configured differently, it would cut a slot with the leading blade which would be deeper than the level of the rear blades.  That is to say, it was not shown that the reader could imagine some way in which weeds could be severed by its efficient use.  It is not really suited to the task.”

   In other words, the rear wings or blades in the particular configuration depicted in Skinner were not suitable for the cutting of weeds and so the integer of rearward cutting blades is not present.  This finding of fact was open to the primary judge, and no proper basis has been laid for it to be disturbed.  This illustrates the significance of the difference between the tests for novelty or anticipation, on the one hand, and obviousness or inventive step, on the other.  If Skinner were part of common general knowledge, there would be a powerful argument for invalidity.

   Orthman

10. Neither the rearward cutting blade attachment means nor the cutting blades attached thereto are spaced rearwardly from and separate from` the leading blade in the sense used in the patent in suit.  “Spaced” indicates a spatial gap of the kind contained in the embodiment described and depicted in the body of the specification.  I should indicate that, in my opinion, the words in claim 1 “so as to be spaced rearwardly from and separate of the leading blade” refer to the cutting blades rather than the rearward cutting blade attachment means.  It is the relationship between the leading and trailing blades which has practical significance in operation.  I regard the words “the leading blade being followed by the pair of cutting blades” as stating the consequence of what has gone before and so included for further clarification.

11. I also agree with the primary judge that the exhibit does not disclose that the blades on the side of the tool are adapted to travel below the soil so as to sever weeds.

    Buffalo/Goertzen

12. Even assuming that the information conveyed by the Buffalo instruction sheet was available at all material times, I would not disturb the finding of the primary judge that this tool does not disclose a lower shank section formed by a pair of plates mounted on the shank on opposite sides of the shank.  The pair of plates depicted form only part of the lower shank assembly (or point and share sweep, as it is described), with the balance formed by a separate single boot-shaped plate.  The plates do not have a forwardly projecting portion fitted with a leading blade, and the rearward blade attachment means is part of the boot-shaped plate rather than the pair of plates.  In dealing with infringement of claims 1 to 3, I held, in effect, that a one-piece lower shank assembly constituted by the pair of plates was claimed.  That is not disclosed in this tool.  If a wider view of claims 1 to 3 were to prevail, the issue of anticipation would also need to be differently considered.

    Row cultivator

13. Certain of the examples of prior art relied upon below were not complete cultivators, but tools for use with cultivators. These could not be anticipations of claims 1 to 3 for that reason if the complete assembly is not shown or sufficiently described. However, in relation, for example, to the Martin Multi-till, the primary judge found that the tool was not for use in inter-row cultivation but, rather, for lightly ripping the soil and for planting in standing stubble and so only a cultivating machine. This depended upon a clear distinction between kinds of cultivation asserted by witnesses for the respondent, and was picked up, to an extent, earlier in the judgment at, for example, [3] to [6].

14. However, the primary (relevant) meaning of “cultivator” in the Macquarie Dictionary is:

    “an implement for loosening the earth and destroying weeds when drawn between rows of growing plants.”

    In my opinion, if the prior art did include a cultivator with the appropriate tools, which could loosen the earth and destroy weeds when drawn between rows of growing plants, it would not matter what it was called or what it was advertised to do – it would be an anticipation.  The point has particular force in relation to the Martin device, as in a newspaper article it was claimed to give the farmer a basic unit capable of chisel ploughing (with ripper points), scarifying (duck feet points) and inter-row cultivation.  Furthermore, the machine which is illustrated is a cultivator.  This issue is not critical to my decision in relation to the novelty of claims 1 to 3 of the Standard Patent.  However, I mention it as similar issues might arise in relation to claim 13.

    Inventive step – Obviousness

15. Sections 7(2) and (3) provide:

    “(2)For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.

    (3)For the purposes of subsection (2), the kinds of information are:

    (a)prior art information made publicly available in a single document or through doing a single act; and

    (b)prior art information 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 in the patent area would treat them as a single source of that information;

    being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.”

    Section 18 relevantly provides:

    “(1)Subject to subsection (2), a patentable invention is an invention that, so far as claimed in any claim:

    …

    (b)when compared with the prior art base as it existed before the priority day of that claim:

    …

    (ii)       involves an inventive step

    …”

    By Schedule 1, which is a dictionary for the Act, “prior art base” is defined to mean:

    “(a)In relation to deciding whether an invention does or does not involve an inventive step:

    (i)information in a document, being a document publicly available anywhere in the patent area;  and

    (ii)information made publicly available through doing an act anywhere in the patent area;  and

    (iii)where the invention is the subject of a standard patent or an application for a standard patent – information in a document publicly available outside the patent area; …”

16. The primary judge, after referring to authority, said the following:

    “114.I have discussed the wide-ranging prior art information above.  The alleged invention stands as different from previous tools and tool assemblies, as Mr Murray acknowledged.  The combination is new, as is the interaction achieved.  I refer in particular to the detailed evidence upon the juxtaposition of the rear and forward blades and their adjustability.  The effect achieved is a tool which can be used widely in row cultivation;  where the number of tools are reduced;  they are attached on a single shank with consequent reduction in both set-up and adjustment time;  and where greater weed eradication can be achieved.  Difficulties are overcome and efficiencies achieved.

    115.The respondent’s case focussed largely upon the various elements of the alleged invention as old.  Even considered individually this was not entirely accurate.  The rear blades do not equate with knives and the friction trip assembly is substantially modified.  Further, such an approach does not address the combination.  The evidence of witnesses such as Mr Weston showed that they were looking for something which was significantly new for it to be described as an invention.  This misunderstands the requirement.  Some of the witnesses, such as Mr Yeomans and Mr Martin, might be regarded as over-qualified given their experience as inventors.  In any event no witness was able to explain how an imaginative but skilled person might draw together aspects of known tools and usage;  put them together in a new way and modify them to achieve efficiency and adaptability.  I refer to the formation of a lower shank section by plates having additional functions;  the use of a friction trip substantially modified to carry blades;  and the positioning of the blades with respect to each other.  The combination amounts to more than the respondent’s description of it - an adapted friction trip assembly.  The assertion that the combination of forward and rear blades was well-known is half accurate and does not properly address what is here employed.  If it is accepted, in relation to this issue, that the T-shaped section is one obvious solution to the requirement of adjustability, the other features of the combination are not.”

17. Whilst counsel for the appellant had some detailed complaints in relation to the manner in which this issue was dealt with, the submissions of substance were:

    (1)That the primary judge did not approach the issue by taking (and defining) common general knowledge, comparing the claimed invention with that common general knowledge, and then deciding whether that invention would have been obvious to a person skilled in the art in the light of the common general knowledge.

    (2)That, rather than taking the invention claim by claim, as ought to have been done, the primary judge seems to have conflated the respondent’s commercial embodiment with the claims in the patent, and the various claims with each other.

18. In addition to defending the approach of the primary judge, counsel for the respondent submitted that the finding on this issue was amply supported by the evidence of Mr Woodward, who was qualified to express an opinion on the issue and who had been assessed favourably by the primary judge. 

19. The submissions for the appellant as to how the issue should be approached are sound.  The parties are now agreed that a limited number of identified pieces of prior art are to be taken as part of common general knowledge.  Of course, if the invention as claimed is anticipated by a piece of prior art which formed part of common general knowledge, then there will be no inventive step within the meaning of s 7(2).  In those circumstances, the claim will also be bad for lack of novelty.  Assuming, however, that that is not the case, then the invention claimed will be different from anything revealed by common general knowledge and will be taken to involve an inventive step unless the invention would have been obvious to a person skilled in the relevant art in the light of common general knowledge.  This means that an onus to establish the absence of an invention rested upon the appellant (Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 at [31]). The proviso is an objective test. It requires ascertainment, identification and an understanding of common general knowledge and a comparison with the invention. This, in my opinion, requires a claim by claim examination of the issue, as it is the claim which is valid or invalid and a patentable invention is an invention so far as claimed in any claim (s 18(1)). 

20. Although there are always dangers in paraphrases, the following passage from Allsop Inc v Bintang Pty Ltd (1989) 15 IPR 686 at 702 is helpful in capturing the relevant concept:

    “… The question must be asked whether that solution did cross the boundary between a routine application of existing knowledge and practice to a new problem and a simple, yet truly inventive idea.”

    Although there are differences in the current Act compared with that which went before in ascertaining what existing knowledge and practice is, the underlying principle has not changed.  In a sense, this is a mirror of the issue of skilled addressee discussed by the High Court in Kimberly-Clark at [22]-[25], where it is said (inter alia):

    “The question is, will the disclosure enable the (skilled) addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty.”

    There can be misunderstanding as to what is meant by a “truly inventive idea”.  As a majority of the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd said at [25]:

    “25. Further, “an invention which comes to a man by a happy flash of inspiration or without any prolonged experiment or thought may be as good a subject matter of a patent as one which has only been arrived at after long and difficult experiments”, and a valid patent might be obtained under the Act “for something stumbled upon by accident [or] remembered from a dream” if it otherwise satisfied the requirements of the legislation.”

    The question is whether what was arrived at was obvious, not how it was arrived at.

21. It is correct that the primary judge did not expressly define or describe what was included in the common general knowledge which would be brought to bear by the skilled addressee.  She did, however, say:

    “I have discussed the wide ranging prior art information above.”

    This was no doubt a reference to the prior art considered in relation to novelty.  That prior art goes beyond that which the appellant contends to be part of common general knowledge and beyond that which, on a reasonable view of the evidence, would have been regarded as part of common general knowledge.  Thus, if there were an error, it was favourable to the appellant, as including material in common general knowledge increases the chances of a finding of obviousness. 

1. The appellant makes some detailed criticisms of the primary judgment which have some substance.  The reference in the reasons of the primary judge to the combination being new adds nothing to the finding that the claims had the requisite novelty.  The balance of [114] of the reasons refers to the utility of the tool, rather than the features of the invention as claimed.  It is submitted by the appellant that this passage refers to the respondent’s commercial embodiment of the invention.  Whilst the successful solution to a recognised commercial need can often be powerful evidence in answer to a claim of obviousness, the mere fact of utility over and above that which had existed is not enough to bring that principle into play.  An obvious workshop variation to what had gone before might work significant practical improvement in performance (Firebelt Pty Ltd v Brambles Australia Ltd at [49]-[50]). It is submitted that the latter part of [115] of the reasons below, in which reference is made to particular aspects of the tool, is framed so as to suggest that the judge was not considering the invention as claimed in the respective claims, but, rather, more general notions, perhaps including the commercial embodiment. For example, there is no mention of a friction trip or friction trip assembly in any of the claims. Pivotal mounting is an integer of claims 2 and 4 and those dependent upon 4 but not otherwise. The specification for the Standard Patent refers to a shear release assembly in what is described as “a further preferred form”. The specification for the Petty Patent refers to pivotal mounting in its description of figures 3 and 4. The reference to the T-shaped section being a solution to the requirement of adjustibility is somewhat puzzling. As I have pointed out, although the T-section is a feature of the preferred embodiment described in the specifications, it does not feature in any of the claims in either the Petty Patent or the Standard Patent.

2. On the other hand, the primary judge does address the right issues.  The comment as to Mr Weston can properly be sourced in the earlier reference by the judge to Leonardis v Sartas No 1 Pty Ltd at 147 and the comment about Mr Yeomans and Mr Martin is in accordance with the similar view that I expressed in Abbott Laboratories v Corbridge Group Pty Ltd (No 2) [2001] FCA 810 at [45], [56] and [59]. (See also Leonardis v Sartas No 1 Pty Ltd at 146.) The sentence in the reasons:

   “In any event, no witness was able to explain how an [un]imaginative but skilled person might draw together aspects of known tools and usage;  and put them together in a new way and modify them to achieve efficiency and adaptability”

   is a reasonable statement of what is required to establish obviousness.  It must also be borne in mind that some looseness of expression, particularly at the end of a long judgment, should not be taken as indicative of error.  Furthermore, even though the reference to the friction trip assembly is not applicable to the claims, the formation of a lower shank section by plates and the positioning of the blades with respect of each other are features of claims 1 to 3.  It should also be noted that the respondent’s commercial embodiment is within each of claims 1 to 3 and is a fair representation of the preferred embodiment disclosed in the complete specification of each of the Petty Patent and the Standard Patent. 

3. There is ample evidence, particularly from Mr Woodward, which, if accepted, would justify the finding that the tool portion of the cultivator as claimed in claims 1 to 3 was not obvious.  However, the primary judge did not refer to the evidence of Mr Woodward in dealing with this issue.  It is submitted by the respondent that this was not necessary in view of what the judge had said earlier about Mr Woodward, which was as follows:

   “15.… Mr Woodward, a person fulfilling the role of a skilled person to whom the patent might be addressed and called by the applicant, was an impressive witness.  A lengthy cross-examination in my view confirmed him as objective and well-versed in his field.  The respondent sought to impugn his credit-worthiness because he had not disclosed that a business largely operated by his son was supplied from time to time with some products or parts by the applicant.  No financial benefit was said to accrue to Mr Woodward.  In the area in which he and his family reside and work the applicant is amongst other suppliers.  It was not suggested that he had any other connection with the applicant such that his evidence was likely to be affected.  I do not consider the independent nature of his evidence to be in question. …”

   I am inclined to think that his evidence was taken into account by the judge on the issue of obviousness.  It was very much directed to that issue.  The judge gave express weight to his evidence in relation to the issue of novelty, which is tied up with (although different from) the issue of obviousness. 

4. In any event, the critical finding was that which I have set out above, in which her Honour found that no witness had been able to explain why the solution to the problem was obvious.  That conclusion involved assessment of the evidence of a number of witnesses called for both sides, a task par excellence for the judge at trial, and should not be disturbed.  A finding on obviousness should not be set aside simply because a judge on appeal would take a different view.  It is a kind of jury question (Biogen Inc v Medeva plc [1997] RPC 1 at 45; Aktiebologet Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375 at [61]). The onus of establishing the proviso to s 7(2) was not discharged. That means that the statutory presumption that an inventive step was involved is undisturbed.

   manner of manufacture

5. A particularised ground of invalidity was that the alleged invention, so far as claimed in any claim, is not a patentable invention as it is not a manner of manufacture within the meaning of s 6 of the Statute of Monopolies.  It was said that there was not a combination in the patent law sense, but a mere collocation which was no more than a common tool assembly wherein two well-known tools were placed in a known relationship on a shank in order to perform their known function as to achieve the same result, and, as such, had no inventive merit or sufficient quality of invention to be a manner of new manufacture.  The primary judge did not deal with this ground of invalidity.  That was more than likely because that ground could not survive the finding that there was no lack of novelty or inventive step.  The same is true on appeal.  In any event, the following words from the decision of the majority in Advanced Building v Ramset at [40] are directly applicable in the present case:

   “The present case is not in that category of cases, considered in Phillips (v Mirabella International Pty Ltd (1995) 183 CLR 655), where the lack of an inventive step appears on the face of the specification. It concerns the validity of combination claims in the light of prior publications.”

   Claims 4 to 13

6. I do not propose to enter upon the issue of validity of claims 4 to 13 of the Standard Patent.  I have referred earlier in these reasons to the undesirability of issues such as these being decided de novo by a Full Court.  The respondent opposes the issue of novelty being considered.  It is not satisfactory to deal with validity in a piecemeal fashion, as there is too much overlap (Kimberly-Clark at [34]). The issues as to the validity of claims 4 to 13 are not the same as those in relation to claims 1 to 3 and there is a different history of prosecution. To the extent that there is any overlap, the primary judge will be able to take account of any relevant conclusions of this Court. Claims 5 to 9 inclusive were barely touched upon in argument. A detailed consideration of the evidence is required to resolve the issues. The significance of evidence appears from Kimberly-Clark at [26]-[29]. It is not appropriate that evidence of this character be assessed by a Full Court without the benefit of analysis by the primary judge. As the Full Court said in CCOM Pty Ltd v Jiejing Pty Ltd at 284, a court, particularly an appellate court, should be careful to avoid assuming a technical expertise which it does not have.

   conclusion

7. I would set aside the declaration made as to infringement of the Petty Patent.  The declaration made as to infringement of the Standard Patent should be limited to claims 4, 10, 11 and 13.  I can see no reason why declarations and orders should not identify the claims which are infringed, and every reason for doing so in the interests of clarity.  No relief should stand or be granted until the validity of claims 4 to 13 (inclusive) is decided.  If valid, appropriate relief for infringement can then be granted.  If invalid, in whole or part, then appropriate orders can be made on the application and the cross-claim.  There is no need now to make any formal orders or declarations as to the validity of the Petty Patent and claims 1 to 3 of the Standard Patent.  All questions as to the general costs of the proceeding should await a final resolution of the issues.  The appellant has succeeded in overturning the decision below as to infringement of the Petty Patent and claims 1 to 3 of the Standard Patent, but has failed in its attack upon the validity of those claims.  The respondent has succeeded in establishing infringement of claims 4, 10, 11 and 13 of the Standard Patent.  The validity of those claims remains to be decided.  In those circumstances, I would order the appellant to pay fifty per cent (50%) of the costs of the respondent of the appeal.  Consideration of what should happen about any existing interlocutory orders is best left to the primary judge.

8. The appeal should be allowed, the declaration and orders made on 17 April 2001 below set aside, save for declaration 2, which should be amended by adding the words “each of claims 4, 10, 11 and 13” after the word “infringing”, and the matter be remitted to the primary judge to be dealt with in accordance with these reasons.  The matter should stand over so that minutes of order can be brought in and in order that the parties can draw the attention of the Court to any necessary issue which has not been dealt with, or dealt with in a manner contrary to agreement at the hearing.

I certify that the preceding eighty-two (82) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles.

Associate:

Dated:            13 June 2002

Counsel for the Appellant:

Mr R McCaw QC

Mr B J Hess

Solicitor for the Appellant:

Hunt & Hunt

Counsel for the Respondent:

Mr J V Nicholas

Solicitor for the Respondent:

Lees Marshall Warnick

Dates of Hearing:

20, 21 & 22 August 2001

Date of Judgment:

13 June 2002