Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd
[2022] FCA 540
•16 May 2022
FEDERAL COURT OF AUSTRALIA
Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540
File number(s): VID 311 of 2021 Judgment of: ROFE J Date of judgment: 16 May 2022 Catchwords: PATENTS – where invention claimed is a safety system for protecting against the hazard of drill rod failure – construction of patent – meaning of “anchor member” – meaning of “a proximal end region of the bore adjacent to a rock-face – whether third respondent’s provision of the safety system product was for “experimental purposes” and therefore exempt under s 119C of the Patents Act 1990 (Cth) – conduct found not to be for “experimental purposes” – whether respondents infringed patents in suit – held: no infringement by respondents’ product
PATENTS – validity – lack of support and sufficient description – whether patent meets disclosure requirement of s 40(2)(a) of the Patents Act 1990 (Cth) – whether claims of patent meet support requirement of s 40(3) of the Patents Act 1990 (Cth) – grounds of invalidity established
Legislation: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Patents Act 1903 (Cth)
Patents Act 1990 (Cth)
Patents Act 1977 (UK)
Cases cited: AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356
Axent Holdings Pty Ltd t/a Axent Global v Compusign Australia Pty Ltd (2020) 154 IPR 431
Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75
Biogen Inc v Medeva Plc [1997] RPC 1
Bristol-Myers Co v Beecham Group Ltd [1974] AC 646
British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631
Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183
Coretell Pty Ltd v Australian Mud Company Pty Ltd (2017) 124 IPR 210
CSR Building Products Ltd v United States Gypsum Company [2015] APO 72
Cytec Industries Inc v Nalco Company [2021] FCA 970
Eli Lily v Human Genome Sciences [2008] RPC 29
Embrex Inc v Service Engineering Corp 216 F 3d 1343 (Fed Cir, 2000)
Evolva SA [2017] APO 57
General Tire & Rubber Company v Firestone Tyre & Rubber Company Ltd [1972] RPC 457
Generics (UK) Ltd v H Lundbeck A/S [2009] RPC 13
GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Apotex Pty Ltd (2016) 119 IPR 1
Grove Hill Pty Ltd v Great Western Corporation Pty Ltd (2002) 55 IPR 257
H Lundbeck A/S v Generics (UK) Ltd [2008] RPC 19
Hudson, Scott & Sons Ltd v Barringer, Wallis and Manners Ltd (1906) 23 RPC 79
Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20
Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86
KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) 71 IPR 615
Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1
Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd (2011) 92 IPR 21
Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444
LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd(No 2) (2007) 235 CLR 173
Longworth v Emmerton (1951) 83 CLR 539
Madey v Duke University 307 F 3d 1351 (Fed Cir, 2002)
Mentor Corp v Hollister Inc (No 2) [1993] RPC 7
Mentor Corp v Hollister Inc [1991] FSR 557
Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477
Micro-Chemicals Ltd v Smith Kline and French Inter-American Ltd [1972] SCR 506
Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248
Monsanto Co v Stauffer Chemical Co [1985] RPC 515
Multigate Medical Devices Pty Ltd v B Braun Melsungen AG (2016) 117 IPR 1
Novartis AG v Johnson & Johnson Medical Ltd [2010] EWCA Civ 1039
Novozymes A/S v Danisco A/S (2013) 99 IPR 417
Product Management Group Pty Ltd v Blue Gentian LLC (2015) 116 IPR 54
Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11
Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27
Roche Products Inc v Bolar Pharmaceutical Co 733 F 2d 858 (Fed Cir, 1984)
Sandvik Intellectual Property AB v Kennametal UK Ltd [2012] RPC 23
Schering Biotech Corp’s Application [1993] RPC 249
Tramanco Pty Ltd v BPW Transpec Pty Ltd (2014) 105 IPR 18
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588
Division: General Division Registry: Victoria National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 542 Date of hearing: 27, 28 and 30 September 2021 Counsel for the Applicant: C H Smith Solicitor for the Applicant: Wrays Counsel for the First, Second and Fourth Respondents: T D Cordiner QC with F St John Solicitor for the First, Second and Fourth Respondents: Mills Oakley Counsel for the Third Respondent: C I Cunliffe Solicitor for the Third Respondent: DLA Piper Australia ORDERS
VID311 of 2021 BETWEEN: JUSAND NOMINEES PTY LTD
Applicant
AND: RATTLEJACK INNOVATIONS PTY LTD
First Respondent
PAN AUSTRALIS PTY LTD
Second Respondent
MURRAY ENGINEERING PTY LTD
Third Respondent
LEIGH SUTTON
Fourth RespondentAND BETWEEN: RATTLEJACK INNOVATIONS PTY LTD
Cross-Claimant
AND: JUSAND NOMINEES PTY LTD
Cross-Respondent
ORDER MADE BY:
ROFE J
DATE OF ORDER:
16 MAY 2022
THE COURT DECLARES THAT:
1.The following claims are, and have at all material times been, invalid:
(a)claims 1, 2 and 5 of Australian Innovation Patent No. 2019100556;
(b)claims 1 and 2 of Australian Innovation Patent No. 2020100163; and
(c)claims 1, 4 and 5 of Australian Innovation Patent No. 2020103956.
(the Claims)
THE COURT ORDERS THAT:
1.The application be dismissed.
2.Pursuant to section 138 of the Patents Act 1990 (Cth), each of the Claims be revoked.
3.The applicant/cross-respondent pay the costs of the respondents/cross-claimants.
4.Order 2 be stayed for a period of 28 days from the date of this order.
5.If any appeal is lodged within 28 days, order 2 be stayed until the determination of that appeal.
6.If any party seeks a variation of the costs orders in paragraph 3 above, it may, within seven days, file and serve a written submission (of no more than two pages) and any affidavit in support. In that event, the other party may file and serve a responding written submission (of no more than two pages) and any affidavit in support within a further seven days, and the issue of costs will be determined on the papers.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
ROFE J:
INTRODUCTION
The applicant, Jusand Nominees Pty Ltd (Jusand), claims that the first respondent/cross-claimant, Rattlejack Innovations Pty Ltd (Rattlejack), the second respondent, Pan Australis Pty Ltd (Pan Australis), the third respondent, Murray Engineering Pty Ltd (Murray) and the Fourth respondent, Mr Leigh Sutton (Mr Sutton), have each infringed three Australian Innovation Patents (the Patents), each entitled “Safety System and Method for Protecting Against a Hazard of Drill Rod Failure in a Drilled Rock Bore”, being Australian patent numbers:
(a)2019100556 (556 Patent);
(b)2020100163 (163 Patent); and
(c)2020103956 (956 Patent).
The Patents are related and each claims an earliest priority date of 12 November 2015.
The applicable form of the Patents Act 1990 (Cth) (the Act) is the form that it took following the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth).
The respondents’ product is a known as the SafetySpear.
Jusand alleges that the respondents have infringed the 556 Patent and the 163 Patent by offering to sell, supply, or otherwise dispose of the SafetySpear; and that they have infringed the 956 Patent by supplying the SafetySpear together with instructions, by reason of s 117(2) of the Act.
By way of cross-claim, Rattlejack seeks revocation of all the asserted claims on the basis that each is invalid for lack of sufficient description (s 40(2)(a) of the Act) and lack of support (s 40(3) of the Act), and that some of the claims are invalid for lack of clarity (s 40(3) of the Act).
Rattlejack alleges that a finding of lack of sufficient description necessarily means each of the asserted claims is not entitled to a priority date earlier than the filing date of its specification (s 43(2A) of the Act), which means that each of the claims of each of the Patents lacks novelty over the Patents’ own priority documents.
The issues of infringement and validity were ordered to be heard and determined separately prior to any questions of quantum or pecuniary relief.
The claims of the 556 Patent and the 163 Patent are product claims. The claims of the 956 Patent are method claims. Most of the integers of those method claims define the relevant “safety system” product.
The parties agreed that whether Jusand is entitled to the relief that it seeks in its amended originating application can be determined by reference to the following more confined claim set:
(a)claims 1, 2 and 5 of the 556 Patent;
(b)claims 1 and 2 of the 163 Patent; and
(c)claims 1, 4 (read with claim 1) and 5 (read with claims 1 and/or 4) of the 956 Patent
(the Asserted Claims).
The respondents confined their invalidity case to the Asserted Claims.
Pan Australis admits that it has offered to sell, supply or otherwise dispose of the SafetySpear product. Rattlejack admits that it authorised that conduct of Pan Australis. Mr Sutton, the developer of the SafetySpear, owns one of the two shares in Harvest Home Enterprise Pty Ltd which is the sole shareholder of both Rattlejack and Pan Australis.
Issues relating to whether Mr Sutton has authorised the conduct of the Rattlejack and Pan Australis, or is a joint tortfeasor, have been deferred for consideration together with any issues of quantum.
Murray admits that it has supplied the SafetySpear product, but it asserts an “experimental use” exemption under s 119C of the Act applies. It is the only respondent to rely on that exemption.
Rattlejack made submissions on behalf of the respondents on all aspects of the infringement claim and validity cross-claim other than the s 119C exemption. Murray addressed the Court in relation to that claim. In these reasons I refer to the respondents as Rattlejack, unless it is necessary to refer to one of the respondents in particular.
On the first day of the trial Jusand offered an undertaking to the Court not to assert the balance of the claims of the three Patents in respect of Rattlejack’s SafetySpear product. This undertaking would be relevant in the event that Jusand was unsuccessful in its infringement case based on the confined claim set.
The parties are to be commended for their efforts in narrowing the issues for trial.
For the reasons set out below I find that:
(a)The SafetySpear does not infringe the Asserted Claims;
(b)The Asserted Claims do not lack clarity;
(c)The Asserted Claims are invalid as they do not meet the requirements of ss 40(2)(a) and 40(3) of the Act; and
(d)The Byrnecut “trials” of the 200 SafetySpears do not constitute experimental use for the purposes of s 119C of the Act.
WITNESSES
Jusand and Rattlejack led evidence from expert witnesses.
Jusand’s expert witness was Mr Davison, a mining engineer. Mr Davison graduated with a Diploma in Engineering (Mining) from RMIT in 1978 and obtained a Masters in Mineral and Energy Economics from Macquarie University in 1997. He holds a Manager’s Certificate in several states, including Victoria and Western Australia, which enables him to be registered as a mine manager in each of those states. Mr Davison is a Fellow of the Australasian Institute of Mining & Metallurgy.
Mr Davison is the Managing Director and Principal Mining Engineer at Mining One, a consultancy company providing services to mine operators in Australia and overseas. He has more than 42 years’ experience working in the mining industry in Australia.
Mr Davison has substantial experience in relation to long-hole drilling which he describes as the drilling of holes using more than one connecting drill rod. This experience includes being mine manager for a number of long-hole drilling mines and being responsible for all aspects of safety and maintenance for those sites. He has experience in the use and performance of a wide variety of rock bolts and other fixings used in a variety of underground mining operations.
Mr Davison regarded himself as innovative and his affidavit dated 6 August 2021 set out a number of patents and patent applications for which he was listed as the inventor. These include a granted patent for an invention related to the anchoring of rock bolts, and a grouted friction stabiliser to improve the frictional performance of split-set anchors for use in mines. His curriculum vitae describes Mr Davison in the following terms:
Gary is highly innovative in many areas and has developed unique mine designs and infrastructure for difficult mining situations. He has a particular passion for innovative ground support methods that improve the safety and efficiency of underground mining. Gary has successfully patented a variety of rock bolts, many of which are commercially available selling over 3 million units worldwide. He also has a number of other patents pending.
Rattlejack accepted that Mr Davison has the skills of someone relevant to the skilled team.
In cross-examination Mr Davison evinced a preparedness to consider matters and materials with which he was not necessarily immediately familiar, and he explained that in practice he consulted and worked with others in developing solutions for problems where he was not immediately aware of a solution himself. Mr Davison also expressed a preparedness to try different materials or combinations of materials, even if he initially thought those materials may not be suitable. His approach involved almost an expectation of being surprised, based on his past experience which had shown that combinations of materials could yield surprising results.
It would be fair to say that Mr Davison had an element of the inventor about him. He was reluctant to concede that something couldn’t be done, instead regarding difficulties as a challenge to be overcome. At one point during the joint session he illustrated his point by stating that he “could construct a shield to go around that impact reduction member before the end of proceedings this afternoon” and would then “try an experiment to see how that works”.
Rattlejack’s expert witness was Dr Peter Fuller, a geotechnical engineer with more than 47 years’ experience relating to underground and open-cut coal and metalliferous mining. Dr Fuller graduated with a Bachelor of Engineering (Chemical) from the University of Adelaide in 1967. He noted that at that time there was no formal Geotechnical Engineering course offered. Dr Fuller was awarded a PhD in Materials Engineering by the University of Adelaide in 1971.
After completion of his PhD, Dr Fuller spent a year in the Department of Metallurgy at the University of Manchester Science and Technology Institute in the UK working on the strengthening properties of aluminium silicon alloys. Dr Fuller is also a Fellow of the Australasian Institute of Mining & Metallurgy.
Early in his career, Dr Fuller conducted applied research into mine stabilisation and ground/strata control. He was project leader for the development of rock stabilisation devices such as rock bolts and cable bolts which are anchored in bored holes to stabilise rock around mine tunnels. As part of that work Dr Fuller became familiar with how access tunnels and mine openings are created by drilling blast holes, blasting the rock, removing the broken rock and installing rock stabilisation devices.
Since 1980 Dr Fuller has provided consultancy services to Australian and overseas mining companies including inspections of underground mine operations, assessments of rock quality in terms of condition, variability and competence, design of mine openings within orebodies to minimise the risk of collapse and the design of rock stabilisation measures to ensure rock walls and roof remain stable. Dr Fuller’s work has included analysis of rock failures and their cause.
Dr Fuller’s experience in relation to long-hole drilling in mining operations includes the creation of geotechnical designs for long-hole drilling, assessing appropriate stable stope spans, stope size and stope sequencing, hazard management and stability assessment.
Dr Fuller also had relevant experience as a materials engineer. However, his specialisation did not extend to plastics beyond those involved in anchoring rock bolts which concerned a combination of the frictional interconnection between the plastics and steel and the plastics and rock. He had performed some detailed calculations and provided informed views on materials and their potential performance, and Jusand accepted that he had expertise in that area.
Both Dr Fuller and Mr Davison had lengthy experience in the mining industry. Both also had relevant experience with long-hole mining. They each originated from different undergraduate engineering backgrounds, mining and chemical; but their extensive mining experience meant that their knowledge and experience overlapped in areas relevant to long-hole mining.
Both experts had a familiarity with steel and its properties as it is commonly used in mining equipment and components. Mr Davison confirmed in oral evidence that he had experience designing products using steel.
Dr Fuller had a greater familiarity with mechanical engineering principles than Mr Davison and more experience with the properties of materials other than steel.
Dr Fuller and Mr Davison prepared a joint expert report. Their oral evidence was given by way of an extended joint session over Microsoft Teams wherein each was cross-examined and also able to make comments on the other’s evidence.
The third respondent, Murray, led evidence in relation to the s 119C experimental use exemption from three lay witnesses, each of whom was cross-examined:
(a)Leon Spencer, the Project Manager at Deep South Gold Mine for Byrnecut Australia Pty Ltd (Byrnecut), an associated entity of Murray;
(b)Keith Law, an area manager for Byrnecut; and
(c)Mark Coughlan, the Chief Executive Officer of Murray.
THE PATENTS
The content of each of the specifications of the Patents is very similar. These reasons focus, as did the evidence and the parties’ submissions, on the 556 Patent. Where there are differences of relevance as between the 556 Patent specification and the other specifications I will discuss them separately.
The specifications of the Patents commence by identifying that the field of the invention relates to a safety system, or, in the case of the 956 Patent, a method using a safety system, for protecting against a hazard of drill rod failure in a drilled rock bore extending above the horizontal, and especially a hazard posed by a broken drill rod section lodged within the bore.
The background of the invention notes that in underground mines, the material to be extracted (ore) is often accessed by excavating cavities into the rock strata below the ore and then working towards the ore deposit from below. The technique commonly involves drilling bores upwards from the cavity into the rock strata towards the ore deposit above. Explosive charges are then set in the bores to blast away the intervening rock and to access the ore deposit directly.
The specification notes that a significant problem associated with this mining technique concerns drill rod failure when drilling the multiple bores extending upwards into the rock strata towards the ore body. The bores drilled can be tens of metres long (for example, in the range of 20 to 60 m) and the drill rods which extend over that length that are used to drill the bores are quite slim: for example, they may have a diameter of only about 80 mm.
The composition and properties of the rock strata typically vary throughout its depth, and during drilling it is not uncommon for the drill rod to break somewhere along its length and for the upper broken part of drill rod to become stuck in the bore, often some distance from the rock-face. Broken drill rod sections lodged in the bore can be very long (for example 15 to 20m) and heavy (in the range of 100 to 500 kg). The broken drill rods can unexpectedly become dislodged and fall down the bore and then into the main cavity below where miners are working, potentially causing serious physical injury to mine workers and/or damaging mine equipment. The specification describes this hazard as extreme.
The specification explains that in the absence of a tailored solution to the problem to date, miners have had to improvise with very provisional and suboptimal measures. These measures are not only time consuming and lead to long delays in the further progress of the mining, but the actual safety benefits provided by these provisional methods has at times also been questionable.
It is said to be an object of the present invention to provide a new and improved safety system and an associated method for protecting against a hazard of drill rod failure in a drilled rock bore extending above horizontal, especially for protecting against the hazard of a broken drill rod section falling out of the bore into an excavated area.
The specification then describes a new and improved “safety system” product and associated method for protecting against such hazards, which involve a product comprising two “members”:
An anchor member configured to be fixed in a proximal end region of the drilled bore adjacent a rock-face; and
An impact reduction member for reducing an impact of a broken drill rod section striking the anchor member in the proximal end region of the drilled bore, wherein the impact reduction member is configured to be located within the proximal end region of the bore and to extend within the bore above the anchor member to be impacted or struck directly by the broken drill rod section falling within the bore.
Thus the safety system of the invention is configured and arranged to be fixed at the proximal end region of the bore adjacent the rock-face and to absorb the force or impact of a broken drill rod section falling within the bore towards the opening in the rock-face.
The specification discusses a number of embodiments of the safety system of the invention. In one embodiment of the safety system, the anchor member is said to be configured to plug or to be inserted into the drilled bore and to at least partially block or obscure the bore.
In another embodiment of the safety system, the anchor member or plug member is said to be configured to be fixed within the proximal end region of the drilled bore in a friction fit or interference fit. In this regard the anchor member or plug member may, for example, comprise a split tube having a longitudinal slit or gap and an outer diameter sized larger than an inner diameter of the drilled bore. The split tube is configured to be driven into the proximal end region of the drilled bore and the longitudinal slit or gap is thus configured to allow the other diameter of the split tube (ie the anchor member or plug member) to be compressed or to reduce when it is driven into the drilled bore of smaller diameter. In this way, the anchor member or plug member comprising the split tube can be fixed in the proximal end region of the bore adjacent the rock-face in a friction fit or an interference fit, in a manner similar to that known for a “split-set” type of rock member.
In another embodiment of the safety system, the impact reduction member comprises an impact dampening material which may, for example, comprise a polymer foam material.
The specification has five drawings.
·Figure 1 is a schematic cross-sectional view of an excavated cavity in a mine environment illustrating bores drilled in rock strata extending towards an ore deposit.
·Figure 2 (extracted below) is a schematic cross-sectional side view of a safety system to protect against the hazard of a broken drill rod section in a drilled rock bore according to an embodiment of the invention.
·Figure 3 (extracted below) is a schematic partial perspective view of the safety system of Figure 2 shown in an installed state in a proximal end region of a bore.
·Figure 4 (extracted below) is a schematic cross-sectional side view of a safety system to protect against the hazard of a broken drill rod section in a drilled rock bore according to another embodiment of the invention.
·Figure 5 is a flow diagram which schematically represents a method according to an embodiment of the invention.
There follows a detailed description of the embodiments by reference to the drawings:
With reference now to Figs. 2 and 3 of the drawings, a safety system 1 according to a preferred embodiment for protecting against just such a hazard posed by the broken drill rod section S in the drilled bore B is shown schematically. The safety system 1 comprises an anchor member 2, which is configured to be inserted and fixed in a proximal end region E of the bore B adjacent or close to a rock-face F of the cavity C at which the drilling takes place. The anchor member 2 is provided in the form of a plug member which is configured to be driven into and fixed within the proximal end region E of the drilled bore B in a friction fit or interference fit. In this regard, the plug member 2 comprises a split tube 3 formed from a round steel tube or pipe having an outer diameter Do sized larger than an inner diameter Di of the bore B. For example, if the bore B has an inner diameter Di of 89 mm, the split tube 3 may have an outer diameter Do of about 100 mm and a wall thickness t of about 6 mm to 9 mm, e.g. about 8 mm in this case. Furthermore, the split tube 3 has a longitudinally extending slit or gap G formed or cut in the wall (as seen in Fig. 3) which allows the outer diameter Do of the split tube 3 (i.e. plug member 2) to be compressed or to reduce when the plug member 2 is driven into the drilled bore B of smaller diameter Di. A front or leading end region 4 of the split tube 3 also has a reduced diameter Dr that is smaller than an inner diameter Di of the drilled bore B to assist the initial introduction or insertion of the plug member 2 into the proximal end region E of the bore B. In this way, the plug member 2 comprised of the split tube 3 can be fixed in the proximal end region E of the bore B adjacent the rock-face F in a friction fit, in a manner similar to that known for a "split-set" type of rock anchor. As with the other dimensions of the split tube 3, the length Ls of the split tube 3 may be selected as appropriate to the rock-strata R, but it is preferably in the range of about 400 mm to 800 mm; e.g. 600 mm in this case.
The safety system 1 further comprises an impact reduction member 5 for reducing an impact of the broken drill rod section S in the event that it falls and strikes the anchor member or plug member 2 in the proximal end region E of the bore B. The impact reduction member 5 is also arranged in the proximal end region E of the bore B and extends within the bore B above the anchor or plug member 2. In this N embodiment, the impact reduction member 5 comprises an elongate body 6 which is arranged centrally of the plug member 2 and which is configured and arranged to be impacted or struck directly by the broken drill rod section S, in the event that the broken drill rod section S falls within the bore B. The elongate body 6 may be formed of steel (e.g. mild steel) and may be machined from bar stock with a round cross-section. A portion 7 of the elongate body 6 within the split tube 3 preferably has a substantially constant diameter De and a portion 8 of the elongate body 6 extending above the split tube 3 is tapered, i.e. an outer surface 9 of the elongate body 6 in the tapered portion 8 tapers outwardly at an angle a of about 1° to 3°; e.g. about 1° in this case. The length Lt of the tapered portion 8 may be selected as appropriate to the safety system, but this length is preferably in the range of about 200 mm to 400 mm; e.g. 290 mm in this case, with the tapered portion 8 tapering from a maximum diameter of about 80 mm at its distal end to a diameter of about 70 mm at the constant diameter portion 7 within the split tube 3.
In this embodiment, the impact reduction member 5 is configured for movement relative to the plug member 2 upon impact by the falling broken drill rod section S. That is, the body 6 of the impact reduction member 5 is configured for movement into an interior of the plug member 2 if impacted or struck by the drill rod section S. In this way, the outer surface 9 of the tapered portion 8 of the body 6 contacts and bears against an inner surface of the split tube 3. As an initial impact by the broken drill rod section S drives the elongate body 6 downwards into the split tube 3, the slight taper of the tapered portion 8 exerts an outward force on the split tube 3 and thus enhances or increases engagement between the bore B and the tube 3. The tapered portion 8 thereby acts to effect a gradual or extended transfer of impact loading from the broken drill rod section S to the plug member 2. In particular, by extending the stopping distance for the falling drill rod section S (i.e. the distance travelled by the drill rod section S after initial impact) via the tapered portion 8, the impact force is reduced significantly, such that the friction fit or interference fit of the anchor member or plug member 2 within the bore B can readily withstand the impact loading. In this way, the safety system 1 of this embodiment can effectively and reliably protect workers and/or equipment in the cavity C from the hazard of broken drill rod sections S falling from a bore B drilled above horizontal.
The 556 Patent has five claims. Claim 1 claims:
A safety system for protecting against a hazard of drill rod failure in a drilled rock bore above horizontal, and especially a hazard posed by a broken drill rod section within the bore, comprising:
an anchor member configured to be fixed in a proximal end region of the bore adjacent to a rock-face; and
an impact reduction member for reducing an impact of the broken drill rod section striking the anchor member in the proximal end region of the bore, wherein the impact reduction member is configured to be located in the proximal end region of the drilled bore and to extend within the bore above the anchor member to be impacted or struck directly by the broken drill rod section falling within the bore.
163 Patent
The Patents do not differ in the substantive disclosure of the invention described in each.
The 163 Patent also claims a safety system for protecting against a hazard posed by a drill rod section as a result of drill rod failure in a drilled rock bore above horizontal. The 163 Patent has five claims. Jusand relies on claims 1 and 2 of the 163 Patent.
The safety system claimed in claim 1 is as follows:
A safety system for protecting against a hazard of drill rod failure in a drilled rock bore that extends above horizontal, and especially a hazard posed by a broken drill rod section within the bore, comprising:
an anchor member configured to be fixed in a proximal end region of the bore adjacent or proximate to a rock-face, wherein the anchor member is configured to at least partially block or obscure the drilled bore; and
an impact reduction member configured for reducing an impact of the broken drill rod section striking the anchor member in the proximal end region of the bore, wherein the impact reduction member is configured to be located in the proximal end region of the bore and to extend within the bore above the anchor member;
wherein the impact reduction member is configured and arranged to be impacted or struck directly by the broken drill rod section falling within the bore, and comprises a tapered portion which is configured to allow movement of the drill rod section relative to the anchor member to effect a gradual or extended transfer of the impact loading from the broken drill rod section to the anchor member; and
wherein the safety system is configured for connection with a rock drilling apparatus for driving the anchor member and the impact reduction member into the proximal end region of the bore to deploy the safety system in the bore.
Claim 2 claims:
A safety system according to claim 1, wherein the anchor member forms a plug member and is configured to be driven or forced into the proximal end region of the bore by the rock drilling apparatus, and wherein the tapered portion of the impact reduction member is configured to allow movement of the impact reduction member relative to the anchor member to effect the gradual or extended transfer of the impact loading from the drill rod section to the anchor member.
956 Patent
The 956 Patent shares the specification of the 556 and 163 Patents, aside from the claim set.
The 956 Patent claims a method of protecting against a hazard posed by a drill rod section as a result of drill rod failure in a drilled rock bore above horizontal. Jusand relies on claim 1 of the 956 Patent which reads:
A method of protecting against a hazard posed by a drill rod section as a result of drill rod failure in a drilled rock bore above horizontal, the method comprising deploying a safety system into the bore in response to drill rod failure, the safety system comprising:
an anchor member configured to be fixed in a proximal end region of the bore adjacent to a rock-face; and
an impact reduction member for reducing an impact of the drill rod section on the anchor member in the proximal end region of the bore, wherein the impact reduction member is configured to be located in the proximal end region of the drilled bore and to extend within the bore above the anchor member;
wherein the step of deploying the safety system comprises fixing the anchor member in the proximal end region of the bore.
Jusand also relies on claim 4 (read with claim 1):
A method according to [claim 1], wherein the anchor member comprises a plug type anchor member that is configured to plug into the proximal end region of the bore in a friction fit or an interference fit
and claim 5 (read with claims 1 and/or 4):
A method according to [claim 1 or claim 4], wherein the impact reduction member is, upon installation of the safety system, configured and arranged to be impacted or struck directly by the drill rod section, the impact reduction member preferably comprising an elongate body arranged substantially centrally of the anchor member and configured to move relative to the anchor member when impacted or struck by the drill rod section.
Background
The Patents provide a safety system to avoid the hazard of falling drills during long-hole underground mining.
The following background to long-hole underground mining is taken from the expert evidence and would form part of the common general knowledge of a person with experience in long-hole drilling as at the priority date.
Long-hole underground mining generally uses a process of drilling bore holes upward into the ore, and then using explosives that are inserted into the bore holes to break up the ore and the surrounding rock, which is then removed via access tunnels.
The progress of the tunnel through rock that does not contain ore is referred to as “waste development”. If a tunnel is then progressed through ore-containing rock, that is referred to as “ore development”. Where a section of an ore body is worked or connected to development tunnels so as to create an open space, that space is commonly referred to as a “stope”. “Stoping” describes the process of removing the ore, which results in a stope, and “overhand stoping” refers to the process of removing ore from above.
The roof of the mine chamber is usually covered in a layer of “shotcrete” (sprayed concrete) which is then covered in steel mesh.
The bore holes are drilled using a long-hole drilling rig which allows the drilling of holes anywhere from 51 to approximately 125 mm in diameter, using a range of standard drill bit sizes. The drill diameters commonly used for blasting bore holes are 64, 76, 89, 102 and 125 mm. The bore holes may be drilled upward at angles from near horizontal to almost vertical.
The drilling rig uses a process that involves coupling a series of individual drill rods together as the bore progresses in length. The drill rods are normally about 1.5 to 4 m long. They are usually made from high-strength steel and are very heavy, generally weighing between 20 to 40 kg each.
The bore may be drilled for lengths usually in the range or 10 to 25 m but the bore may be longer, up to about 50 or 60 m for services/utilities holes. When the bore length gets beyond about 25 m, hole deviation may become a problem. The upper length of long hole drilling is around 60 m as beyond that length drilling is impractical as the hole deviation becomes uncontrollable.
The ring of the bore hole at the rock-face is called the “collar”. The top of the bore hole is called the “toe”. The first 10 to 15 cm of rock in the bore (ie, the rock that constitutes the collar and the initial short length of the bore) can be damaged during the process of blasting to create the tunnel. That area is called the “blast damage zone”.
The drill rods are hollow so as to allow for water to be passed through the drill rod to assist with washing the cuttings out of the bore hole as it progresses. The couplings between the drill rods allow water to pass through them to lubricate the drilling.
The diameter of the cutting head of the drill is wider than the diameter of the drill rods as the cuttings need to be able to fall down, or be washed down, the bore within the annular space between the bore hole walls and the outside of the drill rods.
The problem with overhand stoping is that the drill rod can fail. The cutting end of a drill rod can get caught up in the cuttings within the bore hole, or in poor ground in the bore hole. If this happens it is referred to as “bogging”. The drill rod then becomes “bogged” in the hole, and is not able to continue drilling to progress in the bore hole. If the cutting head of the drill rod becomes bogged, that can lead to breakage of the drill rod, either as a direct result of the forces being applied by the drilling rig, or when the operator then tries to remove the drilling rod from the hole. Sometimes drill rods can break without bogging.
Drill rods are particularly likely to break in percussion drilling because the forces applied are aggressive. A break in a drill rod can occur anywhere along the length of any rod in a drill string, including at a coupling, resulting in disconnection with any rods, or part thereof, above the break. A broken section of a drill rod is heavy and often has a jagged and potentially sharp edge.
Often the broken section of the drill rod is not retrievable from the bore. The broken part may dislodge later and fall into the mine tunnel or chamber potentially causing serious personal injury or death to mine workers, or damage to mine equipment. The hazard is increased as the angle of inclination of the bore increases towards vertical. At horizontal there will be little to no hazard as gravity would not act on the broken drill bit to cause it to fall down the bore hole.
Person skilled in the art
A patent specification is to be construed through the lens of a hypothetical person skilled in the art, or the skilled addressee. The Court is to place itself in the position of a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time. The skilled addressee is likely to have a “practical interest in the subject matter of the invention” and may often work in the art with which the invention is connected: KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) 71 IPR 615 at [16], approved by the Full Court in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20 at [94]-[96].
As French CJ said in AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356 at [23], the skilled addressee is not a manifestation of, or “avatar” for the expert witness whose testimony is accepted by the court. Rather, the notion of the skilled addressee is a tool of analysis that is given form and content by the testimony of the expert and other evidence.
Such a hypothetical person may be a team, and it is the collective knowledge of such a team that must be considered where applicable: Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 at [40]; General Tire & Rubber Company v Firestone Tyre & Rubber Company Ltd [1972] RPC 457 (UK) at 483.
The skilled addressee is taken to be a person of ordinary skill in the field to which the invention relates, as opposed to a leading expert, and is equipped with the relevant common general knowledge before the priority date. The skilled addressee is not particularly imaginative or inventive.
Different aspects of that hypothetical person construct may be relevant for different enquiries. Such as different claims or different grounds of invalidity: Axent Holdings Pty Ltd t/a Axent Global v Compusign Australia Pty Ltd (2020) 154 IPR 431 at [251].
The Patents are addressed to someone with an engineering qualification, preferably in mining or geotechnical engineering, who has experience in underground mining including long-bore drilling, and experience in designing devices to interact with rock masses in underground mining. The skilled person would also have a knowledge of basic mechanical engineering principles relating to impact forces and the redirection of such forces, the absorption of energy from such impact forces, principles relating to deceleration over a distance, the role of frictional resistance and a general understanding of how these forces will be affected by the properties of different materials.
Experience in materials engineering would be beneficial to the skilled person but not required, as detailed questions about materials and their mechanical properties would be referred to a materials engineer.
Both experts had relevant engineering qualifications and experience in underground mining and were each well equipped to give evidence on matters relating to underground mining. Where they differed was in their knowledge and experience of the properties of materials other than steel. Dr Fuller had qualifications in materials science and was able to provide useful and considered evidence on this topic. Mr Davison did not have qualifications in materials science. This difference in the experts was relevant to the validity issues and is discussed further in that section.
INFRINGEMENT
Construction
The principles governing claim construction are well understood and were not in dispute. The parties referred to the principles as set out by Full Court in Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 (Jupiters) at [67] and Product Management Group Pty Ltd v Blue Gentian LLC (2015) 116 IPR 54 at [34]-[42] (Kenny and Beach JJ) (Blue Gentian). Jusand and Rattlejack placed particular emphasis on different principles to suit their cases. For present purposes it is sufficient to highlight the following points.
The proper construction of a claim is a question of law.
A claim is to be construed through the lens of the hypothetical skilled person. The words in the specification and claims are to be given the meaning which the normal skilled person would attach to them, having regard to their own general knowledge and to what is disclosed in the specification: Jupiters at [67].
Ordinary words which are used in a patent claim should be given their ordinary meaning unless the skilled addressee would give them a different meaning: Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd (2011) 92 IPR 21 at [39] (Greenwood and Nicholas JJ).
The integers of a claim should not be considered individually and in isolation: Blue Gentian at [39]. Furthermore, a claim should be given a “purposive” construction, not a “purely literal” or a “too technical or narrow” construction: Jupiters at [67]; Blue Gentian at [39].
It is not the province of an expert to give evidence of the meaning of words or phrases used in a claim if those words or phrases bear their ordinary English meanings and are not suggested to have a technical or special meaning: Multigate Medical Devices Pty Ltd v B Braun Melsungen AG (2016) 117 IPR 1 at [26].
To apply a “purposive” construction does not justify extending the patentee’s monopoly to the “ideas” disclosed in the specification (Blue Gentian at [40]). Instead, its application should be guided by considerations including those addressed by Hoffman LJ when he explained “purposive construction” in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 (Kirin-Amgen) at [33] and [34], a passage which has been endorsed by the Full Court including in Blue Gentian at [41] and Tramanco Pty Ltd v BPW Transpec Pty Ltd (2014) 105 IPR 18 at [174] (Nicholas J):
[33] In the case of a patent specification, the notional addressee is the person skilled in the art. He (or, I say once and for all, she) comes to a reading of the specification with common general knowledge of the art. And he reads the specification on the assumption that its purpose is both to describe and to demarcate an invention — a practical idea which the patentee has had for a new product or process — and not to be a textbook in mathematics or chemistry or a shopping list of chemicals or hardware. It is this insight which lies at the heart of “purposive construction”…
[34] “Purposive construction” does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.
When seeking to give a claim a purposive construction, care must be taken to avoid imposing an impermissible gloss on the claim language based on material found in the body of the specification: Blue Gentian at [37]; Jupiters at [67].
A construction according to which the invention will work is to be preferred to one according to which it will not work: Blue Gentian at [39].
In approaching the construction of a claim, a court should apply a “generous measure of common sense”: Blue Gentian at [36]; see also Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11 at [108] (Middleton J).
Integers in dispute
Rattlejack contends that the SafetySpear (and the method involving the installation of the SafetySpear) does not have the following integers of the claims of the Patents:
(a)an “anchor member”;
(b)the anchor member (and the impact reduction member) “configured to be fixed [or located] … in the proximal end region of the bore”; and
(c)the anchor member “configured to be fixed … adjacent to a rock-face” or “adjacent or proximate to a rock-face”.
Accordingly, it is sufficient for present purposes to concentrate on those integers of the claims of the Patents. Having said that, it is necessary to consider those integers in the context of the claims of each Patent, and the body of each specification as a whole, without an eye to infringement.
Jusand contends that:
(a)the “anchor member” fixes the safety system in place until such time that the safety system is struck by a falling drill rod and then checks the downward movement of that falling drill rod. Jusand’s construction contemplates that the anchor member can move substantially down the bore hole whilst checking the downward movement of the falling drill rod; and
(b)the claim language of the second integer in dispute requires that the anchor member be “configured to be” or be suitable to be inserted into a lower end region of the bore hole.
Rattlejack contends that:
(a)the “anchor member” cannot move down the bore hole (other than a de minimis amount) when struck by a falling drill rod section: the anchor is fixed in place before, during and after the safety system is struck by a falling drill rod; and
(b)the words “adjacent to” as used in the claims means that the lowest end of the “anchor member” must be positioned at the lowest extremity of the bore, flush with the rock-face.
Anchor member
The Patent is to be construed by the person skilled in the art equipped with the common general knowledge as at the priority date as set out above.
The disclosed object of the invention described and claimed in the Patents is to protect against the hazard of a broken drill rod falling out of the bore into an excavated area. The safety system of the invention is said to desirably prevent such a broken drill rod section from falling out into the space or area in which miners are working.
In the context of the Patent, the person skilled in the art at the priority date would understand:
·The hazard posed by the falling broken drill rod is extreme and potentially fatal;
·The only way identified in the Patents to protect against the hazard is to stop the broken drill rod section from leaving the bore hole;
·The safety system of the Patents must stop the drill rod section falling from the bore each time;
·The impact force from a falling drill rod section, which is primarily a function of drill rod section size, weight, drop length and bore angle, is substantial, in the order of up to possibly hundreds of tonnes;
·A different safety system may be required for bores of different diameters;
·Stopping the falling drill rod section will involve absorbing the energy of and decelerating the falling drill rod section; and
·The one safety system will need to work for the all the potential forces up to the maximum possible impact force potentially experienced in a bore hole; i.e. whether the drill rod falls from a short distance or from the far end of the bore hole.
The evidence was that the term “anchor” is not a term of art in the mining industry.
The parties agree that the question of construction is a matter for the Court and since there are no technical terms or particular terms of art (within any relevant discipline), used in the Patents, the Court can decide the question of construction of the claims without regard to the views of the experts. However, there was extensive expert evidence directed to construction which was admitted without objection.
The word “anchor” is used as part of the descriptor of a component in the claimed safety system: an “anchor member”.
Jusand contends that the anchor member is a lower component of the safety system of the invention (when installed) which has the role of fixing the safety system product in place within the bore, until such time as it may be struck by a falling drill rod section and which then resists and checks downward movement of that product. Jusand’s construction contemplates an anchor member (and safety system) which can move substantially down the bore hole after being struck before coming to a stop.
According to Jusand, a skilled person would recognise that the safety system product of the invention achieves the object of the Patent by bringing the falling drill rods to a stop before the safety system product is pushed out of the bore. The skilled person would understand that some movement of the anchor member down the bore hole would be an effective way in which residual energy from a falling drill rod section, not absorbed by the impact reduction member, could be absorbed.
Jusand contends that its construction is consistent with the broader context provided by the claims and with an ordinary English meaning of the word “anchor” considered within that context. Jusand also states its construction of the term is capable of practical application towards assessing whether an allegedly infringing product has that feature or not.
In contrast, Rattlejack contends that an “anchor member” in the context of the Patents is an element that once fixed in the bore hole, acts as an anchor to stop the movement of the safety system relative to the rock when impacted by a falling broken drill rod section. On the construction propounded by Rattlejack, the claims encompass a de minimis movement of the anchor member in the order of a few millimetres (no more than 5 mm) but do not encompass a safety system that moves substantially (centimetres rather than millimetres) down the bore hole.
Rattlejack submits that such a construction is consistent with the definition of “anchor” in the current version of the Macquarie Dictionary, in which the primary non-specialist definitions of “anchor” as a noun and a verb are:
anchor
noun 1. a device for holding boats, vessels, floating bridges, etc., in place.
2. any similar device for holding fast or checking motion.
…
–verb (t) 11. to hold fast by an anchor.
12. to fix or fasten; affix firmly.
…
–verb (i) …
16. to keep hold or be firmly fixed.
Jusand relied on the reference in the definition above to the words “any…device…for checking motion”. According to Jusand, one of the meanings of “check” in the Merriam-Webster Dictionary is “to slow or bring to a stop”, and in the Oxford Languages dictionary through the Google platform is “stop or slow the progress of”.
Rattlejack disagreed that “check” meant to slow something down. Rattlejack relied upon the definition of “check” from the current version of the Macquarie Dictionary, in particular, the first three definitions, none of which it submitted meant “to slow”:
check
verb (t) 1. to stop or arrest the motion of suddenly or forcibly.
2. to restrain; hold in restraint or control.
3. to investigate or verify as to correctness.
In any event, Rattlejack submitted that something which is “fixed” can slow down something else in the manner precisely, and expressly, contemplated by the Patents; namely, the impact reduction member sliding with significant friction against the anchor member.
Jusand described the construction propounded by Rattlejack as being “practically unworkable” and submitted that it should be rejected for the following reasons.
First, there is no express statement anywhere in the Patents that shows that the patentee clearly intended to limit the scope of the disclosure to exclude from the scope of the Patents a safety system product with a friction-type anchor member that moved down the bore to a limited degree, but still operated with the impact reduction member to effectively bring a falling drill rod to a stop within the bore.
By introducing the practical acknowledgment of a de minimis movement, Jusand submits that Rattlejack is already accepting that the word “anchor” cannot have been intended as imposing a strict requirement of no movement. In practical terms it also follows that if the patentee were intending the word “anchor” to have the specific meaning that Rattlejack contends for, then it is odd that the patentee has not taken the care to explain in the specification that movement of at least a few millimetres still amounts to anchoring, otherwise the patentee would be taking the risk that “anchor” would be read more strictly, thereby leaving the claims with no practical scope.
Second, Jusand criticised Dr Fuller’s reasoning which it said was based on the particular embodiment shown in Figure 2. According to Jusand, Dr Fuller read down the disclosure in the Patents to fit with his assumed meaning of the word “anchor”. Jusand submitted that Dr Fuller read the Patents with an assumption that the patentee intended to exclude from the scope of its monopoly embodiments that Dr Fuller recognised in cross-examination would feasibly work so as to achieve the object of the Patents.
In cross-examination Dr Fuller agreed that down-hole movement of an anchor member would absorb energy. When Dr Fuller was asked to consider the embodiment shown in Figure 4, he understood that it did not rely on the same principle shown in the Figure 2 embodiment, and that it relied solely on its frictional engagement with the bore walls. It would therefore have a more constant capacity to resist downward movement.
Jusand also criticised the two additional reasons Dr Fuller gave in support of his construction of “anchor” in the joint expert report:
·If it is assumed that the lowest extremity of the anchor member must be flush with the rock-face, then it is not desirable for the anchor member to move downwards as in doing so it will lose surface area contact with the bore wall.
·If there is movement of the anchor member, the kinetic coefficient of friction comes into play. His statement was:
[O]nce the anchor member starts to move, it is easier for it to keep moving due to the kinetic (moving) friction coefficient being about 20% less than the static friction coefficient.
As to the first of Dr Fuller’s reasons, Jusand submitted that even if it is assumed that the extremity of the anchor member must be flush with the rock-face, then depending on the relative degree of down-hole movement, and the relative length of the anchor member, an anchor that moved more than a few millimetres may still be effective.
As to the second, Jusand noted that the frictional coefficient (the proportion of force resisting movement as a function of the normal force between the two surfaces) is reduced by about 20% once movement occurs. If there is a constant force being applied to an object, once movement begins, it will be easier to keep that object moving as the resistant frictional force has decreased. In cross-examination, Dr Fuller accepted that where the anchor member is moving even a few millimetres, then the kinetic coefficient of friction is involved. Jusand contends the kinetic coefficient of friction is therefore involved even for Dr Fuller’s preferred narrow construction.
Third, Jusand submits that a powerful reason against concluding that the construction for which Rattlejack contends was the intended meaning of “anchor member”, is that it is one that would not be suited for defining the boundaries of a patent monopoly. Jusand submitted that its construction is readily capable of being assessed by reference to a potentially infringing product. A skilled person can consider whether a relevant feature of a safety system product is suitable for fixing the product in place within a bore until such time as it may be struck by a falling drill rod, and in considering whether that feature will check down-hole movement.
In contrast, Jusand submitted that Rattlejack’s proposed meaning raised practical issues for assessing whether a product has an “anchor member” within the meaning of the claims, such as: what amount of down-hole movement results in it still being an “anchor member”, and under what conditions should infringement be assessed?
Consideration
For the reasons that follow, I reject the construction of “anchor member” propounded by Jusand.
I consider that the skilled addressee would understand “anchor member” in the claim to mean a component of the safety system that once fixed in the bore hole, acts as an anchor to stop the movement of the safety system relative to the rock when impacted by a falling broken drill rod section. I consider that the claims encompass a de minimis movement of the anchor member in the order of a few millimetres (1–5 mm) but do not encompass a safety system that moves substantially (centimetres rather than millimetres) down the bore hole before coming to a stop.
A construction of “anchor” which contemplates no movement, other than de minimis movement, is consistent with the description of the invention in the specification of the Patents. It is also consistent with the evidence of both experts and the Macquarie Dictionary definition of “anchor”.
To adopt an absolute requirement of no movement whatsoever of the anchor member would be to adopt an overly literal meaning at odds with practical reality and the experts’ understanding. Common sense also suggests that movement of up to 5 mm in the context of a bore length of 10 to 60 m or an impact force of up to hundreds of tonnes is negligible or de minimis. It is unsurprising that the specification did not expressly mention the possibility of de minimis movement. Such a construction is much like that in Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 in which the specification did not expressly describe that “extending vertically” included 6 to 8 degrees off true vertical, but which term Diplock LJ (at 224, the other members of the House of Lords agreeing) construed as meaning “near enough to the exact geometrical vertical to enable it in actual use to perform satisfactorily all the function it could perform if it were precisely vertical”.
It is useful to begin with some observations concerning the Patent specifications as this provides the context for the use of the term “anchor member” in the claims.
Specification
As Jusand submitted, there is no express direction that the anchor member should not move. Nor, however, is there any express direction that the anchor member should move, or any reference to, or description of the anchor moving during the impact of the falling drill bit. None of the descriptions of the anchor member or of the working of the safety system after insertion into the bore describes any movement of the anchor member. No movement of the anchor member relative to the rock-face or the bore is described in the context of the functioning of the embodiments in Figures 3 and 4. In contrast, the specification includes many references to the movement of the impact reduction member in the specification.
Movement of the impact reduction member is contemplated by the specification. At page 4, lines 15 to 18, the specification notes that the tapered portion of the impact reduction member is “configured to allow movement of the impact reduction member relative to the anchor member” for gradual or extended transfer of the impact loading from the drill rod section to the anchor member (emphasis added). Also on page 4, at lines 24 to 27, the tapered portion of the impact reduction member is said to be desirably configured to provide for movement of the falling drill rod section relative to the anchor member (see also page 10, line 27).
The falling drill rod section is said to “drive” the elongated body of the impact reduction member downwards into the split tube (page 11, lines 1 to 2). By the tapered portion of the impact reduction member extending the stopping distance for the falling drill rod section, the impact force is said (at page 11, lines 5 to 10) to be reduced significantly, such that the friction fit or interference fit of the anchor member within the bore can readily withstand the impact loading.
At page 12, line 30 to page 13, line 9, in the context of the description of the embodiment in Figure 4, the Patent states that for this embodiment the impact reduction member is not configured for any significant movement relative to the plug member upon impact by the falling drill rod section. Rather, the falling drill rod section is gradually deflected towards and into contact with the opposite inner wall which generates friction which acts to brake the falling object and dissipate the impact. The tapered portion is again said to act to cause gradual or extended transfer of impact loading from the drill rod section to the anchor member. The impact force is again reduced significantly such that the friction fit or interference fit of the anchor member within the bore can readily withstand the impact loading.
Further the anchor member is said to “readily withstand” the impact loading after the impact force is significantly reduced by the tapered portion of the impact reduction member. Withstanding does not connote substantial movement. The following references from the specification also support a construction where the anchor member does not move substantially.
(a)At page 4, lines 2 to 5, the Patent compares the manner of fixing the anchor member in the bore to the manner of fixing another “anchor” known in mining: a “split-set” rock anchor:
In this way, the anchor member or plug member comprising the split tube can be fixed in the proximal end region of the bore adjacent the rock-face in a friction fit or an interference fit, in a manner similar to that known for a “split-set” type of rock anchor.
(b)At page 11, lines 8 to 10:
[T]he impact force is reduced significantly, such that the friction fit or interference fit of the anchor member or plug member 2 within the bore B can readily withstand the impact loading.
In the context of a specification which describes the movement of the impact reduction member, silence as to any movement of the anchor member supports a construction that does not countenance movement of the anchor member beyond a de minimis amount.
The embodiment of the invention shown installed in Figure 3 needs to work while flush with the rock-face, even if it is not required to be installed there. If there was any more than de minimis movement in that example, it is possible that the safety system would fall from the bore hole.
Experts’ construction
The experts agreed that the term “anchor” did not have a technical or special meaning in mining. The evidence showed that the term “anchor” is one that is known and used in the mining industry, in particular in relation to a type of fixing known as “rock anchors”.
The experts in their joint report and joint session agreed that an anchor member in the context of the Patents is an element that acts as an anchor, to stop movement of the safety system relative to the rock when impacted by a broken drill rod section. Both experts considered that the claims would encompass a safety system which moved a de minimis amount. Dr Fuller contemplated movement of a few millimetres down the bore. Mr Davison accepted that once installed the anchor member would not move “more than a few” millimetres down the bore, which seemed to be about 5 mm. De minimis movement in the context of the invention described in the Patents entailed movement of the anchor member of 5 mm or less.
Neither expert considered that the claims contemplated a safety system that slides substantially down the bore.
Dr Fuller’s view was that the claims would encompass a safety system that moves a de minimis amount, such as a few millimetres, but that they do not encompass a safety system that slides substantially (i.e., more than a few millimetres) down the bore. Mr Davison accepted that an anchor, once installed, is fixed in place and does not move more than a de minimis amount, which he put at 1 to 5 mm.
Initially, Mr Davison said he understood that the anchor member must locate and hold the safety system in position in the bore “until such time as it may be struck by a falling drill rod section”. It must then “resist downward movement of the safety system in the bore if the safety system is struck by a broken drill rod section”.
Mr Davison’s initial construction would have the anchor member functioning as an anchor only until it is hit by falling drill rods, at which point it could cease to operate as an anchor and instead slide down the bore. There is nothing in the Patents to support that construction.
However, in the joint report, Mr Davison clarified his position. He did not mean that the anchor member held the safety system in place only until such time as it may be struck. He agreed that the anchor member may move by “a few millimetres or more”.
In the joint session, Mr Davison accepted that the word “anchor”, generally speaking, means something which is “a device for holding something fast or checking its motion”. He used the example of anchoring a boat: he said such an anchor “moves to – to check the motion to fix, eventually, in one spot”. He accepted that once the anchor is pushed into the mud, it is “fixed in place”, which he equated with “it checks the – the motion”.
“Fixed” in place accords with the role of the anchor in the “split-set anchor” product discussed by Mr Davison in his affidavit. It would also accord with the requirement in the claim that the anchor member be “configured to be fixed”.
Mr Davison had in mind a very small amount of movement, some 3 to 4 mm. That is not substantially different from Dr Fuller’s estimate of a few millimetres.
The Patent at page 4, line 5 (and again at page 10, lines 1 to 3) states that the anchor member can be fixed in the bore in a friction fit or an interference fit, in a manner similar to that known “for a ‘split-set’ type rock anchor”.
Mr Davison referred to “split-set anchors” and “a split-set (rock anchor) product” in his written evidence. The term “anchor” is also used by Mr Davison in the specifications of the patents and patent applications for his inventions relating to rock bolts.
One example of Mr Davison’s “developments and innovations” relates to a grouted friction stabiliser which uses grout to improve the frictional performance of “split-set anchors” by a factor of about four. That invention is the subject of Australian Patent no. 2014295889 which is entitled “A grouted friction bolt”.
The Macquarie Dictionary definitions are consistent with a construction where the anchor member is fixed or held fast in place and acts to stop the movement of the safety system relative to the rock when the safety system is hit by a falling broken drill rod.
As Hoffman LJ observed in Kirin-Amgen at [34], the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice. There may be good reason why the patentee chooses certain words over others, such as the avoidance of prior art, but the skilled addressee is not privy to the reasons for that choice.
Jusand urged me to accept that the invention the subject of the Patents was an invention of the kind contemplated by Hoffman LJ in Kirin-Amgen when he said at [34]:
On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition.
Whilst the safety system described and claimed in the Patents is taken to be new and innovative, it is not a new invention of the kind where the patentee is struggling to find the words to adequately describe the concepts involved. The term “anchor” is known and used in the mining industry in the context of fixings. The specification itself makes reference to the friction fit of the anchor member or plug member in the bore being in a manner similar to that known for a “split-set” type rock anchor. In choosing to describe the safety system, the patentee chose to describe the lower member as an “anchor member”, not a braking or checking or restraining member. If the patentee intended to claim a safety system that was held in place until it was struck by a falling drill rod and then moved down the bore hole to eventually stop the broken drill rod from falling out of the hole, there were more apt words available than “anchor”.
The well accepted authorities on construction counsel against construing the claims with an eye to infringement. This warning is apposite in most patent cases, where the claims are being construed as part of an infringement action and there is an allegedly infringing product in existence. It seems appropriate that this warning also extend to construing claims with an eye to the ease of establishing infringement. Such a consideration is an extraneous one that has no part to play in the construction of patent claims.
The claims are to be construed in the context of the specification as a whole, through the lens of the hypothetical skilled addressee equipped with the common general knowledge as at the priority date: Blue Gentian at [35]. The ease with which the patentee is able to establish infringement may play a part as to why the patentee chose the particular words of the claim in the first place, but it, like a motivation to avoid prior art to preserve validity, is a reason not known to the skilled reader and not relevant to the construction of the claims.
A proximal end region of the bore adjacent to a rock-face
The second construction issue that arises relates to the meaning of the words:
Anchor member configured to be fixed in a proximal end region of the bore adjacent to a rock-face.
(Emphasis added.)
The parties split this integer into different elements.
Jusand focussed on the word “adjacent” and noted that it could be read on to “end region of the bore” which was its contention, or potentially on to “fixed” which it said was Rattlejack’s contention: anchor member to be fixed in a proximal end region of the bore [and] adjacent to a rock-face.
Rattlejack broke the phrase into two parts, the first “configured to be fixed in a proximal end region of the bore”, and the second “configured to be fixed … adjacent to a rock-face”. Rattlejack noted that each of the Asserted Claims requires that the anchor member and the impact reduction member be “configured to be fixed in” or “configured to be located in” a “proximal end region of the bore…”.
Neither party contended that the phrase was a term of art, or contained terms of art.
Claim 1 of the 956 Patent also requires that the step of deploying the safety system “comprises fixing the anchor member in the proximal end region of the bore…”. Claim 4 of that Patent requires that the anchor member is “is configured to plug into the proximal end region of the bore …”.
There was no dispute between the parties about the slight differences in phrasing of this integer: it means that the anchor member and the impact reduction member must be configured to be fixed or located in the “proximal end region of the bore”, and, for the Asserted Claims of the 956 Patent, that in carrying out the claimed method, the anchor member must be fixed in the “proximal end region of the bore”.
Jusand contended consistently with Mr Davison’s evidence that the word “proximal” states that the relevant end region is the closer end region of the bore, rather than the farthest end region (or “distal” end region) and the words “adjacent to” then communicate and clarify that that “proximal” end region is near to the rock-face.
Jusand conceded that there was some redundancy on its construction, but submitted there was more redundancy on Rattlejack’s construction.
Jusand submitted that the claim language more clearly and simply requires that the anchor member be “configured to be”, that is, be suitable to be, inserted into a lower end region of the bore hole. It need not be “configured to be” driven the entire way up to the distal or far end of the bore hole, if that was the location of an issue in a particular bore. Jusand’s construction gives no meaning to “fixed”.
Rattlejack referred to the definitions of “proximal”, “end” and “region” from the current version of the Macquarie Dictionary which included:
proximal
adjective situated towards the point of origin or attachment…
end
noun 1. an extremity of anything that is longer than it is broad…
2. an extreme or farthermost part of anything extended in space.
3. Anything that bounds an object at one of its extremities; a limit.
region
noun 1. Any more or less extensive, continuous part of a surface or space.
Rattlejack contended that in the context of a bore, the plain English meaning of the phrase “proximal end region of the bore” means the region situated at the end (extremity) of the bore at its point of origin or opening.
The body of the Patents does not give any specific definition of the phrase, but does identify the “proximal end region of bore”, E, in Figures 2 and 3, as being the area at the very end of the bore closest to the opening of the bore hole, consistent with its ordinary English meaning. In the depiction of the installed embodiment in Figure 3, the region E is depicted as extending beyond the anchor member and alongside the impact reduction member.
Jusand listed the references in the Patent regarding the proximal end region that do not use the word “adjacent” and which it suggested provide some relevant broader context including:
•In an embodiment of the safety system, the anchor member or plug member is configured to be fixed within the proximal end region of the drilled bore in a friction fit or interference fit (page 3, lines 26 to 28);
•The split tube is configured to be driven into the proximal end region of the drilled bore (page 3, lines 30 to 31);
•In an embodiment, the safety system further comprises an adapter member which is configured for connection to a rock drilling apparatus for driving or inserting the safety system, especially the anchor member and the impact reduction member, into the proximal end region of the drilled bore (page 6, lines 5 to 8);
•This thereby enables the safety system to be placed in and held by the drill rod carousel and then be introduced or inserted (e.g. driven or forced) into the proximal end region of the bore by the rock drilling apparatus (page 6, lines 19 to 21);
•Fixing an anchor member in or at a proximal end region of the drilled bore to at least partially plug or obscure the proximal end region of the bore adjacent to or in the vicinity of a rock-face (page 6, lines 27 to 29);
•Figure 3 is a schematic partial perspective view of the safety system of Figure 2 shown in an installed state in a proximal end region of a bore (page 7, lines 23 to 24);
•The safety system 1 comprises an anchor member 2, which is configured to be inserted and fixed in a proximal end region E of the bore B adjacent or close to a rock-face F of the cavity C at which the drilling takes place (page 9, lines 15 to 18);
•The anchor member 2 is provided in the form of a plug member which is configured to be driven into and fixed within the proximal end region E of the drilled bore B in a friction fit or interference fit (page 9, lines 18 to 20);
•This enables the safety system 1 to be placed in and held by the drill rod carousel and then introduced or inserted (e.g. hydraulically driven or forced) into the proximal end region E of the bore B by the rock drilling apparatus (page 11, lines 19 to 21);
•The split tube 3 of the plug member 2 seats against the collar 12, such that the collar 12 imparts an axial force to the plug member 2 to drive the plug member 2 (together with impact reduction member 5) into the proximal end E of the drilled bore B in a friction fit (page 11, lines 26 to 29);
•In this embodiment, the safety system 1 again includes a plug type anchor member 2 comprising a split tube 3 having longitudinally extending slit or gap (not shown) and a front or leading end region 4 of reduced diameter Dr to assist driven or forced insertion into a proximal end region E of a bore B in an interference fit or a friction fit (page 12, lines 10 to 14); and
•As before, the safety system 1 of Figure 4 includes an adapter member configured to cooperate with a rock drilling apparatus (not shown) for deploying the plug-like anchor member 2 and the impact reduction member 5 into the proximal end E of the bore B (page 13, lines 11 to 15).
As to lack of support, the evidence makes plain that what is included within the scope of the claimed invention — a safety system made out of plastic (or a method using such a system) — far exceeds the technical contribution the Patents make to the art, which is (at best) a safety system made out of steel, alternatively with the impact reduction member made out of an unspecified polymer foam. The Patents simply give no support for the invention as claimed without limit as to materials.
In both Merck and Cytec Burley J said that the appropriate way to approach the s 40(3) requirement was that derived from the summary provided by Aldous J in Schering Biotech at 72 (and adopted by Dr Barker in CSR Building Products at [95]) with the addition of the requirement that the technical contribution to the art must be ascertained:
·what is the invention which is specified in the claims;
·compare that with the invention which has been described in the specification; and
·the technical contribution to the art of the patent.
For claim breadth to be supported it must correspond to the “technical contribution to the art”: Merck at [531]. Does what is claimed impermissibly exceed the technical contribution to the art provided by the patentee?
The breadth of the claim will exceed the technical contribution if the claim covers ways of achieving the desired result which owe nothing to the patent or any principle it discloses. Two classes of this are where the patent claims results which it does not enable, such as making a wider class of products when it enables only one and discloses no principle to enable the others to be made, and where the patent claims every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention: Arnold J in Sandvik Intellectual Property AB v Kennametal UK Ltd [2012] RPC 23 summarising at [122] the main points that he drew from Hoffmann LJ’s opinion in Biogen.
In order to determine whether the Patents lack support, the Court must consider what is the invention that is claimed, examine the description in the specifications to ascertain the technical contribution the Patents make to the art, and then compare the two, to make sure that the technical contribution entitles Jusand to a monopoly of the width that it claims.
Section 40(3) does not use the word “invention”. In Kimberly-Clark at [21] and LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd(No 2) (2007) 235 CLR 173 (Lockwood) at [53], the High Court held that in the pre-Raising the Bar Act s 40(2) “invention” means the embodiment which is described, and around which the claims are drawn. I do not understand the Raising the Bar Act amendments to have changed the meaning of “invention” to another of the four possible meanings identified by Fletcher-Moulton LJ in British Untied Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 651.
Jusand contends for a broad articulation of the nature of the invention: a new product for protecting against the hazard of drill rod failure in a drilled rock bore, being an improvement upon the prior art position that involved covering bores containing struck drill rods using time consuming methods of questionable effectiveness. Jusand submits that under European law, considerations of “technical contribution” and claim scope are often addressed by reference to article 56 of the European Patent Convention (Convention on the Grant of European Patents. Opened for signature 5 October 1973. 1065 UNTS 199 art 56 (entered into force 7 October 1977) (European Patent Convention)) which relates to inventive step.
Jusand’s suggestion, that the technical contribution to the art made by the Patents was the step of moving from covering bores to using the claimed anchor and impact reduction member combination, should be rejected.
The Patents’ technical contribution to the art is disclosing the anchor member and impact reduction member combination made from steel (and polymer foam for the impact reduction member) to achieve the goal of making a safety system to prevent falling drill rods exiting a bore.
The “technical contribution to the art” is not to be confused with the concept of inventive (or innovative) step. In H Lundbeck A/S v Generics (UK) Ltd [2008] RPC 19, a case involving a claim to a single product, being an isolated enantiomer, Hoffman LJ observed at [36] that it is a mistake to treat the relevant “technical contribution to the art” as being the inventive step. His Honour continued at [41]:
[T]here is nothing in s 72(1)(c) which connects the requirements of sufficiency to the inventive step. What needs to be disclosed is the invention as defined in the claim. That remains the same, whatever may have been the inventive step.
Lord Walker upholding Hoffmann LJ’s decision in Generics (UK) Ltd v H Lundbeck A/S [2009] RPC 13 explained the difference between the inventive concept and the technical contribution to the art at [30]:
“[I]nventive concept” is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application (see Kiren-Amgen [2005] R.P.C. 9 paras. 112-3) which entitles the inventor’s achievement to be called inventive. The invention’s technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art?
(Emphasis in original.)
Justice Burley in Merck at [540] referred to Hoffmann LJ’s distinction between technical contribution to the art and inventive step:
Lord Hoffmann in Generics UK (CoA) considered the finding of the trial judge that the claim in suit lacked Biogen insufficiency because the relevant “technical contribution” to the art was the inventive step. Lord Hoffmann found that to be the incorrect approach. The technical contribution to the art for a product claim is the product, and not the process by which it was made (at [30]).
The separation of inventive step from considerations of support is also consistent with the High Court’s observation at [46] in Lockwood that the grounds of patent invalidity are, and must be kept, conceptually distinct.
The absence of any concept of inventive (or innovative) step from considerations of support also precludes any possibility of there being a different test for support in the case of innovation patents by reason of the lesser requirement of innovative step.
Jusand further submits that the breadth of the Patents’ claims is supported by the disclosure of a principle of general application: the mode of action of the impact reduction member decelerating the falling drill rods and combining with the frictional resistance contribution from the anchor member to bring the drill rods to a stop within the bore. Anything made by the skilled reader (no matter the effort required) that falls within the scope of the claims will use the invention. As such only one embodiment needs to be enabled.
The UK Supreme Court in Regeneron makes clear that the disclosure requirement is not satisfied simply because all embodiments that fall within the claimed range make use of the invention.
Moreover, the expert evidence in the present case does not support the disclosure of a general principle, such that anything falling within the scope of the claim can be made by the person skilled in the art without undue effort or ingenuity.
Lord Hoffman in Biogen said that in assessing whether the claims exceed the technical contribution disclosed in the patent it is relevant to consider “whether the claims cover other ways in which they might be delivered: ways which owe nothing to the teaching of the patent or any principle which it disclosed”. That is a sufficient but not necessary test for lack of support. Lord Hoffmann went on to observe at [71] that:
[I]n Genentech I/Polypeptide expression the Technical Board spoke of the need for the patent to give protection against other ways of achieving the same effect “in a manner which could not have been envisaged without the invention”. This shows that there is more than one way in which the breadth of a claim may exceed the technical contribution to the art embodied in the invention. The patent may claim results which it does not enable, such as making a wide class of products when it enables only one of those products and discloses no principle which would enable others to be made. Or it may claim every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention.
(Emphasis added.)
In Kirin-Amgen Hoffmann LJ explained at [112] what he meant by a “principle of general application” in Biogen:
This gave rise to a good deal of argument about what amounted to a “principle of general application”. In my opinion there is nothing difficult or mysterious about it. It simply means an element of the claim which is stated in general terms. Such a claim is sufficiently enabled if one can reasonably expect the invention to work with anything which falls within the general term. For example, in Genentech/Polypeptide expression Decision T0292/85 [1989] OJ EPO 275, the patentee claimed in general terms a plasmid suitable for transforming a bacterial host which included an expression control sequence to enable the expression of exogenous DNA as a recoverable polypeptide. The patentee had obviously not tried the invention on every plasmid, every bacterial host or every sequence of exogenous DNA. But the Technical Board of Appeal found that the invention was fully enabled because it could reasonably be expected to work with any of them.
At [534]–[536] of Merck, Burley J referred to Regeneron. In Regeneron, an appeal from the Court of Appeal, the Supreme Court considered two patents which sought to confer a monopoly over the creation of a range of types of transgenic mice. The relevant claim was for a range of transgenic mice (referred to as “products”) answering a certain description. The Court of Appeal held that the teaching in the patent coupled with the available common general knowledge as at the priority date enabled some, but not all, types of mice within the claimed range to be made. Nonetheless, the Court of Appeal found the claim support obligation was met, as the invention claimed was for an inventive, ground-breaking principle, such that every type of mouse within the specified range that could now be made or would in future be made, would display the benefits which the invention was designed to achieve (Regeneron at [4]).
Justice Burley noted at [536] of Merck that the central issue before the UK Supreme Court arose because although the beneficial effects of the principle disclosed in the patent would apply to every mouse within the range claimed, the specification did not disclose how to make every mouse in the range. The formidable difficulties in producing some of the mice in the range could not be surmounted by the combination of the existing general knowledge and disclosure in the patents. The UK Supreme Court noted that the previously unachievable mice in the range had subsequently been made, but only with the benefit of further inventive processes, not forming part of the disclosure of the patents or the prior art (Regeneron at [11]).
The UK Supreme Court in Regeneron made it clear that the notional skilled person or team must be enabled by a combination of the teaching in the patent, the general technical knowledge available at the priority date, and a reasonable (not burdensome) element of experimentation. But the skilled person is not expected to be inventive, or even imaginative: Regeneron at [24].
After reflecting on the European and UK authorities, the Supreme Court in Regeneron set out at [56] the following eight principles relevant to the claim support obligation:
(i)The requirement of sufficiency imposed by article 83 of the EPC exists to ensure that the extent of the monopoly conferred by the patent corresponds with the extent of the contribution which it makes to the art.
(ii)In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, rather than (if different) the invention.
(iii)Patentees are free to choose how widely to frame the range of products for which they claim protection. But they need to ensure that they make no broader claim than is enabled by their disclosure.
(iv)The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim. That is what, in the context of a product claim, enablement means.
(v)A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date.
(vi)This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date.
(vii)Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse's tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made.
Lord Justice Briggs expanded upon the second point at [58]. In the case of a product, the contribution to the art is the product which is enabled to be made by the disclosure. Sufficiency requires substantially the whole range of products within the scope of the claim to be enabled to be made by means of the disclosure in the patent, and this both reflects and applies the principle that the contribution to the art is to be measured by the products which can thereby be made as at the priority date, not by the contribution which the invention may make to the value and utility of the products, the ability to make which, if at all, lies in the future.
Enablement across the scope of a product claim is not established merely by showing that all products within the relevant range will, if and when they can be made, no matter how much ingenuity is required, deliver the same general benefit intended to be generated by the invention.
The claims of the Patents are not limited to any particular material. The broad scope of the claims covers a safety system with an anchor member and impact reduction member made from any material. Neither the Patents, nor the common general knowledge provide guidance as to how to make the safety system of the invention out of a material other than steel, such as plastic.
The evidence does not support the existence of a general principle to support the broad scope of the claims of the Patents. The evidence, as discussed above, establishes that the person skilled in the art, armed with the disclosure in the Patents and the common general knowledge, is not able to make, for example, an embodiment of the claimed safety system entirely out plastic without undue burden or the application of inventive skill or ingenuity. The claims of the Patents extend far beyond the technical contribution of the Patents and are not supported by the disclosure in the specifications.
The task is more than the selection of a “suitable” material or materials. The properties of the materials considered may interact with the properties of the rock or other materials chosen, these are intertwined with the design of the safety system which will need to be re-designed for many materials.
For embodiments other than those made out of steel, the Patents invite the skilled reader to undertake an extensive research and development program requiring undue effort or ingenuity, which if successful, the patentee claims the fruits of the program.
The experts agreed that for each potential material, there were a number of mechanical properties such as modulus and compressive strength that would affect whether the potential material was suitable for use to make the safety system of the invention. The Patents give no guidance as to what mechanical properties might make a material suitable. Unlike the example of the irrelevant mouse tail length given in Regeneron (at [56](vii)), each of the mechanical properties discussed above will affect whether a particular material is suitable for making a safety system that will operate to stop a falling drill bit from falling out of a drill hole. The mechanical properties of the potentially suitable material are variables which significantly affect the value or utility of the safety system in achieving the purpose for which it is made.
Even if Mr Davison was correct in nominating one type of plastic that might work (after a research and development program), that does not mean the Patents' technical contribution to the art is commensurate with the scope of the claims, which cover all materials.
The claimed invention exceeds the technical contribution the Patents make to the art, which is (at best) a safety system made out of steel, alternatively with the impact reduction member made out of an unspecified polymer foam. The Patents simply give no support for the invention as claimed without limit as to materials.
Taper angles
The other contention that Rattlejack advances in relation to its sufficiency and support grounds relates to the range of angles that may be used for the relevant “tapered portion” of the impact reduction member.
Rattlejack submits that the Patents disclose two types of tapered portion. In Figures 2 and 3, a tapered portion is depicted which tapers outwards on both sides (it becomes thicker near the top of the safety system and narrower where it meets the anchor member). In Figure 4, a tapered portion is depicted that is tapered to a tip on one side only, and the other side sits close to the side of the bore.
Claim 2 of the 556 Patent and claims 1 and 2 of the 163 Patent expressly include a “tapered portion” integer. However, Rattlejack submits that all of the asserted claims of the Patents encompass a safety system (or method for its use) that has an impact reduction member that comprises a "tapered portion" (that is, none of the claims have language which exclude that possibility). None of the asserted claims are limited to any particular angle of taper on the impact reduction member. Thus, the claims encompass a system with an impact reduction member that comprises a tapered portion with any angle of taper.
Jusand submits that a skilled person will be able to determine whether a particular angle will be suitable to use for a particular embodiment of the invention without invention or ingenuity. Jusand also submits that there is no suggestion in the Patents that all angles will be suitable.
Rattlejack observes that its support and disclosure case is not that the patentee needed to specify every material that would work and the taper angles that would work for each material. It is that the patentee needed to give the skilled person enough information to work out how to make the claimed inventions work across their scope without undue effort or inventiveness. In particular, if the patentee had specified the range of properties that suitable materials should have, that would have allowed the skilled person to identify materials with those properties, and that would have made it a manageable task to determine what taper angles would work.
For the reasons I have outlined above, I consider that the claims are invalid as they do not satisfy the requirements of ss 40(2)(a) or 40(3) as they give no guidance as to what might be a suitable material other than steel, and provide no details of the properties that would make potential materials other than steel suitable for use to construct a safety system of the invention.
However, I consider the taper angles to be a different case to the lack of guidance as to suitable materials (or specification of what properties make materials suitable) for constructing the safety system. Once the skilled person has found a suitable material and designed a safety system using that material, I consider that ascertaining the taper angles that would work would form part of the routine work of optimising the design of the safety system for that material.
Dr Fuller’s evidence was that it would be “of great assistance” in determining the taper angle if the patentee had specified the materials, because “once the materials are specified, that — that locks us into the mechanical properties — compressive strength, friction coefficient”.
I consider that once the person skilled in the art had undertaken the inventive journey described above to arrive at a suitable material and re-design for the safety system, the optimisation of the taper angles for that particular safety system would be a matter of routine trial and error testing for the skilled worker.
Clarity
If a claim is not clear, then it is invalid and liable to be revoked: ss 40(3) and 138(3)(f) of the Act. To meet the requirements of s 40(3), a claim must define the scope of a monopoly with sufficient clarity.
Rattlejack submits that the claims that use the term “plug” are bad because the skilled reader will not understand the meaning of that term, and will therefore not be able to understand the scope of the monopoly claimed by those claims. Claim 5 of the 556 Patent, claim 2 of the 163 Patent, and claim 4 of the 956 Patent are unclear and therefore invalid.
Claim 5 of the 556 Patent includes these words:
…
an anchor member configured to be fixed in a proximal end region of the bore adjacent or proximate to a rock-face, wherein the anchor member is configured to plug into the drilled bore and to at least partially block or obscure the drilled bore, …
(Emphasis added.)
Claim 2 of the 163 Patent includes these words:
…wherein the anchor member forms a plug member and is configured to be driven or forced into the proximal end region of the bore…
(Emphasis added.)
Claim 4 of the 956 Patent includes these words:
…wherein the anchor member comprises a plug type anchor member that is configured to plug into the proximal end region of the bore in a friction fit or an interference fit…
(Emphasis added.)
A claim, to be valid, needs to “define a monopoly in such a way that it is not reasonably capable of being misunderstood”: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 (Welch Perrin) at 610.
In Welch Perrin at 610, the High Court said:
If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, that, of course, is an end of the matter. ... we are not construing a written instrument operating inter partes, but a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood.
Justice Jessup (with whom Greenwood J agreed) summarised these principles as follows in Novozymes A/S v Danisco A/S (2013) 99 IPR 417 at [95]:
[A] conclusion that a claim lacks clarity is proper to be made only if the court, using all the properly available aids and looking at the matter through the eyes of the skilled addressee, is unable to give a clear meaning to the claim.
While lack of precise definition will not be fatal to the validity of a claim as long as it provides a workable standard suitable to the intended use, a claim will be bad if no reasonably certain construction can be given to it or the claim is fairly and equally open to diverse meanings: GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Apotex Pty Ltd (2016) 119 IPR 1 at [723].
Rattlejack asserts that the meaning of “plug” in claims 2 and 4 of the 163 Patent and claim 4 of the 956 Patent is unclear.
Rattlejack also contended that claim 5 of the 556 Patent was also unclear due to the reference to “configured to plug”. The challenge to claim 5 of the 556 Patent was not pleaded in Rattlejack’s Second Amended Statement of Cross-claim dated and filed on 17 September 2021.
Rattlejack submitted that a construction of “plug” that could encompass a thing or action that obscures only such a small proportion of the bore would give the term no meaning in the context of the claims. That is because an anchor member must already block some part of the bore. If that is all that “plug” means, then describing the anchor member as a “plug member”, or using the term “plug” in the ways the other claims do, adds nothing to the claims. Rattlejack submitted that such a construction that would render it otiose.
Jusand responded that plainly the word “plug” is not being used in the Patents in the sense of any of the ordinary English meanings for the word “plug” as a noun. However, Jusand submitted that the use of the word “plug” in the Patents does, however, correspond to the meaning in the Macquarie Dictionary, “to insert or drive a plug into”.
Dr Fuller’s evidence was that “plug” is not a term of art in the relevant field. Rattlejack provided definitions from the Macquarie Dictionary 2021 edition for ‘plug’. These included:
plug
noun 1. a piece of rubber or plastic for stopping the flow of water from a basin, bath (def. 3) or sink (def. 30).
2. a piece of wood, cork, plastic, etc., used to stop up a hole or aperture, to fill a gap, etc.
3.Electricity
a. a tapering piece of conducting material designed to be inserted between contact surfaces and so establish connection between elements of an electric current connected to the respective surfaces.
…
verb (t) 16. to stop or fill with or as with a plug.
17. to insert or drive a plug into: to plug a wall for the hanging of a picture.
18. to secure by a plug.
19. to insert (something) as a plug.
The first use of the word “plug” in the specification at page 3, explains that the anchor member is configured to “plug or to be inserted into the drilled bore and to at least partially block or obscure the bore”. The specification then describes an embodiment in which the anchor member or plug member is configured to be fixed within the proximal end region of the drilled bore in a friction or interference fit. As an example of that embodiment, the anchor member or plug member may comprise a split tube which is configured to be driven into the proximal end region of the drilled bore. The anchor member or plug member of that embodiment is said to be fixed in the proximal end of the bore in a friction fit or an interference fit, in a manner similar to that known for a “split-set” type of rock anchor.
Mr Davison understood the word “plug” to relate to the nature of the fit within the bore – meaning that the anchor member is designed so as to fit within the corresponding bore in a compression or interference fit, resulting from it being forced into the hole such that it is held in place by frictional forces. He did not consider that use of “plug” meant that the plug anchor member must completely obscure the bore hole.
Dr Fuller, in his first affidavit, after reviewing various uses of the word “plug” in the specification, considered that the word “plug” as used in the Patents most likely meant an anchor member that is configured to be inserted or to plug into the drilled bore and which may only partially block or obscure the hole. He also accepted in cross-examination that, by reference to the use of the word “plug” in the specification, its meaning related to achieving a friction or interference fit.
I consider that within the context of each of the Patents, the terms “plug”, “plug member” and “plug type anchor member” each has a sufficiently clear meaning: a member that is forced or driven into a correspondingly sized bore so as to be held in place by friction. There is no requirement that the plug, plug member or plug type anchor member block the bore hole completely.
This meaning is consistent with meaning number 17 in the Macquarie Dictionary, “to insert or drive a plug into”, and 19, “to insert (something) as a plug”.
I am fortified in this construction by the fact that each Murray’s witnesses, Mr Spencer, Mr Law and Mr Coughlan used and understood the word “plug” in a manner consistent with the meaning above in the context of underground mining. Each used the word to describe the operation of the SafetySpear product in their written evidence.
Mr Spencer’s evidence was that he had been looking for a product like the SafetySpear to deal with the problem in underground mines with plugging production holes when broken drill rods could not be retrieved from production holes. Mr Law referred to the one of the SafetySpear induction documents: “TRM Byrnecut procedure - SafetySpear production hole plugging”. Mr Coughlan described a requirement that the product must keep the bore hole “plugged” so that the broken rods do not fall out of the hole and potentially kill someone.
CONCLUSION
For the reasons set out above, I find that the SafetySpear does not infringe the Asserted Claims. I also find that the Asserted Claims are invalid as they fail the disclosure and support obligations of sections 40(2)(a) and 40(3) of the Act.
I certify that the preceding five hundred and forty-two (542) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe. Associate:
Dated: 16 May 2022
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