Lettela Pty Ltd v Richardson Pacific Limited
[2000] APO 74
•20 December 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 699604 in the name of Lettela Pty Ltd
Title: Shielding Device for Screening Apparatus
Action: Opposition under Section 59 of the Patents Act 1990 by Richardson Pacific Limited
Decision: Issued .
Abstract
The application was alleged to lack novelty in view of a substantially identical shielding device that was developed by the opponent.
The evidence consisted of a number of engineering drawings that were prepared by the opponent and that allegedly were shown to its clients before the priority date. The evidence also contained a single invoice of sale produced before the priority date. The opponent further alleged that the shielding device was installed in equipment at the Argyle Diamond Mines before the priority date.
Although some of the drawings were found to be in existence before the priority date, none were found to be publicly known before the priority date. The invoice was found not to relate to the shielding device of the invention. There was insufficient evidence to establish that the invention was publicly used at the Argyle Diamond Mines before the priority date.
The evidence is not persuasive that the invention lacks novelty. No ground of opposition has been made out.
The opposition was dismissed with costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 699604 by Lettela Pty Ltd and opposition thereto by Richardson Pacific Limited under section 59 of the Patents Act 1990.
BACKGROUND
Australian Patent Application 75370/96 was filed on 16 December 1996 and claimed priority from Australian Provisional PN8876 filed 25 March 1996. The application was advertised accepted on 10 December 1998 and given Serial Number 699604. A notice of opposition was filed on 3 March 1999.
On 4 June 1999, the patent applicant, Lettela Pty Ltd (Lettela) requested the Commissioner to give directions under Patents Regulation 5.10(1) in relation to the Statement of Grounds and Particulars (Patents Regulation 5.4) that was filed by the opponent, Richardson Pacific Limited (Richardson Pacific). Richardson Pacific subsequently filed a request to amend the statement of grounds and particulars on 18 June 1999 in compliance with the Commissioner's direction. No objections to the request to amend were filed and the amendment was allowed on 5 July 1999.
Evidence-in support was completed by 18 June 1999, evidence in answer was completed by 22 December 1999, and evidence-in-reply was completed on 8 March 2000.
A notice for production under s210 of the Patents Act was issued on 22 October 1999. In response to this notice, the opponent filed on 19 November 1999, a statutory declaration by Jeff Zubovich with accompanying exhibits JZ-7 to JZ-11.
The matter was set down for a hearing in Melbourne on 17 August 2000. Mr Graham Cowin, patent attorney of Phillips Ormonde & Fitzpatrick, represented Lettela. Mr Darryl Mischlewski, patent attorney, represented Richardson Pacific.
GROUNDS OF OPPOSITION
From the amended Statement of Grounds and Particulars, the particulars of opposition fall into the following three categories.
"1) The invention is no more than the new use of a known device [a beam shield] in a new setting for the same general purpose, namely to prevent abrasion of the beam. Protective shields for the protection of screening machines are known from the sales by the opponent to mining companies in Australia prior to 25th March 1996 of polyurethane covers for screening machine frames. The polyurethane covers were sold to Argyle Diamond Mines located in Western Australia beginning in 1985. The covers comprised strips of polyurethane which covered the upper surface of support beams or frames for screening decks."
At the hearing, no argument was presented that invention was not a manner of new manufacture. However, the applicant made submissions on this ground and concluded that it related to the use of "red cover strips" whose existence before the priority date was common ground between the parties. I agree with the applicant on this point.
"2) a) the invention is not novel in the light of the manufacture and sale by the opponent to mining companies in Western Australia prior to 25th March 1996 of polyurethane shedder plates for the frames of screening machines. The shedder plates are of the same appearance as the shields illustrated in figures 2 and 3 of the opposed specification. Sales of these shedder plates have been made to Argyle Diamond Mines of Western Australia since 1987."
"2) b) the invention does not involve an inventive step because it is obvious to a person skilled in the manufacture and use of screening modules having regard to their common general knowledge and the disclosures of the prior sales listed in items 1) and 2) a) above."
3) The specification does not comply with s 40(3) in that the following terms are either unclear or are not fairly based on the description:
"an edge region of the screen material"; claim 1, lines 3-4;
"at least one surface"; claim 1 lines 6-7;
"extends along below the edge region"; claim 1 lines 7-8;
"collecting material"; claim 1 line 9.
At the hearing ground 3 was not perused. Indeed, the opponent agreed with the interpretation of the claim as detailed in the patent applicant's evidence of Mr Murphy.
Hence, only grounds 2(a) and 2(b) remain to be determined.
EVIDENCE
Evidence-in-support
A statutory declaration by Jeff Zubovich was filed with accompanying exhibits JZ-1 to JZ-6. Exhibits JZ-1 to JZ-3 were physical exhibits. As only one sample of exhibit JZ-2 existed, Lettela filed it at the Patent Office without any copy being served on to Richardson Pacific. After a number of official letters and further correspondence on the issue of non service, the opponent proposed that it would not rely upon exhibit JZ-2 as part of the evidence-in-support but that it might rely upon paragraph 7 of the Zubovich declaration, which paragraph describes exhibit JZ-2. Exhibits JZ-4 and JZ-5 are copies of engineering drawings. Exhibit JZ-6 contains a copy of an invoice. Mr Zubovich is the product manager for mining screening panels marketed by Richardson Pacific and has held that position for over 10 years.
As previously stated, on 15 October 1999 the applicant requested that the Commissioner issue a notice for the production of certain documents under S210(c) of the Patents Act. The direction was issued on 22 October 1999 and the Lettela complied with it on 19 November 1999 by filing exhibits JZ-7to JZ-11. Exhibits JZ-7 and JZ-8 were exhibits of coloured photographs of moulds with the moulds shown in JZ-7 being a narrower version of the cover strip of exhibit JZ-3 while the moulds shown in JZ-8 being a wider version of the cover strip of exhibit JZ-3. Exhibits JZ-9 and JZ-10 contained invoices in respect of exhibits JZ-3 and JZ-4 respectively. Exhibit JZ-11 is a sample set of drawings submitted as part of quotations to various mine sites in Australia. All exhibits excepting those relating to the photographs of the mould were brought either into evidence-in-answer or evidence-in-reply.
However, in the interests of dealing with all the issues in the opposition, I will make a few comments about these photographs. Firstly, Mr Zubovich who complied with the notice stated that no drawings of the moulds exist. Secondly, both moulds were said to be produced in 1988, but only the wider steel version of exhibit JZ-5 is still in existence, as the narrower steel version was replaced by an aluminium version in 1995. The wide mould was said to be used on machine frames while the narrower mould was said to be used primarily with panel support frames. Thirdly, there is no evidence put forward in this opposition of any public knowledge of these moulds. Clearly, these photographs go to show development by Richardson Pacific of a shielding device substantially identical to that of the patent applicant but they do not demonstrate public knowledge of the shielding device. Hence, they have no bearing on the issue of novelty.
As previously stated, several of the exhibits are physical evidence. Exhibit JZ-1 is a flat red plastic strip of polyurethane (referred to by the patent applicant as a red cover strip). Exhibit JZ-2 is also a physical exhibit but it was withdrawn. Exhibits JZ-3 and AD-1 (refer to the evidence-in-reply) are green plastic strips of polyurethane with projecting wings (referred to by the patent applicant as green shredder plates).
Evidence-in-answer
Graham Leslie Cowin filed a statutory declaration with accompanying exhibits GLC-1 to GLC-11. Exhibits GL-1 to GL-11 are copies of Internet searches conducted by the patent applicant, Lettela on the legal status of the opponent, Richardson Pacific. The searches were conducted on AusLII and ASIC databases.
Graham Leslie Cowin filed a second statutory declaration with accompanying exhibits GLC-9 to GLC-11. Exhibit GLC-9 is a copy of the Notice under s210(c) of the Patents Act, while exhibits GLC-10 and GLC-11 are copies of the invoices referred to in Clauses 2 and 3 of the notice to produce (contained in exhibits JZ-9 and JZ-10 respectively).
A statutory declaration by Raymond Maxwell Woodgate was filed with accompanying exhibit RWM-1. Mr Woodgate is the production manager of Elastomers Australia, a division of Lettela Pty Ltd. Mr Maxwell is also the inventor named in the application. Mr Maxwell has held the position of production manager since 1983. Exhibit RWM-1 is a copy of exhibit JZ-5 of the Zubovich declaration that details the drawing entitled "Screenex-Kit frame Installation Details".
A statutory declaration by Stuart Alan Taylor was filed. Since September 1999, Mr Taylor has been a sales engineer with Elastomers Australia. Between 1994 and September 1999, Mr Taylor was employed as Projects Manager with Metquip Pty Ltd, later known as Bateman Process Equipment (BPE). Part of Mr Taylor's responsibilities was to conduct audits of screening equipment operated by BPE clients; such clients include Argyle Diamond Mines.
A statutory declaration by Vernon Leith Charles Murphy was filed with an accompanying exhibit VLM-1. This exhibit is a copy of the opposed patent specification. Mr Murphy discusses the specification in detail and comments about the clarity of the specification. Mr Murphy worked for the Elastomers Australia between 1980 to 1987. There is no reference in his declaration regarding sales by the opponent of the green shedder plate. Mr Murphy retired in 1997. Of all the declarants in this opposition, Mr Murphy is the only independent declarant.
Evidence-in-reply
A second statutory declaration by Jeff Zubovich was with an accompanying exhibit JZ-11, already referred to in the Notice to Produce.
A statutory declaration by Andrew Dixon who was a former employee of the opponent was also filed with accompanying exhibit AD-1. Exhibit AD-1 is a sample of the green shedder plate and is identical to the sample provided in exhibit JZ-3.
THE OPPOSED SPECIFICATION
The invention relates to a shielding device that finds particular use in vibrating ore screening apparatus as used in mining operations to screen, separate and grade ore. Typically, the apparatus includes a support frame comprising support beams underlying screen panels. In use, the apparatus is vibrated so that material is able to move across the screen surface. In use, very fine grade ore known as "fines" migrate between the screen panels and the underlying support beams, thereby causing excessive wear on the support beams which then have to be regularly replaced. In use, the screening apparatus protects the support beam from wear by preventing very fine grade ore known as "fines" from contacting the support beam. The advantage of the present invention is that the screen devices are easily produced and replaced thus reducing wear on the support beams that are more expensive to replace.
According to the specification prior art attempts to mitigate this problem included coating of the support beams with a resin. This has only been partially successful.
The specification ends with 20 claims. There is only 1 independent claim. Claim 1 reads as follows:
"A shielding device for a support beam of a support frame in screening apparatus of the type having at least one screen panel securable to the support frame, the device including: an elongate body portion for extending along the support beam so as to be located between the support beam and an edge region of the screen panel which extends along the support beam, and at least one projecting portion, the body portion and the projecting portion providing at least one surface which, in use of the shielding device, extends along below the edge region of the screen panel for collecting material that passes over or through that edge region and deflecting it away from the support beam."
Claim 15 while dependent on claim 1 defines a screening apparatus.
"Screening apparatus including: a support frame having support beams, at least one screen panel having opposite edge regions supported on and secured to respective support beams, and a plurality of shielding devices according to any preceding claim located between the screen panel(s) and each support beam for collecting material that passes over or through the edge regions and deflecting it away from the support beams."
Throughout the evidence, the terms shield device, shedder plates and cover strips are used interchangeably.
Mr Cowin referred to the remarkable effect the device had on wear. Mr Cowin's statements are reflected in the statutory declaration of the inventor, Mr Woodgate. Mr Cowin presented the following explanation.
"The extent to which they protect the beams has been surprising even to the applicant. At the time of development of the device, it was expected that it would improve the protection of the beams because of the way in which it shed the fines away from the support beams. That is, it moved the fines coming down between the screen panels almost immediately away from the underlying support beams. Rather than tracking along the shielding device and causing grooves or slots to form in the device and then into the underlying support beams, the fines were found to very quickly move laterally of the shielding device and over the edge or wing regions.
It is believed that that favourable movement of the fines is caused by the vibration of the edge regions of the shielding device. Those vibrations upset the usual tracking of the fines along the shielding device and underlying support beams, causing the fines to be laterally deflected. In any event, the shielding device causes a quite rapid shedding of the fines as they pass through the adjacent screening panels rather than remaining on the shielding device so as to cause their erosive wear."
DECISION
Opponent’s submissions
Mr Mischlewski suggested that the evidence points to a pattern of behaviour that on the balance of probabilities the shedder plate was manufactured by the opponent and sold to Argyle before the priority date. He argues that the evidence of the development of the shedder plate coupled with the existence of the engineering drawings indicate that sales were made to the mining companies. An essential feature of his submission is the existence of an invoice for sale of the shedder plate to Argyle Diamond Mines. It is alleged that this shedder plate is substantially identical to the shielding device of the current patent applicant.
Mr Mischlewski also makes the point that the opponent considered that the cover strip was a minor invention and was going to be not a major profit earner. Hence, it was not made the subject of a patent application.
He submitted that the evidence of Woodgate and Taylor who state that they never saw the shedder plate before the priority date is explained in the second declaration of Mr Zubovich. He refers to the declaration of Mr Murphy, the only independent witness, who made no comment about the shedder plate and suggests that this is a significant omission. Mr Zubovich explained in his second statutory declaration that the devices are difficult to see in use but that a motivated person would observe them. Such a motivated person was Mr Dixon who attested to this fact. Mr Dixon also attested to the sale of the shedder plate to Argyle Diamond Mines. The opponent had located a single invoice of sale and suggested that this is sufficient to deprive the invention of novelty.
Summary of Opponent’s Submissions
Mr Mischlewski for the opponent made the following submissions.
Shields (as shown in exhibits JZ-3, JZ-4, and AD-1) for protecting support beams in screening machines were publicly available in Australia before the priority date.
The public availability is demonstrated by the fact:
that the opponent had product available for sale and supplied illustrations to customers as shown in exhibit JZ-11,
that shields were sold as shown by the invoice in exhibit JZ-6,
that shields were installed in screening equipment at Argyle Diamond Mines as declared by Andrew Dixon, and
that installed shields were available to be inspected as declared by Andrew Dixon.
These shields are substantially identical to the drawings of the shields in the opposed patent application.
Consequently the invention as claimed in claims 1 -14 and 19 is not novel and is not inventive.
The screening apparatus as claimed in claims 15 - 18 and 20 is also not novel and not inventive in view of the installation of the shields at the Argyle Diamond Mine as declared by Andrew Dixon.
A single supply of the shields to a mine site within Australia is sufficient to establish lack of novelty. [See Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd 47 IPR. 257 pp 325-327]
Summary of the Applicant’s Submissions
Mr Cowin made detailed submissions at the hearing. Essentially, Mr Cowin made the following points.
The evidence does not clearly show that the drawings (JZ-4, JZ-5 and JZ-11) are in respect of the green shedder plate or, in the alternative, were in existence before the earliest priority date or, in the alternative, were publicly disclosed before the earliest priority date of the patent application;
The evidence does not clearly show that the green shedder plate (the invoice; JZ-6) was in fact in existence as at 25 March 1996;
The evidence does not clearly show that there was non-confidential provision of the green shedder plate (JZ-4, JZ-5 and JZ-11) through tenders;
The evidence does not clearly show that the green shedder plate was installed at the Argyle Diamond Mines as at 25 March 1996.
The Cover Strips
Three cover strips were filed as physical evidence in support of the opposition. The first cover strip (called the red cover strip) was a flat rectangular strip of polyurethane. The second cover strip, although not relied upon, is described as "including side flanges which elastically gripped the sides of the frame members" (by Jeff Zubovich) or an "inverted polyurethane channel" (by Andrew Dixon). The third cover strip (the green shedder plate) has a central portion with two side flanges that project downwardly and outwardly (by Jeff Zubovich) or has members angled outwardly at 45 degrees (by Andrew Dixon). All cover strips have central holes spaced along their central portions to take the bolts for connection to the support beams.
It is clear from the submissions of both parties that neither the first cover strip nor the second cover strip renders the claims as lacking in novelty or an inventive step. It is clear to me that the differences between these cover strips and the cover strip of the claims are substantial. I cannot see any argument based on the features of these cover strips that would render the claims as lacking novelty or an inventive step. However the third cover strip, again from the submission of both parties, "seriously" challenges the novelty of the invention. There is no doubt, and I can see none, that this exhibit falls within the scope of the article claims 1-14 and 19. The substantive argument to be addressed by the parties is whether this cover strip became public knowledge through the opponent's tenders for sale and through installation by the opponent of the third cover strip at Argyle Diamond Mines before the priority date of the application.
A major feature of Richardson Pacific's submission is that the evidence points to a development of the cover strip before the priority date and also points to the sale of the cover strip to mining sites throughout Australia. In addition, engineering drawings of the cover strip were shown to clients in a non-confidential manner before the priority date and it is argued that it is more likely than not that these showings occurred before the priority date. Furthermore, it is submitted that the evidence points to the fact that it is more likely than not that the invention had been installed and used at Argyle Diamond Mines.
The Drawings
Exhibit JZ-4
Exhibit JZ-4 is a drawing entitled "Screenex polyurethane Cover Strips" was dated 12 October 1987, and was drawn by JZ (Jeff Zubovich). It gives the length of the cover as 1219.2mm, a width of 60mm (having two wings) and 78mm (having a single wing for the edge version). Typical spacing between the holes is 101.6mm with the wings being angled at 45 degrees. The invention is clearly disclosed in this drawing. However, Mr Cowin points out a number of difficulties with the drawing.
The drawing appears to be computer generated sometime after is was originally drawn,
It was redrawn on 3 June 1997, a date after the priority date,
It refers to the company's ABN number, however such numbers did not come into operation until 1 January 1991,
It bears the current logo of the opponent whereas in 1987, the company was known as D. Richardson & Sons Limited.
All this suggests that the drawing put into evidence may not be an accurate reflection of what was drawn on 12 October 1987. Mr Mischlewski did not dispute this. Indeed, he agreed that there might be some doubt about any modification that may have occurred since it was originally drawn. Mr Mischlewski seemed to suggest that I should at least accept what was disclosed in the drawing that was consistent with the disclosure of the drawing JZ-5 that has a latest date of disclosure of 26 February 1990. I agree with Mr Mischlewski that this drawing should not be totally discounted. Clearly it was produced later that its original drawn date of 12 October 1987. I accept the limitation suggested by Mr Mischlewski as being reasonable. Therefore, I conclude that the drawing, although reproduced later, only reflects what is disclosed in the drawing of JZ-5. With this limitation, I conclude that this drawing can be taken into account.
Exhibit JZ-5
Exhibit JZ-5 is a drawing entitled "Screenex-Kit Frame Installation Details" and was dated 12 October 1987 and was drawn by JZ (again Jeff Zubovich). This drawing unlike the drawing of JZ-4 is hand drawn with hand written annotations. The title block refers to the company name as Richardson Pacific Limited and as "incorporated in Victoria". According to the evidence obtained by Mr Cowin from the Australian Securities Commission, this places the date of the drawing as between 1 July 1988 and 1 January 1991. The drawing was revised on 26 February 1990. One of the annotations on the drawing refers to a polyurethane shedder plate. The plate is 1219.2mm long and has wing sections with holes set apart by 120mm. It is 304.8mm wide. There is nothing to suggest that this drawing was drawn later than the priority date.
Mr Cowin alleges that the shedder plate of the drawing, because of its dimensions could not function as a shedder plate according to the invention because of its positioning and dimensions as shown in the drawing. While this may be correct, dimensions do not limit the claims. Indeed, claim 1 is directed to a shielding device suitable for use in a particular environment. There was some suggestion that this drawing related to the wide version that was used on machine frames as compared with the use on panel support frames of the present invention. However, this does not prevent the drawing from being considered as relevant prior art. Therefore, I conclude that this drawing can be taken into account.
Publication of exhibits JZ-4 and JZ-5
Mr Zubovich made it clear that the company did not advertise its shedder plates. He stated.
"Richardson Pacific Limited does not advertise or promote the sale of cover strips and they are not mentioned in any catalogue, brochure, leaflet, or other promotional literature."
In the first Zubovich declaration, the first cover strip was declared as being "supplied" and "installed at mining sites in Australia in 1985 and the second cover strip was declared to be "sold and installed at mining sites in Australia in 1986". However, the third cover strip is declared as being "developed" in 1987. This date is consistent with the completion dates of the drawings of exhibits JZ-4 and JZ-5. However, the mere existence of these engineering drawings does not in themselves establish that the third cover strip was known before the priority date.
Mr Zubovich states that the drawings were completed on certain dates, but does not state whether these drawings were published. He makes general remarks about drawings being given to mine sites but there is no direct reference to these specific drawings. In relation to sample engineering drawings of exhibit JZ-11, Mr Zubovich in his second statutory declaration stated that these drawings formed part of quotations made to various mine sites in Australia. Significantly, no mention is made of the drawings that formed part of exhibits JZ-4 and JZ-5. Mr Zubovich is also very clear that no brochure etc included the cover strips. There is simply no evidence of the drawings of exhibits JZ-4 and JZ-5 even becoming public knowledge. At best, they remained within the knowledge of the opponent company at the priority date of the application.
Hence, I am of the view that there is insufficient evidence to conclude that the drawings in exhibits JZ-4 and JZ-5 became public knowledge before the priority date.
Exhibit JZ-11
Exhibit JZ-11 relates to a "sample set of drawings submitted as part of quotations made to various mine sites in Australia". Two of the drawings bear a date of May 1996, which is after the priority date of the application. Hence, these drawings are not relevant for novelty purposes.
In relation to drawings in general, Mr Zubovich stated in his first declaration the following.
"It is the practice of Richpac [Richardson Pacific] when tendering for sales of screening equipment to include drawings in the tender documents. It is also the practice of Richpac to provide copies of drawings of screen decks and components to prospective customers. Such disclosures are usually not confidential in nature as they are in respect of an offer for sale. Since 1987 and prior to March 1996 I have shown these drawings to many customers and potential customers."
Further Mr Zubovich states that the drawings were left at the mine site.
"These drawings sometimes include cover strips as part of the equipment covered by the quotation. If the quotation was unsuccessful, the drawings are left at the mine site. If the quotation is successful the drawings are formalized with component numbers and a laminated set is provided to the customer to facilitate future order placement."
The point being made in this declaration and argued by Mr Mischlewski is that the drawings became public knowledge before the priority date of the application. Mr Cowin submitted that I should discount these drawings because of the doubt about their authenticity and because there is no direct connection between these drawings and any sale.
One drawing entitled "HMS Float Screen Bottom Decks" is dated 25 January 1995 and annotated with the text "Screenex panels" and "2mm polyurethane cover". This drawing is dimensioned to be about 3mm long. It is very clear from the drawing that the cover strip does not possess 'wings'. Although there is no declaratory evidence given on what this drawing discloses, at best it appears to me to disclose the red cover strip.
The remaining relevant drawing is dated 1 July 1993 and is entitled "Poseidon Bow River Diamond Mine". The annotation on this drawing refers to "poly cover strips". There is no declaratory evidence given on what this drawing discloses. The dimensions of the cover strip are 1828.8mm in length. It is 143mm wide with a central section of 83mm and has two side portions of 30mm width. Mr Mischlewski suggested that these items form the wings of the green shedder plate. I am not so sure. The drawing may reflect the dimensions of the second cover strip which is U shape in configuration. There is insufficient information in the drawing itself to warrant concluding that it discloses the cover strip of the invention. Furthermore, although the drawing is dated prior to the priority date and is entitled "Poseidon Bow River Diamond Mine", there is no actual evidence of publication of the contents of this drawing, e.g. by sale.
I observe that there is no direct evidence that any of the drawings of exhibit JZ-11 were published. Mr Zubovich stated that these drawings were "prepared for mine personnel at the mine site identified on the drawings and were not given out to other suppliers such as BPE". This as Mr Cowin submitted suggests that the drawings were confidential. Nevertheless, it remains unsaid whether these quotations were in confidence and whether they entered the public domain. In conclusion, there is insufficient evidence that these drawings were publicly known before the priority date of the application.
The Invoice (Exhibit JZ-6)
Exhibit JZ-6 is a copy of an invoice for a sale to Argyle Diamond Mines Pty Ltd dated 17 January 1996. It refers to "poly covers strips 1828x60x2mm". Mr Zubovich explained in his declaration that the practice of Richardson Pacific was not to keep records of invoices for more than two years. However, one such invoice was located that related to a sale before the priority date. Mr Zubovich stated in his declaration that this invoice related to the green shedder plate as was exhibited in exhibits JZ-3 and JZ-4. Mr Cowin contests this point. Specifically Mr Cowin refers to the drawing of exhibit JZ-4 that disclosed a length dimension for the green shedder plate as being of 1219.2mm which differs from the length dimension given in the invoice. Mr Cowin also referred to the fact that inspection of the sample (exhibit JZ-3) clearly indicates that the green shedder plate has an overall width greater than 60 mm and thicker than 2mm. Clearly, no length for the green shedder plate can be determined from the sample.
At this point in his submission, Mr Cowin states that green shedder plates are manufactured in lengths of 1220mm, as they are gravity moulded. Moulds for the production of the green shedder plates form exhibits JZ-7 and JZ-8. Mr Cowin then states that the production of a length greater that 1220 would not be possible given its method of manufacture. Mr Cowin concludes that the invoice does not relate to a green shedder plate but rather relates to the red cover strip. This is exhibited in JZ-1 and is 60mm wide and 2mm thick. Accordingly, to Mr Cowin the process for the production of the red cover strip is by centrifugal casting that would produce a flat strip of 3m in length and 2mm in thickness. The strip would, because of its manufacturing process, have a tendency to curl. This is observed with the current sample. I note that there is no evidence before me of the method of manufacturing of red cover strips and green shedder plates. There is no hint in the specification of the typical dimensions for the green shedder plates. Mr Mischlewski contended that the suggestions of Mr Cowin were mere unsubstantiated evidence. However, I am not totally in disagreement with Mr Cowin’s assessment. This will become clear when I refer to the second Cowin declaration.
The second Cowin declaration exhibits in GLC-10 and GLC-11 invoices from Richardson Pacific relating to the red cover strips and green shedder plates respectively. These invoices are dated later than the priority date of the application. These invoices were grouped by the opponent and were filed in response to the notice to produce. The grouping in exhibit GLC-10 covers the years 1996 to 1999 and relates solely to sales of the red cover strips. All relate to sales to Argyle Diamond Mines. Generally, they refer to "Richardson-Screenex poly cover strips". One invoice gives a dimension "Richardson-Screenex poly cover strips 1828.8mm long". Another invoice refers to "poly cover strips", and "cover strips edge, polyurethane". The grouping in exhibit GLC-11 covers the years 1997 to 1999 and relates to the sales of the green shedder plates. Again, most of the sales are to Argyle Diamond Mines. This group refers to "dewatering screen rail cover strips 1220 x 60 mm includes 9 off centre and 6 off edge", "Richardson-Screenex poly cover strips", "poly cover strips 1220mm long 25mm hole @ 101.6 centres", "cover, polyurethane, cover strips edge, polyurethane". It is obvious that the characterisation of cover strips is used interchangeably between the red cover strip and green shedder plates. However, in one example of the red cover strip, the length dimension is given as 1828mm while in two examples of the green shedder plate the length dimension is given as 1220mm. There is at least consistency between these invoices and the submissions of Mr Cowin. Further, in the sample drawings of quotations, the drawing dated 21 May 1996 and entitled "Screenex panel proposal 1 for Lindell Coal" clearly illustrates the winged polyurethane cover strip and gives dimensions of 60 x 2 x 1220. Exhibits JZ-4 and JZ-5 that illustrate the green shedder plates of the opponent gave a length dimension of 1219.2mm. This suggests that the green shedder plate produced by the opponent was approximately 1220mm long. Hence the sole invoice produced before the priority date, which gave a dimension of 1828 must, in all probability, relate to the red cover strip and not to the green shedder plate. I am thus more inclined to accept Mr Cowin's explanation on this point, as it seems to be a more probable explanation. Hence, I consider that is more probable that the invoice JZ-6 related to the sale of the red cover strip rather than the green shedder plate and thus there is no evidence of any sale of the opponent's green shedder plate before the priority date.
Argyle Diamond Mines
The allegation is that Richardson Pacific installed cover strips substantially identical to the present invention at Argyle Diamond Mines before the priority date of the application and that equipment installed with these cover strips could be viewed.
Zubovich Declarations
Mr Zubovich stated that the red cover strip was first supplied in 1985 to mining sites in Australia. In 1986 a second cover strip (the U shaped strip) was developed, and in 1987 the third cover strip was developed.
"One of Richpac's [Richardson Pacific] regular customers for the polyurethane cover strips shown in exhibit JZ-4 is Argyle Diamond Mines of Western Australia. Exhibit JZ-6 is a copy of invoice 00222597 dated 17th January 1996 which on the second page itemizes a polycover strip which is the same as that of exhibit JZ-3 and exhibit JZ-4."
I have already discussed this invoice and concluded that it related to the red cover strip. With the removal of this piece of evidence, there is no definitive statement from Mr Zubovich that directly supports the use of the third cover strip at Argyle Diamond Mines before the priority date.
Dixon Declaration
The opponent, Richardson Pacific, from April 1995 to June 1997, employed Andrew Dixon as a national sales manager. In addition, from August 1998 to December 1991 and from October 1993 to May 1995, Mr Dixon worked at the Argyle Diamond Mine Alluvial Operations. During his period at Argyle, Mr Dixon referred to the use of polyurethane cover strips that did not last long. He also mentioned the use of upturned channel cover strips that were 305mm long. It is clear from his description of these cover strips that the red cover strip and the U shaped cover strip are being described. He also stated that with Richardson Pacific's latter modification of coated polyurethane rails, the need for cover strips was eliminated. Up to this point in his declaration, the clear implication is that Mr Dixon observed both the first two cover strips and the coated rails.
However, Mr Dixon then went on to state in his declaration that he "remembers" three different designs of cover strip, with the third strip having side members angled outwardly at 45 degrees. Although Mr Dixon refers to the third type of cover strip, he does not state that he saw them when he was employed at Argyle or when employed by the opponent. What he stated is as follows.
"Exhibit AD-1 is a sample of the third type of frame shield supplied by Richardson Pacific to Argyle. These shields were placed on the panel support frames or the machine frames."
This is not a clear statement from Mr Dixon to the effect that he saw the green shedder plate installed in the equipment at Argyle, before the priority date. Mr Mischlewski suggested that in the context of the declaration, Mr Dixon was clearly making statements about his period of employment at Argyle. Mr Mischlewski also suggested that as Mr Dixon no longer works for either Argyle or Richardson Pacific, then he would not have access to documents and records that would refresh his memory. I am not so sure. My understanding is that the opponent has put before me all of the relevant documents that it could locate. Hence, I am not sure what documents apart from those that are already before me would assist Mr Dixon’s recollection. Thus, as I am uncertain whether Mr Dixon remembers seeing the green shedder plate being used at Argyle either before or after the priority date, I do not feel that the Taylor declaration clearly establishes the green shedder plate being installed and used at Argyle Diamond Mines before the priority date.
Mr Dixon concluded his declaration with the statement that a "visitor could have seen the Richardson cover strips" and that visitors were not under any obligation of confidentiality. Mr Cowin comments that the cover strips can be seen in the machine in use as they extend along the machine frame. Mr Zubovich stated that the cover strips would be difficult to see without the panels being removed. However, this is not to say they were impossible to view. I think it is therefore common ground that if the cover strips were in use at Argyle, then they could be viewed in the equipment in its operational state.
Taylor Declaration
Mr Taylor was an employee of Bateman Process Equipment (BPE) from July 1994 to September 1999. His role was to conducts audits of the screening equipment operated by BPE's clients. Because of his employment, he was familiar with the equipment in use at Argyle Diamond Mines of which there were 32 machines. He states that he was aware of the use of the flat polyurethane cover strips (i.e. the red cover strip) at the Argyle Diamond Mines. He states that in 1996, in some of the machines, the rails were replaced with the coated polyurethane rails. However, Mr Taylor attested that he did not see any of the winged cover strips (the green shedder plate) in use at Argyle Diamond Mines during his employment with BPE. Indeed, he stated that he first became aware of the use of the green shedder plates at the Yandicoogina project in 1998 when BPE manufactures four ore screening machines, two for the Elastomers Australia (a division of the applicant) and two for the opponent, Richardson Pacific. This supply in 1998 is consistent with an invoice dated 18 June 1998 to Metquip (the predecessor to BPE) that is contained in the exhibit JZ-11. Mr Taylor also states that if the green shedder plate were to be in use before the priority date of 25 March 1996, then he would have become aware of it. He also states that during his time at BPE he never saw in any tenders or quotations from Richardson Pacific, any drawings of component parts.
In commenting on this, Mr Zubovich in evidence-in-reply stated that BPE were not clients so they would not have received any drawings. He attested that it was not the practice of the opponent to supply copies of equipment drawings to any other party. In cases when the tender utilises suppliers like BPE, then Richardson Pacific would provide a description of the items to the supplier and the drawings to the mine site. The purpose of this was to prevent the supplier from passing on the drawings to its competitors.
Nevertheless, Mr Taylor when referring to the red cover strip stated that Richardson Pacific supplied the cover strips to BPE for incorporation into the ore screening machine. Additionally, there was the invoice mentioned above attesting to the supply of green shedder plates from the opponent to Metquip (BPE). Clearly, sometimes BPE would be a client and it would be supplied with cover strips for the machines to be supplied.
Mr Cowin believed that BPE, as a manufacturer would build the ore screening machine, test it, dismantle it, and reconstruct it on site. He further believed that BPE would be supplying the whole machine and would not leave elements to be assembled by the mine owner. From the evidence of both Mr Taylor concerning the supply of the red cover strips and the evidence of the invoice to Metquip, there is some evidence BPE received some cover strips from the opponent. Mr Mischlewski suggested that the shedder plates would be fitted at the mine by mine personnel. This is supported in part by the fact that most of the invoices that were obtained under production were directed to Argyle Diamond Mines. Therefore, Mr Mischlewski may be generally correct on the supply to the mine of shedder plates but there were clearly exceptions. Maybe, and I speculate on this, the difference resides in whether a new machine is being installed or whether an existing one is being repaired. The discussion by Mr Cowin and Mr Mischlewski of the roles and responsibilities of the manufacture and supplier is essentially speculative. I also note that there is no evidence from Argyle Diamond Mines as to what it believed were in its machines before the relevant date.
In his evidence-in-reply, Mr Zubovich stated that he was "of the belief that Stuart Taylor while at BPE had an association with the applicant Lettela". From this statement, Mr Cowin suggests that the cover strips were hidden from Mr Taylor when he was inspecting the sites. Mr Zubovich further stated that the screening panels were stripped off to allow easy access for servicing and hence the cover strips would not have been noticed. Furthermore, he stated that the strips are difficult to see when the machine is in operation or when fitted with the screening panels. Therefore, for these reasons, Mr Zubovich concluded, "it is quite possible that the cover strips were not observed". Mr Cowin suggested that even if the covers strips were not physically observed on the machines because they have been stripped off for whatever reason, the effect of the strips would most certainly have been observed as the lack of wear on the rails would have being noticed. There is no suggestion in the evidence of Mr Taylor that he noticed any surprising lack of wear on the support rails. Mr Cowin suggested that a manufacturer like BPE would assemble the whole machine and this would include the cover strip. Mr Mischlewski contests this. He states that the equipment manufacturers like BPE would supply the main frame with the subframe and cover strip being supplied by a component manufacturer like Richardson Pacific. These would be removed before Mr Taylor’s inspection, as they would not from part of his audit. Mr Mischlewski notes that there is no evidence on what is involved in the audit. However, none of this is in evidence; it is mere speculation from each party.
Mr Taylor commented that he did not see a green shedder plate in use at Argyle and was not aware of their use. As Mr Cowin states, an expert like Mr Taylor would have noticed them if they were fitted. As mentioned before, it is common ground from both parties that if the cover strips were in use in the equipment at Argyle, then visitors to the site could see them.
Overall, it seems to me that there is no definitive evidence that points to the use of shedder plates at the Argyle Diamond Mines before the priority date of the application. The evidence of Mr Taylor coupled with the lack of any invoice suggest that the green shedder plate was not in use at Argyle before the priority date. Mr Taylor states that if the green shedder plates were to be in use he would have heard about it. The evidence of the Zubovich and Dixon declarations do not directly and unambiguously state that the green shedder plates were installed at Argyle Diamond Mines before the priority date. Mr Mischlewski suggested the reason why these declarations are not as direct and as forceful as they could have been is due to the lack of evidence. I entirely agree. However, I cannot make up for that lack. The evidence of both parties establishes that before the priority date, the red cover strip, the U shaped cover strip and the coated rails were in use at the Argyle Diamond Mines. Of all the statements made about the use of the cover strips at Argyle, only Mr Taylor has stated that he observed the machines before the priority date. There is no direct evidence from any visitor to the site that they saw the cover strip. There is no evidence from the mine owner. There is no evidence from any employee of Richardson Pacific who could have attested to viewing the machine in use. For these reasons, I can only reasonably conclude that the evidence does not support the opponent’s submission that green shedder plates were in use at Argyle.
Prior Use
The standard of proof required to establish prior user was considered by Graham J. in the UK Appeals Tribunal in Seiller's Application (1970) RPC 103 at 106 as follows:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
Another case on this point is Windsurfing International Inc v Petit; Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135, in which it was stated:
"It is essential that an allegation of prior public use should be strictly proved. Evidence, which is uncorroborated, is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances having regard to the gravity of the allegation."
Mr Mischlewski referred to the case Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd 47 I.P.R. 257 pp 325-327 which cited as authority the Bristol-Myers Company (Johnson's) Application [1975] RPC 127.
"The law as to prior user seems to be this, that if the article has been manufactured and sold that gives the means of knowledge to the purchaser and that is enough to establish prior user."
Mr Mischlewski is suggesting that it is more likely than not that before the priority date the opponent manufactured green shedder plates, sold the green shedder plates to Argyle Diamond Mines, and that the green shedder plates were installed in equipment at Argyle. He suggests that the sales were not in confidence and that any visitor or any employee of the mine would be able to view the green shedder plates in use in the equipment.
However, there is no corroborative evidence to support Mr Mischlewski’s submissions. Accordingly, I do not believe that the case on prior use has been made out.
Application of the shedder plate
Mr Cowin suggested that if I found that the shedder plate was public knowledge before the priority date, claim 1 would still be novel as the application of the shedder plate by the opponent was different to the application of the shedder plate of the invention. Specifically Mr Cowin suggested that there was no evidence that the green shedder plate was positioned along a support beam on which a screening panel of a screening apparatus is secured and an edge region of the screen panel extending along the support beam. Mr Cowin points out.
"The evidence before you makes reference to the green shedder plate being fitted to "support frame members" (paragraph 8 of the first Zubovich Declaration), "on the machine frame under the support frame" (paragraph 10 of the first Zubovich Declaration), "a shield on a machine frame" (paragraph 3 of second Zubovich Declaration), "the panel support frames" and "the support frames" (paragraph 3 of second Zubovich Declaration), "cover strips as part of the equipment" (paragraph 6 of second Zubovich Declaration), "strips to protect the full frame support deck" (paragraph 5 of Dixon Declaration), "strips to cover the rails" (paragraph 6 of Dixon Declaration), and "on the panel support frames or the machine frames" (paragraph 8 of Dixon Declaration). However, none of those references to the positioning of the green shedder plate clearly equates with the intended positioning of the shielding device. It is not at all clear that the green shedder plate had the same intended purpose and application as the shielding device as defined."
Claims 1 to 14 and 19 relate to a shielding device whereas claims 15 to 18 and 20 relate to a screening apparatus. The language of claim 1 refers to the device "for a support beam of a support frame in screening apparatus of the type having at least one screen panel securable to the support frame". Clearly, the device needs to be suitable for use in a particular environment. It is not necessary for the evidence to establish that it was directed to be applied in such an environment, it merely needs to demonstrate suitability. This is not the case with claims 15 to 18 and 20 which relate to "screening apparatus including: a support frame having support beams, at least one screen panel having opposite edge regions supported on and secured to respective support beams, and a plurality of shielding devices". Although there is some merit to Mr Cowin's argument regarding the application of the shedder plate, his argument does not apply to the device claims. There may well be some merit in applying the argument to the apparatus claims. There is some support for this latter view when considering the opponent's first ground of opposition namely that "the invention is no more than the new use of a known device [a beam shield] in a new setting for the same general purpose, namely to prevent abrasion of the beam". From this statement, it could be inferred that the opponent held similar views about its cover strip. This may help explain the difficulty with the Poseidon River Bow Diamond Mine drawing of exhibit JZ-11 in that the application of the shedder plate may differ from that of the invention. However, this is not a point that was strongly argued by either party. It is not clear to me whether the words as quoted from the various declarations support Mr Cowin's argument or not. I feel that lack of expert evidence hampers the analysis. Therefore, as the point is not crucial to my decision, I am not going to decide it.
As a further consequence, I also do not need to decide the subsidiary argument on lack of inventive step against the screening apparatus of claims 15 to 18 and 20.
Pattern of behaviour
As previously mentioned, Mr Mischlewski suggested that the evidence points to a pattern of behaviour that on the balance of probabilities the shedder plate was manufactured by the opponent and sold to Argyle before the priority date. He argues that the evidence of the development of the shedder plate, the history of supplying tenders and quotations to mining sites, coupled with the existence of the drawings of the shedder plates themselves all serve to indicate that manufacture and sale were likely to have occurred. In summarising the position of the opponent, Mr Mischlewski holds that the opponent is not relying on a single instance of publication but rather on a pattern of behaviour of the development of the shedder plate and the disclosure of it via quotations to mining sites. Although the drawings that accompanied these quotations were stated to be in confidence, in practical terms, Mr Mischlewski states that this would not have occurred. He states that the sales to the mining sites were not in secret as any employee could have viewed the shedder plate in use. At the very least, Mr Mischlewski holds that the employees at the mining site would have seen the device and that this would be enough to establish prior user.
While Mr Cowin agreed that there was a pattern of behaviour that extended back to 1987, he argues that that is not clear where in the timeframe these events took place. Hence, Mr Cowin submits that on the balance of probabilities that no sale, installation, and use occurred before the priority date.
I agree with Mr Cowin on this point. There is simply insufficient evidence to substantiate the opponent's argument.
CONCLUSION
I have found that the evidence is not persuasive that the invention lacks novelty. No ground of opposition has been made out. Hence, I direct that the application be sealed after 30 days from the date of this decision. If the Commissioner has been served with a notice of appeal before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS
Costs normally follow the event. I can see no reason to depart from this practice. Hence costs are awarded against Richardson Pacific Limited.
G.M.Cox
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Phillips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for the opponent : Darryl Mischlewski, Melbourne
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