Lucasfilm, Ltd v Peter Scott Krix

[1990] APO 37

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 570245 by LUCASFILM, LTD. and Opposition by PETER SCOTT KRIX under Section 59.

Background
        Application 570245 for an invention entitled "Motion Picture Theater Loudspeaker System" was lodged by LUCASFILM, LTD on 8 May 1984.  The application claims priority from an earlier application filed in the USA on 9 May 1983.  Acceptance of the application was advertised in the Official Journal on 10 March 1988 and on 3 June 1988 PETER SCOTT KRIX (Krix) lodged a s.59 notice of opposition to the grant of a patent on the application.
        Evidence in support, consisting of a statutory declaration and three exhibits, was served by the opponent on 4 November 1988.  The applicant was granted several extensions of time to serve evidence in answer, but on 6 September 1989 served a notice under reg. 57A indicating that no evidence would be lodged.
        The matter was heard in Canberra on 20 March 1990.  At the hearing the applicant was represented by Mr Keith Callinan, a patent attorney of Callinan Lawrie, Melbourne.  The opponent Peter Scott Krix was present at the hearing but was represented by Mr Alun Thomas, a patent attorney of Collison and Co., Adelaide.
        The notice of opposition lists those grounds of opposition as specified in paragraphs (d)‑(i) of s.59(1).

The Specification
        The invention is concerned with acoustics and sound reproduction and is particularly directed to "overcoming some of the interrelated loudspeaker and acoustical problems encountered in the motion picture theater environment".
        The description indicates that whilst motion picture sound quality has advanced substantially in recent times, optimum reproduction of that sound in the theatres has been affected since very few theatres incorporate state‑of‑the‑art sound reproduction technology.  It is said that reproduction of the sound by the prior art systems commonly results in bass distortion at high sound levels, a "camel‑back" shaped power response, and a high frequency component which is affected by the reflection and transmission effects of the theatre screen.  The present invention is said to address these deficiencies.
        The loudspeaker system of the invention is described in the specification in the environment of a motion picture theatre with reference to a number of drawings.  Figures 1 and 2, which are reproduced as an appendix to this decision, show the theatre screen and loudspeaker assembly, and detail of the loudspeaker system, respectively.  The loudspeaker assemblies are mounted on an acoustical boundary wall (10) which itself is spaced a small distance behind the theatre screen (2).  Direct radiator cone diaphragm drivers mounted in (preferably vented) box enclosures (18) are employed in the invention as the low frequency or woofer loudspeaker elements.  The description on pages 7 and 8 of the specification mentions articles by various authors, including Richard H. Small, on such loudspeaker elements and refers to the arrangement of those elements of the invention as follows:

"Small's studies assumed that the direct radiator vented box loudspeakers radiated into a 2‑pi steradian radiation angle environment (true half space).  A reasonable simulation of such a condition in a practical environment is to locate the front surface of the loudspeaker flush with an acoustic boundary, such as the acoustic boundary wall 10, such that any intersecting boundaries (such as the stage floor 4) are reasonably far removed."

With respect to the high frequency loudspeaker arrangement the description comments at page 8:

"While desirable from the standpoint of low frequency sound reproduction, the acoustical boundary wall 10 exacerbates the problem of high frequency screen reflected sound by trapping high frequency energy and thereby causing comb filtering effects and delayed reflections that tend to destroy stereo imaging and to disturb the frequency response and high end tone balance."

To overcome this problem the description states that:

"... the present invention applies a sound absorptive means 12 to the acoustical boundary wall 10 at least in the vicinity of the high frequency loudspeaker elements (8).  The sound absorptive means 12 is preferably frequency dependent and has acoustic characteristics such that low frequency sound energy is substantially transmitted but that high frequency sound energy is substantially absorbed.  Ideally, the acoustic characteristics of the absorptive means are complementary to the high frequency reflection characteristic of the screen such that the absorption increases as the degree of reflection increases with frequency."

The opposed specification has 21 claims consisting of 1 independent claim, 19 dependent claims and an omnibus claim.  Claim 1 reads:

"1.A loudspeaker and motion picture screen system for use in a theater, the system including

a motion picture screen which is substantially transmissive to low frequency sound energy and which becomes increasingly reflective as the frequency of the sound energy rises in the high frequency region,

acoustical boundary means substantially parallel to, spaced from, and at least partially co‑extensive with said screen, said acoustical boundary means having the acoustic characteristics of reflecting low frequency and high frequency sound energy,

loudspeaker means adjacent said acoustical boundary means, said loudspeaker means including at least low frequency and high frequency loudspeaker elements radiating sound energy toward said screen, the screen facing portion of the low frequency loudspeaker element or elements substantially flush with said acoustical boundary means, and

sound absorptive means adjacent said acoustical boundary means in the vicinity of said high frequency loudspeaker element or elements, said absorptive means having acoustic characteristics such that high frequency sound energy is substantially absorbed, whereby the re‑radiation of reflected high frequency sound energy from said screen is reduced."

Dependent claims 2 to 4 characterize the "sound absorptive means", whereas claims 5 to 20 define particular features of the loudspeaker means such as types of loudspeaker elements, the relative location of the loudspeaker elements, and crossover network means therefore.
The Evidence
        The sole statutory declaration lodged as evidence in support is by the opponent Krix and is dated October 1988.  Krix, of Adelaide, states that he has a degree of Bachelor of Technology in Electronic Engineering, that he has "had 12 years experience in the manufacture and installation of loudspeakers and loudspeaker systems", and is the proprietor of Krix Speaker Systems.
        Krix deposes as follows:

"3.THAT in 1980, I designed a Cinema loudspeaker system for the Capri Theatre in Goodwood, South Australia.  This design used a foam wall immediately behind the cinema screen through which extended the loudspeakers.  This arrangement was successful but I subsequently installed a solid wall behind the foam and its performance was improved.

4.THAT before December 1982, at the request of Greater Union Theatres, I designed a loudspeaker system for Hindley Cinemas Numbers 5 and 6.  The design characteristics of the design came from my expertise, knowledge and training in the field of acoustics and sound engineering.  In December 1982 I actually installed the speaker system in the theatre.

5.THAT each of the installations in Hindley Cinemas Numbers 5 and 6 are as illustrated in the sketches shown in Exhibit PSK1 attached hereto.  The features will be described below.  One sketch shows a front view of the installation and the other shows a plan view of part of the installation.

6.THAT each installation comprises a foam and plywood false wall supported on a metal frame built behind the cinema screen and parallel to the screen at a distance of about 50 mm from the screen.  The wall extended from the floor and upwards for about 7 metres."

In clause 7, Krix describes the loudspeaker arrangement of each installation; in clause 8 he mentions that virtually the entire front of the plywood wall was covered with sound absorptive foam, which foam had an absorption coefficient for sound which increases with frequency; in clause 9 he states that the pairs of loudspeakers were installed with a crossover network; and in clause 13 he mentions in broad terms features of claim 1 and compares his arrangement with those claimed features.
        Exhibit PSK1 comprises two sketches of the installation as mentioned in clause 5 by Krix.  One sketch illustrates 3 loudspeaker arrays behind the screen (one central and one close to each end of the rectangular screen area), the arrays being at about the horizontal midline of the screen.  The other sketch illustrates a plan view through a loudspeaker array ‑ this sketch appears to show the front extremity of the high frequency horn flare and the front of the low frequency enclosures terminating in front (i.e. on the screen side) of the plywood wall.
        The two sheets of Exhibit RSK1 are not the original sketches made but are clearly copies on facsimile paper; apart from the illustrations they bear printing, commonly seen on a document received via facsimile, which identifies the date and the source and/or receiver.  The dates on the sheets are "19‑OCT‑88 WED" and "14‑OCT‑88 FRI" respectively.  There is nothing on the sheets of Exhibit RSK1 to indicate that the original sketches were drawn earlier than 1988 or that they formed working design drawings for the Hindley Cinemas installation.
        In clauses 10 to 31 of his declaration, Krix refers to the opposed application and compares the invention claimed with the installation at the Hindley Cinemas.  The opponent has not lodged any corroborating evidence regarding the installation at those cinemas such as by way of original plans, contracts, advertisement of opening of the theatres, or supporting declarations by staff of Greater Union Theatres.
Submissions
        Mr Callinan for the applicant, submitted that no evidence in answer was lodged in this case simply because there was no case to answer.  This, in his submission, arose because of the nature of the evidence filed by the opponent which he classified as "unsubstantiated allegations".  However if there was a case to answer he advanced three main submission points : firstly, the evidence is inadmissible on the grounds that there is no corroboration of the matters alleged; secondly, if admitted, the evidence does not establish any ground of anticipation of the claimed invention; and thirdly, the opponent bears the onus of proof and has not fulfilled that onus.
To support his submissions, Mr Callinan referred to a Patent Office decision Jarvis v Doman 3 IPR 300 at 306 as showing the need in certain instances for two persons to give evidence in order for it to be corroborated. He also referred to Dunlop Holdings Ltd's Application [1979] RPC 523, a case dealing with the burden of proof and the standard of proof, to support his submission that the onus of proof in this case rested on the opponent. He said that in this case it was up to the opponent to establish the relevant facts of the alleged prior use installations and to prove the necessary elements of a valid ground of opposition.
        Mr Callinan submitted that the evidence lodged to support the opposition consists of statements by the opponent regarding loudspeaker systems he allegedly designed and installed some 6 or more years prior to the date of his declaration.  There is no evidence adduced either by Krix or an independent witness to substantiate the matters covered by the statements, and thus he submitted that the opposition is based on "unsubstantiated allegations".  For instance there is no corroboration of the construction of the alleged prior use, the time of the prior use and no evidence to suggest the use was not secret use.  He suggested that the opponent should have been in a position to substantiate and corroborate such matters via documents such as invoices, original drawings or evidence from the owners of the theatres.  Consequently, Mr Callinan concluded that the opponent had failed to provide the best evidence.
        Referring to the evidence lodged, Mr Callinan submitted that it lacked sufficient detail as to the alleged prior installations to be able to conclude that the prior installations were of a construction corresponding to the invention claimed.  He drew attention to some inconsistencies in the evidence and also to portions of the evidence which suggested to him that the prior installations had crucial differences from the invention claimed.  Thus given the evidence on file he argued that the opponent had not established anticipation of the invention due to prior use.
        In his submissions on behalf of the opponent Mr Thomas firstly drew attention to the definition in the claims, particularly claims 1 to 4.  He argued that these claims were loose in definition and difficult to interpret : he pointed to seven passages in claim 1 to support his argument.  Furthermore he submitted that claim 1 was not fairly based since it did not define a construction restricted to certain features mentioned on page 3 of the specification, which he submitted were essential features of the invention.
        Regarding the evidence lodged by the opponent, Mr Thomas emphasised that the declaration was by Krix, the person who actually designed and installed the systems mentioned in the declaration.  The evidence was not hearsay evidence but direct evidence from the person with knowledge of the installations, and thus this evidence is entitled to be given full weight.
        As to the evidence itself, Mr Thomas said the opponent relied on the loudspeaker installation at the Hindley Cinemas for anticipation purposes of the claimed invention.  He disagreed with Mr Callinan's comments that the nature of the installation could not be sufficiently ascertained from the evidence, and submitted that the evidence established that the system installed included all the features of the system defined by claim 1.  With regard to the appended claims he submitted that those features were either also incorporated in the Krix installation or features commonly employed in the art as is suggested in the specification.
        Mr Thomas explained that the Hindley Cinemas referred to are in Hindley Street, Adelaide and that a "gala opening" for the theatres with the Krix designed loudspeaker system installed was held on 9 December 1982.  At the time he said the theatres were operated by Greater Union Theatres and still are today.  He said that the management of Greater Union Theatres were under no obligation to keep the loudspeaker system installed confidential.
        In reply to Mr Thomas' submissions, Mr Callinan submitted that a number of statements of Mr Thomas (see previous paragraph) present facts which are not in the evidence and cannot be admitted.  He said the evidence lodged did not identify where Hindley Cinemas were located so the applicant was not in a position to inspect them to establish what system was installed.  In any event he submitted that the opponent has not established that the system allegedly installed by Krix at the Hindley Cinemas, whatever its construction may have been, was in fact used before the priority date of the present invention and did not involve secret use.
Section 40
        Mr Thomas raised a number of matters in his submissions which, he argued, meant that the specification failed to comply with Section 40.  These concerned fair basis and clarity of the claims.
        On the fair basis point, Mr Thomas submitted that certain features mentioned on page 3 of the specification, which appeared to be essential features of the invention, were not included in claim 1.  The features of the system referred to on page 3 were:

(a)low frequency loudspeakers positioned a sufficient distance above the stage floor,

(b)particular types of loudspeaker elements, and

(c) the arrangement of the loudspeaker means integral rather than adjacent to the acoustical boundary.

Whilst the description on page 3 comes under a heading "Summary of the Invention", I agree with Mr Callinan that much of this description is a summary of the features of the preferred embodiment of the invention.  Reviewing the description as a whole I do not find support for the view that all of the three above stated features are essential features of the invention.  However, in my view, the description on pages 6 to 9 makes it clear that spacing the low frequency loudspeakers sufficiently from the stage floor is an important feature of the system (see (a) above).  As claim 1 does not include this feature of the invention I find that the claim is not fairly based.
        Regarding the clarity of the definition of the invention in claim 1, I consider that Mr Thomas has raised a number of valid points.  In my view the claim is unclear and the monopoly defined indefinite, because the areas of uncertainty embrace the features of "loudspeaker means" and "sound absorptive means".
        Firstly, it is not clear from the definition overall in what way the loudspeaker means is adjacent to the acoustical boundary means.  The embodiment described shows the loudspeaker means close to a surface of the boundary means and directly behind the screen, however the definition encompasses many arrangements including those where the loudspeaker means are not positioned behind the screen, the latter arrangements seemingly being beyond the scope of the invention.  Furthermore given that the nature or extent of the "screen facing portion" has not been identified, it is unclear from the definition precisely what part of the low frequency loudspeaker element is substantially flush with the boundary means.  Thus the definition is indefinite concerning the location and mounting of the loudspeaker means relative to the boundary means and the screen.
        Secondly, the "sound absorptive means" is defined as "adjacent said acoustical boundary means in the vicinity of said high frequency loudspeaker element or elements".  This definition, like that for the loudspeaker means, fails to define with any precision the relative arrangement of features.
        Mr Thomas also referred to the definition in claim 1 of the screen and its frequency transmission properties.  Whilst I feel that a more appropriate definition could be provided, I do not believe that any doubt arises as to the meaning of the present definition regarding the characteristics of the screen of the system.
        Claims 2 to 4 also exhibit some section 40 defects.  Claims 2 and 4 define that "the sound absorptive means is frequency dependent..." ‑ this appears to be a misdefinition since it seems that it is the absorption characteristic of such means which is frequency dependent.  Furthermore, claims 3 and 4, owing to the expression "whereby the flush relationship .... unaffected", do not provide a clear definition of the invention.
        The deficiencies mentioned, particularly with respect to claim 1, can in my view be readily overcome by amendment action.  For the purpose of considering other grounds of opposition, I will assume that claim 1 is limited to a system arrangement which corresponds with the embodiment described.
Anticipation
        Before considering whether the invention as claimed has been anticipated I make the following comments about the evidence in view of the submissions by the parties.  Firstly, I am in no doubt that the evidence is admissible in these proceedings.  The evidence is directed to the opposition grounds under consideration and is evidence by the declarant of matters directly within his own knowledge.  I agree with Mr Thomas that the evidence is entitled to be given due consideration and full weight.  Secondly, whether the evidence provided is the best evidence the opponent has to offer is an issue which I see no need to determine.  The fact is that the opponent has chosen to lodge the evidence as filed and accordingly the opponent must bear whatever consequence may arise if the evidence is inadequate in establishing the stated opposition grounds.  Finally, as certain matters concerning the Hindley Cinemas were merely raised in submissions for the opponent at the hearing and are not in evidence, I reject those matters from further consideration.

        The opponent contends that the invention is anticipated on the grounds of prior publication, lack of novelty or obviousness.  To support these opposition grounds, the opponent relies on his evidence concerning loudspeaker systems allegedly installed at several cinema theatres, namely, "Hindley Cinemas Numbers 5 and 6".
The question of degree to which an opponent (appellant) has to establish the ground of want of novelty was considered in Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593 at 595. On this question Gibbs J said:

"I ought not to find in favour of the appellant on the issue of want of novelty, or that of obviousness, unless I was satisfied that the appellant's case had clearly been made out; it was said that I should adopt a similar approach to that which must be followed in considering whether to accept an application and specification, namely, that the application should only be rejected in a clear case where it is obvious that a patent cannot be granted: see Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 236, 244‑5".

Concerning proof of prior use in an opposition case, in Seiller's Application [1970] RPC 103, Graham, J said this at 106:

"In my judgment 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."

The opponent thus carries the onus of establishing the opposition grounds alleged.  Furthermore, where as in this case the opposition grounds are based on certain alleged prior installations, before rejecting the application I need to be certain of all aspects concerning the existence of the prior installation.
        Having regard to clauses 4 to 8 and 13 of Krix's declaration, I conclude that Krix designed and actually installed in Hindley Cinemas Numbers 5 and 6 (in December 1982) a loudspeaker system having the following components of claim 1 as defined:

Component (b), an acoustical boundary means, being a plywood wall and having properties to reflect all sound frequencies;

Component (c), loudspeaker means, comprising both high and low frequency elements affixed to component (b);

Component (d), sound absorption means being a particular foam "Dunlop Olympic S125 Foam" covering most of the component (b).

It is also clear from Krix's evidence that this loudspeaker system was installed behind the screen in these theatres and so a screen as defined in claim 1 (component (a)) was present in these theatres as part of the overall loudspeaker and screen installation.  Also, whilst with regard to component (c) there is some variance between what is shown on Sketch PSK1 and what is stated in clause 13 by Krix, I am satisfied that the system installed by Krix did have the screen side of the low frequency loudspeaker enclosure "substantially flush" with the acoustical boundary means.  Finally, with regard to component (d), in Krix's installation the foam covered the screen side of the acoustical boundary means and Krix indicates that this foam possessed absorptive characteristics corresponding to those defined for component (d).
        Based on my conclusions above from an assessment of the evidence by Krix, I am thus of the view that installed in the "Hindley Cinemas" was a loudspeaker and motion picture screen system with features as defined by claim 1.  I have formed that view mindful that the opponent provided a fairly limited description of the Hindley Cinema's installations without any original supporting documentation, that the matters declared to by Krix concern a system installed some six years prior to his declaration, and that no independent collaborating evidence about the installations has been provided.
        Whilst I have concluded that a particular system was installed at the Hindley Cinemas Numbers 5 and 6, for the purposes of anticipation there is a further question to consider before such system can render the claimed invention not novel.  That question is this:  Was the installation of the system such that its use was non‑secret so that the system and its details were available to the public before the priority date of the claims under attack?  From Dunlop Holdings Ltd's Application (supra) I think that it is clear that the onus initially rests with the opponent to establish that any prior use was non‑secret.
        In this case the evidence before me from the opponent is unhelpful on this question for a number of reasons.  Firstly, the exact location of the cinemas in which the system was installed is not stated.  Secondly, whilst Krix says he installed the speaker system in "December 1982", the evidence provides no indication of when the overall loudspeaker and screen system may have been operational or used.  Thirdly, if the system was used before the priority date, the evidence provides no indication of the circumstances of that use.  As Mr Callinan pointed out, cinema layouts normally limit the public to areas away from the stage or screen location so that the general public is unlikely to view behind the screen.  There is nothing in the evidence to suggest this was not the case for the Hindley Cinemas Numbers 5 and 6.  Furthermore whilst it seems that cinema employees would normally be expected to have access to areas behind the screen, it is not clear whether this was the case with the cinemas in question, and if it was, whether those employees were under any obligation to their employer to keep matters within their knowledge of the cinema construction confidential.
        In my view the opponent has failed to establish that the installations at the Hindley Cinemas Numbers 5 and 6 constituted a non‑secret prior use in Australia prior to 9 May 1983, the priority date of the present application.  I therefore reject the opposition attack on the grounds of lack of novelty of the claimed invention.
        On the question of obviousness, there is no evidence before me to clearly establish the common general knowledge in the art in Australia at the priority date.  Accordingly, I am unable to consider the obviousness ground further.
Conclusion
        I have found that the opposition succeeds only in that the specification does not comply with the requirements of Section 40 since the claims lack fair basis and are unclear.  As I consider that these deficiencies can be readily overcome by amendment action, I afford the applicant 60 days from the date of this decision to seek appropriate amendment of its specification.
        I award costs against the applicant.

(T.R. BRUHN)

Patent attorneys for the applicant: Callinan Lawrie, Melbourne