MJA Scientifics International Pty Ltd v SC Johnson & Son Pty Ltd

[1998] FCA 1466

FEDERAL COURT OF AUSTRALIA

PATENT – Infringement and validity – Novelty – Pesticidal sheets or containers – Whether patent in suit anticipated by prior publication disclosed in United Kingdom patent relating to bags coated with insecticide.

COPYRIGHT – Infringement – Literary work – Instructions for use of insecticide mats – Whether reproduction of substantial part of work – Ownership – Originality – Measure of damages.

Patents Act 1952
Patents Act 1990
Copyright Act 1968 ss 31, 32, 35, 36, 44B

General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 considered
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 considered
Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679 considered
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 considered
G I Marketing C C v Fraser‑Johnston 1996 (1) SA 939 considered
Linotype Co Ltd v Mounsey (1909) 9 CLR 195 considered
Harris v Rothwell (1887) 35 Ch D 416 considered
Merrilees v Rhodes (1895) 16 ALT 219 considered
Riekmann v Thierry (1897) 14 RPC 105 cited
Rodi & Wienenberger AG v Henry Showell Ltd [1969] RPC 367 cited
Radiation Ltd v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36 cited
Populin v H B Nominees Pty Ltd (1982) 59 FLR 37 cited
Olin Corporation v Super Cartridge Co Pty Ltd (1977) 14 ALR 149 applied
Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 applied
Apple Computer Inc v Computer Edge Pty Ltd (1984) 53 ALR 225 cited
Exxon Corporation v Exxon Insurance Ltd [1982] Ch 119 cited
Kalamazoo Pty Ltd v Compact Business Systems Pty Ltd [1990] 1 Qd R 231 cited
Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 cited
Victoria Park Racing & Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 cited
Arnold v Queensland (1987) 73 ALR 607 cited
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 cited
Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] CH 323 cited
Interfirm Comparisons (Aust) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445 cited
LED Builders Pty Ltd v Eagle Homes Pty Ltd [No 3] (1996) 36 IPR 293 cited.

MJA SCIENTIFICS INTERNATIONAL PTY LIMITED (ACN 001 056 527) and BRUCE JOHN MORRISON v S C JOHNSON & SON PTY LIMITED

QG 126 of 1994

SUNDBERG J
24 JULY 1998
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 126  of   1994

BETWEEN:	MJA SCIENTIFICS INTERNATIONAL PTY LIMITED (ACN 001 056 527) and BRUCE JON MORRISON APPLICANTS
AND:	S C JOHNSON & SON PTY LIMITED RESPONDENT

JUDGE:	SUNDBERG J
DATE OF ORDER:	24 JULY 1998
WHERE MADE:	MELBOURNE

THE COURT DECLARES THAT:

1. Claim 1 of the said patent is anticipated by ICI patent number 1360802.

1. The respondent has infringed the first applicant’s copyright in the directions for use on the first applicant’s packets and mats.

THE COURT ORDERS THAT:

1. The Amended Application be dismissed in so far as it claims relief in respect of infringement of patent number 557130.

1. The parties have leave to make written submissions as to

(a)the relief that should be granted to the first applicant in respect of the infringement of its copyright;

(b)the order that should be made on the respondent’s cross‑claim for revocation, and

(c)the order that should be made as to costs.

1. The applicants file and serve on the respondent any submissions as aforesaid on or before 5 August 1998.

1. The respondent file and serve on the applicants any submissions as aforesaid on or before 19 August 1998.

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

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 126 of 1994

BETWEEN:	MJA SCIENTIFICS INTERNATIONAL PTY LIMITED (ACN 001 056 527) and BRUCE JON MORRISON APPLICANTS
AND:	S C JOHNSON & SON PTY LIMITED RESPONDENT

JUDGE:	SUNDBERG J
DATE:	24 JULY 1998
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

COCKROACHES

This case is all about cockroaches and how best to kill them.  There are roughly 4,000 species of cockroach, less than one per cent of which are characterised as pests.  About six of the pest species appear in the temperate, tropical and sub‑tropical regions of Australia.  None of them is native to Australia; they have been introduced to this country over the last few hundred years.  As early as 1792 Captain Bligh instructed the crew of the Bounty to rid the ship of cockroaches by disinfecting it with hot water.  Given the warm and moist conditions in which they thrive, these pest species tend to carry the causative agents of diseases such as dysentery, gastroenteritis, typhoid and poliomyelitis.  Since cockroaches may harbour organisms pathogenic to man, it is surprising to discover that in some areas of the world they are a source of food.  One reported recipe for a “succulent dish” involves simmering cockroaches in vinegar, boiling them together with butter, farina, pepper and salt to make a paste which is spread on buttered bread.  This concoction is said to have been appreciated “by some Englishmen in London”: Roth and Willis, The Medical and Veterinary Importance of Cockroaches (1967) at 34.

The German cockroach (blattella germanica), the brown-banded cockroach (supella supellectilium) and the Oriental cockroach (blatta orientalis) are the most common household pests in places such as Brisbane and Sydney.  Growing to a length of ten to fifteen millimetres, the German cockroach seeks dark, warm and moist areas.  The brown-banded cockroach is slightly smaller than the German cockroach.  Black or brown in colour and oval in shape, the fully-grown Oriental cockroach is twenty five to thirty millimetres long.  It is drawn to damp, less humid areas such as basements and drains.  It often gains access to buildings through drains and ventilators.  The American cockroach (periplaneta americana) lives outdoors in tropical regions or in enclosed spaces similar to the ones in which the other pest species live.

Apart from the female of the Oriental and brown-banded cockroach species (both of which have a vestigial wing structure), almost all of these common pest species have functional wings.  The wings of the American cockroach are particularly well developed, enabling it to fly long distances.  But these pest species move, in the main, by running with quick hurried steps.  Franklin, Bell and Jander in Rotational Locomotion by the Cockroach Blattella Germanica (Journal of Insect Physiology, vol 27, no 4 (1980), pp 249‑255) refer to the effective frequency with which the running German cockroach places its legs.  The functional length of the legs helps to increase the speed with which it runs.

THE PLEADINGS

Patent infringement

In their amended statement of claim the applicants allege that they were at all material times the proprietors of patent number 557130, that in 1990 the second applicant (Mr Morrison) assigned to the first applicant (MJA) the whole of his interest in the patent, that the assignment was registered in the Patents Office in August 1995, and that the respondent (SCJ) has infringed the patent.  In the particulars of infringement it is said that after publication of the letters patent on 9 April 1987 SCJ had manufactured and sold in Australia S C Johnson New Raid Roach Mats (Raid Roach mats), which were cockroach insecticide mats made in accordance with the method claimed in the patent of proofing an item against crawling insects, in that the pesticide contained in the Raid Roach mats is dispersed in printer’s ink and the dispersed pesticide is applied to a carrier by a printing method.  By its defence SCJ admits the proprietorship of the patent, the assignment and the registration, but denies the infringement, and cross‑claims for revocation on the ground that the invention claimed in the complete specification when compared with the prior art base as it existed before the priority date of the patent was not novel in the light of the publication of United Kingdom Letters Patent No 1360802 (the ICI patent).  The applicants claim a declaration that the patent is valid and has been infringed by SCJ, an injunction to restrain SCJ from infringing the patent, an inquiry as to damages, alternatively an account of profits.

Copyright infringement

The applicants allege that MJA markets within Australia cockroach insecticide mats under the name “Dead End”, that packets of Dead End mats contain directions for use, that the directions are literary works as defined in s 10 of the Copyright Act 1968, that the directions for use are the form and expression into which MJA has reduced its ideas concerning the Dead End mats, and that SCJ has infringed MJA’s copyright by substantially reproducing in material form on packets of Raid Roach mats the directions for use contained on packets of MJA’s Dead End mats. The pleading then makes comparable allegations about the directions on MJA’s and SCJ’s mats (as opposed to the packets containing the mats). As an alternative plea MJA alleges that SCJ has infringed its copyright by producing an adaptation of MJA’s packets and mats, and by producing a compilation of the packets and mats. SCJ admits the directions for use on the packets and mats, but otherwise denies the copyright allegations. The applicants claim an injunction restraining SCJ from infringing MJA’s copyright, and damages for infringement, including additional damages pursuant to s 115(4) of the Copyright Act.

THE MJA PATENT

The invention the subject of the patent in suit is titled “Pesticidal Sheets or Containers”.  The priority date is 20 December 1982.  The specification first sets out the prior art and its shortcomings.  The prior art is said to consist of the spraying of insecticide and the use of pest strips.  Spraying insecticide onto a surface is said not to produce a uniform distribution, so that a relatively high toxicity level must be used.  Pest strips containing a vaporising pesticide are also said to involve fairly high toxicity levels in order to ensure that the pesticide is diffused throughout the area to be protected.  Under the heading Detailed Description of the Preferred Embodiments it is said that in one embodiment the pesticide is applied by printing the pesticide dispersion onto the item using a flexopress, offset press or letterpress technique.  The pesticide is preferably a residual contact pesticide, retained on the material of the item as a residue of fine crystals, uniform in size and distribution over the material.  Instead of printing the pesticide dispersion directly onto the item to be proofed, it may first be applied to sheets which are placed in the target zone to protect it against crawling insects.  Suitable sheets include paper or paper like materials, papiermache, thin felt, cloth, plastics or other similar liquid‑absorbent materials.  The sheets can be cut to size and shape to enable them to be fitted to a particular surface.  Other preferred embodiments are then described.  In one of them, wettable residual pesticide powder is mixed in a water‑based printer’s ink in the ratio of approximately 30%:70% by weight.  The resultant dispersion is printed onto a sheet by conventional offset printing, and then dried to leave pesticidal‑bearing ink on the sheet, the pesticide being in the form of fine crystals substantially uniformly distributed through the ink.  The sheets may be cut to size and shape, and placed under a kitchen sink, bathroom vanity unit or laundry tub unit.  It is said that if a cockroach is exposed to the pesticide for two minutes, it will be incapacitated in forty‑five minutes and will die in less than an hour.  The sheets may be semi‑rigid, and can be supplied in the form of mats or pads.  These may be applied to the floor of ship holds, or may be provided as a lining for shipping containers.

The specification concludes with ten claims.  The first is:

1.A method of proofing an item against crawling insects, the method including the steps of:

dispersing a pesticide in a solvent, said solvent comprising a water‑or alcohol‑based printer’s ink or ink/solvent mixture, and said pesticide comprising a wettable powder or liquid pesticide dispersible in the solvent;

applying the pesticide dispersion to the surface of the item by a printing method; and

drying the dispersion to remove the volatile solvent constituents and to leave the pesticide on the item to be contacted by the crawling insects.

Then follow the subsidiary claims:

2.A method as claimed in Claim 1, in which the pesticide is a residual contact pesticide retained in or on the material of the item as a residue of fine crystals.

3.A method as claimed in either of the preceding claims, in which a flexopress, offset press or letterpress technique is used to apply the pesticide dispersion to the item.

4.A method as claimed in any of the preceding claims, in which the pesticide is one or more carbamate, chlorinated hydrocarbon, organic phosphate, or natural or synthetic pyrethroid.

5.A method as claimed in Claim 4, in which the pesticide is one or more of bendicarb, idenophos and fenitrochion.

6.A method as claimed in any of the preceding claims, in which the item is a sheet or laminae of paper, newsprint, papiermache, thin felt cloth or plastics material.

7.A method as claimed in any of the preceding claims and substantially as hereinbefore described.

8.An item whenever insect‑proofed by a method as claimed in any of the preceding claims.

9.A method of proofing a surface or area against crawling insects, the method including the step of placing on or near the surface, or in or near the area, an insect‑proofed item as claimed in Claim 8.

10.A surface or area whenever proofed by a method as claimed in Claim 9.

THE ICI PATENT

The complete specification was published in the United Kingdom on 24 July 1974.  It became open for inspection in the Patent Office, Canberra, on 1 October 1974.  The introductory part of the specification states that the invention relates to “bags”, and more particularly to bags made of flexible plastics sheet material.  The word “bags” includes sacks and the like, open or closed at either or both ends.  The bag is coated or impregnated with an organo‑phosphorous insecticide.  Suitable insecticides are DDVP (dichlorvos) and pirimiphos ethyl.  Especially preferred insecticides are those of low mammalian toxicity, such as malathion and fenitrothion.  The most preferred is pirimiphos methyl, but diazinon is also very useful.

The bags are preferably made by first forming the selected plastics material into flexible sheets and then coating or impregnating the sheets or parts thereof with the selected insecticide.  Sheet may be made by the “bubble” method in which a tube of polyethylene is extruded and then caused to expand by the application of internal air pressure to form a tubular “bubble”.  The cooled tubular film may, after flattening, be sealed transversely at intervals of one bag length, and the separate bags severed from the length.

Coating or impregnation of the flexible plastics sheet material is generally done by treating it with a solution or dispersion containing the insecticide.  The outside of the bag, or that surface of the material which subsequently becomes the outside of the bag, should be treated.  This may be done by passing the flattened tubular film continuously through a bath of a solution or dispersion of the insecticide.  This is preferably done by applying the insecticide to the bag surface in a lacquer or printing ink base.  This lacquering or printing step should be carried out before the tubular film is transversely sealed and severed to form bags.  It is not necessary to lacquer or print the whole of the exterior of the bag.  Lacquer may be used to make the bag a pleasing or distinctive colour.  Printing ink may be used to print indicia, including trade marks, the intended function of the bag, the presence of the insecticide, and precautions which should in consequence be observed.

It is said to be a “surprising feature” of the invention that, in favourable circumstances, the application of the insecticide to the exterior of a bag may be effective to kill insects inside the bag.  Bags made according to the invention have a variety of uses.  They may be used to hold refuse, for example as dustbin liners.  When so used they may kill houseflies and like pests both in the bin and subsequently when the liner is removed to the refuse tip.

Then follow six examples illustrating the invention.  In the first, bags were sprayed with solutions of insecticide in methylated spirits.  The bags were left open for five minutes to allow the solvent to evaporate.  Houseflies were introduced into each bag, the neck tied and the bag suspended from a beam.  A table indicated the time taken to kill 90 percent of the flies at varying rates of insecticide used.  In other bags the flies were prevented from coming into contact with the sides of the bag by being suspended in a muslin cage.  The death rate was shown in another table.  In the second example the bags were treated on their exterior surface by dripping a solution of insecticide in isopropyl alcohol onto the bag and smearing the solution over an area of about one square foot.  Tables showed the death rate of flies, both free and caged as in the first example.

In the third example insecticide was mixed with a solvent and orange printing ink.  The solution was applied to one face of the bag by a hand‑operated printing roller.  The application rate was varied by applying one, two or three coats of the solution, each coat being allowed to dry before a further coat was applied.  Bags were placed in refuse bag holders and simulated refuse was placed in them together with flies.  The death rate was recorded in tables.  In the fourth example tubular polyethylene prepared by a bubble process was passed through a multi‑stage printing press.  The tube was printed on one side with a continuous repeating pattern of interlocking circles, using a printing ink formulation containing insecticide, solvent and red printing ink.  Information about the use of the bags and a warning was printed on the other side of the tube using a similar ink formulation.

The fifth example involved bags made on an in‑line bag making machine, employing a three‑stage printing press.  Tubular polythene film prepared by a bubble process was passed to a printing press.  It was there printed with the solution used in the third example.  The printed areas represented about 30 percent of the total outer surface.  After printing, the film was cut into bags.  The bags were placed either as liners inside a plastic dustbin or in a wire mesh sack holder.  Simulated refuse was placed in each sack, flies were introduced, and the open end of the sack covered in gauze.  The results were recorded in a table.  The sixth example is a variation of the fifth.

There are twenty claims, only three of which need be set out.

1.A bag of flexible plastics sheet material coated or impregnated with an organophosphorus insecticide.

...

8.A bag as claimed in any of Claims 1 to 7 which has been coated or impregnated with an insecticide by the application thereto of printing ink containing an insecticide.

...

13.In a process for making a bag claimed in any of Claims 8 to 10, the steps which comprise forming a length of tubular plastics film and printing at least part of the exterior surface thereof with a printing ink comprising an insecticide.

...

THE APPLICANTS’ EVIDENCE

The evidence in chief on both sides was given by affidavit.  Some of the applicants’ deponents swore further affidavits answering affidavits filed by SCJ.  At this stage I will describe only the initial affidavits directed to matters other than damages.

Mr Morrison

Mr Morrison is managing director of MJA.  In 1967 he founded a business called Scientific Pest Exterminators, which was incorporated in 1969 as Scientific Pest Exterminators Aust/Asia Pty Ltd.  During 1981 and 1982 Mr Morrison developed the idea of using a mat as a means of pest control, especially for cockroaches.  He experimented with different forms of printing to print the insecticide onto the pest sheets.  In mid 1983 he released a product called “U‑Kill”.  In connection with the release he formulated a set of instructions for the use of the product.  It took him about a week of full time work, spread over a twelve month period, to develop the wording and refine the phrases used.  In June 1983 Mr Morrison went into partnership with Mr Parry, selling the product known as “U‑Kill Pest Sheets”.  Mr Morrison created the graphic pictogram on the original U‑Kill packets and pest sheets.

Mr Morrison said that as at 22 April 1985 he was the person who had the right to grant licences under patents relating to the Dead End mat process.  On that day he entered into an evaluation agreement with ICI.  That agreement came to an end in 1990, and ICI released to Mr Morrison the clearance documents for the Dead End mats.  After the termination of the ICI agreement, and while “Scientific Pest Exterminators were in place”, Mr Morrison put together a red coloured mock‑up using a Dead End pack which, he said, contained “a lot of his own wording, some of which was used by ICI”.  In mid 1990 MJA was incorporated.  In 1991 MJA commissioned a Ms Warne to design the packaging of the Dead End product and to incorporate the blue butterfly trade mark.  The instructions on the pack were Mr Morrison’s own.  The first Dead End product instructions used in packaging were produced by MJA in May 1991.  In 1994 the current Dead End packs were produced.  The statements appearing on the packs are these:

(a)Dead End comprises six double mats

(b)They can be used as doubles on flat small areas, eg drawers etc or torn on the perforation and used as 12 individual mats

(c)All mats must be placed at the same time

(d)The mats are impregnated with insecticide

(e)Cockroaches contacting a mat receive a lethal dose

(f)Some may die within close proximity to the mat, others, several metres away

(g)The mats can be laid either flat or vertical

(h)Do not cover with plates, pots or pans etc

1. The active surface must be available to the crawling pest

(j)For particularly bad infestation, several packs of Dead End may be necessary

(k)To establish a rapid control situation, mats can be placed on bench tops overnight and picked up in the morning

(l)Dead End’s unique technology allows you to place insecticide exactly where you want it

(m)Cockroaches are most active at night.  They forage for food and roam at will after you turn off the lights

(n)Usually they live in the kitchen cupboards, vanity and laundry units

(o)Cockroaches are known to carry and spread hepatitis, encephalitis and other extremely dangerous diseases, including urinary tract infections

(p)Economical: they work continuously for up to 3 months

(q)Simple to use: just place in location of cockroach activity

(r)Unlike spray: there is no contamination of non‑target areas.

The statements appearing on the current mats are:

(a)Cockroaches are most active at night.  They forage for food and roam at will after you turn off the light

(b)Usually, they live in the kitchen cupboards, vanity and laundry units

(c)Cockroaches are known to carry and spread hepatitis, encephalitis and other extremely dangerous diseases including urinary tract diseases

(d)They work continually for up to 3 months.

(e)Just place in location of cockroach activity

(f)Unlike spray there is no contamination of non target areas.

These statements, said Mr Morrison, were based on his experience in the trade and his observations of the characteristics of cockroaches.  They were produced shortly before MJA’s incorporation.  Although the statements are not all directions in the strict sense, I will call them “the directions”.

In the course of cross‑examination, Mr Morrison accepted that the warnings contained in the directions are determined by the regulatory authorities, and that many of the warnings on SCJ’s product would by necessity be similar to MJA’s warnings.  Mr Morrison agreed that MJA had borrowed ICI’s efficacy claims in developing the words for the directions on the mats.  He also accepted that, in relation to image registration applications, the National Registration Authority encourages the employment of almost identical wording for directions of use.  Mr Morrison said that MJA’s patent contemplates an economical, one‑step process by which pesticide is applied to the mats.  He agreed that the application could be carried out in two or three steps.

Mr King

Mr King is a chemist employed by the Queensland Government Chemical Laboratory.  He has degrees in science and applied science in analytical chemistry.  He has worked as an analytical chemist since 1969.  At the Laboratory he is responsible for analysing and assessing the standard and quality of various products, including pesticides.  He had been retained by MJA to compare its Dead End mat with SCJ’s Raid Roach mat.  His examination of MJA’s mat indicated that there was no cypermethrin (insecticide) in the areas where the printer’s ink did not appear.  He concluded from this that the mat had been produced by a single method whereby the cypermethrin was dissolved it in a solvent/printer’s ink mixture and the mixture applied to the cardboard.  His analysis of the SCJ mat showed that even where the red coloured printer’s ink did not appear in the centre of the mat, cypermethrin was still present.  He concluded from this that the SCJ mat had been produced by two different applications: the first being the printer’s ink and the second the cypermethrin dissolved in a solvent or solvent/clear printer’s ink mixture.  Mr King said that cypermethrin is not easily dispersed.  In its pure state it is a viscous semi solid and is insoluble in water.  In order to disperse, it must be mixed with a solvent.  Of the solvents in which it will dissolve, only alcohols would be used from a health and safety point of view.  He defined a solvent as a substance capable of dissolving another substance to form a uniformly dispersed mixture at the molecular or ionic size level.

Mr Heyden

Mr Heyden is an industrial chemist with a degree in applied chemistry.  He had been asked by MJA to assess the two mats.  He had been instructed that MJA’s mat had been made by a process in which the ink marking on the mat coincides with the cypermethrin as a result of the ink and cypermethrin being applied together onto the cardboard backing by a printing process.  MJA had supplied Mr Heyden with a sample of cypermethrin, and a sample of Toyo King Gel had been purchased from Toyo Ink Co.  Mr Heyden first described the Dead End mat.  The front and back comprise text regarding the use and safety of the product in black print on a white background.  Each mat is folded in half to fit into the packaging.  When opened out fully the mats are 250mm by 350mm.  The active insect killing area is coloured in black ink with an instruction on it labelled Dead End This Side Up.  The face of the mat coated in black ink is said to contain the active ingredient cypermethrin.  Along the shorter edge is a 10mm handling area free of cypermethrin.  The active ingredient is stated as 0.1 gram cypermethrin/mat.

Mr Heyden then described the SCJ mat.  The front and back of the mat contain text regarding the use and safety of the product in red ink on a white background.  The mat is folded into quarters to fit into the packaging, and when fully opened measures 250mm by 350mm with a 22mm handling area on each side.  The mats are printed in red ink in the active area with the words Raid Cockroach Mat This Side Up.  Within the active area there appears to be an opaque area overlaid on the red ink.  On one long side there is a 5mm strip of red ink devoid of the opaque appearance.  The active constituent is stated as 3.3 gm/kg cypermethrin.

Mr Heyden said that mixing the cypermethrin and the Toyo product in the ratio 95%:5% was not successful.  The Toyo simply remained as lumps within the cypermethrin.  No matter how much kneading, mixing or heating was applied, the Toyo would not dissolve or disperse into the cypermethrin.  Physical manipulation simply aided the Toyo to break up into smaller lumps.  It was his opinion that a solvent, such as chloroform or alcohol, would have to be used for a proper dispersion to occur.  He described cypermethrin as a synthetic pyrethroid pesticide with a high level of activity against a broad spectrum of insects with low toxicity toward large weight mammals.  According to the manufacturer, Toyo Gel Reducer is a reducing oil based upon linseed oil.  It is used as a backing agent, and reduces flow while reducing tackiness and surface tension of ink on paper.  It is not very soluble in alcohol, but is soluble in most hydrocarbon solvents such as hexane.

Mr Heyden said that the results of surface analysis methodology was that the SCJ mat had been manufactured by placing a red ink/dye onto a cardboard base followed by a clear layer containing the active ingredient (cypermethrin).  Mr Heyden concluded that the SCJ mat had been produced by a two stage process in which the cypermethrin had been applied over a pre‑printed cardboard, probably by one of two printing processes (rotogravure or flexographic) or by spraying.

Mr Nelson

Mr Nelson has been a tradesman printer for about twenty five years and a technical teacher with the Queensland School of Printing and Graphic Arts for sixteen years.  He has a great deal of experience in the field of printing, but his particular expertise is in offset lithographic printing.

Mr Nelson had been provided with samples of the two mats.  He said that the SCJ mat had been produced by two applications of printing mediums.  He had been instructed that the second application was by an offset printing press by way of a technique known as dry offset printing.  In this technique a blanket is cut to provide a raised surface so that image and non‑image areas appear on the product.  The word “dry” in dry offset printing indicates the absence of water from the process.  Because the dry offset process used by SCJ involves both image and a non‑image areas, Mr Nelson was of the opinion that the process is not a “coating” process.  The pesticide had been applied by overprinting.  He described “coating” as an overall covering process, whereas printing has both image and non‑image areas.

Mr Nelson said that Toyo King Gel Reducer is an additive commonly used in the printing industry.  It is a petroleum based product which has a consistency like vaseline.  Its function is to assist a printing vehicle to transfer from the rollers on to a sheet.  The gel reduces what in the printing industry is called “tack”, but it does not increase the viscosity of the printing vehicle.  In the printing industry a varnish suggests an oil based printing vehicle.  Thus, when a petrochemical product such as the gel is mixed with another product, it is referred to as a varnish, or as an ink if pigment is present.  A varnish is usually clear while an ink contains pigment.  An ink is thus basically a varnish with pigment added.  He expressed the opinion that the cypermethrin and Toyo mixture is an “overprinting varnish”.  He thought that SCJ’s method of producing the mat was inappropriate and laborious.

Mr Nelson had conducted an experiment using a Heidelberg GTO offset printing press which he understood had been used by SCJ when applying the pesticide layer.  He found difficulty in mixing the cypermethrin and the Toyo.  The Toyo floated like icebergs on the surface of the pesticide.  After a substantial amount of manual mixing he observed that the Toyo had not made any significant difference to the viscosity of the pesticide.  He ran a number of cardboard mats (without the initial ink layer) through the press.  The pesticide applied to the surface of the mats, and the “solvents” were dried by absorption into the cardboard.

In a later statement Mr Nelson said that the Toyo used by SCJ was an additive rather than a printer’s ink.  Although it was not a printer’s ink, the fact that SCJ used a printing press to apply the cypermethrin meant that it was using a printing method.  He was also of the view that the cypermethrin/Toyo mixture was not a printer’s ink.  What SCJ used in the printing press was an insecticide combined with an additive.  It was not a printer’s ink, though the mixture can be made printable.

In relation to evidence given by the manufacturer of the SCJ mats (Mr Wright), Mr Nelson said that the Hamada Star 700CD referred to by Mr Wright is a small slow‑printing offset printing press, and that the method used by SCJ described by Mr Wright involved a pesticide dispersion being applied to the surface of the mats by a printing process.

In the course of cross‑examination Mr Nelson accepted that printing machines can be re‑configured to carry out a pure coating process.  He said it was “arguable” that where a printing press is run with a paste, with no transfer of image, what was involved was a coating process.  However, he preferred to call it overprinting.

SCJ’s EVIDENCE

Dr Stern

Dr Stern is an Associate Professor of Chemistry at the University of Technology, Sydney.  He has been Head of the Department of Chemistry for eighteen years.  He has degrees in science, and has been a Fellow of the Royal Australian Chemical Institute for many years.  He is an inorganic chemist with over thirty years experience.

Dr Stern first defined a number of terms.  A “dispersion” is a distribution of small particles, comprising numerous atoms, ions or molecules, in a solvent.  A “solvent” is a component of a solution, normally the major component by volume and weight, which dissolves the other component.  A “solution” is a homogeneous mixture, down to the level of single atoms, ions or molecules, of two or more substances.

Dr Stern had been provided with copies of SCJ’s Manufacturing Masterbook and the MJA patent and with samples of cypermethrin 95% active and Toyo Jelly Reducer.  He had mixed together cypermethrin and Toyo in the ratio 95%:5% as specified in the Masterbook.  The mixture was a dispersion, but not of a pesticide in a solvent.  Rather the cypermethrin, by far the major component, acted as the solvent and the Toyo particles were distributed in it.  This conclusion was, he said, based on his observations of the dispersion which formed, and his knowledge of the weight to weight ratios of the two components.  He repeated his experiment in the witness box, mixing the two products with a spatula for ten seconds or so.  I inspected the result.  There was an obvious dispersion of the Toyo in the cypermethrin within Dr Stern’s definition.

Referring to a later affidavit by Mr Heyden, Dr Stern rejected the view that when cypermethrin and Toyo are mixed together, each disperses into the other.  He also rejected the view that the coating of a pre‑printed board creates a dispersion of pesticide on or in the printer’s ink.  Although his mixing of cypermethrin and Toyo had involved small quantities of the items, he said there was no reason why larger commercial quantities could not be mixed so as to achieve the same dispersion as that produced in his experiment.  Dr Stern had chemically analysed the Toyo.  It did not contain water or alcohol.  According to Dr Stern, cypermethrin does not contain water or alcohol.  It follows, he said, that a mixture of the two contains no water or alcohol.  In addition, there is no solvent which is water or alcohol‑based printer’s ink or ink/solvent mixture in the combination of the cypermethrin and Toyo.  Dr Stern had been asked to assume that the mixture is used to proof an item against crawling insects by applying it to the surface of the item by a printing method, and that the mixture is then dried to leave the pesticide on the item to be contacted by crawling insects.  In his opinion this assumed method does not possess the features of the method in claim 1 of MJA’s patent, because the cypermethrin is not mixed with a printer’s ink, and neither the cypermethrin nor the Toyo is a water or alcohol‑based solvent.

Dr Stern had also been supplied with a copy of the ICI patent.  He expressed his understanding of the ICI patent as follows:

• Pesticide is dispersed in a solvent

• The solvent comprises printer’s ink

• Drying of volatile solvent constituents is involved

• Pesticide is left on the item.

In cross‑examination Dr Stern rejected the suggestion that no matter what proportions of two substances are involved, there is a dispersion if the particles are evenly distributed through the mixture.  He accepted that the dispersion of gases is not as dependent on proportions or volumes as is the dispersion of solids.  But in order to achieve a dispersion of solids, the component with the smaller particles is contained within the component with the larger particles.  He rejected the suggestion that the cypermethrin/Toyo combination would mix with the ink on the mat.  At that stage the ink is a solid, and is unlikely to “redissolve up into the solvent”.

Mr Gale

Mr Gale has been involved in the printing industry for nearly fifty years, and has lectured on printing techniques.  He had been supplied with a copy of the MJA patent specification.  He said that if he were to produce an item following the steps in claim 1, he would mix the pesticide with printer’s ink and then print the mixture according to the appropriate method of printing depending on whether the ink was water‑based or alcohol‑based.  He had read a copy of SCJ’s Masterbook.  Toyo Jelly Reducer is used in the printing industry to reduce “tack”, ie the stickiness of the substance when it is applied by either printing or coating.  Mr Gale described a printer’s ink as usually an oil based vehicle pigmented with colour which comes pre‑mixed from an ink supplier.  Oil‑based printer’s inks repel water.  For this reason they are used on conventional offset printing machines.  Printer’s ink can also be water‑based.  But because Toyo is petroleum‑based, it cannot be used with water‑based ink.

Mr Gale was of the opinion that Toyo is not an ink.  It is used only as an additive to printer’s ink to enable the ink to be applied more effectively.  It does not contain any pigment.  He said that the process described in the Masterbook does not involve mixing a pesticide with a printer’s ink.  SCJ’s product, as described in the Masterbook, uses a board that is pre‑printed with writing and colour.  The pesticide formula is then applied as a coating over the top of the designated area on the board.  The formulation would leave only a minimal visible trace, if any, on the board.  On the other hand, any words or colour on the active side of MJA’s mat would be printed in one step by use of the pesticide/ink dispersion.

Mr Gale said that printing is a process of altering the appearance of a substrate by the application thereto of an image, and involves the use of a pigment.  Sometimes, in a printing press, a varnish is used.  A varnish is an over‑lacquer used to prevent scuff and enhance the appearance of a product.  The cypermethrin/Toyo mix is not a varnish as it does not enhance the appearance of or protect the product.  It is applied solely for the purpose of proofing the item against cockroaches.  He said that “coating” is a method of applying a base material to a substrate.  Coating differs from varnishing or lacquering in that it does not usually alter the appearance of the item.  It does not usually involve a pigment, and is basically a clear film.  The cypermethrin/Toyo mix used in SCJ’s product is a coating because it does not alter the appearance of the product in any visually significant way.

Mr Gale had also read a copy of the ICI patent.  He was of the opinion that the process described in the ICI patent and that in claim 1 of the MJA patent are identical.  Each describes the steps of mixing insecticide/pesticide with printer’s ink and then applying the mixture by a printing method to the surface of an item.  Both specifications tell him that the mixture can be applied to any item that will accept the mixture by a known printing method.  Claim 3 of the MJA patent refers to flexopress, offset press and letterpress techniques.  The ICI patent refers to a hand operated printing roller, a multi‑stage printing process and a three‑stage printing press.  A multi‑stage printing press could refer to any one of the flexopress, offset or letterpress methods of printing.  The three‑stage process could be included in the multi‑stage process, or could refer to offset printing which uses the plate cylinder, blanket cylinder and impression cylinder of the printing press.  The ICI patent also describes the printing of an exterior surface with printing ink comprising an insecticide.

Mr Palmer

Mr Palmer had been a lithographic printer or consultant printer for nearly fifty years.  He had read the MJA patent and the SCJ Masterbook.  He said that claim 1 of the MJA patent told him that the process of the invention requires the pesticide and the ink to be mixed, and the mixture to be applied in a single step.  The process does not permit the ink and the pesticide to be applied in separate steps or to be applied otherwise than as a mixture.  The Masterbook describes a different process.  A board is first printed with printer’s ink which is allowed to dry.  Toyo is then mixed with the pesticide in order to make it easier to apply the pesticide to the pre‑printed board by reducing the tack.  The mixture is applied to the pre‑printed board.

Mr Palmer said that Toyo is not a printer’s ink but merely an additive used to reduce tack.  A printer’s ink is a substance constructed to suit a specific print process, with which a design may be reproduced with the required quality of colour, definition, lustre, hardness and slip.  The process described in the Masterbook does not possess the features that the pesticide is dispersed in a printer’s ink or ink/solvent mixture or that that dispersion is printed on a surface.  Mr Palmer disagreed with Mr Nelson’s evidence that the cypermethrin/Toyo mixture is best described as a varnish.  It is in his opinion a coating.  A varnish is used to enhance the lustre of the print or substrate.  He disagreed with Mr King’s statement that the Toyo could be regarded as a printer’s ink.

Mr Palmer had been present at a demonstration of the SCJ manufacturing process carried out at the premises of SCJ’s manufacturer, J C Allan Pty Ltd.  He had inspected the completed product, and had noticed that the application of the cypermethrin/Toyo left only a minimal visual trace on the pre‑printed board, and did not materially alter the appearance of the board.  The process used at the demonstration was in his opinion a coating process.

Mr Wright

Since 1987 Mr Wright has been the technical manager of J C Allan Pty Ltd, which manufactured SCJ’s mats.  The company is a contract chemist.  It is not a printer.  Mr Wright said that J C Allan manufactured the mats in accordance with the Masterbook.  He described the manufacturing process as involving three steps: obtaining pre‑printed boards from the supplier, mixing the cypermethrin and Toyo together in the proportions described, and coating the designated area with the mixture.  The coating formulation was made at J C Allan’s factory.  The cypermethrin and Toyo were manually mixed in a bucket using a stainless steel paddle.  It took two or three minutes to get an even mixture.  When applied to the board, the coating was so thin that it was visually undetectable and did not change the appearance of the board.

J C Allan had purchased a second‑hand Hamada Star 700 CD printing press in order to manufacture the product.  J C Allan had no printing plates and no employee with the knowledge to cause the machine to print.  The only use of the machine was to provide the means by which the mixture was applied to the pre‑printed boards.  The coating formulation was poured into a container on the Hamada press.  The pre‑printed boards were sheet fed into the machine and under the roller which coated the specified area of each board.  The boards were then lightly dusted with talc to assist drying, and emerged from the other end of the machine.

Mr Wright had read the MJA specification.  Comparing claim 1 with the SCJ process, he said that the method described in the Masterbook and as described by him does not involve dispersing a pesticide in a solvent.  If anything, the cypermethrin acts as a solvent in relation to the Toyo.  Further, the SCJ method does not involve dispersing a pesticide in a printer’s ink.  Nor does the method involve the application of the mixture by printing, which is the process of applying human readable characters or visible designs to a surface.

Mr Wright had also read the ICI patent.  He pointed to various features of the claims and the body of the patent, and said that the ICI specification described to him a process whereby a pesticide is mixed with a printer’s ink and the resultant mixture is applied to an item, namely plastic sheeting, by a printing machine, to proof the sheeting so that it is effective to kill insects.

Mr Peters

Mr Peters is an entomologist.  He is employed as technical manager in the Department of Health Sciences in the Faculty of Science at the University of Technology, Sydney.  His duties include research into insecticides and consulting on insect pests.  He is a licensed pest controller.  He also teaches entomology at the Sydney College of Technical and Further Education.

Mr Peters had read a copy of the MJA specification.  He expressed the opinion that the method in claim 1 requires the ink/pesticide dispersion to be applied by a printing method to the item to be proofed.  That is to say, the ink and the pesticide are applied at the same time as a mixture, and as a discrete part of, and single step in, the process.  The method does not envisage the ink and the pesticide being applied separately.  Nor does it involve the ink and the pesticide being applied other than as part of the same dispersion.

Mr Peters had also read the Masterbook.  He said that the method therein described is not that defined in MJA’s claim 1.  First, the SCJ method does not use the first two steps of claim 1, in that the pesticide is not dispersed in printer’s ink or ink/solvent mixture.  Nor is there a dispersion consisting of a pesticide and ink which is applied to the surface of the article by a printing method.  Secondly, the SCJ boards are pre‑printed, and a printing machine is subsequently used to apply the insecticide which consists of straight chemical cypermethrin plus gel reducer.

Mr Peters had also read the ICI patent.  He considered that the MJA patent is completely disclosed in the ICI patent.  He noted the reference in the ICI patent to dustbins and dustbin liners, and said that crawling insects such as cockroaches are common pests of dustbins.  The pesticides dichlorvos, diazinon, fenitrothian and malathion were all commonly used insecticides in Australia against public health crawling insect pests such as cockroaches prior to 1982.  The insecticide rates quoted in the ICI patent are sufficient to kill crawling insect pests.

Referring to claim 2 of MJA’s patent Mr Peters said that the ICI patent teaches the use of a residual pesticide.  It refers to a pesticide which leaves a residue which may be fine crystals.  Most residual insecticides form fine crystals or deposits that can be seen under a microscope when dry.  Dealing with claim 4 Mr Peters referred to A Guide to Pest Control in Australia (1979) from which it appears that diazinon, dichlorvos, malathion and fenitrothion are organophosphates.  The ICI patent refers to organo‑phosphorus insecticides, including malathion, dichlorvos, fenitrothion and diazinon.  In 1982 dichlorvos, malathion, fenitrothion and diazinon were all used in Australia against cockroaches.  Mr Peters did not think that pirimiphos ethyl or pirimiphos methyl were used in Australia prior to 1982.  In his opinion the coating or printing of an ICI bag is a method of “insect proofing”, the practice mentioned in MJA’s claim 8.  Mr Peters pointed out that the ICI patent also discloses the dispersion of pesticide in a solvent (examples 3 and 4) and a solvent comprising printer’s ink.  He was of the view that the ICI patent discloses a step of drying the pesticide dispersion to remove volatile solvent constituents.

In cross‑examination Mr Peters conceded that the ICI patent does not describe a residue of fine crystals.  However, he said, it mentions the pesticide lindane, which does form fine residual crystals when dry.  Lindane is a organo chlorine insecticide known for its contact action and very long residual life.  He rejected the suggestion that the thrust of the ICI patent is the use of pesticide as a fumigant rather than as a direct contact pesticide.  He pointed out that diazinon has no known fumigant action.  He accepted that his analysis of the ICI patent is not one that would have been made by a skilled addressee in 1982.  In re‑examination he said that in 1982 malathion and diazinon were available in Australia, and at that time entomologists and pest controllers would have known that they were contact insecticides.

MJA’S EVIDENCE IN REPLY

(a)Mr Morrison

Having read the affidavits filed by SCJ, Mr Morrison responded to parts of some of them in a manner which can be summarized as follows:

1. Dr Stern

Mr Morrison maintained that in SCJ’s process the cypermethrin/Toyo mixture is applied to the ink substrate where it forms a “matrix of ink insecticide solvent” applied by a printing press.  He further maintained that mixing the components in the ratio 95%:5% to be used in a printing press “does not work”.  He also said that in his opinion the mixing of cypermethrin and Toyo is the mixing of an insecticide and a solvent, the Toyo being the solvent.

1. Mr Gale

Mr Morrison asserted that anything that is designed to be used in a printing machine is by definition an ink.  He repeated his view that when the mixture is applied to the pre‑printed boards, it binds to the pigmented substrate forming a matrix of ink, insecticide and solvents.  Because the cypermethrin and Toyo mixture has a much higher viscosity than water, it is not a coating but more like a varnish.

1. Mr Palmer

Mr Morrison repeated his contention about the ink substrate, and claimed that the demonstration witnessed by Mr Palmer at J C Allan’s factory was a printing process.  He took issue with Mr Palmer’s opinion that SCJ was using the mixture as a coating, and said that the Hamada Star was a printing press and not a coating machine.

1. Mr Wright

When Mr Morrison had attempted to mix 95% technical cypermethrin with 5% Toyo, the resultant mixture was not miscible and was unsuitable for production of the mats because it did not print properly and the insecticide film did not dry.  A mix of the two products can be applied to the mat only by the use of a solvent.  In his opinion SCJ had mixed cypermethrin with a petroleum based solvent, namely the Toyo.  He expressed the view that SCJ’s method was a printing process because a printing press had been used to apply the mixture.  It was irrelevant that no pigment was added to the mixture, because the pigment was present in the printed substrate.  He repeated his claim that while MJA mixed pesticide in a printers ink, SCJ dispersed pesticide on a printer’s ink.  As to the ICI patent, Mr Morrison claimed that the pesticide referred to in the ICI patent is “preferably a fumigant”, that it is designed to kill flying insects, that it does not anticipate that the method it describes could be printed on paper or cardboard, and that it does not anticipate proofing the item so that it is effective to kill insects on contact.

1. Mr Peters

Mr Morrison claimed that the ICI patent was not an anticipation because ICI teaches the use of a fumigant and not a residual pesticide, and does not mention a pesticide that leaves a residue that may be fine crystals.

(b)Mr Heyden

Mr Heyden said he had examined the cypermethrin and Toyo samples given to Dr Stern and the mixture made by him, and expressed the view that the pesticide used had been dispersed in a solvent, and that the solvent was an ink/solvent mixture.  He also said that Dr Stern’s mixing could only be done with a small sample of less than 20 millilitres of the mixture in laboratory conditions.  He said that a mixture of cypermethrin and Toyo as made by Dr Stern involves a dispersion of cypermethrin in a petroleum hydrocarbon solvent, and the result is that both materials are dispersed into each other.

REVOCATION

Anticipation

The cross‑claim for revocation is to be decided under the provisions of the Patents Act 1952: Patents Act 1990, s 233(4). Under s 100(1)(g) of the 1952 Act a standard patent may be revoked on the ground “that the invention, so far as claimed in any claim of the complete specification ... was not novel in Australia on the priority date of that claim”.

The following propositions are supported by authority:

1. Whether a prior publication is an anticipation so as to destroy the novelty of the patented invention involves a three step inquiry: the claims of the patent must be construed, the import of the alleged anticipation must be ascertained, and the claim must be compared with the alleged anticipation.

1. The comparison is between the prior publication and the claims of the patent in suit.  Except in so far as the body of the specification of the patent in suit bears on the construction of ambiguous claims, it is irrelevant to the construction of the claims.

1. The construction of the claims and the prior document is a matter of law for the court.  But where the claims contain, or the prior document contains, technical matter, expert evidence is admissible to put the court in the position of a skilled addressee at the date of the claims or of the alleged anticipation.  Where there is more than one art involved, the notional skilled addressee may be a team rather than an individual.

1. Whether the prior document anticipates the claims is a question of fact.  The usual test is the “reverse infringement” test, the question being whether, assuming the patent to be valid, the alleged anticipation would infringe it.

1. In order for a claim to lack novelty, the prior document must disclose all the essential integers of the claim.  If it does, it is irrelevant that there are differences between the two which might be described as mere mechanical equivalents.

1. Where the alleged anticipation does not disclose all the essential integers of the patent in suit, the fact that the skilled addressee could come from the alleged anticipation to the patent in suit without the exercise of inventive ingenuity in the light of common general knowledge does not establish lack of novelty.

1. Where the alleged anticipation is a paper publication, particularly a prior patent specification, there may be uncertainty as to whether what has been disclosed sufficiently reveals an essential integer.  In such cases, the alleged anticipation does not have to amount to a full description of the invention allegedly anticipated.  There will be a sufficient disclosure to constitute anticipation if the prior document describes an effective means by which the combination claimed in the patent in suit might be produced, so long as the skilled addressee is not required to exercise any inventive ingenuity or take any inventive step.

1. Where a claim contains words denoting a particular object or purpose for the invention, a distinction exists between words which merely define the field of application of the claimed invention and words which import some limitation or special quality or characteristic of the invention and consequently constitute an essential integer of the claim.  Whether the words fall into one category or the other is a question of construction.  If they fall into the first category, they will not serve to distinguish the invention claimed from a prior document which otherwise discloses all the integers of the claim.  If they fall into the second category, they may constitute a vital distinction between the invention as claimed and the prior disclosure which will defeat anticipation.

1. There is no novelty in a claimed invention which is nothing but a claim for a new use of an old method.

1. A foreign specification which has become open to public inspection in the Australian Patents Office has been published in Australia.

See General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 481‑486; Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235; Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679; Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 527‑532; G I Marketing C C v Fraser‑Johnston 1996 (1) SA 939 at 948; Linotype Co Ltd v Mounsey (1909) 9 CLR 195 at 203, 210‑213; Harris v Rothwell (1887) 35 Ch D 416; Merrilees v Rhodes (1895) 16 ALT 219.

As I have said, the ICI specification became open to public inspection in the Patents Office, Canberra, on 1 October 1974.  It was thus published in Australian on that date.

Claim 1

The essential integers of claim 1 are:

• dispersing a pesticide in a solvent comprising a water‑ or alcohol‑based printer’s ink

• applying the pesticide dispersion to the surface of the item by a printing method

• drying the dispersion to remove the volatile solvent leaving the pesticide on the item to be contacted by the crawling insects.

The ICI patent describes the first integer.  Thus it is said that coatings or impregnation of the sheet material is generally done by treating it with a solution or dispersion containing the insecticide.  The relevant surface is preferably treated by applying the insecticide to the bag surface in a lacquer or printing ink base.  In the first example the surfaces were sprayed with solutions of pirimiphos methyl (insecticide) in industrial methylated spirits (solvent).  In the second example the surfaces were treated with pirimiphos methyl in isopropyl alcohol (solvent).  In the third, fourth and fifth examples the surfaces were treated with a printing ink formulation consisting of pirimiphos methyl, solvent and printing ink.  Some of the sacks in the sixth example were treated with pirimiphos methyl in solvent/printing ink mixture.

The ICI patent also describes the second integer.  Thus it is said that the lacquering or printing step is preferably carried out before the tubular film is sealed and severed to form bags.  It is not necessary to lacquer or print the whole of the bag.  Printing ink may be used to print indicia (trade marks, warnings etc) on the bag.  In the third example the dispersion was applied to the bags using a hand‑operated printing roller.  In the fourth example the film was passed through a multi‑stage printing press which printed a pattern on one side and indicia on the other.  In the fifth example a three‑stage printing press was used to print a pattern on the film.  In the sixth example the dispersion was printed on the face of a number of the sacks.

The third integer is described in the first example, where the bags were left open for five minutes to allow the solvent (methylated spirits) to evaporate.  Although the example does not expressly so state, it is clear that the insecticide remained on the sides of the bags and that, in the case of the first set of bags, the flies died as a result of coming into contact with it.  In the third example the dispersion (containing a solvent) was allowed to dry after being printed on the bags.  This, according to Mr Peters, was to achieve the removal of the volatile solvent.  In the sixth example some of the sacks, after treatment with the dispersion (containing a solvent), were left to dry for ten minutes.  Again it is clear that the insecticide remained on the sides of the bags and that the flies died as a result of coming into contact with it.  I do not accept Mr Morrison’s contention that the flies died as a result of fumigant action.  That will have been the case with the caged flies in the second set of bags in the first and second examples.  But, as Mr Peters said, the primary thrust of the ICI invention is killing by contact with the insecticide.  The fumigant action was an unexpected bonus.  It operated in the examples in which the flies were caged.  He drew attention to the fact that in the sixth example the insecticide with no known fumigant action (diazinon) outperformed one with known fumigant action (perimiphos ethyl).

The first two integers are expressly disclosed by the ICI patent, and although the ICI patent does not expressly state that the insecticide remains on the item after the solvent had evaporated, a skilled addressee would know that it does, and be able to produce the invention the subject of claim 1 without the need to exercise any inventive ingenuity or take any inventive step.

MJA contends that claim 1 is not anticipated by ICI’s patent because the claim is aimed at the elimination of crawling insects while ICI’s patent is aimed at flying insects.  It was pointed out that the steps of claim 1 are preceded by the words “A method of proofing an item against crawling insects”, and that the third step concludes with the words “to be contacted by the crawling insects”.  The ICI examples, on the other hand, deal exclusively with flies.  The fourth example, unlike the others, did not involve introducing flies into bags, though the outside of the bags in that example bore the words “kills flies”.  In order to deal with this submission it is necessary to ascertain what the MJA patent means by “crawling insects”.  The strict meaning of the verb “crawl” is to drag the body along the ground in the manner of a worm or a snail.  Thus the Oxford English Dictionary’s primary meaning of “crawl” is “to move slowly in a prone position, by dragging the body along close to the ground, as … a worm etc”.  Another meaning given is “to walk or move with a slow and dragging motion”.  The Macquarie Dictionary gives the same two meanings, and mentions worms as an example.  But a caterpillar is given as an example of the noun “crawler”.  Although caterpillars proceed at a dignified pace, they do not drag themselves along like a worm.  They have legs, many of them.  They just walk slowly.  In the circumstances, resort can be had to the body of the specification to ascertain the ambit of the ambiguous expression “crawling insects”.  The specification mentions pests, cockroaches, fleas, ticks and termites.  Fleas do not crawl in any sense of the word.  Nor do cockroaches.  Many cockroaches can fly, though their customary mode of progress is a quick run.  Termites are white ants.  They walk in a speedy fashion.  So it is clear that in claim 1 the expression “crawling insects” is used in a very general sense to identify insects that proceed, whether by dragging, walking, running or hopping, across a surface rather than by flying over it.

Although the ICI examples deal with flies, it is clear that the invention is not restricted to the elimination of flies.  The insecticides used or appropriate for use (malathion, fenitrothion, pirimiphos methyl and diazinon) are not flying insect specific.  Reference is made to the killing of “insects” and “houseflies and like pests”.  Aphids on rose bushes are mentioned.  A typical use of the bags is as dustbin liners.  Here they may kill houseflies and other pests, both in the dustbin and when the liner is removed to the tip.  Mr Peters’ evidence was that crawling insects such as cockroaches are common pests of dustbins, and that dichlorvos, diazinon, fenitrothian and malathion were commonly used insecticides in Australia against public health crawling insect pests such as cockroaches prior to 1982.  He said that many flying insects pick up insecticide when they crawl over a surface.  He gave the example of flies crawling on garbage which has been sprayed.  And many flying insects have a stage in life when they crawl, for example, maggots of the house fly.  Mr Peters did not read the ICI patent as being limited to killing flying insects.  Given that the ICI patent is not restricted to flies (but extends to aphids, insects, pests which frequent dustbins, and fly‑like pests), and that the “crawling insects” to which MJA refers include insects that hop, walk or run, I am of the view that the ICI patent teaches a skilled addressee that the invention is suitable for use in killing crawling insects within the meaning of claim 1 as well as flying insects.

Even if I were of the view that the ICI patent describes proofing items against flying insects only, there is no novelty in the MJA claim to proof items against crawling insects within the meaning of the MJA claim.  Although flies fly, they also walk.  Apart from those in the ICI muslin cage examples, walking across the insecticide is what caused the flies’ demise.  What is claimed is at best a new use for a known method.  It is a mere application of an old contrivance in the ordinary way to an analogous subject, without any novelty in applying that old contrivance to the new purpose: Riekmann v Thierry (1897) 14 RPC 105 at 121; Linotype Co Ltd v Mounsey (1909) 9 CLR at 210. A device for the killing of flying insects (which also walk) is applied to crawling insects (ie insects which hop, walk or run) without any novelty.

In view of what I have said, it is unnecessary for me to examine the applicability to the claim of proposition 8 under the heading Anticipation.

Applying the reverse infringement test, one assumes that claim 1 of the MJA patent is valid, and asks whether the ICI patent would infringe the claim.  For the reasons I have given, it would.  The ICI invention involves dispersing a pesticide in an ink/solvent mixture, applying the dispersion to the surface of the item by a printing method, and drying the dispersion to remove the solvent, leaving the pesticide on the item to be contacted by the insects, including crawling insects within the sense of that expression in the MJA patent.

Claim 2

Claim 2 uses the same method as claim 1, but narrows it by specifying the type of pesticide to be used (a residual contact pesticide), and by specifying that the pesticide remains on the item after drying as a residue of fine crystals.  The preferred insecticides in the ICI patent include malathion, fenitrothion, pirimiphos methyl and diazanon.  All are residual contact pesticides.  According to Mr Peters there is no difference between a pesticide and an insecticide when a pesticide is used to control insects.  The insecticide used in all the examples is pirimiphos methyl.  Mr Peters said that the ICI patent discloses to him that the pesticide used has residual activity.  He pointed to the first example, which showed that the pesticide has a residual life of at least twenty one days.  He said that those using diazanon and malathion in 1982 would, as a result of ordinary knowledge, be aware that they were using a residual action insecticide.  In addition, the ICI patent cites efficacy tests which demonstrate the residual life of the pesticides used (Table I and Table VI).  Accordingly, the ICI patent anticipates this part of claim 2.  As to the “fine crystals” part of the claim, Mr Peters initially said that the ICI patent refers to a pesticide which leaves a residue which “may be fine crystals”.  He added that most residual insecticides form fine crystals or deposits that can be seen under a microscope when dry.  In the course of cross‑examination, however, he conceded that of those mentioned in the ICI patent, only lindane leaves a residue of fine crystals.  But the patent does not teach the use of lindane.  It features as one of the insecticides used in the second batch of sacks used in the sixth example.  Table VIII shows that when diazinon (2g) was used and the test performed immediately after the bags had been unwrapped, no flies remained alive at any of the intervals between half an hour and twenty‑four hours.  When the test was performed a week after unwrapping, twenty flies remained alive after half an hour, two after one hour and none at the later intervals.  On the other hand, when lindane was used, more than twenty flies remained alive at all testing intervals.  That was the same as the result achieved when the flies were placed in an untreated sack.  In my view the ICI patent does not anticipate the second integer of MJA claim 2.

The other claims

MJA’s claim 3 retains the methods of claims 1 and 2, and narrows the “printing method” of claim 1 by specifying three types of printing technique ‑ flexopress, offset press and letterpress.  Although the ICI patent does not refer to any particular type of printing press, the examples refer to a multi‑stage printing press and a three‑stage printing press (the fourth and fifth examples).  According to Mr Gale, a multi‑stage printing press could refer to any of the offset, letterpress or flexopress methods of printing.  Given that the ICI patent teaches the use of a printing press to apply the dispersion, there is no novelty in MJA’s specification of three common types of printing press.  If claim 3 were based on claim 1 alone, the ICI patent would infringe claim 3 because it involves the use of a printing press to apply the pesticide dispersion to the item to be proofed.  However claim 3 is based on claim 2 as well.

Claim 4 further narrows claim 1 (pesticide) and claim 2 (residual contact pesticide) by specifying carbamate, chlorinated hydrocarbon, organic phosphate and natural or synthetic pyrethroid.  Of the insecticides specified in the ICI patent, malathion, fenitrothian, pirimiphos methyl and diazanon are all organophosphorous insecticides.  If claim 4 were based on claim 1 alone, the ICI patent would infringe claim 4 because it involves the use of organophosphorous insecticides.  But claim 4 is based on claims 2 and 3 as well.

Claim 5 narrows claim 4 by specifying three pesticides ‑ bendicarb, idenophos and “fenitrochion”.  According to Mr Peters “fenitrochion” is a mis‑spelling of “fenitrothion”.  Fenitrothion is one of the examples given in the ICI patent of an organophosphorous insecticide of low mammalian toxicity.  It is one of the insecticides used in the sixth ICI example.  If claim 5 were based on claim 1 alone, the ICI invention would infringe claim 5 because the invention uses one of the insecticides (fenitrothion) mentioned in the claim.  But claim 5 is based on claims 2 to 4 as well.

Claim 6 narrows the item referred to in the preceding claims to sheets or laminae of paper, newsprint, papiermache, thin felt, cloth or plastics material.  The ICI patent deals only with flexible plastics sheet material.  If claim 6 were based on claim 1 alone, the ICI invention would infringe claim 6 because the invention uses one of the items (plastics material) mentioned in the claim.  But claim 6 is based on claims 2 to 5 as well.

Claims 7 to 10 do not need to be separately considered.  Claim 7 deals with a method substantially as described in the preceding claims.  Claim 8 deals with items proofed by a method claimed in the preceding claims.  Claim 9 deals with a method of proofing a surface or area by placement of an insect‑proofed item as claimed in claim 8.  Claim 10 deals with a surface or area proofed by a method as claimed in claim 9.  All these claims are dependent on claims 1 to 6.

INFRINGEMENT

In case my conclusion that claim 1 is invalid is wrong, I will consider whether that claim, assuming it to be valid, has been infringed.  Claim 1 is the widest claim, and if it has not been infringed, none of the other claims will have been.

Method of manufacture of SCJ’s mats

SCJ’s method of manufacture of its mats is described in its Manufacturing Masterbook.  The steps involved are these

• the purchase of pre‑printed mats, the back sides of which are partially printed with red ink

• 95% active technical grade cypermethrin is mixed with Toyo King Gel Reducer manufactured by a company known as Toyo Ink Pty Ltd in the proportions 95% to 5%

• The mixture is applied to the pre‑printed mats using an offset printing press

• A light dusting of talc is applied to the mats to stop them sticking together

• The mats are packed in boxes.

A great deal of the cross‑examination of SCJ’s witnesses was directed to identifying the precise Toyo tack reducer used in the process.  It is described in the Masterbook and elsewhere in the evidence as “Toyo King Gel” or Toyo King Jelly”.  Dr Stern, who demonstrated the mixing of cypermethrin and Toyo tack reducer, used a Toyo product labelled “Toyo TQ”.  I need not explore the effect of the cross‑examination because I accept Mr Wright’s evidence that the Masterbook required “Toyo King Gel Reducer”, that was what was ordered from Toyo Ink Pty Ltd, that was what was used in the manufacture, and that was what was supplied to Dr Stern.

Mr Morrison’s evidence was that the mixing of cypermethrin and Toyo gel in the proportions 95% to 5% was impossible.  Mr Heyden said it was possible only in very small quantities in a laboratory.  SCJ’s witnesses were cross‑examined with a view to establishing one or other of these accounts.  I watched Dr Stern’s demonstration of the mixing of cypermethrin and Toyo.  It took him about ten seconds to mix a small quantity of the two products with a spatula.  The mixing was a comparatively easy process; that is to say it did not appear to require any effort.  I find that what he was mixing was cypermethrin and Toyo King Gel Reducer in the proportions 95% to 5%.  I accept his evidence that since it is possible to mix the two products in small quantities, there is no reason why larger quantities cannot be mixed.  In any event, Mr Wright’s evidence was that there was no difficulty in mixing in a bucket a quantity of the products sufficient for a production run in the same approximate proportions.  It took between two and four minutes to get an even mixture.

Accordingly, I find that the steps used in the manufacture of SCJ’s mats were those described in the Masterbook.  In particular I find that:

• the cypermethrin used was 95% active

• the cypermethrin was obtained from the supplier named in the Masterbook

• the Toyo product was obtained from the supplier named in the Masterbook

• the two products were mixed in the proportions 95% cypermethrin and 5% Toyo

• the instructions in the Masterbook did not change during the period in which J C Allan manufactured the mats.

I also find that the Toyo product used by J C Allan was the same as that supplied to Dr Stern and which was the subject of his demonstration.

The law

Although the patent in suit was granted under the 1952 Act, the 1990 Act applies to the infringement claim.  See s 233(1) of the 1990 Act.  In order to establish infringement a patentee must show that the respondent has performed an act or exploited the invention within a valid claim of the patent.  The claims of a patent define the ambit of the monopoly.  In the construction of a claim its essential integers must be ascertained.  There will be no infringement unless the respondent has taken all the essential integers of the claim: Rodi & Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 383‑384. However claims are not construed in a technical or narrow way. In Radiation Ltd v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36 at 51 Dixon J said:

But, on a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe.  It is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing.

It is in reliance on this approach that it has been held that a respondent will not escape infringement by adopting immaterial variations, for example, by omitting an inessential part or step and substituting another part or step as its equivalent.  See Populin v H B Nominees Pty Ltd (1982) 59 FLR 37 at 41. In some cases the “substantial idea” referred to by Dixon J is described as the “pith and marrow” or “pith and substance” of the invention. In Olin Corporation v Super Cartridge Co Pty Ltd (1977) 14 ALR 149 at 157 Gibbs J, after referring to Dixon J’s judgment in the Radiation Case, said:

The statements in these passages are still good law ….  However, … the principle that there may be infringement by taking the “pith and marrow” or the substance of an invention does not mean that there will be an infringement where the patentee has by the form of his claim left open that which the alleged infringer has done.  And it does not affect the fundamental rule that there will be no infringement unless the alleged infringer has taken all of the essential features or integers of the patentee’s claim.

In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 286 Aickin J, with whom the rest of the Court agreed, said:

Notwithstanding the undoubted fact that the doctrine of Clark v Adie (1875) LR 10 Ch App 667 concerning the taking of the pith and substance of an invention, but nonetheless staying outside the express words of the claim, is less often applicable at the present time than it was at the time of that decision, it remains the law that a defendant may not take the substance of an invention unless the wording of the claim makes it clear that the relevant area has been deliberately left outside the claim.

What I have said in dealing with the revocation claim about the construction of claims and the admissibility of expert evidence to put the court in the position of a skilled addressee is applicable in the infringement context.  See Populin at 42‑43.

Claim 1

I have already described the claims.  Claims 1 to 7 are method claims.  Claim 1 is the widest.  If it is not infringed, none of the other claims is infringed.  Claim 1 is to a method of proofing an item against crawling insects.  Its three essential integers are

• dispersing a pesticide in a solvent comprising a water or alcohol‑based printer’s ink or ink/solvent mixture

• applying the dispersion to the surface of an item using a printing method

• drying the dispersion to remove the volatile solvent constituents leaving the pesticide on the item to be contacted by the crawling insects.

Apart from the reference to “crawling insects”, the words of the claim are clear and unambiguous, and there is thus no further occasion to resort to the body of the specification to determine the meaning of the claim.  I refer to what I have earlier said as to the assistance offered by the body of the specification in ascertaining the types of insects that are “crawling insects” within claim 1.

(a)The first integer

1. Dispersion of pesticide in solvent

The first step involves the dispersion of the pesticide in a solvent.  There was no dispute that a dispersion is a “distribution of small particles comprising numerous atoms, ions or molecules in a solvent”.  That was the definition given by Dr Stern, and it was accepted by Mr Heyden.  I have concluded that in SCJ’s method the cypermethrin (pesticide) is not dispersed in the Toyo product.  The percentages used are 95% cypermethrin and 5% Toyo.  Although at first Mr Heyden contended that the cypermethrin was dispersed in the Toyo product, or that the two were dispersed in each other, he accepted in cross‑examination that the dispersion was of the Toyo product into the cypermethrin, though it was a “lousy” dispersion.  As he said, the cypermethrin could not be said to be dispersed in the Toyo product because, using Dr Stern’s definition of dispersion, it did not distribute as smaller particles in the Toyo product.  Dr Stern said that having regard to the volumes of the two products used in the mixture, there was a dispersion of the Toyo product in the cypermethrin.  The Toyo product distributes as smaller particles in the cypermethrin, the latter acting as the solvent.

1. Printer’s ink or ink/solvent mixture

If, contrary to the above finding, the cypermethrin is dispersed in the Toyo product, the latter does not comprise a printer’s ink or ink/solvent mixture.  The Toyo used by SCJ is in evidence.  It is an almost colourless jelly, having very much the appearance and consistency of vaseline.  I accept the evidence of Mr Gale and Mr Palmer that the Toyo is not an ink, but is an additive used to reduce tack.  MJA’s printer witness, Mr Nelson, accepted that the Toyo is an additive rather than a printer’s ink.  I reject the contention for MJA that the cypermethrin/Toyo mixture was dispersed in the red ink already on the mats, so that the cypermethrin was dispersed in ink.  I accept Dr Stern’s evidence on this point in preference to that of Mr Morrison.

1. Water or alcohol based printers ink

If, contrary to both preceding findings, the cypermethrin is dispersed in the Toyo product, and the latter comprises a printer’s ink, neither the Toyo product nor the cypermethrin/Toyo mixture contains any water or alcohol.  Dr Stern’s evidence was clear on the point.  It was not challenged, and there was no evidence to the contrary.  Accordingly, SCJ’s method does not involve a water or alcohol based solvent.

(b)The second integer

The dispersion is to be applied to the surface of the item by a printing method.  As a matter of ordinary usage a printing method is one by which visible material, such as words or pictures, is applied to a surface.  Thus the Shorter Oxford Dictionary gives this meaning of “print” as a verb: “To produce (a book, picture, etc) by applying to paper, vellum, etc, in a press or machine, inked types, blocks, or plates, bearing characters or designs”.  The words “printer’s ink” in the first integer confirm this ordinary meaning.  Mr Gale described printing as a process of altering the appearance of a substrate by the application of an image to the substrate, and which involves the use of a pigment.

SCJ’s method involves no printing in this sense.  No characters or designs result from the Hamada Star process.  Mr Palmer’s evidence was that SCJ’s method is a “coating” and not a “printing” method.  The Hamada Star printing press had been configured as a coating machine.  When a lithographic offset printing press is used in a printing method, water is first applied to the plate cylinder to repel printer’s ink from non‑image areas.  Ink is then applied to the plate cylinders (in the image area), the image is transferred from the plate cylinder to the blanket cylinder, and in turn from the blanket cylinder to the paper.  That is not how the Hamada Star press was configured.  No water was used, and there was no image to be transferred.

Mr Gale gave evidence to the same effect.  In SCJ’s process water is not applied, and the plate cylinder is “run solid” with the clear cypermethrin/Toyo mix.  There is accordingly no image on the plate cylinder to be transferred to the blanket cylinder and then to the mats.  The plate cylinder distributes the coating to the blanket cylinder which coats the mats.  I accept the evidence of Mr Gale and Mr Palmer on this point in preference to that of Mr Nelson.  Accordingly I find that the SCJ Hamada Star process is not an application of the cypermethrin/Toyo mixture to the mats “by a printing method”.

Since SCJ has not followed the first two steps in claim 1, I need not consider whether it has followed the third.

Conclusion on infringement

Had I upheld the validity of claim 1 of MJA’s patent, I would have concluded that SCJ’s process of manufacturing its mats does not infringe the claim because:

• the cypermethrin (pesticide) is not dispersed in the Toyo product (solvent)

• no solvent comprising a water or alcohol‑based printer’s ink or ink/solvent mixture is used

• the cypermethrin/Toyo mixture is not applied to the mats by a printing method.

It follows from this finding that claims 2 to 10 are not infringed.

COPYRIGHT

The legislation

Copyright, in relation to a literary work, is the exclusive right, amongst other things, to reproduce the work in a material form, to publish the work, and to make an adaptation of the work: s 31(1) of the Copyright Act. Copyright subsists in an original literary work: s 32(1). The author of a literary work is the owner of the copyright subsisting in that work: s 35(2). Where a literary work is made by the author in pursuance of the term of his employment, the employer is the owner of the copyright: s 35(6). The copyright in a literary work is infringed by a person who does any act comprised in the copyright: s 36(1).

Literary work

The expression “literary work” is not defined in the Act, though s 10(1) provides that it includes “a written table or compilation”. It is difficult to define the expression comprehensively, but it includes work which is expressed in printing or writing irrespective of whether it has an excellence of quality or style, literary merit, taste, judgment or ingenuity. It is sufficient if the work supplies information capable of conveying an intelligible meaning, and if mental effort and industry have been expended in its preparation: Apple Computer Inc v Computer Edge Pty Ltd (1984) 53 ALR 225 at 258. Writing which conveys information, instruction or pleasure in the form of literary enjoyment is undoubtedly a “literary work”: Exxon Corporation v Exxon Insurance Ltd [1982] Ch 119, 142‑143, 144, though that does not exhaust what the expression comprises: Kalamazoo Pty Ltd v Compact Business Systems Pty Ltd [1990] 1 Qd R 231 at 250. The directions on MJA’s packets and mats are set out earlier in these reasons. While not conceding that the directions are literary works, SCJ did not seriously contend that they are not. I find that they are. They supply information and instruction, they are intelligible, and some mental effort and industry has gone into assembling them.

Originality

A work does not have to be novel in order to be “original” for the purposes of s 32(1) of the Copyright Act.  But it must originate with the author and be more than a copy of other material: Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 at 52; Victoria Park Racing & Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 511; Kalamazoo at 252.

The applicants plead that the directions on the Dead End packets and mats are the form and expression into which MJA has reduced its ideas, opinions, information and facts concerning its mats.  In their particulars they allege that the directions were created by Mr Morrison when he was an employee of MJA, and that they were first published in about 1992.  SCJ contends that the directions are not original because they are an almost identical copy of the previous directions created by Mr Morrison on behalf of Scientific Pest Exterminators in April 1990, before MJA’s incorporation.  The April 1990 packet directions were in evidence in the form of what was called “the red mock‑up” packet.  The packet discloses that it had been printed by Addarap Pty Ltd for Scientific Pest Exterminators.  There are only two differences between MJA’s packet directions as pleaded (substantially as set out in my summary of Mr Morrison’s evidence) and those on the red mock‑up.  The first is that the red mock‑up contains the sentence ‑ “The mats are impregnated with a low toxicity pesticide”, whereas the pleading contains no such sentence.  However, this appears to be an oversight on the pleader’s part, for one of the two MJA packets in evidence contains this sentence, and another contains a similar sentence – “The mats are impregnated with insecticide”.  The second difference is that the red mock‑up claims that the mats work continually for up to six months, whereas the pleading makes a claim for up to three months.  This difference is of no significance for present purposes.  When MJA was formed, it (through Mr Morrison) simply copied the red mock‑up directions onto the new packet.

There is not in evidence a mock‑up mat containing directions.  However I infer from Mr Morrison’s statement that “these mock‑ups were done in April 1990”, that he prepared a mock‑up of the mat as well as of the packet.  Having regard to the similarity between the directions on MJA’s packets and mats (ie that those on the mats are an abbreviated selection of those on the packets), I also infer that the mock‑up of the mat contained the same selection of packet directions as is found on MJA’s mats.  I find that Mr Morrison copied the mock‑up mat directions onto the MJA mats.  The two sets of directions are thus in the same position.  They were not MJA’s original literary work, and MJA has not established its allegation that they are the form and expression into which it has reduced its ideas etc concerning its mats.

There are significant differences between the directions on the red mock‑up and those on its predecessors (the ICI products).  Comparing the red mock‑up with the second version of the ICI packet, and using the packet list in my summary of Mr Morrison’s evidence as the reference, directions (b), (e), (h), (i), (k), (l), (m), (q) and (r) are new.  Part of the information in direction (d) is new.  Directions (f) and (n) are somewhat different from the comparable ICI directions.  Eleven items of information on the ICI version do not appear on the red mock‑up.  In most of the seven respects in which the directions are the same or similar, they are mere statements of fact – for example, that the packet contains six double mats, that for particularly bad infestations several packs may be necessary, and that the mats can be laid flat or vertical.  In my view the red mock‑up directions are sufficiently different from the ICI directions for it to be concluded that the former are Mr Morrison’s own original work.  The position is the same with the mat directions.  Of the seven directions pleaded (which I have found appeared on the mat mock‑up), none is copied verbatim from the ICI product.  Direction (c) in the mat list in my summary of Mr Morrison’s evidence is very like the comparable ICI direction, and direction (d) is similar to an ICI direction –”they work continually for up to 3 months”/”effective for 3 months”.  But directions (a), (b), (e) and (f) do not appear on the ICI mat.  The seventh direction pleaded (which is not in the summary because Mr Morrison did not mention it) does not appear on the ICI product.  In my view the mock‑up directions for the mats are sufficiently different from the ICI directions for it to be concluded that the former are Mr Morrison’s own original work.

Ownership

SCJ’s next contention is that even if Mr Morrison had created original literary works, MJA has not shown that it is the owner of the copyright in the works.  The evidence on ownership is unsatisfactory and confusing.  In his first affidavit Mr Morrison said that in 1967 he founded a business called Scientific Pest Exterminators.  The business was incorporated in 1969 as Scientific Pest Exterminators Aust/Asia Pty Ltd (“the SPE company”).  On 22 April 1985 Mr Morrison entered into an evaluation agreement with ICI.  That agreement came to an end during 1990.  At some time in 1990, but after August, a company incorporated as Ferngrice Pty Ltd was acquired.  Its name was changed to MJA.  In September 1990 a shareholders’ agreement was entered into between MJA and certain of its shareholders including Mr Morrison.  Mr Morrison’s affidavit continues:

26.The red mock up for the Dead End product was done by me in 1990 before the butterfly logo was conceived by the Applicant.  I did the red mock up after the arrangement with ICI had come to an end and while Scientific Pest Exterminators were in place.

27.Prior to the termination of the ICI licence in 1990 I commenced putting together a mock up using a Dead End pack which contains a lot of my own writing, some of which was used by ICI.  These mock ups were done in April 1990 ….

…

29.The first Dead End product instructions used in packaging were produced by the Applicant in May 1991.  This was a red coloured mock up: a forerunner of the Dead End product with the butterfly trade mark and the blue colouring ….

The discrepancy between pars 26 and 29 was put to Mr Morrison in cross‑examination.  He confirmed that the red mock‑up mentioned in par 26 was done in 1990, before the formation of MJA, and is the red mock‑up in evidence.  He confirmed that the red‑mock up in par 27 is the same as that in pars 26 and 29.  The date in par 29 is therefore incorrect.  It should be April 1990.

Early in his cross‑examination Mr Morrison said that he founded the SPE company  in about 1967.  He sold “the business” when he left Darwin for the Gold Coast in 1986.  At the Gold Coast he started a pest control business under the name Scientific Pest Exterminators.  He was still using that business name in 1990.  The business was not the same as the SPE company.  Later he said that as at 1983 he was a director and a shareholder of the SPE company.  He was employed by the company and was paid a salary.  However the U‑Kill Pest Sheets were not sold by the SPE company, but by a business called Morrison and Parry U‑Kill Pest Sheets.  After Mr Parry had assigned his share of the patent to Mr Morrison, the business name was changed to Morrison’s U‑Kill Pest Sheets.  The SPE company was funding the U‑Kill business, but Morrison’s U‑Kill Pest Sheets was still a trading business name “as a division underneath an umbrella”.  He then said that “Scientific Pest Exterminators didn’t own U‑Kill Pest Sheets”.  He added that he had sold “that business” (whether the SPE company or Scientific Pest Exterminators is not clear) when he left Darwin.  He didn’t sell U‑Kill Pest Sheets.  The proceeds of sales of U‑Kill Pest Sheets went into the SPE company.  U‑Kill and “Scientific Pest” had separate bank accounts.

At a later stage, when Mr Morrison’s attention was drawn to the printing on the red mock‑up showing that it had been manufactured for “Scientific Pest Exterminators”, he said “Scientific Pest Exterminators I registered when I came down here in 1986 for my two sons, we started a business in the Gold Coast”.  He said MJA had not been formed when he wrote the words on the red mock‑up.

It is not at all easy to work out what this evidence (both affidavit and oral) amounts to.  I think the difficulty results from Mr Morrison’s failure to appreciate the difference between a company and an enterprise trading under a business name.

Had the affidavit evidence stood alone I would have found that the mock‑up directions were created by Mr Morrison when he was employed by the SPE company, and that the SPE company owned the copyright in the directions.  There is no evidence that the SPE company had assigned the copyright to MJA, and thus MJA was never its owner.  But the oral evidence, unsatisfactory as it is, expands and qualifies the affidavit evidence, and enables the following findings to be made:

• In 1967 Mr Morrison established a business in Darwin operating under the name “Scientific Pest Exterminators”

• The business was acquired by the SPE company in 1969

• Mr Morrison was a director of the SPE company and a shareholder

• The SPE company was sold when Mr Morrison left Darwin in 1986 and came to Queensland

• In Queensland he used the name “Scientific Pest Exterminators” in the conduct of a business he operated with his two sons

• The mock‑ups were prepared by Mr Morrison while he was conducting business in Queensland under the name “Scientific Pest Exterminators”.

Thus I find that the SPE company is not the owner of the copyright in the directions, so that the absence of an assignment from the SPE company to MJA is not fatal to MJA’s case. The directions were created by Mr Morrison, and they were his original work. Prima facie he owns the copyright in the directions by force of s 35(2). It has not been shown that the directions were made by Mr Morrison “in pursuance of the terms of his … employment by another person under a contract of service” for the purposes of s 35(6). There is no satisfactory evidence about the nature of the business carried on under the name “Scientific Pest Exterminators”, that is to say whether it was a partnership or an unincorporated association. Nor is there evidence about the employment relationship, if any, between Mr Morrison and “the business”. Further, I doubt that “Scientific Pest Exterminators” is a “person” for the purposes of s 35(6), though the point was not argued. The word “person” is defined in s 22(1) of the Acts Interpretation Act 1901 so as to “include a body politic or corporate as well as an individual”. The word “person” in s 35(6) may well be confined to individuals, bodies politic and bodies corporate, all of which have a recognised separate legal identity. Cf Arnold v Queensland (1987) 73 ALR 607 at 611.

Assignment to MJA

At some date in September 1990 a Shareholders’ Agreement was made between Mr Morrison, his son Dean, MJA (in the agreement called “the Company”) and others.  It recites, amongst other things, that Mr Morrison and Dean conducted a business as a pest exterminator under the name “Scientific Pest Exterminators”, that Mr Morrison was the inventor and owner of the patent, that he had assigned the patent to MJA, and that “the business” had been assigned to MJA by “an agreement dated the … day of September 1990” between Mr Morrison, Dean and MJA.  Clause V A of the Agreement provides:

Notwithstanding RO1 and RO2 and during their respective Term, each Venturer hereby irrevocably assigns forthwith and sets over … to the Company absolutely to hold all the exclusive right, title and interest in and to the Intellectual Property either as shall currently exist or as shall be developed by that Venturer during their Term …; and the Company hereby accepts this Assignment.

The symbol “RO1” stands for the patent assignment agreement and the symbol “RO2” for the business assignment agreement.  The “Venturers” are the shareholders and directors of MJA, and they include Mr Morrison and Dean.  The expression “Intellectual Property” is defined as “Patents Rights, Design Rights, Trade mark Rights, Copyright, Technical Information and Future Rights”.

Thus Mr Morrison’s copyright in the directions for use passed to MJA.  Even if, contrary to my view, the business “Scientific Pest Exterminators” owned the copyright, I would have inferred that it was simply a business name used by Mr Morrison and Dean and that ownership passed to MJA under RO2 or under clause V A of the Shareholders’ Agreement.

Is the case proved pleaded?

The case pleaded is that MJA created the directions on the Dead End packets and mats.  It has not been established that those directions were MJA’s original work.  One of its employees (Mr Morrison) copied the mock‑up directions.  However I have found that the mock‑up directions were Mr Morrison’s original work, and that he assigned his copyright in them to MJA.  Although that is not the case expressly pleaded, it is clear from the further particulars provided by the applicants that they intended to rely on the assignment clause in the Shareholders’ Agreement.  In its request for further particulars SCJ asked whether the person who created the directions was an employee of MJA when they were created, and whether the applicants relied on any other matters to establish that MJA owned the copyright in the directions.  The response to the second request was that MJA relied on the assignment from Mr Morrison to MJA contained in the Shareholders’ Agreement.  This Agreement was one of the agreed documents; that is to say, it was one of the documents which the parties asked me to treat as part of the evidence without the need for formal proof.  It was a schedule to another document, a Deed of Variation and Sale, which was relied on by SCJ to support its case that at the date of the Deed MJA did not regard itself as the owner of any copyright.  Clause 3.1 of the Deed states that it is to operate in conjunction with and is to be read as supplementing the Shareholders’ Agreement.  Clause 3.4 then varies the Agreement in a number of respects.  Reliance was placed on the assignment in MJA’s counsel’s final address, and no objection was taken.  Thus, although the assignment is not relied on in the statement of claim, it is relied on in the further particulars, and MJA’s case was conducted, without demur by SCJ, on the basis of the assignment.  If it were necessary to do so, I would allow MJA to amend its statement of claim to plead the assignment directly.

If I had not inferred that Mr Morrison created a mock‑up of the mat at the same time as he created the red mock‑up, I would have found that he created the mat directions while he was employed by MJA.  For the reasons I have given, I would also have found that they were his (and therefore MJA’s) original work.  On this approach the pleading would expressly cover the mat directions, though not the packet directions.

Infringement

Section 14(1)(b) of the Act provides that a reference to a reproduction, adaptation or copy of a work includes a reference to a reproduction, adaptation or copy of a substantial part of the work.  In my view SCJ copied a substantial part of MJA’s directions for use, “substantial” being measured by reference both to the quantity and importance of what was copied.  See Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273. SCJ’s counsel conceded that SCJ “had reference to” MJA’s directions when it created the Raid packaging and product, and used MJA’s product as a reference in an “imaging” application to the National Registration Authority. I have set out MJA’s packet directions in the packet list in my summary of Mr Morrison’s evidence. Save for the use of “Raid Roach Mats” instead of “Dead End”, directions (a), (c) and (j) are identical to SCJ’s directions on the matters the subject of those paragraphs. The other directions are substantially the same, as can be seen from the following examples:

Dead End	Raid
Cockroaches contacting a mat receive a lethal dose	When cockroaches contact the mat they receive a lethal dose
Some may die within close proximity of the mat, others, several metres away	Some cockroaches will die within close proximity of the Mat others up to several metres away
To establish a rapid control situation, mats can be placed on bench tops overnight and picked up in the morning	For more rapid control, Mats can be placed on the bench tops overnight and picked up in the morning
Cockroaches are most active at night they forage for food and roam at will after you turn off the lights	Cockroaches become most active at night foraging for food and will roam around the house after the lights are turned off
Usually they live in kitchen cupboards, vanity and laundry units	Their usual habitat is kitchen cupboards, vanity and laundry units

It is apparent from this comparison that while SCJ did not transcribe all MJA’s packet directions onto its own packet, it transcribed some of them and altered others in immaterial ways, presumably in an attempt to camouflage what it was doing.  The camouflage is transparent.  MJA has made out its case on infringement of the copyright in the packet directions.

All but one of MJA’s mat directions are found in the mat list in my summary of Mr Morrison’s evidence.  Direction (d) and the seventh pleaded direction are the same as SCJ’s comparable directions.  The other directions are substantially the same, as can be seen from the following comparison:

Dead End	Raid
[Cockroaches] forage for food and roam at will after you turn off the lights	They normally roam and forage for food at night or when the lights are turned off
Usually they live in kitchen cupboards, vanity and laundry units	Cockroaches usually live in kitchen cupboards and damp locations such as laundries
COCKROACHES A HEALTH HAZARD: Cockroaches are known to carry and spread hepatitis, encephalitis and other extremely dangerous diseases	COCKROACHES REPRESENT A HEALTH HAZARD Cockroaches can spread a number of serious diseases
Just place in location of cockroach activity	Just place Raid Roach Mats wherever cockroach activity occurs
Unlike spray there is no contamination of non target areas	Unlike surface sprays, Raid Roach Mats only target where required

This comparison shows that while SCJ transcribed only two of MJA’s seven directions, it altered all but one of the others in immaterial ways, presumably to make them look a little different.  I think MJA has made out its case on infringement of the mat directions.

Section 44B

Section 44B of the Copyright Act provides that

The reproduction on a label on a container for a chemical product of any writing appearing on an approved label is not an infringement of any copyright subsisting under this Part in relation to that writing.

An “approved label” is a label approved under Part 2 of the “Agvet Code” of a State or of the Northern Territory or under Part 2 of the “Agvet Code” of the “participating Territories” within the meaning of the Agricultural and Veterinary Chemicals Act 1994 (Cth): s 10(1). Section 44B was inserted into the Act by the Agriculturaland Veterinary Chemicals (Consequential Amendments) Act 1994 (Cth) (“the 1994 Act”), and came into operation on 15 March 1995. Submissions were made about the meaning of “label” and “container” in s 44B, and reference was made to the definitions in the Agvet Code which appears as a schedule to the Agriculturaland Veterinary Chemicals Code Act 1994 (Cth), and which is adopted as part of the law of Queensland by s 5 of the Agricultural and Veterinary Chemicals Act 1994 (Qld).  Aided by these definitions, it was submitted for SCJ that the composite expression “label on a container for a chemical product” includes the directions for use on the Raid packaging and mats.  It followed, so it was said, that any infringement that had occurred ceased to be an infringement after 15 March 1995.

I need not decide whether the directions for use are a “label” or whether the packaging is a “container”, for I accept MJA’s submission that s44B does not apply to the present proceeding, which was instituted prior to 15 March 1995. Section 8 of the Acts Interpretation Act provides in part that:

Where an Act repeals in the whole or in part a former Act, then unless the contrary intention appears the repeal shall not –

…

(c)affect any right privilege obligation or liability acquired accrued or incurred under any Act so repealed; or

…

(e)affect any investigation legal proceeding or remedy in respect of any such right privilege obligation [or] liability … as aforesaid;

and any such investigation legal proceeding or remedy may be instituted continued or enforced … as if the repealing Act had not been passed.

Section 8A provides that a reference in s 8 to the repeal of an Act or of a part of an Act includes a repeal effected by implication, the abrogation or limitation of the effect of the Act or part, and the exclusion of the application of the Act or part to any person, subject‑matter or circumstance. The effect of s 44B is to exclude the application of Part III of the Copyright Act to the matter the subject of the section. Section 44B therefore repeals the Act in part. In the absence of a contrary intention appearing in the 1994 Act, s 44B affects neither MJA’s’ copyright acquired under the Act nor this proceeding in respect of that right. The proceeding may thus be continued as if the 1994 Act had not been passed. There is nothing in the 1994 Act which suggests a “contrary intention” for the purposes of s 8 of the Acts Interpretation Act.

Damages

Damages under s 115(2) of the Act are damages for the wrong done to the owner’s copyright as an incorporeal right. The measure of damages is the depreciation caused by the infringement to the value of the copyright as a chose in action: Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] Ch 323 at 336. There is, however, no fixed method of assessment that applies to all cases. The purpose of such damages is to compensate the copyright owner for the loss he has suffered as a result of the breach: Interfirm Comparisons (Aust) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445. Damages are at large, and may be assessed according to the circumstances of the case. In some instances the measure adopted has been the fee which the copyright owner might fairly have charged for the use of his work by the respondent. In others, particularly where the work has been published, the measure has been the loss of sales suffered by the owner. See Ricketson, The Law of Intellectual Property (1984) at 295‑296 and Interfirm Comparisons at 447. MJA’s case on damages was put on the lost sales basis. There was no evidence going to the fee MJA might have charged SCJ for the use of the directions; indeed MJA submitted that that would be an inappropriate mode of assessment. Nor was any evidence directed to damages for conversion. An account of profits was not sought.

The evidence of loss was given by Mr O’Dwyer, a chartered accountant and a member of the firm Kendalls KBM.  In his final report Mr O’Dwyer dealt first with loss attributable to SCJ’s assumed patent infringement.  His methodology was as follows.  On the basis of instructions, he assumed that as a result of its patents MJA would have enjoyed the cockroach mat market segment to itself.  MJA had suffered a loss of profitable sales and a permanent loss of market share as a result of the infringement of its patent.  Mr O’Dwyer made an estimate of the net present value of MJA’s earning stream over the life of the patent (ie to 2003) from which he deducted the amount which MJA had actually earned up to 1996 and the value of its likely earning stream from March 1996 to 2003.  The result of this calculation was a total loss of $2,488,409.  In the events that have happened, the integers of the calculation and the reasonableness of the assumptions behind it need not be examined.

Mr O’Dwyer then calculated MJA’s loss flowing from breach of copyright.  He said that his inspection of the documents discovered by SCJ disclosed that it had decided to produce a look‑alike product with the intention of totally subsuming the market and obtaining a 100 percent market share.  In those circumstances the damage suffered by MJA was the complete loss of the market over time, and the loss of the benefits of the expenses initially incurred to create the words and texts and to obtain the health authority approvals for the product.  He had been instructed that those initial costs were more than $60,000.

Mr O’Dwyer calculated the present value of the Australian income lost over the years 1997 to the end of the 2003 financial year at $1,583,704.  He then calculated the present value of the American income lost over those years at $5,743,060.  The probability of the American income being obtained was thought to be only 50:50, and so Mr O’Dwyer halved his calculation ($2,871,530).  But because he considered that the most likely option in the United States was for MJA to sell the patent rights rather than exploit them, he decided that the value of the American loss was the value of the patent ($1,473,000).  To the Australian loss and the American loss Mr O’Dwyer added $355,600, arrived at by adding together the initial costs referred to above ($60,000) and compound interest as a result of delay in earning in the United States ($495,600), and subtracting initial United States costs of $200,000.  On this basis Mr O’Dwyer concluded that “if SCJ took the market wholly through copyright infringement”, MJA’s loss was $3,412,304.

Mr O’Dwyer concluded his report by saying that the patent damage was $2,488,409, and the copyright damage “where the product is destroyed in the market” was $3,412,304, making a total loss of $5,900,713.

In the course of cross‑examination Mr O’Dwyer was asked how the copying of the directions for use on the packets and mats could result in a complete loss of the market.  His response was that if a competitor which was a “major” in the market produced a product very similar to that of a smaller supplier, “ultimately the market opportunity created in that would produce a complete loss of the market to MJA”.  He was then asked to forget about the product, and to assume two identical products, and was again asked how the wording in the directions for use resulted in the complete loss of market over time for MJA.  His response was:

Certainly to come to the point that I have come to, it must be assumed that the copyright issue is combined with other effects.  If the words only are the issue, then I think I must acknowledge that perhaps the impact of those words, per se, does not necessarily lead to the loss of the market for MJA.

The cross‑examination continued:

Well, the impact of those words per se does not lead to any market loss at all, does it, Mr O’Dwyer? ---- No, it doesn’t.

Your … whole approach on copyright infringement, has been to say that because of the similarity in product there has been perhaps a total loss of market.  It has … not been focused on the words; it has been focused on the product …? --- My instructions with regards to copyright was that the product itself was an element of the copyright.  In other words, the whole get‑up of the product … provided the copyright for the product.

If you had been told that the copyright work relied upon was limited to particular words used on the back of the packet in the directions for use … there has really been no damage at all? --- … I could not base the outcome that I’ve got here on what you put to me in this way: that the only issue that we are dealing with in this area is a particular set of words on the back of a packet, then the conclusion I’ve come to here would have to be reviewed.

If you were to add into that suggestion that I put to you that it was open to SCJ … to sell the identical product with different wording, dissimilar wording, on the back of the packet but still with directions for use, but not infringing directions for use on the back of the packet; they still would have been on the market with the product, then your calculation based upon the loss of market share really is not relevant? --- That’s correct.

Attention was later directed to the American loss – the most likely option being the loss of the sale of the American patent rights.  The following exchange occurred:

Now, how can the loss of the patent right in the USA … result from … the act of copyright infringement copying directions on the back of a packet of a product … sold in Australia? --- … There is no connection between the option per se and the copyright per se.  The assessment relies on my view that the American market wholly removed would still be worth 1.473 million to MJA.

And that assessment necessitates assuming that the whole of the American market will be removed as a result of the act of copyright infringement? --- Yes, that is correct.

And it also therefore assumes that the asset value of the US patent becomes nil instead of 1.473 million as a result of the act of copyright infringement? ‑‑‑ Yes, that is correct.

Mr O’Dwyer later conceded that he had seen no evidence to support the $60,000 claimed to have been spent on creating the words and obtaining health approvals.  He was not re‑examined on any significant aspect of the foregoing cross‑examination.

Mr Banks, a chartered accountant and a director of KPMG Corporate Finance (NSW) Pty Ltd, gave evidence for SCJ.  He was critical of various aspects of Mr O’Dwyer’s evidence.  So far as copyright damages are concerned, he said that SCJ’s copying of directions for use could not reasonably be suggested to result in the total destruction of the market in Australia and America.  He could see no financial detriment to MJA flowing from SCJ’s copying MJA’s directions for use on its packets.  Mr Banks was cross‑examined at length, but not on this aspect of his evidence.

Thus Mr O’Dwyer’s evidence in the course of cross‑examination (which was not the subject of re‑examination) accords with Mr Banks’ evidence in chief (which was not the subject of cross‑examination).

MJA offered no evidence of substantial copyright loss other than Mr O’Dwyer’s evidence.  It will be apparent from what I have said that that evidence was quite discredited, and MJA has thus established no quantifiable loss of the order claimed by it ($3,412,304).  An attempt was made to support the $60,000 initial costs referred to above (expenses of creating the words and text and obtaining health authority approvals).  Most of the evidence relied on related not to copyright costs but to patent costs.  Thus it was said that the evidence of Mr Jones established set‑up costs of at least $60,000.  But Mr Jones’ evidence related to Mr Morrison’s calculation of what the patents had cost him ($80,000).  Reliance was also placed on a letter from MJA to its accountants asserting initial expenditure of $80,000 in procuring and maintaining the patents, and a further $20,000 in later maintenance.  But again that does not relate to copyright establishment costs.  I was referred to MJA’s financial statements for 1991 in which, under the heading “non‑current assets”, goodwill was valued at $104,115.70 and patents at $498.  But I am quite unable to extract from the goodwill figure any element referable to creating the directions for use.  The only evidence to which I was referred which could perhaps relate to the expense of creating the directions was an item for “Set up Costs Dead End Mats” in MJA’s financial statements for 1992 of $9,390 and in those for 1993 of $14,638.  The only direct evidence of any clarity was that MJA paid Ms Warne $900 for her design work on the packaging and the incorporation of the blue butterfly trade mark.  But those features of the packs do not form part of the directions for use.

Because MJA’s case on damages was conducted almost entirely in reliance on Mr O’Dwyer’s evidence, I propose to allow it to make further submissions on damages in case it is able to show some loss other than that said by Mr O’Dwyer to have been suffered.

Under s 115 of the Copyright Act the relief a court may grant in an action for infringement of copyright includes an injunction and either damages or an account of profits.  In its statement of claim MJA claims damages.  As I have said, it does not claim an account of profits in the alternative (though it does in relation to the patent claim).  It is therefore unnecessary to decide whether, having conducting its whole case on the basis of a claim for damages, MJA would have been precluded from claiming an account of profits.  Cf LED Builders Pty Ltd v Eagle Homes Pty Ltd [No 3] (1996) 36 IPR 293.

ORDERS

The patent infringement claim must be dismissed.  On the copyright claim the parties will have leave to make written submissions as to the relief that should be granted, particularly as to how damages, if any, should be assessed in view of the dismissal of the patent claim and my rejection of Mr O’Dwyer’s approach to quantification.  The parties will also have leave to make written submissions as to the appropriate orders on the revocation cross‑claim (including an order under s 105 of the 1990 Act), and as to costs.  MJA should file and serve on SCJ any submissions it wishes to make on or before 31 July 1998.  SCJ should file and serve any response on or before 7 August 1998.

I certify that this and the preceding thirty‑seven (37) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Sundberg

Associate:

Dated:             24 July 1998

Counsel for the Applicant:	J S Douglas QC and D Smith
Solicitors for the Applicant:	Kenny & Co
Counsel for the Respondent:	A B S Franklin
Solicitors for the Respondent:	Blake Dawson Waldron
Dates of Hearing:	5-8, 11-15 May, 22-23 June 1998