MMD Design and Consultancy Limited v Camco Engineering Pty Ltd
[2023] FCA 827
•21 July 2023
FEDERAL COURT OF AUSTRALIA
MMD Design and Consultancy Limited v Camco Engineering Pty Ltd [2023] FCA 827
File number(s): VID 340 of 2020 Judgment of: ROFE J Date of judgment: 21 July 2023 Catchwords: PATENTS – where invention claimed is a tooth construction for a mineral sizer – construction of patent – meaning of “front cover which is weldingly secured to and seated in face to face contact with the front face of the support body” – infringement – where respondents supplied tooth constructions for mineral sizers – whether repair defence applies – no infringement – standing to sue – additional damages not awarded
PATENTS – validity – manner of manufacture – lack of novelty in light of two prior art documents – lack of inventive step in light of the common general knowledge alone – lack of inventive step in light of common general knowledge in combination with each of the two prior art documents – hindsight bias – clarity and fair basis – patent valid
CONSUMER LAW – misleading and deceptive conduct – whether respondents contravened s 18 of the Australian Consumer Law by failing to warn customers that it had engaged in patent infringement – dismissed
Legislation: Competition and Consumer Act 2010 (Cth), Sch 2 (Australian Consumer Law) ss 18, 236, 237
Copyright Act 1968 (Cth) s 115(4)
Patents Act 1990 (Cth) ss 7, 13(1), 40, 122(1A)
Trade Marks Act1995 (Cth) s 126(2)
Cases cited: Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1995] FCA 236; AIPC 91-129
Airco Fasteners Pty Ltd v Illinois Tool Works Inc [2023] FCAFC 7
Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411
Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2) (2012) 204 FCR 494
AstraZeneca AB v Apotex Pty Ltd (2014) 107 IPR 177
AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356
Bristol-Myers Squibb Company v Apotex Pty Ltd (No 5) (2013) 104 IPR 23
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3) [2012] FCA 1019
Calidad Pty Ltd v Seiko Epson Corporation (2020) 272 CLR 351
Demagogue Pty Ltd v Ramensky (1992) 39 FCR 31
Dynamic Supplies Pty Ltd v Tonnex International Pty Ltd (No 3) (2014) 107 IPR 548
Erickson’s Patent (1923) 40 RPC 477
ESCO Corporation v Ronneby Road Pty Ltd (2018) 131 IPR 1
Facton Ltd v Rifai Fashions Pty Ltd (2012) 95 IPR 95
Firebelt Pty Ltd v Brambles Australia Ltd (2002) 54 IPR 449
Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) (2008) 76 IPR 763
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457
Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft (2014) 106 IPR 381
GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd (2016) 120 IPR 406
GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited (2018) 264 FCR 474
Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd (2019) 145 IPR 39
Halal Certification Authority Pty Ltd v Scadilone Pty Ltd (2014) 107 IPR 23
Hill v Evans (1862) 1A IPR 1
Hytera Communications Corporation Ltd v Motorola Solutions, Inc [2019] FCAFC 210
Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86
Kimberley NZI Finance Ltd v Torero Pty Ltd [1989] FCA 400; ATPR (Digest) 46-054
Lockwood Security Products v Doric Products Pty Ltd (2004) 217 CLR 274
Meat and Livestock Australia Ltd v Cargill, Inc (2018) 129 IPR 278
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228
MJA Scientifics International Pty Ltd v SC Johnson & Son Pty Ltd (1998) 43 IPR 275
Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd (2020) 153 IPR 199
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545
Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd (2019) 154 IPR 215
Pfizer Overseas Pharmaceuticals v Eli Lilly and Company (2005) 68 IPR 1
Product Management Group Pty Ltd v Blue Gentian LLC (2015) 240 FCR 85
Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 44 IPR 481
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289
Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225
Samsung Electronics Co Ltd v Apple Inc (2011) 217 FCR 238
Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd (2016) 118 IPR 421
Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) (2011) 196 FCR 1
Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 171 IPR 120
Smith & Nephew Pty Ltd v Wake Forest University Health Sciences (2009) 82 IPR 467
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588
Wilson v Simpson (1850) 50 US 109
Division: General Division Registry: Victoria National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 686 Date of hearing: 20 – 29 July 2022, 3 – 4 August 2022 Counsel for the Applicants: Mr B Caine KC with Ms C Cunliffe Solicitor for the Applicants: Wrays Lawyers Counsel for the Respondent: Mr AJ Ryan SC with Mr ADB Fox SC Solicitor for the Respondent: Griffith Hack Lawyers ORDERS
VID 340 of 2020 BETWEEN: MMD DESIGN AND CONSULTANCY LIMITED
First Applicant
MMD AUSTRALIA PTY LTD ACN 002 446 845
Second Applicant
AND: CAMCO ENGINEERING PTY LTD ACN 067 041 641
Respondent
AND BETWEEN: CAMCO ENGINEERING PTY LTD ACN 067 041 641
Cross-Claimant
AND: MMD DESIGN AND CONSULTANCY LIMITED (and another named in the Schedule)
First Cross-Respondent
ORDER MADE BY:
ROFE J
DATE OF ORDER:
21 JULY 2023
THE COURT ORDERS THAT:
1.The parties confer and, within 21 days of these orders, submit to the Associate to Justice Rofe an agreed minute of orders giving effect to these reasons, alternatively if no agreement each party submit a proposed minute of order.
2.Orders 1 and 2 made 14 September 2022 be extended until further order of the Court.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
1 THE PROCEEDING
[1]
2 THE PATENT
[6]
3 CONFIDENTIALITY
[31]
4 ORE FINES ISSUE
[33]
5 NON-EXPERT EVIDENCE
[49]
6 EXPERT EVIDENCE
[69]
6.1 Dr Huggett
[70]
6.2 Mr de Vos
[75]
7 BACKGROUND
[86]
7.1 Mineral sizers
[87]
7.2 Transmission of force
[92]
7.3 Casting
[98]
7.4 The invention described in the Patent
[108]
7.4.1 Ductile and malleable
[110]
7.4.2 Efficient transmission of force
[115]
7.4.3 Sand cast covers
[120]
7.5 Experts’ evidence as to the construction of claim terms
[132]
7.5.1 Weldingly secured to and seated in face to face contact with the front face (or rear face) of the support body
[133]
7.5.2 Seated in face to face contact
[141]
7.5.3 Seated
[153]
7.5.4 Weld failure
[160]
8 JOINT EXPERT REPORT AND JOINT SESSION
[167]
8.1 Seated in face to face contact
[179]
8.2 Preferably co-planar – Diagrams 1 to 3
[182]
8.2.1 Diagram 1
[185]
8.2.2 Diagram 2
[188]
8.2.3 Diagram 3
[190]
8.3 Intermediate cover/front cover
[199]
8.4 Juncture
[204]
9 CONSTRUCTION OF THE PATENT
[206]
9.1 Relevant principles
[206]
9.2 Person skilled in the art
[208]
9.3 Terms on which there was expert agreement
[216]
9.4 Parties’ submissions on terms where there was no expert agreement
[218]
9.5 Consideration
[239]
9.5.1 Claim 3
[281]
9.5.2 Omnibus claims
[282]
10 INFRINGEMENT
[287]
10.1 Unitary tooth construction
[296]
10.2 Front/rear cover weldingly secured to the support body
[299]
10.3 Front/rear cover in face to face contact with the front/rear face of the support body
[301]
10.4 Separate rear cover
[303]
10.5 The Camco Constructions
[307]
10.6 First Yandi Construction
[308]
10.6.1 Claim 1
[330]
10.6.2 Claim 3
[336]
10.6.3 Claim 9
[338]
10.7 Solomon Construction
[341]
10.7.1 Claim 1
[354]
10.8 First Worsley Construction
[367]
10.9 Second Worsley Construction
[381]
10.9.1 Claim 1
[384]
10.10 Third Worsley Construction
[389]
10.11 Omnibus claims
[395]
10.12 Conclusion on infringement
[396]
11 REPAIR
[397]
11.1 Consideration
[408]
12 AUSTRALIAN CONSUMER LAW CLAIM
[427]
12.1 Legal principles
[440]
12.2 Relevant Facts
[444]
12.3 Consideration
[460]
13 STANDING TO SUE / EXCLUSIVE LICENCE
[466]
14 ADDITIONAL DAMAGES
[486]
14.1 Knowledge of the Patent
[496]
14.2 Copying of Yandi design
[498]
14.3 Camco’s conduct
[502]
15 VALIDITY
[513]
15.1 Common general knowledge
[514]
15.2 Maintenance of Crushing Equipment
[526]
15.3 Mineral sizers at the priority date
[538]
15.4 Tooth construction covers not common general knowledge
[550]
15.5 Dr Huggett’s evidence as to methods of protection of sizer teeth
[555]
15.6 Covers on other machinery
[559]
16 NOVELTY
[560]
16.1 739 Patent
[564]
16.2 165 Patent
[594]
17 INVENTIVE STEP
[606]
17.1 Principles
[607]
17.2 Submissions
[613]
17.3 Consideration
[624]
17.3.1 Hindsight
[624]
17.3.2 Design process
[639]
17.3.3 Section 7(3) documents
[653]
17.3.3.1 739 Patent
[665]
17.3.3.2 165 Patent
[669]
18 SECTION 40: CLARITY AND FAIR BASIS
[672]
19 MANNER OF MANUFACTURE
[678]
20 CONCLUSION
[686]
CONFIDENTIAL ANNEXURE A
ROFE J:
1. THE PROCEEDING
MMD Design and Consultancy Limited is the patentee of Australian Patent No. 2004289510 entitled “A tooth construction for a mineral breaker” (the Patent). MMD and MMD Australia Pty Ltd (together are referred to as MMD) contend that Camco Engineering Pty Ltd has infringed claims 1, 2, 3, 4, 7, 8, 9, 10 and 17 of the Patent (the Asserted Claims) by the unauthorised supply of five tooth constructions for mineral sizers (Camco Constructions) to particular mine sites in Western Australia.
MMD seeks injunctive, declaratory and monetary relief (including additional damages) against Camco for infringement of the Asserted Claims.
Camco denies infringement of the Asserted Claims and cross-claims for revocation of those claims. Camco denies that its sizers take all the integers of the Asserted Claims and also contends that the Camco Constructions are used to repair MMD sizers and thus do not constitute infringement. Camco’s cross-claim raises four grounds of invalidity: manner of manufacture, novelty, inventive step and s 40 issues (fair basis and clarity).
MMD also contends that Camco has engaged in misleading and deceptive conduct under s 18(1) of the Australian Consumer Law in Sch 2 to the Competition and Consumer Act 2010 (Cth) (ACL) by failing to warn its customers of the existence of the Patent, that the exploitation of the respective Camco Constructions infringed the relevant claims of the Patent, and that Camco is not entitled without the authority or consent of MMD to supply the Camco Constructions. MMD alleges that Camco’s failure to warn of these matters occurred in circumstances where each of Camco’s customers reasonably expected Camco to provide each of these warnings.
For the reasons set out below, I consider that the Camco Constructions do not infringe the Asserted Claims, and that the Patent is valid.
2. THE PATENT
The Patent was filed on 5 November 2004 and claims a priority date of 8 November 2003. The priority date is not in dispute in these proceedings. The Patent is due to expire on 5 November 2024.
The Patent concerns a tooth construction for a mineral breaker. Mineral breakers are also known as mineral sizers. As “mineral sizers” was the description used by the parties throughout the trial and in their submissions, I will use that term.
Mineral sizers are large pieces of equipment used predominantly on mine sites to break mineral ore into smaller sizes so that the rocks are a suitable size for processing. Mineral sizers typically comprise two counter-rotating parallel shafts, with each shaft having a series of adjacent drums with radially projecting teeth, the teeth from each shaft being offset so as to be interlaced.
The Patent states that the present invention is primarily concerned, but not exclusively, with the type of mineral breaker disclosed in an earlier MMD European patent 0167178. The illustration below is Figure 1 from that European patent:
With a sizer of the kind depicted above, mineral lumps are broken down by gripping the lumps and applying tensile forces to cause the lump to break by a snapping action. Each tooth is exposed to large breaking forces applied, on the one hand, onto the front of the tooth and then, on the other hand, onto the rear of the tooth.
A tooth construction is the combination of a support body (also known as a “horn”) covered by a shell so as to protect the horn.
The Patent sets out the purpose of the invention on page 1, lines 19–27:
In order to enable each tooth to withstand the breaking forces without snapping it is desirable to construct each tooth so as to have a core formed of ductile metal which is covered with a tooth shell of a wear resistant material, which in itself can be relatively brittle. In order to be capable of breaking particularly hard minerals, such as for example granite, it is necessary to be able to transmit, from the drive shaft, relatively large forces. These large forces, in turn, exacerbate the securance of a tooth shell on the tooth core or horn and also require the core or horn construction to be robust enough to transmit the relatively high forces required.
At the foot of the first page, the Patent sets out the first consistory clause in language which mirrors claim 1:
According to one aspect of the present invention there is provided a tooth construction for a mineral breaker, the tooth construction including a tooth shaped support body covered by a shell which defines the outer shape of the tooth construction, the shell being composed of a plurality of covers which are fixedly secured to one another and/or to the support body by welding to define a unitary tooth construction the support body having a front face and an opposed rear face and the plurality of covers including at least a front cover weldingly secured to and seated in face to face contact with the front face of the support body and a separate rear cover weldingly secured to and seated in face to face contact with the rear face of the support body.
The second consistory clause which commences at page 2, line 10, is to a “drum construction for a mineral breaker”, and mirrors claim 12, which is not one of the Asserted Claims.
The Patent includes 12 figures which relate to two embodiments of the invention. Various aspects of the invention are described in the following section of the Patent by reference to the figures:
Figure 1 is a part perspective view of a drum annulus according to an embodiment of the present invention;
Figures 2 to 6 illustrate a sequence of construction steps, according to a first embodiment, for creating a toothed annulus for a mineral breaker using the drum annulus of Figure 1;
Figures 7 to 11 illustrate a sequence of construction steps, according to a second embodiment, for creating a tooth annulus for a mineral breaker using the drum annulus of Figure 1; and
Figure 12 is a part side view of a tooth construction according to a further embodiment of the invention.
(Emphasis added.)
Figures 2 to 6 are said to illustrate the method of construction to produce a breaker tooth of a given height (the first embodiment). The method of construction of a breaker tooth illustrated in figures 7 to 11 enable a breaker tooth of a height greater than that of the first embodiment to be produced whilst using the same size of drum annulus (the second embodiment).
The “two methods of construction” are said to be illustrative of the principle that the same drum annulus may be used to produce breaker teeth of different heights. The Patent notes that this is particularly advantageous since it enables the same size of drive shaft and drum annulus to be used for the construction of mineral breakers having different sizes of teeth. The Patent also notes that “these two methods of construction” are also illustrative of different ways of securing covers to each horn to define the outer, exposed faces of breaker teeth.
The Patent describes a series of steps (or method of construction) to assemble two embodiments of a tooth construction of the invention.
The method of construction according to the first embodiment is described at pages 4 to 6 (inclusive) as follows:
As shown in Figure 2, the axial side faces 33, 34 of the horn 12 are partially covered by a pair of side covers 36, 37.
Each side cover 36, 37 include a plate-like body 38 and an arcuate flange 39 located at the lower edge of body 38.
Preferably the side faces 33, 34 are planar and bodies 38 are preferably formed from a metal plate which is also planar.
The front and rear edges 40, 41 of body 38 are preferably co-planar with the front and rear faces 44, 45 respectively of the horn 12. The upper edge 47 of each body 38 is preferably rectilinear and extends from the upper part of the front face 33 to the upper part of the rear face 34 of the horn 12. Accordingly the upper portions of side faces 33, 34 are left exposed to define a crown portion 50.
The side covers 36, 37 are secured to the horn 12 preferably by welding. Preferably this is achieved by providing welding along the front, upper and rear edges 40, 47, 41 respectively to produce a welded seam 55. Accordingly the side covers 36, 37 are securely bonded to the horn 12.
The arcuate flange 39 is seated upon a portion of the annular shoulder 20 and serves to cover that part of the shoulder 20.
As shown in Figure 3, a rear cover 60 is then provided which is seated in face to face contact with the rear face 31 of horn 12. The cover 60 has side edges 61, 62 which are co-planar with the outer face of bodies 38 and so covers the rear edges 41 of both side covers 36, 37. The rear cover 60 is preferably formed from a metal plate.
The rear cover 60 is secured to the horn 12 and side covers 36, 37 preferably by welding. Preferably this is achieved by welding along the side edges 61, 62 to produce welded seams 65. Whilst it is preferred that the cover 60 is directly welded to the horn 12 it is envisaged that it may be indirectly welded to the horn 12 by being welded to side covers 36, 37 only (which in tum are weldingly connected to the horn).
As shown in Figure 4, the horn 12 is then provided with a front and top cover 70.
Cover 70 includes a top portion 71 which has an inner groove (not shown) of complementary shape and size to the exposed crown 50 of the horn 12 which is left exposed after securance of side covers 36, 37 and rear cover 60. Cover 70 further includes a depending front wall portion 73 which has an internal face (not shown) which is seated in face to face contact with the front face 32 of the horn 12. The front wall portion 73 has an upper front face 86 which is preferably planar. The lower portion 87 of the front wall portion 73 preferably includes a window 95. Side walls 96 of the window 95 are preferably secured to the exposed front face of the horn 12 by welded seams 98 in order to directly weldingly secure the front wall portion 73 to the horn 12.
The cover 70 has outer side faces 74, 75 which lie in the same plane as the outer face of side plates 38 and so have inner faces 78, 79 respectively which face and overlie edges 40, 47 of the side plates 38. Preferably a rear end portion 76 of the cover 70 overlies the upper edge 68 of cover 60.
Preferably the side edges of top portion 71 which define faces 78 are spaced from opposed edges 47 to form a gap 80 extending along the edge 47 (only a portion of gap 80 is shown). This enables the inner surface of the top portion 71 to seat upon the upper portion of crown 50.
The cover 70 is then secured to the horn 12 preferably by welding so as to join the opposed faces between cover 70 and plates 38 to one another via a welded seam 85.
A further welded seam 86 is preferably provided to weldingly join the upper edge 68 of cover 60 to the end portion 76.
The weld seam 85, where it extends along the upper edge 47 of each plate 38, also fills the gap 80 and so is weldingly joined to that part of the horn 12 which is exposed by gap 80. Preferably recess windows 90 are provided to enable a gouging tool to be inserted for removal of the weld seam 85 to thereby enable the cover 70 to be removed in the event of a replacement cover 70 being necessary due to wear.
(Emphasis added.)
Figures 3, 4 and 5 of the Patent are as follows:
There is a description of the mounting of the breaking tip member at page 7, lines 13–19:
The tip member 100 preferably has a mounting body 120 in which is secured a pick-like tip 121. The mounting body 120 has an upper part 122 which seats in rebate 110 and a lower depending part 124 which has an inner face which lies in face to face contact with the upper front face 86 of wall portion 73. The body 120 has outer edges which overlie the peripheral groove 115 and is preferably secured to the cover 70 by a welded seam 130 extending along groove 115.
(Emphasis added.)
The Patent notes at page 7, line 20 to page 8 line 12, that:
The above arrangement produces a breaker tooth in which a horn 12 is provided which is completely enclosed by a fabricated shell-like tooth cap defined by covers 36, 37, 60 and 70. The tooth cap is fabricated in-situ on the horn 12, preferably by welding covers 36, 37, 60, 70 to one another and/or the horn 12. This provides a very strong tooth construction having a shell-like construction which is securely fixed to the horn 12.
In this construction, the front of the tooth is fully seated on the horn front face 32 at the time of assembly and so is highly resistant to loosening during operation by being exposed to impacts on the front of the tooth. Similarly, the rear of the tooth shell (as defined by plate 60) is fully seated on the rear face 31 of the horn during assembly and is fixed in position independently of the front of the tooth. This means that the rear plate 60 of the shell is highly resistant to loosening by impacts on the rear of the tooth. It follows therefore that the fabricated shell is highly resistant to loosening by repeated alternate impacts to the front and rear of the tooth.
As wear takes place, in use, replacement covers can be simply installed by removal of the worn cover and insertion of a new one. Removal is easily achieved by first removing the relevant welded seam.
(Emphasis added.)
The second embodiment which is illustrated in figures 7 to 11 is said to be an example of a tooth construction which uses the same sized horn as the first embodiment but has a tooth height greater than that of the first embodiment as depicted in figure 6. This is achieved primarily by the provision of an intermediate cover.
The second embodiment is described on pages 8 to 9.
In embodiment 200, the horn 12 is first covered with a cover 210 which is preferably cast from a suitable metal. The cover 210 has a pair of opposed sides 212, 214, a front wall 216 and a top 215. The cover 210 has an open back (not shown).
The cover 210 defines an internal pocket which has faces which seat in face to face contact with faces 32, 33, 34 and 50 of the horn 12.
The side walls 212, 214 include at least one window or aperture 218 which exposes a portion of the underlying face 33 or 34 of the horn 12. The aperture 218 has side walls 219 which are secured to the exposed face 33 or 34 of the horn 12 by welding. Preferably the entire aperture 218 is filled with weld.
Similarly, the front wall 216 is provided with at least one window or aperture 225 which exposes a portion of face 32.
The aperture 225 has side walls 226 which are secured to the exposed portion of face 32 by welding.
The rear end faces 219 of the cover 210 are preferably co-planar with the rear face 31 of horn 12 and are secured to the horn 12 by a welded seam extending between the internal edges of faces 219 and the horn 12.
Accordingly the cover 210 is securely fixed to the horn 12 by welding located at the front, both sides and rear of the cover 210.
The top 215 of cover 210 defines an upper crown 250 of similar shape to crown 50.
As shown in Figure 8, a rear cover 60 is provided which overlies the rear face 31 and end faces 219 of the cover 210. The cover 60 is formed of a metal plate and is located in face to face contact with rear face 31. It is secured to the cover 210 and horn by a seam of weld 65 which extends along both sides of plate 60.
As shown in Figure 9, a cover 270 similar to cover 70 is located on the crown 250 and is secured in place by welded seams 85.
(Emphasis added.)
At page 10, the Patent notes that the construction of the breaker tooth, as exemplified in the two embodiments, provides a very strong breaker tooth since welding of the covers to the horn in effect adds strength to the horn. This means that the tooth construction of the invention can transmit relative high forces for breakage of very hard minerals with a reduced risk of snapping and in addition without a risk of the tooth shell or cover working loose.
The Patent notes that the strength of the tooth construction according to the invention is also enhanced by the fact that the horn is solid, eg does not contain through bores as is commonly required with prior art constructions.
The Patent has 19 claims.
Claim 1 claims:
A tooth construction for a mineral breaker, the tooth construction including a tooth shaped support body covered by a shell which defines the outer shape of the tooth construction, the shell being composed of a plurality of covers which are fixedly secured to one another and/or to the support body by welding to define a unitary tooth construction the support body having a front face and an opposed rear face and the plurality of covers including at least a front cover which is weldingly secured to and seated in face to face contact with the front face of the support body and a separate rear cover which is weldingly secured to and seated in face to face contact with the rear face of the support body.
(Emphasis added.)
The highlighted integers are where the primary dispute lies in construction of the claim and infringement.
Claims 2 to 9 are dependent on claim 1. Claims 10 and 17 are omnibus claims.
3. CONFIDENTIALITY
Much of the infringement evidence was the subject of claims to confidentiality. In particular, the drawings of the Camco Constructions at each of the mine sites at which MMD contends there is infringement of the Asserted Claims.
References to certain confidential manufacturing tolerances and evidence that is confidential to MMD are redacted in the public version of these reasons.
4. ORE FINES ISSUE
Before going further, it is necessary to address what I term “the ore fines issue”.
At trial MMD opened its case on the construction of a critical claim integer: “in face to face contact”, orally and in writing by reference to ore fines and corrosion.
At [32] of its written opening submissions on the construction of the “in face to face contact” integer, MMD submitted:
… seated in face to face contact with the front face of the support body: Consistent with Mr De Vos’ evidence, MMD submits that this integer requires that the front cover is positioned (whether when fitted or during use)71 so that the forces are transmitted from the front cover to the front face of the Support Body (horn), whether by the front cover directly touching the Support Body (horn), or indirectly through an intermediate component (such as an Intermediate Cover) or ore fines and/or corrosion present in the clearance between the cover and the Support Body (horn).72 In order for forces to be transmitted between two components, there must be a physical connection between them.73 “Seated in face to face contact” does not require that forces are transmitted across the entire face of the front cover.74
(Original emphasis, with bold emphasis added.)
Footnotes 71, 72, 73 and 74 are to Mr de Vos’ first affidavit. Footnote 72 additionally refers to the joint expert report.
Camco denied that the Camco Constructions infringed principally on the basis that there were gaps between the face of the horn and the cover, such that they were not in face to face contact.
As will be discussed further later, Mr de Vos considered that the invention described in the Patent is concerned with efficiently transmitting the large forces applied to the tooth construction in operation to the horn, because the covers may fall off the support body if those forces are not efficiently transmitted.
The ingress of ore fines into tooth constructions and their compaction (together with any corrosion) during operation to fill any gaps and thus provide an efficient transmission of force from the covers to the horn was a central part of Mr de Vos’ construction of the “in face to face contact” integer in his first affidavit. Interestingly, Mr de Vos had no prior experience with or knowledge of the ingress of ore fines and their compaction during operation until he was instructed to accept that ore fines would infiltrate into the tooth construction during operation and compact in any gaps, and asked how that would affect the transfer of forces.
Once instructed to accept the ingress of ore fines to fill gaps or clearances, Mr de Vos included ore fines as part of his consideration of the construction of the “in face to face contact” integer, and in his infringement analysis.
I note that Dr Huggett did not accept the compaction of ore fines as a solid intermediary component through which forces could be effectively transmitted. In his opinion the transfer of forces in a tooth construction that contained clearances would occur exclusively through the weld.
On day seven of the trial MMD informed the Court that “its position on ore fines is no longer pressed”. MMD’s fourth amended position statement on infringement was marked up to remove references to ore fines, however no mark up of the evidence was provided to show which parts, if any, were no longer relied on.
By closing, the MMD infringement argument had evolved to no longer rely on ore fines and corrosion filling the gaps during operation to enable efficient transmission of the forces. Instead, where the faces of the relevant covers were not in physical contact with the support body (eg there were gaps) MMD now relied on the presence of weld at the edges of the front or rear face for the transmission of force from the cover to the support body. The extreme point of this argument is illustrated by diagram 3 (discussed in detail below) where the weld is the sole means by which force can be transferred from the front/rear cover to the support body. Diagram 3 appeared for the first time in the joint expert session.
For reasons which I set out below, I do not consider that a tooth construction in which the transfer of force from the front/rear covers is solely via the weld connecting the edge of the front/rear covers to the ends of the side covers (as depicted in diagram 3) falls within claim 1 of the Patent.
Mr de Vos’ extensive written evidence on construction placed emphasis on the transmission of compressive force as the most efficient and effective means for the transfer of force from the faces of the front/rear covers to the front/rear faces of the support body. He observed that once the clearances are filled with ore fines or corrosion, forces are able to be transmitted to the support body in the same manner as occurs with front and rear covers that are placed against the front and rear faces of the support body, respectively.
Mr de Vos’ evidence in the joint expert report also referred to the transmission of force indirectly through ore fines and/or corrosion present in the clearance between the covers and the support body.
Despite abandoning the ore fines argument on day seven of the trial, MMD’s written closing submissions still contained a submission that the forces could be transmitted from the covers of the Camco Constructions to the support body via ore fines and/or corrosion present in the clearance between the covers and the support body. Whilst this reference may have been a relict from the opening submissions, overlooked in the preparation of a very extensive submissions document in a short space of time, it serves to illustrate the centrality of this argument to MMD’s infringement argument in opening, and to Mr de Vos’ reasoning in his evidence, and just how difficult it is to simply excise ore fines from the infringement case, where they had previously played a central role.
It is because I consider that the ore fines issue was integral to Mr de Vos’ reasoning on construction and infringement in his affidavit evidence such that it cannot be simply surgically excised, that I have discussed his written evidence at length in a following section.
5. NON-EXPERT EVIDENCE
MMD led evidence from three non-expert witnesses employed by MMD, and Andrew Mullane, one of MMD’s solicitors. Each of the MMD non-expert witnesses, other than Mr Mullane was cross-examined.
Darren Balmer, Production Director at MMD Australia, made five affidavits dated 27 January 2022, 2 February 2022, 11 May 2022, 10 June 2022 and 24 June 2022. Mr Balmer commenced with MMD Mineral Sizing (Europe) Ltd in 1993, and has been employed by various MMD companies since then, moving to MMD Australia’s Brisbane office in 2009.
Starting in about 1995, Mr Balmer began assisting in MMD Mineral Sizing’s service department in the United Kingdom and was involved in the installation of new equipment and the repair and changing of worn components for bolted tooth constructions.
According to Mr Balmer, MMD Australia has supplied mineral sizers to mine sites in Australia since the late 1980’s. For the majority of MMD Australia’s mineral sizers, the teeth are composed of a support body clad with covers. The covers are wear parts.
In a confidential annexure to his first affidavit, Mr Balmer gave post priority date evidence about the MMD tooth constructions at each of the Yandi, Solomon and Worsley Alumina sites at which MMD contends that Camco supplies infringing tooth constructions. According to Mr Balmer, the MMD intermediate, rear and top covers are made by casting which he describes as a “relatively imprecise fabrication technique”. He observes that there are manufacturing tolerances associated with the cast covers depending on the length of the component. MMD’s cast covers have a manufacturing tolerance of approximately [REDACTED].
The MMD covers also undulate across their inner and outer surfaces (another product of the casting process). As a result, the faces of the covers (both inner and outer) are not perfectly flat.
According to Mr Balmer, when fitting the intermediate cover of the MMD tooth construction to the support body [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED].
Mr Balmer gave extensive evidence relating to the ore fines issue. For example:
[REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED]. [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED]
(Emphasis added.)
The majority of the evidence in Mr Balmer’s affidavits was devoted to the ore fines argument. In a confidential section of his first affidavit Mr Balmer describes how he has observed ore fines and corrosion filling clearances in the MMD tooth constructions when they are being removed from a support body. He exhibits various photographs of MMD tooth construction components with corrosion or ore fines on their faces. Mr Balmer opines that the rotation of the tooth construction about the shaft generates centrifugal force that causes the ore fines to compact toward the outer portions of the covers and become solid. Once solid, the compacted ore fines are able to efficiently transmit forces.
Scott Harvey is employed as Service Manager at MMD Australia. Mr Harvey made two affidavits dated 19 July 2022 and 21 July 2022 in which he gave evidence as to the provenance of certain photographs (annexed to Mr Balmer’s first affidavit) of tooth constructions at sequential stages of removal during the MMD refurbishment process. Mr Harvey’s evidence was entirely relevant to the ore fines issue.
David Waring, the Operations Director of MMD, made one affidavit dated 18 July 2022. Mr Waring gave evidence as to MMD Australia’s exclusive licence to exploit the Patent. Mr Waring appeared by video from the United Kingdom.
Mr Mullane annexed to his two affidavits an extensive collection of correspondence between his firm, Wrays Lawyers, and Camco’s lawyers, Griffith Hack.
Camco led evidence from its director, Frank Fusco. Mr Fusco made two affidavits, dated 13 May 2022 and 10 June 2022. Mr Fusco’s current role at Camco is Executive Director of Operations and he oversees operational activities at Camco. He agreed in cross-examination that his original claim that he oversaw “all” operational activities was an overstatement. This includes overseeing the workshop repairs conducted by Camco for its customers. Mr Fusco did not have any engineering qualifications and was unable to comment on engineering issues such as the transmission of forces between covers.
Camco was incorporated on 4 November 1994 and commenced trading in June 1995 as a start-up business by Bruce Cameron, Victor Fusco, Alan Leese and Mr Fusco. Mr Fusco has been a part owner of Camco since it commenced trading. Mr Fusco and Mr Cameron are responsible for the day-to-day operation of the Camco business and both take a very “hands on” role in all aspects of the business. Mr Cameron, a mechanical engineer, took the lead in relation to negotiating supply contracts and attending meetings, and giving instructions (together with Mr Prasad, a Camco project engineer) including deciding which diagrams to provide to the expert, Dr Paul Huggett, in the course of the MMD litigation. Mr Fusco was generally aware of the negotiations and litigation but was more involved in overseeing the refurbishment operations of the business. Camco currently has over 300 full time equivalent employees.
Mr Fusco gave evidence as to Camco and MMD’s business history and he described the nature of Camco’s business as follows:
Camco is not an original equipment manufacturer (OEM) supplier. That is, Camco does not design and supply capital equipment and machinery to resource sector companies when those companies are expanding or developing a new mine site. Rather, Camco provides an after-market repair service (what I described above as ‘operational support’) to those companies. With particular reference to the current proceedings, Camco has repaired parts of mineral breakers (sizers) owned by mining companies and in particular Camco has repaired the breaker shaft assemblies which generally consist of a pair of shafts with drum annuli and wear covers welded around the horns of the drum annuli. Repair of mineral breaker teeth is required because the components forming the teeth are consumable parts worn away by the mineral breaking process and need replacing after a period of time in use. Over the years, Camco has repaired tooth structures as part of the overall repair of breaker shaft assemblies by using OEM parts provided by the mining companies, purchasing parts directly from the OEM, or by Camco manufacturing parts of its own, or by Camco using welding and other hard facing techniques that do not require spare parts.
Mr Fusco gave evidence as to the creation of various confidential Camco Fitment and Welding drawings for each of the Camco Constructions at the relevant mine sites alleged to infringe and which were the subject of discussion by the expert witnesses (Camco Drawings). According to Mr Fusco he gave instructions for the preparation of the drawings and supervised their creation. The Fitment and Welding drawings were created to depict the construction method but most importantly to emphasise to workshop staff the importance of particular aspects such as clearances or where welding should be minimised.
Mr Fusco said that he sometimes gave verbal variations to the instructions in the Fitment and Welding drawings directly to the workshop staff, and that not all these variations were recorded in the drawings. Modifications to the drawings might also arise during the casting process. The foundry might be asked to make a small modification to the initial casting and to do this they would make a relevant modification to the pattern. Mr Fusco said that these types of modifications, often as a result of verbal discussions, were not always reflected by a revision to the 3D model and creation of revised 2D drawings because he considered them to be so minor that he did not consider it necessary for revised modelling or drawings to be created.
Mr Fusco outlined the process by which Camco carried out the refurbishment of mineral sizers. Camco undertakes mineral sizer refurbishment projects in its workshops. The sizer shaft assemblies typically arrive at the Camco workshop by truck on transport frames and are delivered back to the mine site for reinstallation in the mineral sizer following refurbishment.
Mr Fusco also gave evidence on the ore fines issue. Mr Fusco’s second affidavit was primarily directed to responding to Mr Balmer’s evidence on the ore fines issue.
As a witness, Mr Fusco was at times pugnacious and combative, particularly when presented with a proposition he disliked. He was unable to recall whether he had seen certain emails relating to Camco’s tender negotiations to which he was copied, at the time they were sent. Mr Fusco also had memory lapses in relation to whether he had attended important meetings such as meetings with Watermark, or the 18 December 2018 meeting with MMD.
6. EXPERT EVIDENCE
MMD and Camco each called an expert witness. Mr Jurrien de Vos was called by MMD and Dr Paul Huggett was called by Camco. Mr de Vos and Dr Huggett prepared a joint expert report (JER) prior to the hearing, and gave evidence at the hearing in a joint session.
6.1 Dr Huggett
Dr Huggett graduated with a Bachelor of Applied Science with honours in Materials Science from the NSW Institute of Technology in 1986. He obtained a Masters in Materials Science from the University of Technology Sydney in 1992. His PhD was conferred by the University of Technology Sydney in 2008 for his research on a novel manufacturing process for a composite wear material. He has been a certified Materials Professional with Materials Australia since about 2004. Dr Huggett is listed as an inventor on four Australian patents.
Dr Huggett has worked as a materials scientist in the manufacturing and mining industry for the past 30 years. He started his career as a materials scientist in the manufacturing of pumps, and then moved to earthmoving and mining equipment. From about 1998 Dr Huggett worked with mineral sizers and wear components for mineral sizers, amongst other mineral processing equipment such as crushers, mills, chutes, conveyors, screens and flotation units.
As at the priority date, Dr Huggett had worked for mining companies to prolong the life of various equipment including mineral sizers through making changes to their design and materials. His experience included materials failure analysis, wear materials, material testing, research and development, open cut and underground mining, construction, slurry and water pipeline design, project engineering and project management with the mining, manufacturing and oil and gas industries.
Dr Huggett had post priority date experience of working with mineral sizers, including MMD sizers for Fortescue Metals Group Ltd’s Solomon In-Pit crushing projects and at Rio Tinto’s Mesa A mine site, and failure analysis of sizer teeth.
As at the priority date, Dr Huggett’s evidence was that he stayed informed about mineral sizer design and materials by:
(a)maintaining close relationships with manufacturers;
(b)conducting his own research through internet searches;
(c)reading scientific journals and papers, such as Wear, Minerals Engineering, conference papers and patents, trade publications in the metallurgical field, and textbooks; and
(d)attending and presenting at conferences, including Materials Innovations in Surface Engineering conferences, and educational and networking events through Materials Australia and Australian Corrosion Association.
6.2 Mr de Vos
Jurrien de Vos is a mechanical engineer, who graduated with First Class Honours from Curtin University in 1989. Since then he has gained significant experience with respect to the general principles and process of engineering design, particularly in relation to equipment for the mining and heavy industries.
Mr de Vos had two periods of employment at Hofmann Engineering (1990–1993 and 1996–1998). During his second period of employment at Hofmann Engineering, as a Design Manager, he designed and improved a variety of different pieces of mining equipment, including the gearbox of an MMD mineral sizer and an ABON-designed mineral sizer, jaw crushers and cone crushers.
The ABON mineral sizer had a shaft with teeth that were an all-in-one casting (with no separate covers). Due to a combination of the heavy loading and abrasive ore applied to the mineral sizer during its use, the teeth had worn down significantly. Hofmann Engineering cast new tooth constructions for ABON’s mineral sizer using a harder material to increase their wear life. Mr de Vos, in collaboration with another employee of Hofmann, made the decision as to the materials from which the new tooth constructions would be cast. The ABON sizer did not include covers. The entire tooth was removed and replaced with a new tooth when it became too worn to perform its function.
In 2006, Mr de Vos started deVos Chater & Associates (dVCA) with another engineer. He was Director and Principal Design Engineer of dVCA. In 2009 dVCA was dissolved, and Mr de Vos started Deacon Engineers. Since 2009, Mr de Vos has been the Managing Director and Principal Design Engineer of Deacon Engineers.
As at the priority date, Mr de Vos had supervised the design of mechanical power transmissions, process equipment and ore crushing equipment. This included the design for a rock breaker for a jaw crusher, to improve the installation of a cone crusher, the investigation and redesign of a rolls crusher, and the design of a new tooth removal machine for mineral sizers.
Mr de Vos had not seen a mineral sizer in operation before the priority date.
Mr de Vos gave evidence as to his construction of the terms used in the Patent claims, his analysis of whether the Camco Constructions infringed the claims of the Patent and on invalidity.
When undertaking a new design task at the priority date, Mr de Vos’ approach was to rely substantially on his own experience gained through designing equipment. He also consulted formally and informally with colleagues, metallurgists and suppliers that he worked with to ask them about their experiences and new developments. He conducted internet searches to see the designs of similar equipment being manufactured and supplied to the market, and the materials available. At the priority date the information on the internet was more limited than it is today.
Mr de Vos also referred to textbooks, including the Machinery Handbook, Fundamentals of Machine Component Design, Applied Mechanical Design and the Procedure Handbook of Arc Welding and Design with Weldox and Hardox. He relied more on textbooks at the priority date than now because in his experience there is more, and more up to date, information available on the internet now.
Mr de Vos never undertook a patent search before beginning a new design task. It was his view that many patented designs were good ideas but which did not work in practice. In order to produce a design that he would be confident would work, he preferred to use designs and components that were commercially available as it was more likely that they would be useful.
Mr de Vos also referred to engineering design standards, such as the Australian Standards and British Standards and to supplier design handbooks and catalogues, such the Ajax Fastener Handbook and bearing catalogues, to obtain information about components that were commercially available.
7. BACKGROUND
The following background information is taken from Mr de Vos’ first, third and fourth affidavits.
7.1 Mineral sizers
Mineral sizers typically consist of two shafts housed within a rectangular enclosure with an open top side and open bottom side. The shafts have rows of teeth affixed to them that rotate in opposite directions to one another. The teeth are designed to crush rocks.
The teeth of the mineral sizer do the majority of the work reducing the size of rocks. The teeth break the rocks against other teeth. The teeth are typically shaped to have a pointed front (eg a pick or breaking tip) that allow the teeth to grip the rocks. Depending on the design of the mineral sizer, the teeth may have sacrificial covers.
Where a tooth consists of a tooth core (which Mr de Vos described as a “support body”) and sacrificial covers, the covers protect the support body from becoming damaged by the rocks. The covers wear during use and are replaced periodically. The support body may need to be replaced on occasion, but less frequently than the covers. Where a tooth does not include covers, the tooth itself is a sacrificial part, and will be replaced periodically due to wear from the rocks.
As a result of the action of the teeth, significant forces are imparted during use to the front, top and rear faces of the teeth. Smaller forces are imparted on the sides of the teeth. The front face of each tooth is subject to the greatest number of forces, though the magnitude of the forces imparted on the front and rear faces of the teeth is similar.
Tooth constructions are typically made from steel. Steels tend to be relatively malleable, meaning that it tends to deform, rather than fracture, when force is applied to it. Steel can be hardened to reduce its malleability, making it resistant to plastic deformation when a force is applied to it. Steel is an alloy of iron with a small amount of carbon. A common way of hardening steel is to create an alloy by introducing other elements (such as other metals). For example, manganese steel is a hardened form of steel. The inclusion of manganese makes the steel more resistant to plastic deformation when forces are applied to it.
7.2 Transmission of force
According to Mr de Vos, the well-known principle: for every action, there is an equal and opposite reaction, is critical to the operation of a mineral sizer tooth construction.
In a mineral sizer, there must be a physical connection between two components (according to Mr de Vos this can be directly or through an intermediary) in order for forces to be transferred between them. When a force is applied to Component A, that force can be transmitted to other components that are physically connected to Component A.
Mr de Vos described the transmission of forces between two components through a third, intermediate component. He referred to a situation where Component A touches Component B, and Component B touches Component C, but Component A does not touch Component C. A force applied to Component A may be transmitted to Component B, and then may be transmitted from Component B to Component C. In this way, the force is transmitted from Component A to Component C, even though Component A and Component C do not touch one another directly, because there is a physical connection between them.
Forces may be transmitted between components in several different ways. The most efficient way of transmitting force is a “compressive force”. Compressive forces involve pushing into, or compressing, a component. A compressive force occurs where, for example, Component A and Component B are touching and a force is imparted on Component A in the direction of Component B. The force is transmitted from Component A to Component B in a way that compresses Component B.
A “tensile force” relies on a fastening medium to transmit the force between components. Tensile forces involve pulling away from, or stretching, a component. A tensile force occurs where, for example, Component A and Component B are secured to one another (for example by a weld), and a force is imparted on Component A in the direction away from Component B. The tensile force will be transmitted from Component A to Component B in a way that stretches Component B and the bond between the two components. A tensile force can only be transmitted in this manner if the two components are secured to one another. If the two components are not secured to one another, a force that is applied to Component A in the direction away from Component B will not be transmitted to Component B.
“Shear forces” are another way that forces may be transmitted between components. A shear force is a transverse force, not an axial force. In comparison, compression and tensile forces are generally axial. A shear force relies on either a fastening medium or friction in order to transmit the force between two components.
7.3 Casting
There are different methods for manufacturing components made from steel, including forging, casting and machining.
Forging involves creating a desired shape through compressive forces that are applied to the metal whilst it is in a semi-solid state to plastically deform the metal. The semi-solid state is achieved through an elevated temperature. There are several different types of forging, including hammering, pressing and rolling.
Casting involves melting the metal, pouring the molten metal into a mould and allowing it to cool. Once the metal is cooled it is removed from the mould and keeps the shape of the mould.
There are different types of casting. There are advantages and disadvantages associated with each, including with respect to the precision (manufacturing tolerances), the size and complexity of the components that can be manufactured, the ability to re-use the die and cost. Three common forms of casting are: sand, die and investment casting.
Sand casting uses silica-based materials that are tightly packed together into a smooth moulding surface. The silica-casting reduces the potential for tearing or cracking by allowing some flexibility and shrinkage during the cooling phase of the process. The main advantages to sand casting include:
(a)relatively low production costs, particularly where a relatively small number of components are being produced; and
(b)the ability to cast large components.
Sand casting is not a high-precision production method. Sand casting involves relatively high manufacturing tolerances. Components that are produced using sand casting have relatively large manufacturing tolerances and relatively rough surfaces. The product from sand casting requires thicker walls than die and investment casting (discussed below), because the method relies on gravity, not pressure, to push the molten metal into the mould. In sand casting there is significant distortion because there is movement and cracking in the sand cast mould as the cast metal cools.
The various parts of the sand cast component will shrink to different degrees across the component and between different moulds, leading to differences in the dimensions of the manufactured component. The size of the manufacturing tolerances for a particular cast component depends on the quality and process of the casting.
Die casting involves injecting molten metal into a steel die under high pressure. The die is often coated with a lubricant to regulate the temperature of the die and assist with ejecting the cast metal part once it has cooled. Die casting provides greater precision but it is more expensive than sand casting.
Investment casting uses a disposable wax pattern for each cast part. The wax is injected into a die having the desired shape of the component. The wax pattern is removed from the die before the wax pattern is surrounded by a ceramic compound to create a mould (the “investment process”). The wax is then removed from the mould by heating it up. Molten metal is injected into the mould. Once the metal has cooled, the mould is broken to release the cast metal. Investment casting provides significantly greater precision and lower manufacturing tolerances than sand casting, and allows more complex geometrical shapes to be created. However, investment casting is more expensive than sand casting (unless the sand cast part is machined to increase its precision, as machining increases costs).
Machining involves cutting the part into the desired shape using a variety of different tools, and can produce a high degree of precision. It is possible to increase the precision of a cast component by machining it after it has been cast. Machining is a labour-intense process, and therefore adds substantially to the cost of producing the part, and so is usually only used when a high degree of precision is required.
7.4 The invention described in the Patent
Mr de Vos considered that the invention described in the Patent is concerned with efficiently transmitting the forces to the horn, because the covers may fall off the support body if those forces are not efficiently transmitted.
Dr Huggett considered that the essence of the patentee’s invention appeared to be to make discrete cover plates that are welded to the horn in face to face contact at assembly, thereby to allow the maximum amount of load to be transmitted to the horn without compromising the fatigue strength and subsequent breaking of (i) the cover plates which can otherwise occur when there are gaps between a plate and the underlying substrate (horn), and (ii) the horn which would otherwise occur where cover plates are not used.
7.4.1Ductile and malleable
Mr de Vos considered that it is important that tooth constructions have the properties of both malleable and hardened steel. This is consistent with the statement in the Patent at page 1, lines 19–22 that, “[i]n order to enable each tooth to withstand the breaking forces without snapping it is desirable to construct each tooth so as to have a core formed of a ductile metal which is covered with a tooth shell of a wear resistant material, which in itself can be relatively brittle”.
Mr de Vos explained that “ductility” describes the ability of a metal to be drawn into a thin wire. In the context of the Patent, Mr de Vos understood the reference to ductility as a reference to the core being formed of a “malleable” material.
According to Mr de Vos, if a tooth construction is made entirely from material that is too hard, it may be too brittle to withstand the forces imparted during use. It will have an increased likelihood of snapping at the juncture of the support body and shaft as large forces are imparted onto the tooth construction. This is because hardened steel will fracture more readily than malleable steel (which will more readily plastically deform) when large forces are applied to it. In comparison, a malleable metal will tend to plastically deform, rather than snap, when forces greater than its yield strength are applied to it.
If a tooth construction is too malleable, it may not be able to transmit the amount of force required to snap or crush the rocks. Instead, the tooth construction may deform and experience accelerated rates of wear. The tooth construction may quickly become so deformed or worn that it loses the shape required to reduce the size of rocks to the desired extent.
According to Mr de Vos, the Patent explains that it is possible to obtain the desirable properties of both malleable and hardened steel by using a malleable support body clad in hardened covers. This arrangement will only work if the forces applied to the tooth construction can be efficiently transmitted between the covers and support body. The transmission of those forces prevents the covers from deforming to the point where they fracture.
7.4.2Efficient transmission of force
Mr de Vos considered that a critical element of a tooth construction is its capacity to transmit forces from the covers to the support body. According to Mr de Vos, the use of the word “contact” in the claims to imports the critical concept of the efficient transfer of forces into the claims.
According to Mr de Vos, a robust tooth construction that includes sacrificial covers to protect the support body must be capable of efficiently and effectively transmitting the forces imparted by the teeth breaking the rocks:
(a)from the rocks to the covers;
(b)from the covers to the support body; and
(c)from the support body to the shaft;
and back in the opposite direction.
As a result of the large forces that are imparted on the teeth, it is necessary for those forces to be efficiently transmitted to the support body and the shaft in order for the teeth to be sufficiently robust. Mr de Vos observed that this concept was described on page 1, lines 22–27 of the Patent:
In order to be capable of breaking particularly hard minerals, such as for example granite, it is necessary to be able to transmit, from the drive shaft, relatively large forces. These large forces, in turn, exacerbate the securance of a tooth shell on the tooth core or horn and also require the core of horn construction to be robust enough to transmit the relatively high forces required.
Tooth constructions are commonly composed of covers that are secured to a support body. As compressive forces do not rely on a fastening medium unlike tensile and shear forces, according to Mr de Vos it is preferable for the forces imparted on the covers during use to be transmitted to the support body through compressive forces.
Mr de Vos explained that where a tooth construction does not efficiently transmit forces from the covers to the support body, this places strain on the means of securing the covers to the support body. The large forces that are imparted onto the teeth during operation (particularly in hard rock mining) can cause the means of securing the covers to fail if those forces are not efficiently transmitted to the support body.
7.4.3Sand cast covers
The ingress and compaction of the ore fines and corrosion was first raised by Mr de Vos in his discussion of the use of sand cast covers on mineral sizers.
In Mr de Vos’ experience, the covers of tooth constructions are most commonly sand cast. As the covers are sacrificial parts, and designed to be replaced periodically, there is an imperative to minimise manufacturing costs. The covers do not have a particularly intricate design, which in Mr de Vos’ opinion makes them suitable for sand casting.
Although sand cast parts have relatively large manufacturing tolerances, Mr de Vos considers that those tolerances are not functionally significant to the performance of the covers. This is because, in practice, the covers are secured in place (meaning that a perfectly neat fit is not required) and any gaps that are left between components as a result of the manufacturing tolerances will be filled with ore fines and corrosion once the tooth constructions are in use. In use, sand cast covers which have not been machined therefore effectively provide the same efficient and effective transmission of force between components as covers which had been machined to create a perfect fit from the outset.
Mr de Vos also considered ore fines and corrosion in the context of fitting an intermediate cover of the kind described as the second embodiment in the Patent, with a separate rear cover to the support body.
Due to the manufacturing tolerances associated with sand casting, it is common for a sand-cast component that will be installed over a second component, such as an intermediate cover with welded or integral front and rear covers over a support body, to be manufactured so that there are slight clearances between the two components. These clearances allow for an easier fitment.
If the intermediate cover is cast to the precise dimensions of the support body, with no clearances, the imprecision of the casting process will mean that the intermediate cover will likely not fit well to the support body at various places. The intermediate cover will need to be ground or machined at each place there is poor fit in order for the two components to fit together. This is a time-consuming and costly exercise.
A fitment clearance is of less importance if the rear cover is welded to the intermediate cover after the intermediate cover is installed on the support body. The front cover can be pressed up against the front face of the support body. Once the front cover is in position, the rear cover can be placed against the rear face of the support body (provided that the side covers of the intermediate cover do not extend beyond the rear face of the support body).
It was Mr de Vos’ evidence that in practice, there will still be some clearances between (a) the support body and (b) the front and/or rear covers due to the imprecision involved with sand casting. The front and/or rear covers will undulate across their surface, meaning part of the face will touch the support body and part will not. Mr de Vos observed that the clearances arising from the surface undulations of the cast cover will be smaller than those required to fit an intermediate cover with welded or integral front and rear covers.
In Mr de Vos’ opinion, the small clearances required for an intermediate cover with welded or integral front and rear covers are immaterial to the function of the tooth constructions. Mr de Vos’ evidence was that in use, these small clearances typically fill with ore fines and corrosion. Once the clearances are filled, forces are able to be transmitted to the support body in the same manner as occurs with front and rear covers that are placed against the front and rear faces of the support body, respectively. I understand Mr de Vos to be describing the transmission of compressive force.
Mr de Vos considered that there may be some advantages with effectively transmitting forces to the front and rear faces of the support body from the moment that the mineral sizer is first used, rather than waiting for the clearances to fill over time. However, in practice, Mr de Vos expected the welds to be strong enough to hold the tooth construction together until any clearances have been filled with weld. In his experience, weld may fail over time due to fatigue cracking resulting from repeated cycles (unless the tooth construction has been designed in such a way that the welds can transmit and withstand the forces over an extended period of time). Accordingly, in practice, having clearances that fill over time is unlikely to affect the longevity of the tooth construction, and fabricating a tooth construction with no clearances will be of marginal benefit.
Mr de Vos’ evidence as to the infiltration of ores and fines was based entirely on information provided to him from Mr Balmer’s affidavits. Mr de Vos accepted in cross-examination that he did not know about the possibility of an ingress of “ore fines and/or corrosion” until he was given instructions to consider them in them as part of his consideration of claim construction:
MR DE VOS: … The information that was provided to me from Mr Balmer’s affidavit related to the compaction of ore fines because I had no experience with that and that was a point of consideration: could that be possible. And I still – I don’t know. And that was the purpose of that affidavit – the disclosure of that affidavit was to confirm for me that ore fines would, in fact, make their way in between the covers and compact, and could that, in fact, be a way of transmission of force.
COUNSEL: And that information from Balmer was conveyed to you before you completed your construction exercise in section C. Correct?
MR DE VOS: I couldn’t say exact dates, but I do know that I was – I was instructed to accept that ore fines would get their way in there, and then I was asked, “If ore fines did get their way in there, would they affect ..... transfer?” And I said yes. …
Mr de Vos’ evidence was that forces can be transmitted between two components with a clearance between them (Component A and Component C) through ore fines and/or corrosion that are present within that clearance, provided that the ore fines and/or corrosion are sufficiently compacted between Component A and Component C to allow for the transmission of that force. In this situation, the ore fines and/or corrosion act as an intermediate component that provides a physical connection between Component A and Component C, allowing forces to be transmitted between them.
7.5 Experts’ evidence as to the construction of claim terms
Dr Huggett provided his understanding as at the priority date of the construction of the claim terms in his first affidavit. Mr de Vos gave evidence as to his construction of the terms of the claims of the Patent in his first, third and fourth affidavits. Dr Huggett and Mr de Vos agreed in the JER on the construction of a number of terms. The terms on which the construction was agreed are discussed separately in the JER section below.
7.5.1Weldingly secured to and seated in face to face contact with the front face (or rear face) of the support body
Both Mr de Vos and Dr Huggett considered the “weldingly secured to …support body” integer to have the same meaning for the front and rear covers.
Mr de Vos understood the phrase “weldingly secured to and seated in face to face contact with the front face of the support body” to require that:
the front cover is:
(i)weldingly secured to; and
(ii)seated in face to face contact with the front face of;
the support body.
In other words, Mr de Vos understands that the front and rear covers must be welded to the support body. They may, but need not, be welded to the front and rear faces of the support body (respectively). They also may, but do not necessarily have to, be welded directly to the support body. They may instead be welded indirectly to the support body through an intermediary component, such as the side covers.
Dr Huggett considered that there were two equally possible ways to construe the “weldingly secured …support body” integer. The first, which he termed Meaning A, required that (taking the front cover as the example) the front cover be directly welded to the front face of the support body:
the front cover is:
(i)weldingly secured to; and
(ii)seated in face to face contact with,
the front face of the support body.
The second, which he termed Meaning B, accorded with Mr de Vos’ construction above.
Mr de Vos considered that passages from the specification, such as the one at page 5 lines 16–21, showed that the Patent contemplated indirect welding to the support body via an intermediate component, such as the side covers, which are themselves secured to the horn, preferably by welding (see page 5, lines 1–5 and fig 2 and page 9, lines 1–4). In addition, the front wall of the top cover of the second embodiment is welded to the support body indirectly through the intermediate cover. Mr de Vos expected that if it were a feature of the invention that the rear cover must be welded (directly or indirectly) to the rear face of the support body, was that the Patent would have said so. The Patent states only that the rear cover and side covers are welded to the side faces of the support body and to the “horn” (eg the support body).
Mr de Vos considered that a first cover can be indirectly welded to the support body if there is weld connecting the first cover to a second cover (an intermediary cover), and weld connecting that second cover to the support body. Mr de Vos considers that claim 1 requires an unbroken chain of welding between the front (or rear cover) and the support body. For example if a first cover is welded to a second cover but the second cover is bolted to the support body, Mr de Vos would not consider either cover to be weldingly secured to the support body.
Dr Huggett disagreed with Mr de Vos’ inclusion of indirect welding in the construction of “weldingly secured”. The disagreement was explored in the joint session.
7.5.2Seated in face to face contact
Dr Huggett considered that the requirement that the front cover be “seated in face to face contact with the front face” means that the front cover and the front face are flush, in intimate contact across their surfaces, without any gaps.
Dr Huggett considered the language “seated in face to face contact”, in relation to a tooth construction for a mineral sizer, was not surprising because in his view mineral sizers have always been designed for the horn to take the loads rather than the covers and shells. Intimate contact and in a fixed (seated) position across the surface gives the maximum amount of strength to the horn for power transmission or loads and to minimise the risk of fatigue, movement or cracking in the shell. The large forces mean the tooth shell on the horn needs to be secured to withstand and transmit the high forces required.
Mr de Vos disagreed with Dr Huggett’s construction of the “seated in face to face contact” integer as meaning (in the context of the front cover) that the front cover and the front face are flush, in intimate contact across their surfaces without any gaps.
Mr de Vos did not see a practical reason why there was a need for the components to directly touch one another to satisfy the “contact” requirement. As noted earlier, Mr de Vos considered that the use of the word “contact” imports in the claim the critical concept of the efficient transfer of forces. Provided forces can be transmitted from one component to another, he considered they will obtain the benefit of being in “contact”, even if there is an intermediate component between them.
Mr de Vos considered that, if the claims were intended to be limited to front and rear covers that directly touch the support body (as is the case with the first embodiment), the claims would have used a phrase equivalent to “seated on the horn (or support body)”, as the Patent does at page 7, line 27 to page 8, line 2. In his opinion, if one component is “seated on” a second component, the two components are touching one another. In comparison, a component that is seated in “face-to-face contact” with a second component does not, in Mr de Vos’ opinion, need to touch the second component provided that forces can be transmitted between the two components including through an intermediary component.
Mr de Vos also noted that due to the manufacturing tolerances associated with sand casting, the covers described in the Patent (with the exception of the covers made from steel plate (the side covers of the tooth constructions described in the Patent and the rear cover)) would not be “flush, in intimate contact across their surfaces, [with the support body] without any gaps”.
In the course of explaining why the cover did not need to be in intimate contact with the horn across the entire surface without any gaps, Mr de Vos discussed further the transmission of force between two components. He observed that the same total force will be transmitted between two components, irrespective of whether they are “flush, in intimate contact across their surfaces, without any gaps” or there are some gaps between them.
Provided that the front or rear cover is seated in face to face contact with the support body, Mr de Vos considered that the forces imparted on those covers during use will be transmitted efficiently to the support body. Mr de Vos discussed as an example where the rear cover is welded to the sides of the support body. According to Mr de Vos the forces will predominantly be transmitted through the face to face contact between the rear cover and the rear face of the support body. In this configuration, (which I consider to be as depicted in diagram 2 below) the weld is required primarily to secure the rear cover to the support body. Mr de Vos considered that a tooth construction in which the rear cover is in face to face contact with the rear face of the support body, and welded to a part of the support body that is not the rear face, is still a robust design within the principles described in the Patent.
Mr de Vos understands the phrase “face to face contact” to require that the forces are able to be transmitted from the face of one component to the face of a second component. A front cover will be seated in face to face contact with the front face of the support body if forces can be transmitted from the face of the front cover to the front face of the support body.
Mr de Vos saw no reason why a cover would not be seated in face to face contact with the support body if there is a clearance between the cover and the support body and that clearance is bridged by, for example:
(a)weld between the cover and the support body;
(b)an intermediary cover between the first cover and the support body; or
(c)ore fines and corrosion between the cover and the support body.
Mr de Vos explained further that where there is a clearance between a cover and a support body at the time of installation:
(a)those clearances may close as the cover deforms because of the forces imparted on it during use. The clearances may be permanently closed (plastic deformation), or closed only while the force is applied to the cover (elastic deformation); and
(b)clearances between two components can fill with ore fines and/or corrosion, allowing forces to be transmitted through the ore fines and/or corrosion.
In either case, as forces will be transmitted to between the cover and the support body, the cover and the weld are unlikely to fail. Mr de Vos considered that the weld securing the cover to the support body may crack over time if there was a permanent gap between the cover and support body.
7.5.3Seated
According to Dr Huggett, the term “seated” when used in engineering applications, in particular in relation to valves, refers to two parts which have been wholly matched in shape so that the surface of one part is in intimate contact with the surface of the other part. Dr Huggett referred to the example of a valve, if the respective parts of a valve were not in intimate contact across their surfaces, the valves would leak.
Mr de Vos understands “seated” in the phrase “seated in face to face contact” to mean “positioned” or “in the position of”. He considers that claim 1 can be understood as requiring that the front cover is “positioned”, or “in the position of being”, in face to face contact with the front face of the support body. The requirement that the rear cover is seated in face to face contact with the rear face of the support body has an equivalent meaning. The front cover will be seated in face to face contact with the front face of the support body at any time that it is in face to face contact, irrespective of whether it was placed in face to face contact by the fitter at the time of assembly, or it came to be in face to face contact over time during use through the ingress and compaction of ore fines or corrosion. Mr de Vos did not consider that the claims were limited to tooth constructions in which the front and rear of the tooth shell touch the front and rear faces of the support body at the time of assembly.
Mr de Vos discussed further his understanding of the meaning of “seated” in his third affidavit. He said that his use of the term seated in contexts like a tooth construction is consistent with a Macquarie Dictionary definition of the term: “to fix firmly or accurately in a particular place”. In Mr de Vos’ experience, a component of an assembly or construction can “fix firmly or accurately in a particular place” without being “flush, in intimate contact across the surface, without any gaps”.
According to Mr de Vos, the Macquarie definition is consistent with the use of covers that have been manufactured via sand casting. As above, the surface of a cover that has been sand cast will not be perfectly flat; there will be gaps between the face of the cover and the corresponding face of the support body. These components will not be “flush, in intimate contact across their surfaces, without any gaps”.
Dr Huggett did not approach the task of “designing a robust tooth construction” that would be secured to the horn armed only with matters which formed common general knowledge or common general knowledge as extended by s 7(3). He came to that task having undertaken a detailed comparison of the Patent and the prior art, and with his own personal experience of the Rio Tinto tooth construction.
Dr Huggett was given the Patent and copies of five prior art patents for the purposes of preparing his evidence on invalidity. Of the prior art patents, only the 739 and 165 Patents (discussed above) were relied on by Camco for its s 7(3) case at the hearing, and were the subject of cross-examination. Dr Huggett’s evidence was that he was not familiar with any of the prior art patents before he was provided with them. None of the five prior art patents formed part of the common general knowledge of the person skilled in the art.
When explaining why he considered that the invention disclosed in the Patent was obvious, Dr Huggett conceded that when he explained the way he could design a tooth construction at the priority date, he started with the solution presented in the Patent which he described as “face to face contact from a load sharing perspective”.
Dr Huggett was not aware of problems with bolted tooth constructions at the priority date, and only became aware of problems from reading the prior art. Dr Huggett did not recall reading the 739 and 165 Patents before they were provided to him and agreed he was unaware of their contents prior to preparing his evidence in this case. Nor was he familiar with the mineral sizers discussed in the prior art documents at the priority date.
COUNSEL: Yes. Am I right in thinking – sorry. Am I right in understanding your evidence that you suggest that you would have pursued welding as an option for joining the covers to the horn at the priority date despite the fact it was impractical and involved a significant cost?
DR HUGGETT: In the context of what I believe the patent to try and achieve, which is giving that ..... face-to-face contact from a load sharing perspective, yes, I would have considered it. There’s only a limited number of options in what you can do to join these components together, and it was – in the prior art they were saying that one of the issues was that the parts become loose and they – with a bolted option. So surely you would look – I would look at a welded process as minimising that movement.
COUNSEL: And the reason that you referred there to the face-to-face contact was because that was the problem that you had – sorry, that was the solution that was presented in the 510 patent?
DR HUGGETT: That’s what I believe it is. Yes, correct.
COUNSEL: Yes. And you started with that in your mind when you explained the way you would go about bringing into existence a tooth construction in November 2003?
DR HUGGETT: Correct.
To the extent that the 739 and 165 Patents mention the performance of bolts in bolted tooth constructions, it is not to suggest that there are problems with the bolts. Rather the prior art patents convey that the bolts perform well in tooth constructions. The 739 Patent describes that “the spigot” (bolt) is “immovably anchored to the tooth core” and that it will remain so during use when the tooth construction will be “exposed to repeated high impact forces”. The 165 Patent suggests that it provides a means of anchoring a pick (with a bolt) in which the pick is capable of being rigidly held in a supporting cap body without movement and yet, after use, is easy to replace.
As a result, I consider that Dr Huggett’s evidence as to the design of a robust tooth construction was impermissibly assisted by hindsight.
Both Camco and MMD approach the problem to be addressed as being the design of a robust mineral sizer tooth construction (or “an improved mineral sizer tooth/horn”) to withstand the large forces applied to break hard minerals (the design task). The person skilled in the art looking to carry out the design task at the priority date is equipped with the common general knowledge in the field at that time.
Tooth/horn covers for protecting the support bodies of mineral sizers were not part of the common general knowledge at the priority date. Nor were methods for attaching tooth covers to mineral sizer support bodies. Whilst bolting and welding may have been examples of well-known methods for attaching components to equipment in the mining industry at the priority date, the use of bolts or welding to attach covers to mineral sizer teeth/horns, particularly for use in hard rock crushing was not part of the common general knowledge
Bolted covers existed in the prior art patents and Dr Huggett’s evidence in the joint session was that he had seen covers on the Rio Tinto sizer before the priority date. However, bolted covers, and the problems (if any) associated with them, were not part of the common general knowledge of the person skilled in the art.
Dr Huggett did not approach the task of “designing a robust tooth construction” that would be secured to the horn armed only with matters which formed common general knowledge or common general knowledge as extended by s 7(3). As I observed earlier, Dr Huggett came to that task having undertaken a detailed consideration of the Patent and the non-common general knowledge prior art, including his knowledge of the Rio Tinto mineral sizer tooth covers.
Dr Huggett moved straight to adopting covers, rather than any of the other possibilities he considered when confronting a similar design task for the Rio Tinto sizer, and from there to choosing welding over bolting as the connection method.
Dr Huggett sought to assert in the joint session that “the issue, from what I’ve looked at with some of the bolted connections, is the risk of fatigue through the bolt arrangement. So one of the things you would look at would be to eliminate that bolt because you’re going to eliminate that fatigue process”. This suggestion was not made in Dr Huggett’s written evidence, and it did not arise in the context of his only experience about a bolted cover, given in the joint session, being that of the Rio Tinto MMD sizer. The only other bolted sizer covers were to be found in the five prior art documents, the two of which remaining in the invalidity case did not mention problems with the bolts.
Dr Huggett’s evidence as to the use of welding to prolong the life of mineral sizer teeth was not supported by Mr de Vos, or corroborated by any contemporaneous documents. Having read the Patent before giving his evidence it is not surprising that Dr Huggett chose the welding route rather than bolts.
17.3.2Design process
The design task is set in circumstances where covers of mineral sizer horns were not part of the common general knowledge.
A skilled person who was undertaking the design task at the priority date would be aware of the following:
(a)The front and rear faces of mineral sizer horns are subject to very large cyclical forces during rock crushing/snapping operation.
(b)Mining equipment had to perform the desired function adequately, be reliable, and be easy to maintain and restore, with easily replaceable parts.
(c)Mining companies have maintenance schedules, and wearable parts need to last at least the length of the maintenance cycle.
(d)Mining companies desire to minimise the shutdown time required for maintenance to be carried out.
(e)There are significant time and cost savings to maintaining a mineral sizer on site, and that if work was done off-site, there were potential delays in getting a refurbished device back into the sizer.
(f)Mining companies prefer work to be done on site and in situ where it is possible and that they are conscious of worker safety.
(g)Machinery or equipment failure between scheduled maintenance cycles can be very costly in terms of both time and mine profitability.
There are a variety of techniques available to the person skilled in the art looking to design a robust tooth construction. Examples include those considered by Dr Huggett when he was retained to extend the wear life of the Rio Tinto sizer teeth:
(a)change the materials used to cast the horn;
(b)change the profile shape of the horn;
(c)addition of wear plates to the horn;
(d)addition of covers – front and rear – to the horn;
(e)plurality of covers covering the horn; and/or
(f)welding and hard facing to build up the worn sections of the horn.
When each expert was actually faced with the design task at the priority date, neither Mr de Vos nor Dr Huggett considered attaching a plurality of covers to the horn. Instead, Mr de Vos chose to change the materials used to cast the horn and Dr Huggett chose to change the profile of the horn.
If the person skilled in the art chose to select the plurality of covers from the range of options available to pursue, there were at least three different methods of attaching the covers to the horn and to each other: bolting, clipping or welding.
There were no known problems with bolts as a means of connection of covers to mineral sizer horns in the common general knowledge. Both experts agreed that it was easier to remove and replace bolted components than welded components.
The person skilled in the art considering attachment methods would appreciate that the removal and welding of replaceable covers to mineral sizer support bodies would be difficult, time consuming, costly, impractical and dangerous. Replacement of welded covers requires:
(a)removing worn covers with an air arc gouger, which heats up metal until it is molten and then blows it away with high velocity air jets;
(b)undertaking a magnetic particle inspection to identify gouge marks and cracking;
(c)digging around gouge marks and cracks and filling the cavities with weld;
(d)grinding the new welds; and
(e)preheating the surfaces to which the weld is to be applied.
Even if safety standards were more relaxed at the priority date, it would still be dangerous for the arc gouging and welding to be undertaken by workers on the mineral sizer shafts in situ, so the maintenance work involving arc gouging and welding would be carried out in a workshop, rather than in situ. Removal of the sizer shafts and transport to a workshop would add to the time taken for refurbishment.
Welding of high tensile materials results in a reduced fatigue capacity of the welded area. Repeated welding and arc gouging will increase the incidence of cracking over time because of the repeated application of heat to the horn. The horn may eventually reach a stage where there are so many cracks it is not economical to keep building it up. The existence of cracks increases the risk of catastrophic failure, in which the horn breaks off the sizer ring.
The skilled person selecting an attachment method would not select welding as a matter of course, due to the significant time, expense and difficulty associated with removing the worn covers from the support body during maintenance and the significant time, expense and difficulty associated with welding the replacement covers to the support body. That work is significantly more difficult, and not possible to carry out in situ, than removing a bolted tooth construction.
If tasked with the design task, the person skilled in the art at the priority date would not be led as a matter of course to try attaching a plurality of covers to a mineral sizer horn and attaching the covers to the horn and each other by welding. The design process to reach the robust tooth construction is more complex than selecting a method by which to attach covers to a mineral sizer horn from two equally obvious options. Even if that were the correct analysis, I do not consider, for the reasons just outlined, that in the context of mineral sizer refurbishment, welding was in essence interchangeable with bolting as a method for attaching covers to mineral sizer horns.
The person skilled in the art equipped with the common general knowledge would not inevitably be led to the invention as claimed in each Asserted Claim.
Camco’s inventive step argument based on Mr de Vos’ responses in the joint session does not assist. It takes as the analytical starting point the last step in the design process that I have just outlined. Mr de Vos was asked to assume, contrary to my finding, that mineral sizer horn covers were known. Mr de Vos was asked about welding in general. Mr de Vos’ agreement with the proposition that “at the priority date, people did in fact weld components of covers to tooth horns” was clearly based on the existence of prior art showing welding had been done on covers and wear plates had been welded to support bodies. That prior art was not part of the common general knowledge.
Camco’s submission that welding and bolting were the two obvious alternatives ignores Mr de Vos’ qualifications as to why welding would not be an obvious choice to him, and relies on his responses to welding generally as a well-known method of attachment, rather than in the specific context of mineral sizer refurbishment.
17.3.3Section 7(3) documents
Camco submits that each of the s 7(3) documents discloses a tooth construction in a form which would inevitably lead the skilled worker to the invention as claimed in each of the Asserted Claims.
MMD submits that neither the 739 or 165 Patents would satisfy the requirements of s 7(3) as neither of them would be ascertained, understood and regarded as relevant by the person skilled in the art. MMD contends that the person skilled in the art would not conduct a patent search.
Dr Huggett was not familiar with either of the 739 or 165 Patents before he was provided with copies of them.
Dr Huggett gave general evidence as to how he “regularly searched for and read patents” prior to the priority date. His evidence was that he searched for patents by:
checking gazetted information I received from the patent offices, eg the Australian Official Journal of Patents, undertaking library searches from the University of Western Australia which often resulted in references to patents, reading of trade journals which referred to patents and receiving copies of patents that I requested from my own patent attorneys at the time.
Dr Huggett’s evidence was that when he read the patent office gazettes, he looked for patent titles that he thought were relevant to the field he was interested in and looked for patentees that he knew operated in that field. Dr Huggett would then try to obtain a copy of the patent. Once the patent databases became readily searchable online, he was able to search for and locate patents himself online by entering keywords about the technology field of interest, or the names of patentees or companies in the relevant technology field.
Dr Huggett gave general evidence in his affidavit that he would have used “mineral breaker”, “tooth”, “tooth construction”, “teeth” as keywords. In the joint session that he added that he would put in keywords related to a sizer. In each case in his affidavit, the keywords selected by Dr Huggett were selected with the full glare of hindsight with the particular prior art patent in front of him. For example:
The 739 Patent is titled “Mineral Breaker” and the patentee is again MMD Design & Consultancy Limited. I would have ascertained a copy of this patent if I was solving the problem contemplated in the MMD Patent because the title of “mineral breaker” would have jumped out at me in a gazette search or in an online search as being in the same technology area, and I knew at the Priority Date that MMD was one of the major suppliers of mineral sizers so its patents would have been of interest to me. The Abstract of the 739 Patent refers in the first line to “a mineral breaker” and “tooth construction”, which are both keywords I would have searched for in this technology area, or would have instructed my patent attorneys to search for in conducting a search for me.
Dr Huggett gave no evidence as to what a gazette search would entail, whether it involved physically or electronically looking at each gazette, or whether they were electronically searchable. There was no evidence as to keywords that he would have chosen without the benefit of knowing what prior art needed to be found. There was no evidence as to how many results would be returned in his online searches, with his proposed keywords and why he would have selected the 739 and 165 Patents from the other potentially relevant search results. Dr Huggett accepted that he did not know what volume of information he would find if he had done a search, nor whether he would have found the prior art patents.
Mr de Vos’s evidence was that he did not read patents and would not have conducted a patent search if tasked with the design task.
I do not consider that the person skilled in the art would regularly read and search for patents. Even if they did, the evidence does not establish that the person skilled in the art would ascertain the 739 and 165 Patents. The s 7(3) inventive step case fails at this point.
Camco contends that both the 739 and 165 Patents disclose a tooth construction in a form which would inevitably lead the skilled worker to the invention. Whilst welding of parts may not be disclosed in the 739 and 165 Patents to the extent of the claim language, Camco contends that does not result in the claims lacking obviousness. According to Camco, welding was well-known as another way of joining components, and was in essence interchangeable with processes such as bolting.
MMD submits that Camco’s submission entirely overlooks the detailed and considered evidence of Mr de Vos that welding was not only not interchangeable with processes such as bolting, but also, significantly more difficult, expensive and inconvenient.
For the reasons I discussed above, I do not consider that welding was in essence interchangeable with bolting for the purposes of attaching covers to mineral sizer horns.
17.3.3.1739 Patent
Mr de Vos explained that he would expect the tooth constructions described in the 739 Patent to be suitable for use, reliable and easy to maintain. He observed that the aim of the invention described in the 739 Patent is to hold the shell securely in place and allow worn tooth constructions to be easily removed. The movement of the covers is prevented by the use of the bolt. Mr de Vos identified the key benefit of the 739 Patent to be the bolting of the covers which enables their ready removal, meaning no repair would be required to the support bodies to allow new covers to be installed.
Dr Huggett accepted that the general aim of the 739 Patent was to provide a tooth construction where the covers are securely held in place but could be easily removed and renewed, and that the ease of removal and replacement is an important design consideration. Dr Huggett agreed that there was nothing on the face of the 739 Patent to suggest that it would not be easy to maintain, or that would cause him to think it would not work efficiently.
In the joint session, Dr Huggett agreed that if the constructions of the 739 Patent were found to wear, or to wear too quickly, the skilled person had a variety of options: they could increase the thickness of the covers, manufacture the covers from different hardened materials, apply hard facing or carbide studs or wear plates, seek to improve the reliability of the bolt, or seek to use a fastener or keyed system to hold the covers to the support body.
Both experts agreed that it was easier to remove and replace bolted components than welded components. The skilled person would not select welding as a matter of course, due to the significant time, expense and difficulty associated with removing the worn covers from the support body during maintenance and the significant time, expense and difficulty associated with welding the replacement covers to the support body. That work is significantly more difficult, and not possible to carry out in situ, than removing a bolted tooth construction.
17.3.3.2165 Patent
Mr de Vos explained that he would expect the tooth constructions described in the 165 Patent to be suitable for use, reliable and easy to maintain. If (against his expectation) the tooth constructions described did require modification, depending on the problem he encountered, he would try one of the following options:
(a)increase the thickness of the covers, manufacture the covers from different material, or apply hard facing;
(b)increase the hardness of the tip; or
(c)consider the use of wear plates over the recesses around the nut and bolt head.
If contrary to his expectation the bolts failed after testing, Mr de Vos would aim to improve the reliability of the bolts. For the reasons set out above, Mr de Vos would not use welding to attach the covers to the support body.
Camco has not established that the person skilled in the art equipped with the common general knowledge and one of the 739 or 165 Patents would inevitably be led to try as a matter of routine the invention as claimed in the Asserted Claims.
18. SECTION 40: CLARITY AND FAIR BASIS
The test for fair basis is the test of whether there is a “real and reasonably clear disclosure” in the specification of what is claimed: Lockwood Security Products v Doric Products Pty Ltd (2004) 217 CLR 274 at [69].
Camco’s fair basis case is based on a construction of the “face to face contact” integer which does not require the cover and the corresponding face of the support body to be in physical contact. Camco says that, properly construed, the claim language requires that the two relevant components be in direct physical contact with each other across the entirety of each component (in other words, minor or fleeting instances of direct physical contact do not meet the requirements of the claim). Camco draws attention to the embodiments of the invention which are disclosed in the specification, all of which disclose components that are in direct physical contact with each other, consistent with Camco’s construction of the “face to face contact” integer. Camco contends that the Patent does not contemplate, by way of disclosure of embodiments of the invention, any other way of performing or meeting that claim language than the components being in direct physical contact.
I have rejected MMD’s construction of the “face to face contact” integer. In those circumstances, Camco makes no fair basis challenge to the claims of the Patent on the basis of the construction of the “face to face contact” integer.
Camco propounded a clarity challenge based on the use of “and/or” in the phrase “fixedly secured to one another and/or to the support body” in claim 1. According to Camco, the “and/or” term in the phrase “fixedly secured to one another and/or to the support body” means that each of the covers is fixedly secured to:
(a)one another and not the support body; or
(b)one another and the support body; or
(c)the support body but not one another.
I consider that a person skilled in the art reading the claim in a common sense manner, in the context of the specification, and with an eye to making the invention work, would not construe the claim in accordance with option (a). Option (a) makes no sense as none of the covers forming the shell would be attached to the support body and would be likely to fall off. This is consistent with Dr Huggett’s view that option (a) would not be practical because the shell would be loose from the support body and therefore fall off during use.
Camco’s other fair basis challenge is based on the absence of any disclosure in the Patent of option (a). MMD submits that Camco’s option (a) is not open, and that each of options (b) and (c) (that the plurality of covers are fixedly secured to either the horn or to the horn and to each other) are disclosed. On the basis of my construction, Camco’s other fair basis challenge must fail.
19. MANNER OF MANUFACTURE
Camco contends that no patentable invention is disclosed in the Patent because the combination of integers is a mere collocation, which is unpatentable.
The law in relation to mere collocation is conveniently summarised by the Full Court in Smith & Nephew Pty Ltd v Wake Forest University Health Sciences (2009) 82 IPR 467 at [16]–[24]. It may be accepted that, in a combination patent, the elements of the claimed combination must work together to produce one result. The integers must interact to bring about the desired result.
Where a claimed “combination” consists only of integers which do not interact with each other to produce a new result or product it is not a manner of manufacture. Rather, it is a “mere collocation of separate parts”, each performing its own separate function, which is unpatentable: Firebelt Pty Ltd v Brambles Australia Ltd (2002) 54 IPR 449 at [21]; Wake Forest at [16].
The horn, the covers, and the welding which secures the covers to the horn and the face to face contact between covers and the horn interact to bring the desired result; the robust tooth construction capable of efficiently transmitting large forces.
It is apparent from the specification that the use of a support body clad in covers is an arrangement which works because the forces applied to the tooth construction can be efficiently transmitted between the covers and the horn, which are seated in a face to face contact. The covers are welded to the horn, which adds strength. The covers do not deform to the point where they fracture and the ability to construct the horn from malleable material reduces the risk it will snap. Further, the horn is solid because it has no bolt holes.
When the experts were asked to identify the meaning of the expression of the term “unitary tooth construction”, they agreed that “the unitary construction requires the covers and support body to work together as one complete body rather than individual components”. I consider that the elements of the tooth construction work together to produce one result, the claimed invention is a manner of manufacture.
Camco also submits that all the features of the Asserted Claims were known at the priority date, including in combination. Camco says that no patentable invention is disclosed because the combination of features does not bring about a new working inter-relationship between the features.
As Camco appeared to concede in its written submissions, this manner of manufacture argument has an affinity with its novelty and obviousness cases and I consider that it is best dealt with under those grounds of invalidity. As I have found there, certain of the integers of claim 1 of the Patent were not known by persons skilled in the art at the priority date, this aspect of Camco’s manner of manufacture argument cannot succeed.
20. CONCLUSION
For these reasons, I find the Camco Constructions do not infringe the Asserted Claims. By their supply of the Camco Constructions, Camco has not engaged in conduct that contravenes s 18 of the ACL. I also find the Asserted Claims of the Patent are, and at all material times have been, valid.
I certify that the preceding six hundred and eighty-six (686) numbered paragraph is a true copy of the Reasons for Judgment of the Honourable Justice Rofe. Associate:
Dated: 21 July 2023
CONFIDENTIAL ANNEXURE A
[REDACTED].
SCHEDULE OF PARTIES
VID 340 of 2020 Cross-Respondents
Second Cross-Respondent
MMD AUSTRALIA PTY LTD ACN 002 446 835
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