SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd
[2011] FCA 452
•6 May 2011
FEDERAL COURT OF AUSTRALIA
SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited [2011] FCA 452
Citation: SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited Parties: SNF (AUSTRALIA) PTY LTD (ACN 050 056 267) v CIBA SPECIALTY CHEMICALS WATER TREATMENTS LIMITED, CIBA (AUSTRALIA) PTY LTD (ACN 005 061 469) and THE COMMISSIONER OF PATENTS File number: VID 447 of 2008 Judge: KENNY J Date of judgment: 6 May 2011 Catchwords: PATENTS – process for treatment of mining waste – alleged invalidity – construction of claims – whether patents in suit invalid for want of novelty – whether patents anticipated by earlier patents and earlier prior art acts – no anticipation – processes of settling and sedimentation different from rigidification – other differences in processes – lack of novelty not established
PATENTS – whether patents in suit invalid for lack of innovative step – applicant failed to establish that patents varied from prior art base in ways that make no substantial contribution to the working of the invention
PATENTS – whether patents in suit a manner of manufacture within the meaning of section 6 of the Statute of Monopolies – no admission on the face of the specifications of the patents that, in relation to a specific prior art documents mentioned in the specification, the invention does not differ in a way that does not make a substantial contribution to the working of the invention – no other relevant admission on the face of the specification – not invalid on this ground
PATENTS – whether patents in suit invalid for insufficiency – whether sufficient guidance about the dosage, dosing point and rate of addition of polymer – no testing required beyond the routine – no need for invention or ingenuity – patents not invalid for insufficiency
PATENTS - whether patents in suit invalid for lack of clarity – “a process of improving rigidification” – “then allowed to stand and rigidify” – “an effective rigidifying amount” – “the material is dewatered during rigidification” – “during transfer” - terms clear when construed by reference to the specifications of the patents – lack of clarity ground not made out
PATENTS - whether patents invalid for lack of fair basis – specification provides a real and reasonably clear disclosure of what is claimed – that is, of the point during transfer at which combination should occur – lack of fair basis challenge not made out
PATENTS - whether patents invalid for inutility – no evidence that some process within the claims did not work or that some process within the claim failed to fulfil the promises in the body of the specification – ground of inutility failed
PATENTS – respondent cross-claimed for infringement of its patents – infringement conceded in respect of use of process at two mines – infringement by authorisation of infringing use at third mine established
Legislation: Patents Act 1990 (Cth)
Evidence Act 1995 (Cth)Cases cited: Welch Perrin & Company Pty Ltd v Worrel (1961) 106 CLR 588
Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385
Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178
Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331
Martin v Scribal Pty Ltd (1954) 92 CLR 17
Nesbit Evans Group Australia Pty Ltd v Impro Ltd v Impro (1997) 39 IPR 56
Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253
Glaverbel SA v British Coal Corp [1994] RPC 443
El Dupont de Nemours & Co v Imperial Chemical Industries Plc (2002) 54 IPR 304
Allsop Inc v Bintang Ltd (1989) 15 IPR 686
Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31
Hill v Evans (1862) 1A IPR 1
TheGeneral Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd [1972] RPC 457
Bristol-Myers Squibb Company v FH Faulding & Co Limited (2000) 97 FCR 524
H Lundbeck A/S v Alphapharm Pty Ltd (2009) 81 IPR 228
ICI Chemicals & Polymers Ltd and LubrizolCorporation Inc (2000) 49 IPR 513
Pfizer Overseas Pharmaceuticals v Eli Lilly and Co (2005) 68 IPR 1
Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43
Commonwealth Industrial Gases Limited v MWA Holdings Pty Ltd (1970) 180 CLR 160
Nicaro Holdings Pty Ltd & Others v Martin Engineering Co & Another (1990) 91 ALR 513
Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239
Aktiebolaget Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375
Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411
ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577
Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248
Jones v Dunkel (1959) 101 CLR 298
Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232
National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252
N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173
National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252
Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2000) 207 CLR 1
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274
Osram Lamp Works Ld v Pope’s Electric Lamp Company Ld (1917) 34 RPC 369
No-Fume Ld v Frank Pitchford & Co Ld (1935) 52 RPC 231
British Ore Concentration Syndicate Ld v Minerals SeparationLd (1909) 26 RPC 124
Plimpton v Malcolmson (1876) 3 Ch D 531
Edison and Swan Electric Light Co v Holland (1889) 6 RPC 243
Leonhardt v Kalle (1895) 12 RPC 103
Kirin-Amgen Inc v Transkaryotic Therapies Inc [2003] RPC 31
Chiron Corporation v Organon Teknika Ltd [1994] FSR 202
Synthetic Turf Development Pty Ltd v Sports Technology International Pty Ltd (2006) 67 IPR 475
Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171
Olin Mathieson Chemical Corporation v Borex Laboratories Limited [1970] RPC 157
Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330
Hatmaker v Joseph Nathan & Co Ld (1919) 36 RPC 231
Washex Machinery Corporation v Roy Burton & Co Pty Ltd (1974) 49 ALJR 12
Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525
University of New South Wales v Moorhouse (1975) 133 CLR 1
Falcon v Famous Players Film Co (1926) 2 KB 474
Adelaide Corporation v Australasian Performing Right Association Ltd (1928) 40 CLR 481
Roadshow Films Pty Limited v iiNet Limited [2011] FCAFC 23
WEA International Inc v Hanimex Corporation Ltd (1987) 17 FCR 274
Walker v Alemite Corp (1933) 49 CLR 643
Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574
Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239
Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1
Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479
Northern Territory of Australia v Collins (2008) 235 CLR 619
U & I Global Trading (Australia) Pty Limited v Tasman-Warajay Pty Ltd (1995) 60 FCR 26TA Blanco White, Patents for Inventions (Stevens & Sons, 1983, 5th ed)
D Falconer, W Aldous and D Young, Terrell on the Law of Patents (London, 12th ed, 1971)
D Young, A Watson, S Thorley and R Miller, Terrell on the Law of Patents (London, 14th ed, 1994)
R Miller, G Burkill, C Birss and D Campbell, Terrell on the Law of Patents (London, 17th ed, 2011)Date of hearing: 1 March 2010 to 12 March 2010 Date of last submissions: 12 March 2010 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 331 Counsel for the Applicant: Mr C Golvan SC with Dr S Ricketson Solicitor for the Applicant: Middletons Counsel for the Respondents: Mr D Shavin QC with Mr N Murray Solicitor for the Respondents: Griffith Hack TABLE OF CONTENTS
INTRODUCTION........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .
[1]
OVERVIEW OF EVIDENCE........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ......
[12]
PRINCIPLES OF CONSTRUCTION........ ........ ........ ........ ........ ........ ........ ........ ........ .
[20]
THE INVENTION........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .
[25]
Patent 944........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[27]
Integers of claim 1........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[40]
Integers of claim 2........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[42]
Integers of claim 3........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[42]
Integers of claim 4........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[42]
Integers of claim 5........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[42]
THE SKILLED ADDRESSEE........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .....
[42]
THE MEANING OF RIGIDIFICATION........ ........ ........ ........ ........ ........ ........ ........ ...
[45]
Opposing contentions about rigidification........ ........ ........ ........ ........ ........ ........ ......
[48]
Professor Slatter’s approach........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[50]
Dr Farrow’s approach........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .....
[61]
Conclusions about the meaning of rigidification........ ........ ........ ........ ........ ........ ....
[69]
Prior art information – documents........ ........ ........ ........ ........ ........ ........ ........ ........ ..
[86]
Slatter 3........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....
[87]
Slatter 4........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....
[99]
Slatter 10........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..
[110]
Slatter 12........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..
[117]
Slatter 13........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..
[122]
Slatter 23........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..
[126]
Prior art information – acts........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ......
[135]
Londonderry Sand Mines........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .
[138]
Bulga Mine........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .......
[153]
Beenup Mine........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....
[161]
INNOVATIVE STEP........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....
[173]
The person skilled in the relevant art........ ........ ........ ........ ........ ........ ........ ........ ......
[179]
Common general knowledge before the priority date........ ........ ........ ........ ........ ....
[180]
The invention “so far as claimed in any claim”........ ........ ........ ........ ........ ........ ......
[187]
Prior art information........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .
[188]
Slatter 3........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....
[191]
Slatter 4........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....
[199]
Slatter 10, 12 and 13........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........
[204]
Slatter 23........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..
[207]
Londonderry, Bulga and Beenup Mines........ ........ ........ ........ ........ ........ ........ ........ ..
[209]
MANNER OF MANUFACTURE........ ........ ........ ........ ........ ........ ........ ........ ........ ........
[212]
SUFFICIENCY OF DESCRIPTION........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[225]
ACARP Project........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..
[237]
Different expert opinions........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..
[241]
SNF’s pleaded case examined........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[245]
CLARITY OF LANGUAGE........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........
[262]
Contested words and phrases........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[267]
A further contested phrase........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .......
[271]
during transfer........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .
[271]
FAIR BASIS........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[278]
LACK OF UTILITY........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .....
[288]
THE CROSS-CLAIM FOR INFRINGEMENT........ ........ ........ ........ ........ ........ ........ .
[297]
Infringement by exploitation........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....
[298]
Whether infringement at Ashton Coal Mine........ ........ ........ ........ ........ ........ ........ ...
[303]
Authorisation........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...
[305]
Joint tortfeasors........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .......
[310]
Section 117........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .......
[314]
Findings........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ......
[322]
THE THREATS OF UNJUSTIFIABLE INFRINGEMENT PROCEEDINGS......
[328]
CONCLUSION AND DISPOSITION........ ........ ........ ........ ........ ........ ........ ........ ........ .
[331]
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 447 of 2008
BETWEEN: SNF (AUSTRALIA) PTY LTD (ACN 050 056 267)
ApplicantAND: CIBA SPECIALTY CHEMICALS WATER TREATMENTS LIMITED
First RespondentCIBA (AUSTRALIA) PTY LTD (ACN 005 061 469)
Second RespondentTHE COMMISSIONER OF PATENTS
Third Respondent
JUDGE:
KENNY J
DATE OF ORDER:
6 MAY 2011
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.On or before 18 May 2011 the applicant and the first and second respondents each file and serve a minute of orders that it considers give effect to these reasons and are appropriate to be made at this stage of the proceeding.
Note:Settling and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 447 of 2008
BETWEEN: SNF (AUSTRALIA) PTY LTD (ACN 050 056 267)
ApplicantAND: CIBA SPECIALTY CHEMICALS WATER TREATMENTS LIMITED
First RespondentCIBA (AUSTRALIA) PTY LTD (ACN 005 061 469)
Second RespondentTHE COMMISSIONER OF PATENTS
Third Respondent
JUDGE:
KENNY J
DATE:
6 MAY 2011
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
INTRODUCTION
The applicant, SNF (Australia) Pty Ltd (‘SNF’), is in the business of manufacturing and supplying water-soluble polymers for use in various industries, including the mining industry. SNF competes with the first and second respondents (collectively, ‘the Ciba respondents’) in Australia for the provision of chemicals and associated technical assistance in the mining industry.
One application of water-soluble polymers is as flocculants used in the treatment of mining waste. Flocculants have been used in the mining industry for many years in order to help separate water from solid particles in mine tailings (i.e., the end product of processing operations) so that the water may be recovered and reused. The patents in suit relate to this process.
The patents in suit are five innovation patents numbered 2006100744, 2006100944, 2007100377, 2007100834, and 2008100396 (‘the Patents’). In these reasons, an individual Patent is indicated by the last three digits of its patent number.
Ciba Specialty Chemicals Water Treatments Limited (‘Ciba’) is the registered proprietor of the Patents, each of which has been certified under s 101E of the Patents Act 1990 (Cth) (‘the Act’) and filed as a divisional application of Australian Patent application number 2004203785 (‘the Parent Patent’). The Parent Patent claims a priority date of 7 May 2003. Accordingly, the Patents claim a priority date of 7 May 2003.
SNF seeks a declaration that the Patents are invalid and their revocation under s 138 of the Act. SNF also seeks relief under s 128 of the Act against the Ciba respondents with respect to unjustifiable threats of infringement proceedings. Ciba has cross-claimed for patent infringement.
To promote its flocculant products, SNF employs salesmen who advise SNF’s clients in the mining industry regarding the implementation of various tailings treatment processes using SNF flocculants, including a process referred to in these reasons simply as ‘the SNF Process’. The SNF Process is the subject of the cross-claim. SNF conceded that the SNF Process was an infringing use of the patented process if SNF’s challenge to the validity of the Patents in suit failed.
The second respondent, Ciba (Australia) Pty Ltd, is a member of the first respondent’s corporate group. The third respondent, the Commissioner of Patents, entered a submitting appearance and otherwise took no part in the proceedings.
The grounds of invalidity upon which SNF relies are those listed under s 138(3)(b) and (f) of the Act. Specifically, SNF alleges that the Patents are invalid because the inventions as claimed lack novelty (s 18(1A)(b)(i)); do not involve an innovative step (s 18(1A)(b)(ii)); and lack utility (s 18(1A)(c)). Further objections are that the claims are not fairly based on the matters described in the specifications (s 40(3)); the specifications do not fully describe the inventions, including the best method known to the patentee (s 40(2)(a)); the claims do not clearly and succinctly define the alleged inventions (s 40(3)); and the inventions as claimed are not patentable inventions for the purposes of s 18(1A)(a) of the Act. This last-mentioned ground is ‘a manner of manufacture’ ground.
Ciba cross-claims for infringement of the 944, 834 and 396 Patents, based on the use and implementation of the SNF Process at three mine sites in New South Wales. These mines are the Ashton coal mine (‘Ashton’), the Bulga coal mine (‘Bulga’), and the Cowal gold mine (‘Cowal’), a use that Ciba alleges was pursuant to SNF’s authorisation, direction and/or instruction. By its second further amended cross-claim dated 16 February 2010, Ciba seeks injunctive relief, damages or an account of profits, additional damages under s 122(1A) of the Act, and interest and costs. At trial, Ciba did not pursue a case of infringement in respect of a fourth mine originally mentioned in the pleadings – Carborough coal mine.
At trial, SNF admitted that, if the Patents were valid, then use of the SNF Process infringed the Patents as alleged and that the process had been used at these three mines. In relation to Bulga and Cowal, SNF conceded authorisation of use and that it joined in a common design with other persons with respect to that use. SNF also admitted the supply of flocculant and the provision of instructions (within s 117) with respect to that use. The live issues with respect to the cross-claim centred on Ashton.
Trial was had on the questions of liability alone. For the reasons set out below, I find that SNF has not made out its case with respect to invalidity; and that Ciba has made out its case with respect to infringement.
OVERVIEW OF EVIDENCE
At trial, SNF relied on the affidavits of its managing director, Mr Russell Schroeter, sworn on 29 June 2009 and 18 February 2010; its regional sales manager for Queensland, Mr Daniel Bembrick, sworn on 10 July 2009 and 1 December 2009; its regional sales manager who was formerly employed as an account manager, Mr Deon Joubert, sworn on 24 December 2009; and its business development manager, Mr Gregory Tobin, sworn on 16 July 2009 and 16 November 2009; as well as on affidavits from various other individuals involved in the mining industry: Mr Brian Banister, sworn on 24 June 2009; Mr Jim Cigulev, sworn on 30 June 2009 and 17 February 2010; Mr Ronald Coleman, sworn on 26 June 2009 and 16 February 2010; Mr Peter Woolley, sworn on 12 July 2009 and 17 February 2010; and Mr Benjamin Gill, sworn on 12 December 2009. SNF also relied on the affidavits (and accompanying report) of Professor Paul Slatter, a professor of rheology and fluid engineering. Professor Slatter swore two affidavits, on 29 June 2009 and 18 February 2010.
All of these witnesses except for Mr Tobin were cross-examined. A few of the witnesses briefly gave additional evidence in chief at trial. These included Mr Bembrick, who explained the SNF Process to the Court while a video he prepared, depicting the SNF Process, was played. A DVD version of the video was received in evidence.
Other than the affidavit (sworn 24 July 2009) of their solicitor, Mr John Lee, the purpose of which was to exhibit certain documents, the Ciba respondents relied solely on the affidavits of their expert, Dr John Farrow, a chemist with the Commonwealth Scientific and Industrial Research Organisation (‘CSIRO’). Dr Farrow swore four affidavits, on 24 July 2009 (first affidavit), 9 November 2009 (both the second and third affidavits) and 12 February 2010 (fourth affidavit). Dr Farrow also gave additional evidence in chief in response to Professor Slatter’s second affidavit, since he had not had an opportunity to respond prior to trial. Like Professor Slatter, Dr Farrow was cross-examined extensively.
There were numerous objections to the experts’ affidavits. As indicated at trial, I have dealt with these objections on the basis that in general they affected weight rather than admissibility. It should be presumed that I have found the expert evidence to which I refer below admissible.
It is convenient at this point to describe briefly the areas of expertise of Professor Slatter and Dr Farrow.
Professor Slatter is Professor of Rheology and Fluid Engineering at RMIT University, Melbourne. Professor Slatter is especially knowledgeable and experienced in the field of suspension and emulsion rheology in engineering hydrodynamics. According to Professor Slatter, the processes described in the Patents belong to the technology of rheology – the study of the flow of materials. In his second affidavit, Professor Slatter said that he was an expert in the flow of tailings material in pipes (which may be accepted) and that this necessarily involved “some work in the field of polymer science because [he] need[ed] to know how polymers, such as flocculants, impact on the flow of materials”.
Dr Farrow holds a doctorate in physical chemistry and, since 1984, he has been with the CSIRO. Since 1984, his main research interests have been in surface chemistry and solid-liquid separation in the mining industry, focussing on flocculation, thickener technology and filtration. Dr Farrow is:
(a) the Theme Leader for High Performance Mineral Processes for Australia;
(b)the manager of CSIRO’s Waterford site, which primarily conducts research into the separation of mineral products or metals from ores by processes involving liquids and also into metals recycling, water treatment and waste treatment; and
(c)a fellow of the Australian Institute of Mining and Metallurgy and the recipient in 2002 of the Institute’s Operating Award for services to the mineral industry for “revolutionising the development and implementation of new thickener technology for mineral processing”.
Dr Farrow stated that most of his experience had been directed “towards solving problems with the minerals industry through targeted research/development activities”.
Professor Slatter and Dr Farrow were both experts, but in different areas of science. Although Professor Slatter did not altogether lack relevant practical knowledge, Dr Farrow had more hands-on, practical knowledge of and experience in the treatment of mining waste than Professor Slatter.
PRINCIPLES OF CONSTRUCTION
Before determining SNF’s objections to validity, the court must first ascertain the invention described in the specification for which the monopoly is claimed: see Welch Perrin & Company Pty Ltd v Worrel (1961) 106 CLR 588 (‘Welch Perrin’) at 609.
In doing this, the court must bear in mind the rules of construction referred to by Sheppard J in Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 (‘Decor’) at 400, and, a decade later, by the Full Court in Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178 (‘Kinabalu’) at [44] (Sundberg, Emmett and Greenwood JJ), including that the specification must be read as a whole and in light of common knowledge in the art before the priority date.
Particularly in this case, one must bear steadily in mind that the hypothetical addressee of the specification is the non-inventive person skilled in the art before the priority date. One must also bear in mind that the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of the addressee’s own general knowledge and in the light of what is disclosed in the body of the specification: Kinabalu at [44]. Reference can be made to the specification to explain the background of the claims, to ascertain the meaning of technical terms, and to resolve uncertainties in the construction of the claims: Kinabalu at [44], citing Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 (‘Flexible’) at 349-350. Whilst the claims must be construed having regard to the specification as a whole, the construing court cannot “narrow or expand the boundaries of the monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification”: Kinabalu at [44]. Of course, if a claim is clear and unambiguous, it cannot be varied, qualified, or made obscure by reference to statements in other parts of the specification.
In construing the Patents in suit, the authorities recognise that uncertainty about meaning may be either the product of obscure language or result from the use of a relative expression that requires an exercise of judgment: compare Martin v Scribal Pty Ltd (1954) 92 CLR 17 at 62-3 (Dixon CJ), 97 (Taylor J) and 84 (Fullagar J) and Nesbit Evans Group Australia Pty Ltd v Impro Ltd & Anor (1997) 39 IPR 56 (‘Nesbit Evans’). In Nesbit Evans at 95, Lindgren J noted that:
[I]t is not unusual for a claim to define an invention “partly by the use of a relative expression which necessitates exercise of judgment (see, eg Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173 at 190 … ; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 477 …; Leonardis v Sartas No 1 Pty Ltd (1996) 35 IPR 23 at 32-3 and cases there cited …; Blanco White, Patents for Inventions, 5th ed, 1983, para 2-112) and so long as the claims provide a workable standard suitable to the intended use, they will be valid: Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 273 et seq; 1A IPR 231 (Aickin J). The expressions in question must be understood in a practical, common sense manner.
[Emphasis added.]See particularly Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 273. In determining SNF’s objections, as appears below, the proposition – that the use of a relative expression necessitating judgment is not objectionable providing the claim provides a workable standard suitable to the intended use – is an important one.
In assisting the task of patent construction, evidence may be given by experts as to the meaning that those skilled in the art would give to technical or scientific terms and as to unusual or special meanings given by such persons to words that might otherwise bear their ordinary meaning: see Glaverbel SA v British Coal Corp [1994] RPC 443 at 486. In this case, expert evidence was given to explain how ordinary words were to be understood in a particular industrial context. Admissible evidence may also be given by persons with the knowledge, skill and experience of the notional skilled addressee as to how he or she would have read the specification in the patent at issue or in a prior publication: see El Dupont de Nemours & Co v Imperial Chemical Industries Plc (2002) 54 IPR 304 (‘El Dupont’) at 323 [59]. It is for the court to determine the weight to be accorded all such evidence: compare Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 697. Ultimately, it is for the court to construe the complete specification, though with the assistance of all of the relevant evidence adduced in the proceeding: compare El Dupont at 323 [60].
THE INVENTION
The Patents are directed to the treatment of mine tailings with flocculants. ‘Tailings’ (or sometimes ‘tails’) is a term used in the mining industry to refer to waste produced during the process of extracting economically valuable products, such as coal or gold, from mined material. Tailings typically consist of solid particles such as sand and clay suspended in a fluid, which is generally water. Though in some cases water is already present in the mined material, additional water, often in large quantities, is added to produce a suspension. The suspension is often referred to as slurry. Tailings are generally pumped from the mineral processing operations to a deposition area or impoundment facility (often known as ‘tailings dams’) and deposited there. Ongoing challenges in relation to deposition of tailings include using limited land space effectively, rapidly rehabilitating the land, and re-using water from the tailings slurry for environmental and cost reasons.
The main practical difference between the Patents is the kind of material that is the subject of the claims – all of which are process claims. Broadly speaking, Patents 944 and 396 relate to coal tailings. Patent 744 relates to tailings from a mineral sands process; Patent 377, to red mud (a product of aluminium mining); and Patent 834, to “mineral tails or slimes from phosphate or diamond processing, gold slimes, tails from zinc, lead, copper, silver, uranium, nickel or iron ore processing”. For present purposes, SNF and the Ciba respondents agreed that the differences between the Patents were immaterial. They also agreed that Patent 944 would serve as an exemplar; and that the Court’s ruling on the validity of Patent 944 would also apply to Patents 396, 377, 744 and 834.
Patent 944
Patent 944 is headed “Treatment of Aqueous Suspensions”. The specification begins with a brief statement of the subject to which the invention relates. This statement reads:
The present invention relates to the treatment of mineral material, especially waste mineral slurries. The invention is particularly suitable for the disposal of tailings and other waste material resulting from mineral processing and beneficiation processes, including the co-disposal of coarse and fine solids, as a homogenous mixture.
The specification describes two common ways of waste disposal, amongst other things, stating that where waste is not disposed of in a mine –
… it is common practice to dispose of this material by pumping the aqueous slurry to lagoons, heaps or stacks and allowing it to dewater gradually through the actions of sedimentation, drainage and evaporation.
The specification also describes an existing waste disposal method – “to load multiple layers of waste onto an area to thus form higher stacks of waste”.
However, this presents a difficulty of ensuring that the waste material can only flow over the surface of previously rigidified waste within acceptable boundaries, is allowed to rigidify to form a stack, and that the waste is sufficiently consolidated to support multiple layers of rigidified material, without the risk of collapse or slip. Thus the requirements for providing a waste material with the right sort of characteristics for stacking is altogether different from those required for other forms of disposal, such as back-filling within a relatively enclosed area.
The specification gives the following account of an existing mineral processing operation:
In a typical mineral processing operation, waste solids are separated from solids that contain mineral values in an aqueous process. The aqueous suspension of waste solids often contain clays and other minerals, and are usually referred to as tailings. These solids are often concentrated by a flocculation process in a thickener to give a higher density underflow and to recover some of the process water. It is usual to pump the underflow to a surface holding area, often referred to as a tailings pit or dam. Once deposited at this surface holding area, water will continue to be released from the aqueous suspension resulting in further concentration of solids over a period of time. Once a sufficient volume of water has been collected this is usually pumped back to the mineral processing plant.
The specification notes that there are numerous difficulties with this kind of operation, including the size and costs of the tailings dam, the quality of the recovered water, and the composition of the dewatered solids. The specification refers to attempts to resolve these difficulties “by treating the feed to the tailings dam using a coagulant or a flocculant to enhance the rate of sedimentation and/or improve the clarity of the released water”. The specification continues:
However, this has been unsuccessful as these treatments have been applied at conventional doses and this has brought about little or no benefit in either rate of compaction of the fine waste material or clarity of the recovered water.
Thus, so the specification says, “[i]t would … be desirable to provide treatment which provides more rapid release of water from the suspension of solids”.
In addition it will be desirable to enable the concentrated solids to be held in a convenient manner that prevents both segregation of any coarse and fine fractions, and prevents contamination of the released water whilst at the same time minimises the impact on the environment.
The specification discusses at length the merits and demerits of various known treatment processes (the ‘Bayer process’, EP-A-388108, WO-A-96/05146 (‘Slatter 4’: see below) and WO-A-0192167 (‘Slatter 3’: see below)), concluding in relation to Slatter 3:
However, despite the improvements brought about by [it], particularly in the treatment of red mud, there is still a need to further improve the rigidification of suspensions of materials and further improve upon the clarity of liquor released.
The objective of the invention in Patent 944 is to improve upon Slatter 3. Thus the specification states:
In particular, an objective of the present invention is to find a more suitable method for treating coarse and/or fine particulate waste material from mineral sands, alumina or other mineral processing operations in order to provide better release of liquor and a more effective means of disposing of the concentrated solids. Furthermore, there is a need to improve the dewatering of suspensions of waste solids that have been transferred as a fluid to a settling area for disposal and provide improvements in the clarity of run-off water. In particular, it would be desirable to provide a more effective treatment of waste suspensions transferred to disposal areas, for instance tailings dams, ensuring fast, efficient concentration and more environmentally friendly storage of solids and improve clarity of released liquor.
The consistory clauses in Patent 944 commence with the statements:
According to one aspect the present invention provides a process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify; by combining with the material during transfer an effective rigidifying amount of aqueous solution of a water-soluble polymer …
A significant part of the argument in this case focussed on the meaning of “rigidification” and cognate words. The outcome of much of SNF’s challenge to validity depended on what was meant by this term.
The Patentee observed that:
The addition of the aqueous solution of water-soluble polymer to the material allows it to retain sufficient fluidity during transfer and then once the material is allowed to stand it will form a solid mass strong enough to support subsequent layers of rigidified material. We have unexpectedly found that the addition of the aqueous solution of polymer to the material does not cause instant rigidification or any settling of the solids prior to standing.
Generally suspended solids will be concentrated in a thickener and this material will leave the thickener as an underflow which will be pumped along a conduit to a deposition area. The conduit is any convenient means for transferring the material to the deposition area and may for instance be a pipe or a trench. The material remains fluid and pumpable during the transfer stage until the material is allowed to stand.
Detailed and lengthy descriptions of embodiments of the invention follow. It is unnecessary to set them out here, although it will be necessary to refer to aspects of them hereafter. Various examples intended to demonstrate the invention precede the claims. It will also be necessary to refer to some aspects of them below.
Claim 1 in Patent 944 is as follows:
Claim 1
A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25º C), in which the material comprises coal tailings.
Claims 2 to 5 all refer back to and incorporate claim 1. They are as follows:
Claim 2
A process according to claim 1 in which the water-soluble polymer is anionic and in which the polymer is formed from monomer(s) selected from the group consisting of (meth) acrylic acid, allyl sulphonic and 2-acrylamido-2-methyl propane sulphonic acid as the free acid or salts thereof, optionally in combination with non-ionic comonomers, selected from the group consisting of (meth) acrylamide, hydroxyl alkyl esters of (meth) acrylic acid and N-vinyl pyrrolidone, and wherein the effective rigidifying amount of the water-soluble polymer is in the order of 10 to 3000 grams per tonne of material solids.
Claim 3
A process according to claim 1 or claim 2 in which the material is pumped to an outlet, where it is allowed to flow over the surface of previously rigidified material, wherein the material is allowed to stand and rigidify to form a stack.
Claim 4
A process according to any one of claims 1 to 3 in which aqueous suspensions of fine and coarse particulate materials are combined for the purpose of co-disposal, wherein the effective rigidifying amount of the water-soluble polymer solution is added during or after the mixing of the different waste streams into a homogenous slurry.
Claim 5
A process according to any one of claims 1 to 4 in which the material is dewatered during rigidification, releasing liquor and in which the clarity of the liquor is improved by the addition of an aqueous solution of water-soluble polymer.
Integers of claim 1
Argument focused on claim 1. For present purposes, I accept Dr Farrow’s identification of the integers of claim 1, which was as follows:
(a)a process of improving rigidification of a material whilst retaining the fluidity of the material during transfer
(b)in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify
(c) by combining with the material during transfer
(d) an effective rigidifying amount of
(e)an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25º C)
(f)in which the material comprises coal tailings.
SNF propounded a slightly different formulation, but, as SNF’s counsel stated, the differences between the formulations are not material to the case.
For present purposes, I also accept Dr Farrow’s identification of the essential integers of the other claims. They were as follows:
Integers of claim 2
(g) a process according to claim 1 in which the water-soluble polymer is anionic
(h)in which the polymer is formed from monomer(s) selected from the group consisting of (meth) acrylic acid, allyl sulphonic and 2-acrylamido-2-methyl propane sulphonic as the free acid or salts thereof
(j)wherein the effective rigidifying amount of the water-soluble polymer is in the order of 10 to 3000 grams per tonne of material solids.
Integers of claim 3
(k) a process according to claim 1 or claim 2 in which the material is pumped to an outlet
(l) where it is allowed to flow over the surface of previously rigidified material and
(m) wherein the material is allowed to stand and rigidify to form a stack.
In closing, senior counsel for the Ciba respondents submitted that if claim 1 fell, then, for reasons outlined below, the Ciba respondents must nonetheless retain claim 3.
Integers of claim 4
(n)A process according to any one of claims 1 to 3 in which aqueous suspensions of fine and coarse particulate materials are combined for the purpose of co-disposal and
(o)wherein the effective rigidifying amount of the water-soluble polymer solution is added during or after the mixing of the different waste streams into a homogenous slurry.
Integers of claim 5
(p)A process according to any one of claims 1 to 4 in which the material is dewatered during rigidification, releasing liquor and
(q)in which the clarity of the liquor is improved by the addition of an aqueous solution of water-soluble polymer.
Dr Farrow maintained, and for present purposes I accept, that there was an inessential integer in claim 2: namely, “(i) optionally in combination with non-ionic comonomers, selected from the group consisting of (meth) acrylamide, hydroxyl alkyl esters of (meth) acrylic acid and N-vinyl pyrrolidone”.
THE SKILLED ADDRESSEE
In this case the identity of the skilled addressee is important not only in answering some basic questions of construction but also in determining the grounds of alleged invalidity.
As counsel for the Ciba respondents submitted in closing, the relevant art is “the art of dealing with tailings in mines”. In this case, the skilled addressee is a practical person working in the mining industry, with practical knowledge of and experience in the treatment and disposal of mining wastes. Such skilled addressees would include SNF’s technical sales representatives who gave evidence at trial. The gist of their evidence in this regard was that in the course of their ordinary employment they gave technical advice to SNF’s customers with respect to processes for treating mining waste. Other skilled addressees might be mines engineers familiar with waste disposal processes (including the plant and equipment used in such processes).
Having regard to the evidence adduced at trial, a skilled addressee would have a good working knowledge of: (1) polymers and their use in flocculating mine wastes; and (2) the flow of flocculated and unflocculated mine wastes. A skilled addressee would be able to perform and interpret the routine tests necessary to give effect to a secondary flocculation process. A skilled addressee would not need to be a scientific expert in rheology or chemistry (or polymers).
THE MEANING OF RIGIDIFICATION
A central issue in this case is the meaning of the word “rigidification” and its variants as they appear in the claims. This meaning is significant for assessing whether the prior art documents referred to below as Slatter 10, 12 and 13 and various prior art acts teach rigidification as opposed to settling or sedimentation. The meaning of “rigidification” also has implications for the clarity and sufficiency grounds discussed hereafter.
Claim 1 is for a “process of improving rigidification”; and there is a process of improving rigidification taught in the specification: see Patent 944 at pp 13-14. The meaning of “improving” is clear enough. “Improve” in this context, is to make “rigidification” greater in amount or degree; even “to increase the value or excellence” of “rigidification” as applied to the disposition of mineral waste. Compare The Oxford English Dictionary (2nd ed, 1989). Reading the specification as a whole, the word “improve” necessitates a comparison – here with processes other than the claimed process. As the Ciba respondents noted, neither the claims nor the specification assert that “rigidification” of tailings is the “invented” process.
Further, the evidence establishes that “rigidification” is not a term of art. One may accept that, in ordinary usage, “rigidify” means “[t]o become rigid, set, or inflexible”; and “rigid” means, in relation to material, “stiff; not pliant or flexible; firm; hard”. See The Oxford English Dictionary (2nd ed, 1989). The question is what does the word “rigidification” signify in the specification and claims of Patent 944?
Opposing contentions about rigidification
On the one hand, SNF argued that the term “rigidification” and its variants within Patent 944 did not differ from the processes of settling and sedimentation disclosed in the prior art documents and acts. On the other hand, the Ciba respondents contended that rigidification was relevantly different from settling and sedimentation. The experts also differed on this point. Professor Slatter’s view was that the processes of settling, sedimentation and rigidification were not relevantly different because settling and sedimentation would always lead to rigidification as claimed. Dr Farrow disagreed, for the reasons explored below.
SNF and the Ciba respondents relied heavily on their experts – Professor Slatter in the case of SNF and Dr Farrow in the case of the Ciba respondents. As already indicated, the industrial context was such that expert opinion on issues affecting construction was admissible and appropriate. The experts gave evidence as to the scientific and industrial context in which the claimed processes would operate and in which “rigidification” was to be understood.
Professor Slatter’s approach
In order to appreciate the nature of the debate, it is necessary to consider the competing evidence given by the two experts. I commence with the evidence given by Professor Slatter. Professor Slatter deposed that rigidification “describes the process of developing strength”. Professor Slatter expressed “strength” in terms of yield stress, saying that “rigidify” meant “the evolution of yield stress or in layman’s terms the development of solid properties”. I accept that, as SNF submitted, Professor Slatter maintained essentially the same view of rigidification throughout his evidence, although, if taken out of context, some of his later comments may carry a contrary indication.
It was Professor Slatter’s opinion that “rigidification” was the “last part” of the process of “settling and sedimentation”. According to Professor Slatter, in the context of secondary flocculation, the first part of the process was flocculation, “which creates floccs which leads to settling which then rigidify”. Professor Slatter’s evidence was that “[t]he process of flocculation, sedimentation and settling will always lead to rigidification”. Professor Slatter explained his understanding of the whole process in the following passages:
[F]locculation means inducing suspended particles to stick together. These agglomerates of particles are referred to as floccs. …
When an additive such as that contemplated [i.e. a relevant polymer] is added to a non-settling, or slowly-settling suspension, it is my understanding that the process starts with agglomeration of suspended particles, whether by coagulation or flocculation. The weight force of these agglomerates then exceeds the buoyancy force, and settling or sedimentation occurs. These agglomerates will move downwards until they make contact with the bottom of the container or floor or previously settled agglomerates, forming a three-dimensional structure. This structure has inherent strength, is able to resist applied stresses, developing a yield stress. This last step I understand to be “rigidification” as contemplated in the claims in the Patents. This process will occur in any event, after the passage of sufficient time and evaporation, without any intervention through the use of flocculant. …
Whilst there was evidence (in the testimony of Professor Slatter, Mr Bembrick and others) that rigidification or stiffening was enhanced by the addition of flocculant, Professor Slatter’s evidence was that this stiffening or hardening could occur without the addition of flocculant.
Whilst SNF challenged the notion that time was an element in the claims in the Patents in suit and relied on Professor Slatter’s opinion that rigidification was merely the last part of the settling/sedimentation process, Professor Slatter himself acknowledged that, in the context of the claimed process, time was important. Thus, in his second affidavit, Professor Slatter said:
The speed with which rigidification occurs is critically important in that it must occur immediately after leaving the pipe, but not before, so as not to impinge on fluidity in the pipe.
In cross-examination, Professor Slatter said:
The benefit which the patent seeks to bring is to make this a faster process, so that not only is the material able to be rehabilitated, but that water can be recycled. I see those as the major thrusts of the usefulness.
In relation to the “beached scenario” described by Mr Bembrick in speaking about the (infringing) SNF Process, Professor Slatter said:
I would expect that in the beached scenario, rigidification would occur more quickly because the compressive forces will be due entirely to the solid material.
Professor Slatter contrasted this with flocculated tailings that were allowed to settle, observing:
If it’s a submerged bit, there will be buoyancy forces. So given the same thickness and the same density of material, because it’s submerged, there will be a lower compressive force.
Professor Slatter agreed in cross-examination that the statements in Patent 944 at p 14, in which rigidification was described, were consistent with his evidence as to time.
There were evident difficulties with Professor Slatter’s approach. Notwithstanding Professor Slatter’s opinion about rigidification, Professor Slatter had seemingly little difficulty in understanding what the Patentee intended by the words “stand and rigidify” in the specification of Patent 944. As to the statement within the specification (at p 13) that “[t]he material is allowed to stand and rigidify and therefore forming a stack of rigidified material”, Professor Slatter said:
What I believe is referred to here, to stop, simply means that the applied forces are able to be resisted. I believe that there would still be a force applied to it, but the material, through its yield stress, would be able to resist any forces, and so it stops behaving like a solid material.
Professor Slatter contrasted the behaviour of material of this kind with the behaviour of “a very liquid slurry”, saying:
If it doesn’t have a yield stress then it will flow much the way water would flow and it simply wouldn’t stop and stand.
Professor Slatter’s evidence was that such material would only stop when it met resistance (like a wall) and then the slurry would stop and the particulate flocculant would settle.
Professor Slatter’s evidence (mentioned above) brings to mind Dr Farrow’s integers (a) and (b) of claim 1. As the Ciba respondents said, according to Patent 944, the material was to be brought into a state in which it could stand and rigidify as set out in the claim and described in the body of the specification: see Patent 944, p 13. That is, the material was to be treated with a “suitable and effective rigidifying amount of water-soluble polymer solution”. As the Ciba respondents said, the specification clarified this aspect (at p 14) by saying:
The rheological characteristics of the material as it rigidifies is important, since once the material is allowed to stand it is important that flow is minimised and that solidification of the material proceeds rapidly. If the material is too fluid then it will not form an effective stack and there is also a risk that it will contaminate water released from the material. It is also necessary that the rigidified material is sufficiently strong to remain intact and withstand the weight of subsequent layers of rigidified material being applied to it.
Furthermore, in cross-examination, notwithstanding some seeming hesitation, Professor Slatter ultimately agreed, in substance, that the addition of a sufficient dose of flocculant, after the thickener, can result in a bridging of the flocculant of the particulate matter and an increase in concentration. Professor Slatter agreed that Mr Schroeter had also described this type of process as occurring in the preparation of feed used in a belt press.
Mr Schroeter, who can properly be regarded as a skilled addressee, gave evidence (which I accept) about the operation of a belt press. Mr Schroeter described the preparation of slurry feed used in the belt press as analogous to that created in the SNF Process. His evidence was that, as a consequence of the density of the particulate matter in the slurry and the high flocculant dose applied to the slurry, the slurry feed had sufficient structure, strength and density to sit on a belt and the water stream from it.
The above-mentioned evidence of Professor Slatter and Mr Schroeter recalls the effect of Dr Farrow’s integer (e), when applied in an “effective rigidifying amount” as in integer (d). The evidence shows that the “effective rigidifying amount” is the dose that, immediately after discharge onto the deposition area, results in an effect of the kind described in Patent 944 at pp 13-14.
Professor Slatter’s evidence on dewatering in a settling and sedimentation process as opposed to a “beaching” process as described by Mr Bembrick was equivocal. At one point, Professor Slatter’s evidence was to the effect that the volume of water recovered from settling and sedimentation would not necessarily differ from “beaching” as in the process described by Mr Bembrick. Professor Slatter conceded, however, that water evaporation would not play a significant role where the sediment was covered with water. Further, when asked about the speed with which water would come out of a slurry, particularly, whether “the beached scenario will dewater more rapidly … than the settling scenario”, Professor Slatter said:
The dewatering is difficult to compare under those circumstances, because in what is described as a settling scenario, water is always present. If we consider the material which is rigidified, which has formed a beach, which has started forming a solid stack, water flows out of it. One can see the water flowing out. To say that one is more than the other is not directly available.
Professor Slatter’s evidence in this latter regard was not borne out by that of Mr Bembrick, who described the (infringing) SNF Process in fact trialled at the Bulga coal mine. Mr Bembrick said in evidence that an increased “beaching” dose of flocculant released water more rapidly and in greater quantity than a lower dose. Indeed, in a paper entitled “The Impact of Flocculant Addition on a Tailings Storage Facility” presented to a metallurgical conference in Perth in August 2008 (‘the Bembrick paper’), Mr Bembrick, then a SNF regional sales manager, described the result of a full trial of a secondary flocculation process conducted at the Bulga coal mine after the priority date in the following terms:
The deposition density increased from a percentage solids weight of 35% to 61 % within 24 hrs and continued to increase to 75%, 7 days after treatment. The impoundment capacity had nearly tripled due to the improvement in deposition density from an initial 420kg/m3 up to 1162 kg/m3. Water loss through retention and evaporation was greatly reduced by the increase in water release. The pilot trial results suggest that Bulga could potentially improve the water capture by more than 90% at the [Tailings Storage Facility] equaling [sic] approximately three (3) megalitres of recycled water per day.
Mr Bembrick was an impressive witness, and I accept his evidence. The contrast between the evidence given by Professor Slatter on dewatering and that given by Mr Bembrick highlights a difficulty faced by Professor Slatter in giving evidence – namely, that Professor Slatter had not seen Mr Bembrick’s video showing the (infringing) SNF Process at Bulga and he had not been given an opportunity to study the Bembrick paper about the trials there. The result was that Professor Slatter’s evidence about the claimed process had a substantially theoretical aspect.
Dr Farrow’s approach
The Ciba respondents argued that Professor Slatter’s view that the processes of settling and sedimentation would lead to rigidification as claimed was not borne out by the evidence. They relied on Dr Farrow. I turn now to Dr Farrow’s evidence on rigidification.
Dr Farrow said that, in his view, in the context of Patent 944, “rigidification” was a qualitative term, although one that Patent 944 explained clearly as “a networked structure”. Reading Patent 944, Dr Farrow said that:
[T]he outcome of rigidification will be a process producing a different tailings deposit, with different characteristics, different dewatering potential in a quite different period of time to natural settling and sedimentation processes.
Dr Farrow deposed (in his first affidavit) that the rigidified tailings material would: (a) be less likely to spread laterally after deposition, enabling more efficient land use; (b) more rapidly form a solid structure in the form of a beach or stack; (c) have a greater yield stress when deposited; (d) have increased uniformity or homogeneity of fine and coarse particles; (e) by reason of its heaped geometry, result in downward compression forces driving water out of the stack; and (f) result in more rapid and improved clarity of water release.
Crennan J, with whom Heydon J agreed, went further, stating (at 649 [127]) that:
Although acts in respect of a product resulting from a patented method which infringe the monopoly will commonly be acts of direct infringement, there is no reason to doubt that s 117(1) applies to a product resulting from a use of a patented method. However, equally, a consideration of the complete definition of “exploit” in respect of a method or process indicates that there is no reason to deny the application of s 117 to a product (including, as here, an unpatented product) supplied by the supplier, preparatory to any carrying out of the patented method by a person to whom the product is supplied. The secondary materials … show that the latter type of product was the main target of the legislation. The word “product” in s 117 is not confined to a product resulting from the use of a patented method or process.
Crennan J continued (at 650 [131]):
Consideration of the entire definition of “exploit” in respect of a method or process patent and of the whole of s 117 confirms that s 117 can be engaged in respect of a supply of a raw material for carrying out a patented method. … Whether a particular use of an input into a method (or input into a resulting product) “would infringe” in terms of s 117 will turn on the claims.
For the reasons set out below, it is unnecessary to proffer any view as to the proper operation of s 117 in this case. Indeed, the parties themselves gave slight attention to this issue.
Findings
With respect to authorisation and liability as joint tortfeasors, Ciba case was that “a common substratum of fact, whereby SNF recommended the SNF Process to Ashton and assisted it with its implementation, establishes liability for each of these species of indirect [sic] infringement”. Ciba also submitted that, in respect of the Ashton coal mine, SNF infringed pursuant to s 117 of the Act if it established that SNF supplied flocculant to Ashton; that the flocculant was used in the SNF Process; and that that use was in accordance with instruction, inducement, or advertisement given or published by SNF.
Relevant evidence concerning the Ashton Coal Mine was given by Messrs Schroeter, Bembrick and Gill. Mr Schroeter accepted that SNF and its customers cooperated in a “joint endeavour” to optimise the SNF Process at the customer’s site. As with its customers generally, the communications in evidence between SNF and Ashton confirmed that SNF offered Ashton much more than the mere supply of chemical products. For instance, in a letter of 13 January 2007, Mr Bembrick wrote offering SNF’s assistance in implementing a flocculating system and in developing a management strategy for treating tailings at the Ashton Coal Mine.
According to the evidence, sometime after February 2004, SNF entered into a contract with the mine operator for the supply of flocculant to be added to the thickener. About this time, and at least by March 2004, the tailings processing system at Ashton already involved secondary flocculation (though not with SNF’s product). In August 2007, Mr Bembrick, as SNF’s representative, emailed Ashton a copy of a document called “ACARP Project C14064” – a Powerpoint presentation of the ACARP Project investigations at Bulga. This was in effect also about the SNF Process. In October 2007, to the knowledge of Mr Schroeter, SNF was undertaking test work in relation to tailings dewatering at the Ashton tailings dam. Around 9 October 2007, Mr Bembrick for SNF sent Paul Davis of Ashton a quote for SNF to supply flocculant for the secondary processing of the underflow. It is more likely than not that this amounted to a quote to supply flocculant for the SNF Process. In October 2008, SNF was, also to Mr Schroeter’s knowledge, discussing optimisation of flocculant usage in tailings as opposed to the thickener. Mr Gill gave evidence that SNF conducted some tests in October 2008 to ascertain whether SNF might supply flocculant product for the secondary flocculation process and subsequently supplied the results of the tests to Ashton. In response, Ashton placed an order for flocculant with SNF in October 2008, and SNF made its first delivery of flocculant on 20 October 2008. Sometime after delivery, Mr Gill attended the mine and gave some advice as to aspects of the secondary flocculation process. In January 2009, however, Ashton stopped ordering SNF product for secondary flocculation and began using the Ciba product again. Since then, SNF supplies flocculant to Ashton only for use in its thickeners. It is more probable than not that each of the above references to secondary flocculation were also references to the SNF Process.
On the balance of probabilities, with regard to Ashton, I conclude that SNF authorised another to exploit the invention within s 13(1) of the Act in that, without Ciba’s licence, SNF sanctioned, approved and countenanced the use of the SNF Process at Ashton. As already noted, SNF admitted that the SNF Process contained all the essential integers of the claims of the relevant Patents. SNF supplied the flocculant necessary for this secondary flocculation process, and gave technical advice for its implementation. In advising Ashton as it did, SNF knew that the flocculant was for use in the SNF Process. The supply of the flocculant and the provision of advice were under its control and, in the circumstances, including the relationship between SNF and its customer, this also meant that it had the power to control or prevent the infringement. I would reject SNF’s submission that SNF had no power to control or prevent the infringing acts. As stated above, it is immaterial whether or not SNF knew that the use of its flocculant pursuant to its advice would be an infringing use of the Patents in suit.
I would also reject SNF’s submission that there was no evidence that the use at Ashton was a use within the claims of the Patents. As already noted, in closing written submission (pp 145-146), SNF admitted that the SNF Process had been used with respect to the various mine sites referred to in Ciba’s pleadings, which included the Ashton Coal Mine. There was also the evidence of Mr Bembrick and Mr Gill that showed the process of secondary flocculation, which they recommended and assisted to implement, was the same process as investigated in the ACARP Project with which Mr Bembrick was involved. As indicated earlier, this process was the same as the SNF Process, which was admitted by SNF to be an infringing use.
Having reached this conclusion, it is unnecessary to reach any definitive conclusion with respect to Ciba’s alternative arguments on liability with respect to the Ashton Coal Mine. I would, however, reject SNF’s submission that, with regard to Ashton, it had taken only preparatory steps that did not make out common design. The evidence referred to above would lead me to conclude, on the balance of probabilities, that SNF participated in or joined with their customer at Ashton in furtherance of a common design – the use of the SNF Process with products supplied by SNF. Further, if it be relevant, I would similarly conclude that SNF supplied flocculant to Ashton, as well as technical advice and support in the nature of instructions for the use of the flocculant in the SNF Process.
THE THREATS OF UNJUSTIFIABLE INFRINGEMENT PROCEEDINGS
Section 128 of the Act provides that where unjustifiable infringement proceedings are threatened, “a person aggrieved” may apply for declaratory and injunctive relief and damages. If, however, the threats are made in respect of a certified innovation patent (as they were here), pursuant to s 129A(3) of the Act, relief is unavailable where the court is satisfied that “the acts about which the threats were made infringed, or would infringe, a claim that is not shown by the applicant to be invalid”.
I accept that the Ciba respondents relevantly threatened SNF with infringement proceedings: see U & I Global Trading (Australia) Pty Limited v Tasman-Warajay Pty Ltd (1995) 60 FCR 26 at 31. For the reasons already stated, however, I find that the acts about which the threats were made infringed a claim that SNF has not shown to be invalid. Accordingly, s 129A(3) precludes the grant of relief under s 128 of the Act.
For the reasons set out earlier, SNF has failed to establish that the Patents in suit are invalid and in consequence its application fails. Ciba has established infringement, in respect of which it has sought various forms of relief, including damages or an account of profits (as it may elect). This appears to raise issues for determination in the second stage of the proceeding.
CONCLUSION AND DISPOSITION
SNF and the Ciba respondents will be given an opportunity to submit a minute of the orders that they consider give effect to these reasons and are appropriate to be made at this stage of the proceeding.
I certify that the preceding three hundred and thirty-one (331) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny. Associate:
Dated: 6 May 2011
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