Spoutvac Manufacturing Pty Ltd v POLAR VAC Pty Limited
[1994] APO 16
•22 February 1994
official notice
decision of a delegate of the commissioner of patents
Application : No. 619139 in the name of SPOUTVAC MANUFACTURING PTY. LTD.
Title: SUCTION CLEANING SYSTEMS
Action: Opposition under paragraphs (a), (e), (g), (h) and (i) of sub-section 59(1) of Section 59 of the Patents Act 1952 i.e. obtaining, prior publication, obviousness, lack of novelty and non-
compliance with section 40 by
POLAR VAC PTY. LIMITED.
Decision : Issued .Opposition
dismissed.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 619139 by SPOUTVAC MANUFACTURING PTY. LTD. and Opposition thereto under Section 59 of the Patents Act 1952 by POLAR VAC PTY. LIMITED.
background
Patent Application No. 619139 by SPOUTVAC MANUFACTURING PTY. LTD.
(referred to hereinafter as SPOUTVAC) was lodged on 9 April 1991 as a complete specification in respect of provisional specification No. PJ9575 lodged 10 April 1990.
Acceptance of the application was advertised on 16 January 1992.
POLAR VAC PTY. LIMITED lodged a notice of opposition on 20 March 1992 and served a statement of grounds and particulars on 16 April 1992. Evidence-in-Support was served on 14 October 1992; Evidence-in-Answer was served on 12 February 1993 and Evidence-in-Reply on 11 May 1993.
The opposition came to hearing in Canberra on 27 October 1993. Mr Bruce Caine of Counsel and Mr Raymond Hind, Patent Attorney, of Davies Collison Cave represented the applicant. Mr. Keith Harris, Director, and Mr Andrew Cairns, General Manager, both of SPOUTVAC, were also in attendance. The opponent relied on written submissions provided by Mr Peter Caporn of Kelvin Lord and Company, Patent Attorneys.
As the application was lodged prior to but advertised accepted after commencement of the Patents Act 1990, the opposition is in substance determined, in accordance with the provisions of section 234(3) of the 1990 Act, under Part V of the Patents Act 1952 but with the procedures of the opposition governed by Chapter 5 of the Patents Regulations 1991.
The grounds of opposition given in the statement are in accordance with section 59 of the 1990 Act. It is common ground between the parties that the statement grounds of opposition translate to the 1952 Act grounds of opposition of sub-section 59(1) as specified in paragraphs (a), (e), (g), (h) and (i); i.e. obtaining, prior publication, obviousness, lack of novelty and non-compliance with section 40. Following the decision of the Delegate of the Commissioner of Patents in CSIRO v HBH Technological Industries (1992) 24 IPR 90, the Commissioner of Patents has a general power to construe a document filed with the Patent Office to try to determine the purpose of the document if there is doubt about its meaning, i.e. purposive construction, and that such a practice is clearly consistent with the decisions of the High Court. Since I am satisfied that it would not be against the public interest to construe the statement of grounds of opposition lodged by the opponent as 1952 Act grounds in accordance with sub-section 59(1) as specified in paragraphs (a), (e), (g), (h) and (i), I am prepared to adopt this practical approach and so determine the opposition under Part V of the Patents Act 1952.
THE SPECIFICATION
The specification commences by stating that:
"The present invention relates to suction cleaning systems
and more particularly to suction cleaning systems for the
removal in(sic) industrial or household debris. Such
systems may be used for cleaning silos, industrial ovens or
furnaces or other applications involving the removal of
large amounts of small solid or particulate matter together
with any water or moisture which might also be present."
Then follows details of the applicant's prior art heavy duty suction cleaning system which in essence comprises a liquid ring air pump, a relatively coarse filter in a suction line upstream of the pump to filter large particles and larger matter prior to the pump and a separator downstream of the pump for separating from the discharge airstream water and smaller particulate matter discharged from the pump. The coarse filter is described as being incorporated in a tank in which larger matter is accumulated, the fine particulate matter flowing through the filter to the pump. The larger size particles are progressively accumulated in the filter and it is necessary for the filter to be cleaned periodically, typically once a week, depending on the usage. Failure to clean the filter will result in reduced performance and, ultimately, in blockage. The liquid ring pump is said to be capable of generating very high suction forces such that in the event of a significant blockage in the upstream filter, the suction generated by the pump can damage certain of the components.
The consistory statement which is mirrored by claim 1 and two preferred feature details which are mirrored by claims 2 and 8 respectively then follow.
An embodiment of the invention is then described which concludes with the statement:
"With the system described, the air discharge from the outlet
line is entirely free from particulate matter even when the
system is handling matter containing large amounts of
particulate material. The main collecting tank and the
chamber can contain significant amounts of material before
emptying is necessary."
The specification ends with the claims which read:
1. A suction cleaning system comprising an air pump, first
separating means in a suction line leading to the pump
for separating substantially all particulate matter from
the incoming airstream with the exception of fine
particulate matter, second separating means upstream of
the pump and downstream of the first separating means for
separating the fine particulate matter from the incoming
air, said second separating means comprising a water
chamber, means for feeding the incoming air and fine
particulate matter through the water chamber to generate
an air and water stream within the chamber whereby the
particulate matter is held in suspension, and means for
causing air substantially free from the suspended
particulate matter to be withdrawn from the chamber for
passage through the pump.
2. A system according to claim 1, wherein the water chamber
includes baffle means which generate at least one
circulating stream of air and water when the incoming air
and fine particulate matter is charged into the chamber.
3. A system according to claim 2, wherein the chamber
includes an inlet for said air and fine particulate
matter, said inlet being positioned within the chamber at
a level beneath a normal water level within the chamber,
said inlet being associated with said baffle means to
cause generation of the circulating stream.
4. A system according to claim 3, wherein said inlet is a
tubular inlet operative to discharge the air and
particulate matter into the water at positions along the
length of the inlet, said baffle means comprising two
opposing baffle plates extending upwardly from a position
beneath the normal water level, said opposing baffle
plates being at opposite sides of the tubular inlet with
the inlet being located adjacent the lower ends of the
plates, the opposing baffle plates serving to generate
two oppositely circulating streams which rise upwardly
between the baffle plates and displace in opposite
directions over the tops of the respective plates.
5. A system according to claim 4, wherein the baffle means
comprises one or more additional baffle plates which
define a space into which the upwardly moving streams
discharge and which confine said space from above, and
the means for causing air substantially free from
particulate matter to be withdrawn from the chamber
comprises an air outlet leading from the chamber outside
of said space.
6. A system according to any one of claims 1 to 3, wherein
the chamber includes a partition for separating the
stream from an upper part of the chamber, said partition
being above a normal liquid level within the chamber, and
the means for causing air substantially free from
particulate matter to be withdrawn from the chamber
comprises an air outlet connected to the pump and leading
from said upper part of the chamber.
7. A system according to claim 6, wherein the partition has
a lower edge above the normal liquid level whereby a
passage is defined beneath the lower edge of the
partition for flow of air from the stream into the upper
part of the chamber.
8. A system according to any one of claims 1 to 7, wherein
the pump is a liquid ring pump having a water sealing
system between a pump rotor and casing and a further
separator is downstream of the pump to separate from the
discharged air, liquid and any particulate matter which
may have passed into the pump, separated water being fed
from the separator to the pump to replace sealing water
discharged from the pump.
9. A system according to any one of claims 1 to 8, wherein
the chamber is of cylindrical form and the or each stream
circulates about a respective axis parallel to the axis
of the axis of the cylindrical chamber.
10. A system according to claim 9, wherein the chamber is
defined at an end of a collecting tank defining the
first separating means.
EVIDENCE
The opponent submitted support written evidence in the form of statutory declarations by the following:
Neville Stephen MALEY dated 12 October 1992
Owen HUDELSTON dated 13 October 1992
Gary MILNE dated 12 October 1992
Neil Ronald BUCK dated 12 October 1992
In addition, the opponent submitted reply written evidence in the form of statutory declarations by the following;
Neville Stephen MALEY dated 6 May 1993
Owen HUDLESTON dated 10 May 1993
Brian Michael NOLAN dated 28 April 1993
Glyn Mervyn COUNSEL dated 23 April 1993
The applicant submitted answer written evidence in the form of statutory declarations by the following:
Keith Charles HARRIS dated 26 January 1993
Robert William WHITTAKER dated 5 February 1993
Harold Clifford MEMERY dated 19 January 1993
Gregory Keith HARRIS dated 19 January 1993
SECTION 40
The particulars with respect to the ground that the specification does not comply with the requirements of section 40 are set out as follows:
" (i) the specification does not fully describe the
invention in that, for example:
(a) there is no antecedent for `the upper part of the
chamber 26'
(b) it does not define what is meant by `an outlet
spaced above the level of the water'
(c) it does not define how `the vacuum applied to the
chamber 26 has the effect of drawing only air
from these circulating currents...'
(ii) Claim 1 does not define the invention in that:
(a) the water chamber including baffle means which
generate at least one circulating stream of air
and water when the incoming air and fine
particlulate matter is charged into the chamber
as recited in claim 2 and also including an inlet
for the air and fine particulate matter, said
inlet being positioned within the chamber at a
level beneath a normal water level within the
chamber, said inlet being associated with said
baffle means to cause generation of the
circulating stream as recited claim 3 at least
are essential integers of the invention as
described.
(iii) Claims 3, 4, 6 and 7 and any claims dependant
thereon are unclear, indefinite and ambiguous in
that:
(a) they do not define what is meant by `the
normal water level'.
(iv) Claims 3, 4, 6 and 7 and any claims dependant
thereon are not fairly based on matter described
in the specification in that:
(a) they do not define what is meant by `the
normal water level'.
In a written submission dated 25 October 1993, the same particulars are set out by the opponent somewhat differently viz:
" We submit that the specification is insufficient due to:
(A) there being no antecedent for `the upper part of the
chamber 26' at page 6, line 5;
(B) there being no definition or explanation of what is
meant by or encompassed by `an outlet spaced above the
level of the water' at page 6, lines 13 and 14 in
particular as no definition or explanation is to be
found in relation to `the level of the water'.
(C) there is no definition of how `the vacuum applied to the
chamber 26 has the effect of drawing air from these
circulating currents...' at page 6, lines 30 to 33."
" ... we submit that claim 1 is not fairly based on the
description at pages 4 to 7 as it does not contain reference
to the `baffle means' and to the `circulating' air stream of
claims 2 and 3. We submit that it is clear from the
description that these features at least are considered
essential features of the invention. Their not being
present in claim 1 consequently results in a lack of fair
basis in the claims. "
" Further, each of claims 3 and 4 refer to a `normal water
level' whilst claims 6 and 7 refer to a `normal liquid
level'. Neither term is present in the description and as
such neither is defined. Consequently, we submit that the
scope of the claims is unclear, indefinite and ambiguous and
also that these claims are not fairly based on the matter
described in the specification."
Since the particulars quoted in the submission more explicitly cover those particulars with respect to section 40 contained in the "Statement of Grounds of Opposition", I will consider the submission particulars.
At the outset I would say that although the submission from the opponent draws my attention to the insufficiency test as set out in Valensi v British Radio Corporation [1972] FSR 273 where at page 311 it was said:
" Whilst the addressee must be taken as a person with a will
to make the instructions work, he is not called upon to make
a prolonged study of matters which present some initial
difficulty; and, in particular, if there are actual errors
in the specification - if the apparatus really will not work
without departing from what is described - then, unless the
existence of the error and the way to correct it can be
quickly discovered by an addressee of the degree of skill
and knowledge which we envisage, the description is
insufficient.",
I have no evidence before me from addressees, i.e. persons skilled in the art of manufacturing suction cleaning systems, that they would have any difficulty in working the invention from the patent specification, and I will therefore need to consider the aspect of insufficiency from my own understanding of the specification.
Reverting now to aspects (A) to (C) mentioned in the submission. I confess I find it difficult to understand why these particular aspects have been raised bearing in mind they are directed to the description (not the claims) and that a skilled addressee would be expected to read the drawings of the specification in conjunction with the text. With regard to (A), the text reads at lines 3 to 5 of page 6 "The further separating chamber is filled to(sic) water to about half its depth, and a suction line 28 leads from the upper part of the chamber 26 to the pump 2.". Reference to figures 2 and 3 of the drawings show a pipe 28 clearly emerging from the top of chamber 26, i.e. from the upper part of the chamber 26. Similarly with (B), both figures 2 and 3 clearly show the water level, while the only outlet shown for chamber 26 is suction line 28. The relevant part of the text (page 6 lines 10 to 14) reads "The pipe 30 lies at the base of a hood defined by two inwardly and upwardly baffle plates 36 which converge towards an outlet spaced above the level of the water". Given that suction line 28 is the outlet, the subject text is clearly complementary to, and can be identified in, figures 2 and 3.
The aspect (C) quote misses out the word "only" which I have underlined in the relevant part of the text (quoting from lines 28 to 35 of page 6) and reads: "The particulate matter which enters with air is trapped within these circulating currents as a suspension in the water. The vacuum applied to chamber 26 has the effect of drawing only air from these circulating currents, the air passing beneath the lower edges of the inverted V-section baffle 38 to be drawn into the upper section of the chamber 26 for passage to the pump 2." This part of the text is consistent with figure 3 of the drawings which clearly shows bubbles (which I take to be bubbles of air) rising from pipe 30 to the surface of the water with the air subsequently turned back towards the surface of the water by the baffle plates. Since the lower edges of the baffle plates, in accordance with the drawings, are above the surface of the water, it would be expected that air passing beneath the lower edges of the baffles is drawn into the upper section of chamber 26 as a result of the suction line 28 (previously discussed). In my opinion this would be perfectly clear to the skilled addressee. In consideration of aspects (A) to (C), in the absence of evidence to the contrary, I have found that the specification does not lack sufficiency.
Dealing now with the fair basis aspects. Claim 1 mirrors the consistory statement while lines 20 to 24 of page 3 read:
"In a preferred embodiment (my emphasis) of the invention the
water chamber includes baffles which generate at least one
circulating stream of air and water, with incoming air and
fine particulate matter being charged into the water to
generate the circulating stream."
In determining the question of fair basis I will use the guidance of the Mond Nickel Rules as set out in Mond Nickel Company Ltd.'s Application [1956] RPC 189 at 194 viz:
" (1) Is the alleged invention as claimed broadly described
in the specification?
(2) Is there anything in the specification which is
inconsistent with the alleged invention as claimed?
(3) Does the invention include as a characteristic of the
invention a feature as to which the specification is
wholly silent?"
Considering claim 1. Given that it mirrors the consistory statement and is supported by the description and drawings, it meets the requirement of rules 1 and 3. Further, given that the specification makes it clear the `baffle means' and `circulating' air stream of claims 2 and 3 are preferred features from a preferred embodiment, I do not consider that their exclusion from claim 1 gives rise to any inconsistency between the specification and claim 1. As a consequence I do not agree with the opponent's assertion that the subject features are essential and should therefore be included in claim 1 and I therefore consider that claim 1 is fairly based.
Moving on now to claims 3, 4, 6 and 7. The opponent asserts that because the terms `a normal water level' and `a normal liquid level' are not present in the description, the scope of the subject claims is unclear, indefinite and ambiguous and the use of the terms renders the claims not fairly based on the matter described in the specification. As previously pointed out, the description at page 6 lines 3 and 4 states: "The further separating chamber 26 is filled to about half its depth". In my opinion, a skilled addressee would recognise this to be the normal water/liquid level and thus I do not consider the use of the terms results in the subject claims being unclear, indefinite and ambiguous. Further in applying the Mond Nickel Rules (supra), given that I have identified in the description what in my opinion a skilled addressee would consider to be the `normal level', I cannot say that the terms are not broadly described in the specification, that the specification is inconsistent with the claims or that the specification is wholly silent on the terms. As a consequence, I do not agree with the opponent that the use of the terms renders the subject claims not fairly based.
While I agree that the terms `water level' and `liquid level' are different, nevertheless they are so synonymous that I cannot conceive of any situation where their use would present any difficulty to a skilled addressee. Certainly, I do not consider these terms to be so inconsistent as to render the claims as a whole unclear and ambiguous.
ANTICIPATION
The statement of grounds of opposition includes among the particulars that:
" the invention lacks an inventive step when compared to any
of AU specification 17585/88, AU specification 75317/87,
AU specification 38396/72 (460767) , US specification
4145198, in the light of AU specification 40542/89."
While this question was not pursued in the written submissions, as it is one I can deal with readily, I will consider it first from the aspect of prior publication, novelty and obviousness.
From my understanding of the statement, the opponent considers AU 40542/89 is common general knowledge in the art and that the intention is to add this common general knowledge to any one of the other citations to show that the invention has been anticipated. However, individual patent specifications and their contents do not normally form part of common general knowledge. Just what is common general knowledge can only be positively established by the evidence of those skilled in the field of the invention. (See the judgement of Aicken J. in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253). I have no such evidence before me to establish that AU 40542/89 is common general knowledge. Even though machines generally in accordance with AU 40542/89 may have been produced and sold, without the evidence required as set down in the Aicken J. judgement, it cannot be established that AU 40542/89 is common general knowledge.
Similarly, there is no evidence before me to establish that any other of the citations mentioned in the statement are common general knowledge in Australia in the art of suction cleaning systems.
Australian patent application No. 40542/89 (PCT/AU89/00335) is the applicant's prior art heavy duty suction cleaning system to which I have already referred when dealing with the specification.
When comparing 40542/89 with broadest claim (claim 1) of the application in suit I note that it does not at least disclose the essential integer features of:
(i) "second separating means upstream of the pump and downstream
of the first separating means for separating the fine
particulate matter from the incoming air, said second
separating means comprising a water chamber" and
(ii) "means for feeding the incoming air and fine particulate
matter through the water chamber to generate an air and
water stream within the chamber whereby the particulate
matter is held in suspension"
I also note that none of the other citations quoted in the statement of grounds of opposition disclose these features, i.e.
integers (i) and (ii).
As a consequence of these essential features being missing in any of the citations, the test for prior publication as set out in Flour Oxidising C. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428 viz:
"The information as to the alleged invention given by the
prior publication must, for the purposes of practical
utility, be equal to that given by the subsequent patent.
The invention must be shown to have been before made known.
Whatever, therefore is essential to the invention must be
read out of the prior publication. If specific details
are necessary for the practical working and real utility
of the alleged invention, they must be found substantially
in the prior publication ...."
has not been met and therefore I find that the invention has not been prior published by a paper anticipation.
The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 where Aicken J. stated:
"The basic test for anticipation or want of novelty is the
same as that for infringement and generally one can properly
ask oneself whether the alleged anticipation would, if the
patent were valid, constitute an infringement".
Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken, see Rodi &
Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at 391.
If a citation does not disclose an essential feature, a claim that includes that essential feature is novel over the citation,
see Nicaro Holdings v Martin Engineering 16 IPR 545.
Since none of the citations quoted in the statement of opposition disclose all the essential features of the broadest claim of the
application in suit, in the absence of expert evidence that the missing integers are common general knowledge, I conclude that the invention is novel having regard to the paper anticipations.
I have already stated that there is no evidence before me to show
that any of the citations quoted in the statement of grounds of opposition were common general knowledge in the field of the invention at the priority date of the claims of the application in suit. In considering obviousness I can only take into account what has been established as being common general knowledge (following the judgement of Aicken J. in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (supra). As a consequence I am not in a position to conclude that the invention claimed is obvious in the light of the citations.
GENERAL NOTE
In reviewing the evidence, relevant to the remaining issues of the opposition, I find that it is often of a contradictory nature and thus does not lend itself to fair and accurate paraphrasing. I have therefore selected from the evidence what I consider to be the most relevant parts of the statements made and quoted them verbatim to provide an overall representation.
OBTAINING
History
It is not disputed that prior to the advent of the present proceedings Spoutvac made in their Bendigo factory suction cleaning systems similar to the system in accordance to the application in suit except for the filtering arrangement. Around June 1989 a Mr Robert William Whittaker became aware of the Spoutvac systems and interested an acquaintance, Mr Neville Stephen Maley in the system's potential as a basis for a vacuum cleaning(loading) business in Western Australia. Subsequently, a company named Starwest Holdings Pty Ltd (Starwest) was formed with Whittaker, Maley and a Mr Greg James as directors. This company traded in Western Australia as Spoutvac W.A. under permission from Spoutvac. A close contact of Maley, Mr Neil
Ronald Buck, through Maley, also became aware of the Spoutvac systems.
Evidence on Obtaining
Neville Stephen Maley
In his statutory declaration dated 12 October 1992 Neville Maley states in part:
"... On 2 October 1989, an SV 800D industrial vacuum loading machine ... was purchased from Spoutvac Manufacturing Pty Ltd of Bendigo, Victoria by Starwest Holdings Pty Ltd. ... Following this purchase ... Starwest Holdings Pty Ltd began trading as Spoutvac WA under permission from Spoutvac Manufacturing Pty Ltd. ... A demonstration of the SV 800D was arranged to take place for AMC Mineral Sands Limited ... This demonstration took place on 11 October 1989. ... After the demonstration ... I first mentioned to Neil Buck that there were problems with the vacuum system and in particular the pump. ... After the demonstration ... I discussed the problem of the mesh filter and pump extensively with Neil Buck and we in particular talked about different ways of improving the filtering system. One of the ways raised during these discussions was described as a water "scrubber" or filter method whereby air from the hopper tank would be passed through a tank of water before passing onto the pump. Neil Buck informed me ... of ... equipment used in mines creating carbon ...[text missing] being passed under water so the exhaust was bubbled through the water. The water absorbed the carbon ... Neil Buck and myself decided in February 1990 that a separate water bubbler filter should be tried on the SV 800D. What was at this stage envisaged predicts features D, E and F of Patent Application 74240/90(sic) [defined by claim 1 as the `second separating means'] ...
In mid February 1990, I again rang Keith Harris and we decided that the best course of action was for me to take the SV 800D back to Spoutvac ... to modify it to handle the work we were wanting to do. In addition, Greg James, Robert Whittaker and Neil Buck were all aware that the SV 800D was not performing as it should and that it was decided that the machine should be modified. ...
I travelled to Bendigo ... in the SV 800D ... and arrived there on February 25, 1990. ... During my time in Bendigo ... discussions were held between myself and Keith Harris concerning the problems associated with the SV 800D. ... I suggested that we run air from the SV 800D through a 44 gallon drum of water to demonstrate the filtering effect thereof. Consequently, the SV 800D was then modified by myself and Keith Harris to include a water bubbler, a hammer head arrangement and an arrangement of baffles to create currents within the water bubbler. The arrangement ... was the same as that shown in figures 2 to 4 and as defined in claims 2 to 10 of patent application No. 74240/91.
Myself and Greg Harris returned to Western Australia on March 12, 1990 in the SV 800D that had been modified ...
A larger industrial vacuum loading machine (hereinafter referred to as the "SV 1800D") had been bought by Starwest ... and was brought to Western Australia by Roger Whittaker while I travelled to Bendigo ... in the SV 800D machine. ... The SV 1800DT machine had not been modified and contained only the foam mesh filter ...
Upon returning from Bendigo ... I contacted Neil Buck to discuss the filter aspect of the SV 1800DT and it was agreed between ourselves that the latter machine should be modified also ...
The SV 1800DT was modified to include a water bubbler filter , a hammer head arrangement and an arrangement of baffles. ...
In addition, Neil Buck visited during this period and examined the machine and with the water bubbler partly installed and looked over some rough pencil drawings of how the whole arrangement would work and how it was to be incorporated into the SV 1800DT"
In his statutory declaration dated 6 May 1993, Maley states in part:
" ... In fact, I was intimately involved with the design of the final water bubbler installed and remember drawing sketches of it on the factory floor at the time to explain the concept and how it might be fitted. ...
I had made a number of parts for the SV 1800 whilst in Bendigo. ...
The "components for the system" referred to by HARRIS were not made by Spoutvac but were made by me. ...
I would again advise that the idea for a water containing filter to the SV 800D was germinated between myself and Neil Buck ...
The particular design of the filter disclosed in patent application 619139 (74240/91) was conceived in my presence and with my input during my time at Spoutvac and was not the sole invention of Harris ...
The filter was conceived by myself, Harris and others at Spoutvac during February 1990. ...
I had it in my mind that I would need to do something to the SV 1800DT upon my return (to Perth) because the filters it was fitted with I knew were not going to be good enough. That is why several parts were made by myself, no one else, for the filter for the SV 1800DT whilst I was in Bendigo. ...
Upon arriving back in Perth from Bendigo I discussed the problem further with Neil Buck and then proceeded to install the filter on the SV 1800DT. ... AS far as myself and Spoutvac were concerned at the time the modification of the SV 1800DT was simply me modifying a machine we had bought and paid for with parts I made in the most part. ...
The baffles and pipes referred to were constructed at least in part by me and not solely supplied and constructed by Spoutvac...
I strongly deny the statements ... to the effect that myself and WHITTAKER discussed the seals and bearings `to some length'. Further, the implication that WHITTAKER raised with me the points of a water bubbler being used on diesel locomotive engines and that he suggested to me that a similar system be used to extract sediment from pump filter water is untrue. No such discussion ever took place. ... Again, WHITTAKER had no active involvement in the decision to modify the SV 800D ...
Further, the modified SV 800D and SV 1800DT were not designed solely by Spoutvac, I contributed to the design and installation in the SV 800D and largely fitted the system in the SV 1800DT myself as well as fabricating most of the parts for it. HARRIS was not solely responsible for the design of the water bubbler filter".
Neil Ronald Buck
In his statutory declaration dated 12 October 1992 Neil Buck states in part:
"Prior to the middle of February 1990, I talked specifically with Neville Maley about different ways of improving the filter system over and above the crude mesh filter originally on the vacuum loading machines. I was aware from previous experience that ... diesel motors used in mines created carbon pollution problems ...
and that to overcome these effects, the exhaust pipe from the diesel motors was passed under water so the exhaust was bubbled through the water. The water thereby absorbed the carbon ... I suggested to Neville Maley that perhaps the idea of bubbling the
contaminated air through water may remove the contaminants rather than relying on the foam mesh filter. ...
In mid March 1990, I visited Neville Maley at his home ... subsequent to receiving a telephone call from him and discussing the filter aspect of a new machine, an SV 1800DT, that he had recently received from Spoutvac Manufacturing Pty Ltd. During this visit, it was agreed that Neville should install a water bubbler filter in this new machine before any damage was done to the vacuum pump. At this time, Neville Maley described by way of rough pencil drawings the water scrubber filter and how it would be incorporated into the machine. At the same time I was able to view the water filter partially installed in the SV 1800DT."
Keith Charles Harris
In his statutory declaration dated 26 January 1993, Harris states in part:
"During the course of 1989 I started to think of other ways of solving the problem of dealing with large amounts of dust and dirt as may be encountered in certain industrial situations. One solution which occurred to me was to incorporate a filter comprising a water bath. I cannot say for certain when the idea of a water filter came to me, but I think it would be around mid-1989 when it was clear to me that the upstream foam/mesh filter was not functioning satisfactorily in industrial situations...
An order was placed for a Spoutvac "SV-800" machine and this was completed and invoiced to Maley in October, 1989. ...
Some time after delivery and installation I received a telephone call from Maley to the effect that the liquid ring seals within the air pump had been destroyed. I was surprised to hear this as this had not happened previously with any of the machines Spoutvac had supplied. I arranged for a new set of seals to be sent to Western Australia ... I do not know exactly when this took place, but from a review of the records of Spoutvac I see that Spoutvac were invoiced ... for this service on 19 December 1989. ...
Maley asked whether I could come to Perth to ... inspect the Spoutvac machine and the seals which had been destroyed. I flew to Perth in January, 1990. ...
After my visit I indicated to Whittaker, who was in Victoria at the time, that I was developing a water filter unit for the Spoutvac system although it was very much at a conceptual stage and nothing definite had been built. ...
Following my return to Melbourne, Starwest Pty Ltd placed an order for an SV-1800 machine. ... When Maley placed the order he told me he was concerned about the filtration aspect. ... I explained to Maley at that time that I was working on the concept of a water based filtration system to replace the foam/mesh filter, although at that stage I had not finalised the design. ... Maley told me he wanted the "SV-1800" machine as soon as possible and he was prepared to accept the foam/mesh filter, despite the previous difficulties with this type of filter. He
also wanted Spoutvac to modify the original "SV-800" machine to incorporate a larger tank ... and also to have Spoutvac look at the filtration problems.
The "SV-1800" machine was completed in February 1990 ... Shortly afterwards, Maley arrived from Perth with the "SV-800" machine which was to be modified ... It was agreed that Maley would carry out some of the modifications himself, in order to save costs. ... I was very much concerned about the state of the machine and also about the filtration problems. By that stage I had a much better idea as to how the a water filtration system might work and while Maley was working on the tray of the truck ... I built a trial water filter in another part of the factory. ... At no stage was Maley involved in the design or installation of the trial filter on the "SV-800" machine. ...
The water filtration system incorporated into the "SV-800" machine on a trial basis was as substantially disclosed in Australian patent application 619139. Following the limited testing carried out at Bendigo on the modified "SV-800" machine I decided that a similar water filtration system should be installed in the "SV-1800" machine likewise on a trial basis and at no cost to Starwest Holdings Pty Ltd. ...
When Maley agreed with my suggestion that a trial filtration system would also be fitted to the "SV-1800" machine then in Perth it was agreed that my son, Greg Harris, would travel back to Perth with Maley with the modified "SV-800" machine ... to fit the new system to the "SV-1800" machine. Most of the components for the system were made by Spoutvac and were placed in the back of the truck of the "SV-800" machine for transportation to Perth.
Now produced ... is a photograph of the "SV-800" machine taken prior to its departure to Perth. ... The components which can be seen in the interior of the tank are the components which were to be fitted to the "SV-1800" machine. ...
Considering now the declaration of Maley, I categorically deny the statement or inference that Maley suggested the incorporation of a water filter system to the "SV-800" machine to solve the problems being experienced. It was fitted at my suggestion, not at Maley's and the filter system disclosed in patent application 619139 is my design not Maley's or anybody else's. I categorically deny the statement made in ... Maley's declaration that he suggested that air is run from the "SV-800" machine through a 44 gallon drum of water to demonstrate the filtering effect. I also categorically deny the statement that the "SV-800" machine was modified by Maley and myself to incorporate the water filtration system. Maley did undertake some work in the conversion of the larger tipping tank but the incorporation of the water filtration system was carried out by myself alone.
In ... Maley's declaration he says that the decision to modify the 1800 machine was taken by himself and Neil Buck after he returned from Bendigo with the modified "SV-800" machine. This is incorrect. The decision was made at my suggestion in Bendigo prior to Maley's departure and, as specified above, parts for the modifications were made by Spoutvac prior to Maley's departure and were installed under the supervision of my son Greg who drove to Perth with Maley, and these parts are shown in the photograph
..."
Robert William Whittaker
In his statutory declaration dated 5 February 1993, Robert Whittaker states in part:
"It was decided and agreed to establish a vacuum loading company called Spoutvac W.A. under a company named Starwest Holdings Pty Ltd with myself , Maley and Greg James as Directors. ... Mr Neil Buck of Geraldton made some preliminary inquiries on behalf of Spoutvac W.A. with AMC Mineral Sands and a demonstration [of the SV 800D machine] took place on or about 11 October 1989. ... The AMC representatives raised the question as to whether the bearings of the pump would stand the very abrasive action of the mineral sands on the seals and bearings. This point concerned both Maley and myself. ... Maley and I discussed this point to some length on the return trip to Perth and it was decided that I should take the matter up with Keith Harris on my return to Melbourne. During the return trip to Perth I advised Maley that I had worked underground on a sewerage tunnel and was at that stage a locomotive driver and that the water bubbler system was used to extract carbon from the exhaust gas of the diesel motor that I was driving. I raised the possibility of a similar system to extract sediment from the pump filter water if the sediment proved to be a problem. ... I returned to Melbourne in mid-October 1989.
On returning to Melbourne I took up with Keith Harris the problem of the sediment in the filter water of the machine as experienced at AMC Mineral Sands. However I don't believe Keith Harris understood the amount of sediment being suspended in the water and I was not able to convince him that a potential problem was in the making. He assured me that he had considerably more knowledge about the system than me, being the manufacturer and to rest assured that the machine was under full warranty and that he would rectify any problems if they arose. I accepted his assurances after discussing the water bubbler system with him in brief, much to his displeasure at the time. ...
During this time it was decided that a larger vacuum unit would expand the type of service that Spoutvac W.A. could offer, and an
"1800" unit was ordered from Spoutvac to be delivered in February 1990. Experience with the original "800" unit proved that while the unit was suitable for cleaning roof gutters and the like, it was not suitable for heavy industrial use due to the following:
(a) ...
(b) ...
(c) the foam filter was hard to operate and very dirty for the
operator and ineffective in some circumstances.
(d) the pump seals were proving to be a problem in certain
industries such as extracting garnet which destroyed the
seals very quickly.
... Then it was decided that the "800" unit should be returned to Spoutvac considering the above points. Prior to the delivery of the "1800" unit, considerable communication took place between myself, Maley and Keith Harris. Keith Harris assured me that the four major points of concern would be addressed in the modified "800" unit, as turned out to be the case. ...
On 12 March 1990, Maley and Greg Harris returned to Western Australia with the modifications completed on the "800" unit. These modifications included a water-based filter system which is substantially as described in patent application No 619319. Maley and Greg Harris started work to modify the "1800" unit to replicate the water filter system as fitted to the "800" unit using some parts they brought with them. I was present for a large part of the time while the modifications were taking place. The modifications were made under the supervision of Greg Harris, with parts being fitted by both Greg Harris and Maley. ... It was obvious to me that Greg Harris was in contact with Spoutvac during the modifications as he would telephone home each night to discuss the progress being made. Contrary to what Maley has stated in his declaration I do not recall seeing any pencil drawings of the modifications being carried out at the time. ...
To the best of my knowledge the water-based filter as described in patent application 619139 and as incorporated in the modified "800" unit and the "1800" unit was designed by Spoutvac in Bendigo, and I believe the person responsible for the design to be Keith Harris. ... Although I had previously mentioned to Keith Harris my experience with a water bubbler system for extracting carbon from exhaust gas ..., I had not conceived a design of a water filter for use with the Spoutvac vacuum unit. No specific details of the water filter were known to me even when I collected the finished "1800" unit from Bendigo with the original foam/mesh filter."
Gregory Keith Harris
In his statutory declaration dated 19 January 1993 G. Harris states in part:
"... In February, 1990 Neville Maley ... drove a Spoutvac "SV-800" machine to the Spoutvac premises in Bendigo. I was informed that the machine was to be converted to provide a larger storage tank and also that problems with the filtering system were to be investigated. ... the machine was dismantled by employees of Spoutvac. Under supervision of myself Maley did some general welding work on the body of the tank and the truck and under his own supervision Maley extended the fuel tank. During this time a trial water filter system was constructed and installed by my father. To the best of my knowledge Maley was not involved on any design work of the water filter system or its installation.
...
My father also decided to install a trial water filter in an "SV-1800" unit which had been delivered to Maley two or three weeks previously. Certain of the necessary components for this, including baffles and pipes were constructed or supplied by Spoutvac and placed in the truck of the "800" unit at Bendigo ...
Maley and I drove the "800" unit to Perth. The intention was that I would supervise the installation of the water filter system to the "1800" unit already in Perth and fly home. ...
Installation of the water filter on the "SV-1800" was carried out at Maley's home. The installation was carried out by myself with assistance from Maley and Mr. Rob Whittaker. No one else assisted. During the installation I telephoned my father each day to inform him of the progress being made. I ... affirm that ... Greg James ... did not assist in the installation of the filter. Neil Buck, referred to in Maley's declaration, was not present during the installation of the filter."
Decision on Obtaining
In considering the evidence I have extracted those portions which I find of relevance. Much of the evidence is conflicting.
In accordance with the decision in Massey v Noack (11 IPR 632),
to prove obtaining, it is necessary for certain requirements to be satisfied. Thus it must be established:
1. What the invention is that has allegedly been obtained;
2. Whose invention it was when the alleged obtaining occurred;
3. That the claim defines, or includes within its ambit, the
invention allegedly obtained;
4. That the applicant actually obtained the invention from the
opponent, or from a person of whom the opponent is the
legal representative, assignee, agent or attorney, prior to
the priority date of the claim.
Firstly, in considering what the invention is that has allegedly been obtained I must determine from the evidence what contributions to the invention could have been made by persons other than Harris before the invention was made known.
Neville Maley in his declaration states that Neil Buck informed him of equipment used in mines creating carbon and bubbling the equipment exhaust through water to absorb the carbon. He further states that the idea of a water bubbler filter germinated between himself and Neil Buck.
Neil Buck corroborates this by stating that he was aware of the exhaust pipes of mine diesel motors being passed under water so the exhaust was bubbled through the water to absorb the carbon from the exhaust.
Neville Maley also states that he was intimately involved with the design of the final water bubbler filter but he has not identified what parts of the bubbler filter were his contribution.
Robert Whittaker in his statutory declaration states that he advised Neville Maley about a water bubbler system that he knew of which was used to extract carbon from the exhaust gas of diesel locomotives he had driven.
Although Neville Maley states that what was envisaged with his discussions with Neil Buck predicts the `second separating means' features as defined by claim 1, I am not happy to accept this statement without question bearing in mind Neville Maley's declaration is contradictory e.g. with reference to the SV -1800DT filter parts he says he made at Bendigo he variously states:
"That is why several parts were made by myself, no one else, for
the filter for the SV 1800DT whilst I was at Bendigo."
"... at the time the modification ... was simply me modifying a
machine ... with parts I made in the most part."
"The baffles and pipes referred to were constructed at least in
part by me and not solely supplied and constructed by
Spoutvac."
On the one hand by these statements Neville Maley is adamant that he made the filter parts all by himself and on the other hand he admits that he only partly made them. In view of this type of inconsistency I have concluded that Neville Maley's recollection of events is at times clouded and I therefore find it difficult to place unconditional reliance on his declaration.
I am more inclined to take note of Neil Buck's version of events since Neville Maley admits that Neil Buck was the one who advised him of the "bubbler" used to absorb carbon from exhaust gas. I also note that Neville Maley, Neil Buck and Robert Whittaker all recount similar equipment which utilises a water bath to absorb material carried by a gas by bubbling the gas through the water.
On examining the claims for features I can identify corresponding to the water bath arrangement, in my opinion, the only features that could be encompassed by the water bath concept are the "water chamber" and "means for feeding the incoming air and fine particulate matter through the water chamber to generate an air and water stream within the chamber whereby the particulate matter is held in suspension" integers of claim 1.
These then, are the invention features which have allegedly been obtained and included within the ambit of the claims.
I next need to consider whose invention it was when the alleged obtaining occurred and whether the applicant actually obtained the invention.
In his declaration dated 12 October 1992, Neville Maley states that after the AMC Mineral Sands demonstration on 11 October 1989 Neil Buck appraised him of the water filter concept and in February 1990, he decided with Neil Buck that Spoutvac W.A.'s SV 800D machine should be fitted with a water bubbler filter. This would date the passing of Neil Buck's water filter knowledge to Neville Maley sometime after 12 October 1989 but on or before February 1990. Neville Maley then goes on to say that there were numerous telephone calls between himself and Keith Harris and that in mid-February 1990 he again rang Keith Harris when it was decided to take the SV 800D back to Bendigo for modification.
In Neil Buck's declaration dated 12 October 1992 he states that prior to the middle of February 1990 he talked specifically with Neville Maley about different ways of improving the filter system which included the water bubbler concept. This dates Neil Buck's advice to Neville Maley as being prior to the middle of February 1990.
Robert Whittaker states in his declaration that he discussed the water bubbler system with Neville Maley on their return to Perth after the 12 October 1989 demonstration, which I take to mean that the discussion took place immediately after the demonstration. He also states he discussed with Keith Harris after his return to Melbourne in mid-October 1989 the water bubbler concept. These statements make the timing of Robert Whittaker's discussion with Neville Maley regarding the bubbler system sometime after 12 October 1989 but before mid-October 1989, since after the latter date he had left Perth.
Greg James was also a working director of Starwest trading as Spoutvac W.A. and hence should have known what was going on at the time. Modifying Spoutvac W.A.'s machines meant a modification of some of Starwest's prime assets [there is evidence on file to the effect that Spoutvac's machines ranged in cost from $90,000 to $250,000] and with such large sums at stake it is almost inconceivable that Greg James, particularly being a working director, was not aware of the precise details of the modifications required. However, I do not have the benefit of a declaration from him.
From the evidence before me, since Robert Whittaker discussed the water bubbler concept with Neville Maley on the way back to Perth after the AMC demonstration, this must have been before Neville Maley had his discussion on the same subject with Neil Buck and this would place Robert Whittaker as allegedly the first to suggest the use of the water bubbler filter concept on Spoutvac's machines. Robert Whittaker also states that he discussed with Keith Harris in mid-October 1989 the use of a water filter which, in the absence of any further information to the contrary, would make Robert Whittaker the first person to discuss the subject with Keith Harris. However, Robert Whittaker, in his statutory declaration, states that to the best of his knowledge the water-based filter was designed by Spoutvac in Bendigo and that he believes the person responsible for the design to be Keith Harris. Accordingly, I am unable to say that Keith Harris was not the originator of the water-based filter concept (in a statement contained in his statutory declaration, dated 26 January 1993, Harris claims that he first thought of the water filter idea around mid-1989) and, more importantly, I am unable to say that Keith Harris proceeded with the water-based filter design based on information provided by Neville Maley.
In consideration of the foregoing, I find there is no evidence before me to show that Keith Harris was not the inventor and that the opponent has not been able to establish that the applicant obtained the invention.
PRIOR USE AND SECRET USE.
Although the question of prior use is normally determined as part of novelty considerations, in this instance I prefer to review the evidence in conjunction with that presented with respect to secret use since the issues are similar.
The Agreement
It is not within my province under the provisions of the Patents Act 1990 to make a final determination as to whether a Commercial Agreement drawn up between the parties was in effect during the critical period when the alleged prior use and secret use were taking place. Nevertheless, in order to enable me to carry out my functions under the Act with respect to the opposition matters, it is necessary for me to form an opinion as to what the courts would be likely to decide in as far as the Agreement impinges on matters relevant to the outcome of the opposition.
I have before me as evidence (exhibit KCH1) a copy of a DISTRIBUTION AGREEMENT dated 1989 on the cover page. Keith Harris's statutory declaration states that the agreement was drawn up by Spoutvac's solicitors, Sly & Weigall, in Melbourne and the facsimile transmission identification coding appearing on every page shows that the copy was sent by Sly & Weigall.
The cover page shows the parties to the agreement as SPOUTVAC MANUFACTURING PTY LTD "the Company" and STARWEST PTY LTD "the Distributor". The last page is signed on behalf of Starwest Pty Ltd by Greg Jones as Director and (undecipherable signature) as Secretary. The document states the common seal is affixed under the authority of the Directors and an imprint of STARWEST HOLDINGS PTY LTD common seal appears alongside.
In the space set aside for the Director of SPOUTVAC MANUFACTURING PTY LTD. is a crossed-out signature which looks like the signature of Starwest's Secretary. The initials "GJ" appear alongside and undecipherable initials appear above. There is nothing in the place set aside for the imprint of Spoutvac's common seal.
In the opponent's submission dated 22 October 1993, provided by Mr Peter Caporn, it is pointed out that because of Spoutvac's apparent lack of signing of the document, the Agreement was not fully executed and, by inference, that it was of no effect.
In disputes of this nature the courts have long held that whether or not agreements are in force may be inferred from the conduct of the respective parties [Brogden v MetropolitanRy Co (1877) 2 App Cas 666].
With regard to the opponent, I note that the Agreement was signed on behalf of Starwest Holdings Pty Ltd and in his statutory declaration dated 6 May 1993 Neville Maley states:
"At this point, approximately mid-1990, Starwest Holdings Pty
Ltd ceased using the Spoutvac W.A. name and the agreement of
Exhibit KCH1 was ceased."
In addition, Neville Maley in the same declaration makes numerous references to taking actions that were not under the terms of the Distribution Agreement of Exhibit KCH 1.
With regard to the applicant, I note that Starwest, under agreement with Spoutvac, traded under the name of Spoutvac W.A.
I also note that Neville Maley admits that Spoutvac allowed him to use their factory facilities and that he stayed with Keith Harris in Bendigo approximately one week while modifications were carried out on the SV 800D machine.
I further note that Spoutvac W.A. were instrumental in having both Keith Harris and Greg Harris on their customer's sites in Western Australia.
From the conduct of the opponent in the signing of the Agreement and then subsequently stating that the Agreement had ceased I am in no doubt that Starwest considered the agreement in force during the period in question.
The evidence shows that Spoutvac allowed Starwest to trade under the name of Spoutvac W.A. and then went on to allow Neville Maley to use their Bendigo factory facilities and arranged for him to stay with Keith Harris while in Bendigo. In my view, this is evidence to show that Spoutvac considered the Agreement in force. My view in this is reinforced by the knowledge that both Keith and Greg Harris visited Spoutvac W.A.'s customer sites with representatives of Spoutvac W.A.
Keith Harris, in his statutory declaration states that the Distribution Agreement was signed by Starwest about the same time as the SV 800D machine was delivered to Western Australia. In Neville Maley's statutory declaration dated 12 October 1992, he states that Starwest purchased the SV 800D on 2 October 1989 and following the purchase began trading as Spoutvac W.A. From this series of events I gather that Starwest signed the Distribution Agreement on or about 2 October 1989.
After considering the evidence before me relevant to the Agreement I have formed the opinion that if the question were to be put before the courts as to whether the Agreement was in effect from the time Starwest signed it until the time Neville Maley states that the Agreement was ceased, based on the same evidence, it is most likely the courts would conclude that the Agreement was indeed in effect during the specified period i.e. from early October 1989 to mid-1990.
Having reached an opinion as to the status of the Agreement I will quote from the Agreement relevant clauses that relate to the questions in hand regarding intellectual property and related matters. These clauses read as follows:
"The Distributor covenants with the Company that it shall:-
...
(2) Pay for all Products purchased from the Company ...
...
(13) Use every effort to safeguard such of the Company's
intellectual property rights and interests as relate to
the Products, to bring any improper or wrongful use of
such rights and interests in the Territory to the
Company's notice immediately and to render every
assistance reasonably requested by the Company in
seeking action of whatever nature to defend such rights
and interests. The Distributor will also give the
Company such assistance as may be reasonably required
in the event of any infringement of the Company's
rights and interests under any patent, trade mark or
other intellectual property right in the Territory."
...
(15) Not at any time hereafter divulge any confidential
information in relation to the Products or to the
Company's affairs or business or method of carrying on
business to any third party."
Use
The applicant agrees with the evidence presented by the opponent
that the invention was used prior to the priority date. What is in dispute is the circumstances of that use.
In his statutory declaration, Keith Harris, in respect of prior use, stated in part:
"I built a trial water filter ... It was agreed that the
filter would be fitted to the `SV-800' machine on a trial
basis at no cost to Starwest Holdings Pty Ltd and that as
part of on-going research and development work, Maley would
keep us informed of the performance of the new filter. ...
When installation had been completed , the unit was subjected
to limited testing at Bendigo and ... seemed to operate
satisfactorily.
The water filter system incorporated into the `SV-800'
machine on a trial basis was substantially as disclosed in
Australian patent application 619139.
Following the limited testing carried out at Bendigo on the
modified `SV-800' machine I decided that a similar water
filtration system should be installed in the `SV-1800'
machine likewise on a trial basis and at no cost to Starwest
...
Although ... limited testing of the water filtration system
had been carried out at Bendigo, this testing was very
superficial and artificial. The water filtration system was
primarily designed to overcome problems arising from use of
the machine in environments where there are large amounts of
dust and dirt and proper trials could only be carried out by
use of the machine in its working environment. I decided it
would be desirable also to try the new filtration system on
the `SV-1800'... as that machine was intended for use in a
more stressful environment ... and I wanted to assess how the
filtration system performed in that environment.
The water filtration systems were fitted to the two units of
Starwest Holdings Pty Ltd on a trial basis only at no cost to
Starwest under the understanding and expectation that Maley
would keep us informed of the performance of the filtration
system in a real working environment. ... No charges have
ever been made in respect of the water filtration system
fitted to either of the two machines.
... after completion of the installation of the water filter
on the `SV-1800' in Perth, Maley telephoned me to say there
were problems with the operation of the filtration system ...
I was quite happy to receive from Maley the report of
problems he was experiencing as this was the sort of feed-
back I expected to receive as the system was on trial.
In addition to the trial filter systems for the machines of
Starwest, Spoutvac fitted another trial filtration system to
the same design on a machine that had been sold to a Mr Harry
Memery ... The trial system was fitted in June, 1990 at no
cost to Mr Memery and the purpose of that installation was to
provide further testing of the operation of the filter system
under actual working conditions. Mr Memery was working ...
on sawdust and chemical waste and I wanted the filter to be
tested also in that environment.
The results of the aforesaid tests were successful and
Spoutvac introduced the water filter system as a standard
item in the Spoutvac machine late in 1990.
The Spoutvac machines, and in particular the machines fitted
with the water filtration system, are designed to operate in
industrial environments where significant amounts of dust and
dirt are likely to be encountered ... Effective testing of
the machine can only be carried out under actual working
conditions and these conditions cannot be artificially
simulated in a test facility. The testing is especially
difficult when chemical or hazardous products are involved.
A further difficulty which arises in Spoutvac carrying out
the testing itself, concerns the cost of the unit. The
current cost of the large `1800' machine is around $160000
plus the cost of truck for carrying the machine. ... one can
be looking at a cost in excess of $250000 for the complete
unit. ... Spoutvac is only a small manufacturing business
and, apart from the practical considerations discussed above,
does not have the financial capacity to operate several units
of varying sizes for testing purposes, or even a single unit
dedicated solely to testing. The trial filter systems
supplied to Maley were for use on his `800' and `1800'
machines and the system supplied to Mr Memery was for use on
his `1300' machine. The system was therefore able to be
trialled on machines with a wide range of different
capacities in different working environments and I considered
trials of this type to be essential prior to Spoutvac fitting
the filter system on a commercial basis to customers of
Spoutvac machines."
In his statutory declaration dated 5 February 1993 Robert Whittaker states in part:
"It is my understanding that the water filter system initially
fitted to the `800' unit during the modifications in Bendigo
and subsequently fitted to the `1800' unit in Perth was in
the nature of a trial system as Keith Harris had finalised
the design only shortly before it was fitted to the `800'
unit. Spoutvac W.A. were testing the water filter system
under actual operating conditions on behalf of Spoutvac
Bendigo. I understood at the time that no charge had been
made by Spoutvac for the water filters."
In his statutory declaration dated 19 January 1993, Harold Clifford Memery states in part:
"... In May 1990, Keith Harris of Spoutvac contacted me and
offered to install a water filtration system on a test basis.
I accepted the offer.
Spoutvac installed the water filtration system on 25 June,
1990. The filtration system was provided by Spoutvac as a
test upgrade of the machine at no cost to me. The conditions
of the offer were that I should not open the filter to show
the operation of the baffles and that I should report back to
Spoutvac periodically on the operation of the filter system
and I have done this.
From the outset, the new water filtration system functioned
extremely well ..."
In his statutory declaration dated 12 October 1992 Neville Maley states in part:
"Apart from the permission from Spoutvac Manufacturing Pty Ltd
in relation to the use of the Spoutvac name and the joint work
carried out on the SV 800D in Bendigo, as discussed in Section
13, none of the work conducted on either the SV 800D and
1800DT and none of the jobs performed subsequently by both
the SV 800D and SV 1800DT ... had any commercial or
confidential relationship with Spoutvac Manufacturing Pty
Ltd."
[In Section 13 of the declaration Neville Maley states with regard to the joint work:
"Consequently, the SV 800D was then modified by myself and
Keith Harris to include a water bubbler, a hammerhead
arrangement and an arrangement of baffles to create currents
within the water bubbler. The arrangement of the water
bubbler was the same as that shown in figures 2 to 4 and as
defined in claims 2 to 10 of Patent Application No 74240/91."]
Further in his statutory declaration dated 6 May 1993 Neville Maley states in part:
"... The purchase and operation of the SV 800 and the later
purchased 1800DT machine falls outside this distribution
agreement. The SV 800 and SV 1800 were bought and paid for
under what I would term normal commercial conditions without
restrictions on their use. The consequent modification of
both machines implied no further restrictions on how the
SV 800 and SV 1800 could then be used by Starwest Holdings
Pty Ltd.
... No agreement was made by me or Starwest Holdings Pty Ltd
with Harris or Spoutvac to keep them informed of the filters
performance...
... Harris refers to ... the invoice received by Starwest
Holdings Pty Ltd for modifications to the SV 800. Contrary
to HARRIS' statement, this charge included charges for the
incorporation of the water bubbler filter ... No charge was
made for modification of the SV 1800 not because it was part
of Spoutvac's research and trialling but because Starwest
Holdings Pty Ltd and I made the modifications and did this
for our own benefit ...
... HARRIS refers to my telephone call to him over initial
problems in operating the water bubbler filter in the SV 800
... This call was not made as part of any `trial' of the SV
800 but was simply courtesy on my behalf letting him know
what was happening because I thought he might be interested.
... HARRIS also states that he considered `trials of this
type' in reference to Starwest Holdings Pty Ltd commercial
dealings with the modified SV 800 and SV 1800, be essential.
However, I would advise that during these trials, no effort
was made by me and no effort that I am aware of was made by
anyone else to deliberately conceal use of the modified SV
800 and SV 1800. I am not aware that anyone else ever so
controlled the operation and use of the modified SV 800 and
SV 1800 so as to prevent anyone from discovering the presence
of a water bubbler filter in these machines and I certainly
did not. None of these `trials' were ever conducted under
confidential conditions nor were they ever conducted under
anything other than what I would term normal commercial
conditions.
... HARRIS states that details of the water filtration system
were said to be confidential. This is not the case as
nothing was ever communicated to me or to my knowledge to
anyone else at Starwest Holdings Pty Ltd regarding the
confidentiality over the filtration system. Further, the
conditions of the agreement ... are irrelevant as the SV 800
and SV 1800 were machines we had bought and paid for and were
not operated under the terms of that agreement. That
agreement related only to our purchase of machines to be sold
on to customers or to our promotion of Spoutvac products.
... The volume of work carried out with the modified SV 800
and modified SV 1800 prior to any Patent Application being
made went well beyond what could in any way be termed
testing. No terms of confidentiality, secrecy, privacy or
trial were discussed at any time with any of the
people/companies for whom work was done with the modified
machines."
In his statutory declaration dated 12 October 1992 Neil Buck
states in part :
"The arrangement of features within the water bubbler filter
that I saw and had explained to me by Neville Maley during
mid March 1990 were exactly as shown in Australian Patent
Application No 74240/91 in the name of Spoutvac Manufacturing
Pty Ltd which I have seen and read in full ... "
In his statutory declaration dated 12 October 1992 Gary Milne states in part:
"I remember the modification carried out by Neville Maley and
others involved in the installation of a `water bubbler
filter' arrangement substantially as shown in Exhibit GM-1
[AU-B-74240/91]. Further, the modification involved the
addition of a `hammerhead arrangement' and a number of
baffles in an arrangement as shown in Figures 2 to 4 of
Exhibit GM-1."
In their statutory declarations dated 23 April 1993, 28 April 1993 and 10 May 1993, Glyn Counsel, Brian Nolan and Owen Hudleston respectively confirmed that they had engaged Spoutvac W.A. to undertake suction cleaning before the priority date of the claims. All made similar statements in part, that of Glyn Counsel reading:
"When Midland Brick placed the order for the work to be
carried out by Spoutvac W.A. there was never any indication
that the work would be carried out as trial or
experimentation of the suction cleaning machine.
Further, when the order was placed there was no question of
whether the suction cleaning machine would work or how well
the suction cleaning machine would work.
No agreement or implication of confidentiality was made when
the order for work was placed with Spoutvac W.A. by either
party nor was the need for confidentiality agreed upon or
implied whilst the work was being carried out.
Whilst the work was being carried out there was no
deliberate concealment of the suction cleaning machine to
prevent people from seeing the machine in operation.
The work ... carried out by the SV 800D cleaning machine was
requested, performed and paid for under normal commercial
conditions."
Decision on Prior Use and Secret Use
The applicant contends that while it is agreed that the invention was used before the priority date, such use was secret use and was for the purpose of reasonable trial only. In contrast, the opponent contends that the Spoutvac machines operated by Starwest were the property of Starwest and that they were not covered by the Agreement. The opponent further contends that the machines were used under normal commercial conditions without any secrecy being imposed on Starwest's clients or the clients being advised that the machines were being operated as part of a trial after they had been modified to incorporate water filters.
To enable me to reach a decision on the use aspects I need to consider the following points:
(a) was the use in secret,
(b) was the use for reasonable trial only,
(c) what effect, if any, did the Agreement have on the use and
(d) were there any fetters on the use of the machines.
Use in Secret
With regard to secret use, apart from the evidence of Neville Maley, there is evidence on file from Glyn Counsel, Brian Nolan and Owen Hudleston that the suction cleaning machines were utilised by Spoutvac W.A. before the priority date of the claims on their respective premises. While I agree with the applicant's submission that none of the latter three state that they actually saw the water filter because it was inside the casing of the machine, the fact that they, or anybody else if they so wished, had the opportunity to do so is sufficient to destroy any plea of secret use - in the words of Lord Cross of Chelsea in Bristol-Myers Co. (Johnson's) Application 1975 RPC at 160:
"... it is, to my mind, more satisfactory to hold that if a
man by selling the article in question puts it out of his
power to prevent a purchaser from discovering, if and when
he can, the presence in it of the substance in question he
has made a `non-secret use' of the substance..."
In this instance, Starwest by using the modified machines on their client's premises before the priority date of the claims made the use of the machines `non-secret use'.
Use for Reasonable Trial
Sub-section 158(1), paragraph (h), states:
"Objection shall not be taken to an application for a patent,
so far as the invention is claimed in any claim of the
complete specification or in the claim of the petty patent
specification, as the case may be, and a patent, so far as
the invention is so claimed, is not invalid, by reason only
of-
the invention, so far as so claimed, having been publicly
worked in Australia, within one year before the priority date
of the claim-
(i) by the patentee or applicant or by a person from whom
he derives his title; or
(ii) by some other person with the consent of a person
referred to in sub-paragraph (i),
if the working was for the purpose of reasonable trial
only and if it was reasonably necessary, having regard
to the nature of the invention, that the working for
that purpose should have been in public."
Dealing with the various points raised in this sub-section. Firstly, with regard to the timing of the working. Evidence on file provided by the opponent and not contested by the applicant shows that Starwest began to use the water-based filter modified Spoutvac machines in March 1990 which is well within one year of the earliest priority date of 10 April 1990.
Clearly, since Spoutvac claims to have carried out and sanctioned the modifications on a free of charge basis and asked for reports on the performance on the modified machines, Starwest would have had the consent of Spoutvac to use the machines.
Now to the question of reasonable trial and whether or not it was necessary, having regard to the nature of the invention, that the working should have been in public.
The applicant has presented evidence to the effect that the problems experienced by Starwest which necessitated their suction cleaning machines being modified to utilise water filters was due to the fact that they were using the machines outside the recommended environments and were thus breaking new ground. The Agreement signed by Starwest gives a schedule of "Authorised Purposes" ranging from "Spout and Gutter Cleaning" to "Clean up of Water, Mud and Debris resulting from Flood Damage". Evidence on file shows that Starwest were using the machines on such things as mineral sands and garnet sands, which were "harsh" environments and outside the "Authorised Purposes" environments. Since Starwest were actually contracting to undertake work in the "harsh" environments, Spoutvac had to act quickly to overcome Starwest's problems. There is also evidence on file that the initial testing carried out on Spoutvac's premises in Bendigo on the modified SV 800D machine was of a very superficial and artificial nature and to properly trial the machine in environments where there are large amounts of dust and dirt would necessitate the use of the machine in such "harsh" working environments. There is also evidence on file, as I have observed earlier, that the machines are very expensive ranging from $90,000 to $250,000. Spoutvac is only a small manufacturing company, and they contend they could not afford to dedicate a machine purely for a testing role.
From the evidence placed before me I am satisfied that from Spoutvac's point of view, it was necessary to further trial the water-based filter modified machines and, as Starwest held modified machines suitable for trialling and wished to use the machines in "harsh" environments it was reasonably necessary if the machines were to be tested in such environments, that the machines be trialled in public.
Another aspect which I have not considered is the timing of the lodgement of the provisional application in relationship to the trials.
According to the opponent's written submission dated 22 October 1993, the first use in public of a modified water bubbler filter machine by Starwest was on 13 March 1990. There is evidence on file to the effect that during this initial public use trouble was experienced due to the fact that the filter water level was too high. However during the course of the job an optimum level for the water maximising the filtering potential and minimising the amount of water drawn from the bubbler filter was found. In his statutory declaration dated 12 October 1992, Neville Maley states that in reference to this job:
"I rang Keith Harris shortly thereafter and advised him that
the water bubbler in the SV 800D was now working
efficiently".
This statement establishes that Neville Maley was reporting back to Keith Harris on the performance of the modified machine, which can be taken to be confirming that the machine was on trial, and also establishes that the earliest date Keith Harris knew of the success of the modified machine was 13 March 1990 or shortly thereafter.
Whitford J. in Perard Engineering Ltd (Hubbard's) Application 1976 RPC 363 at page 371 made it perfectly clear that if an applicant allowed working of an invention to go on for a very long period before an application for a patent was made, then the working would not be effected for the purpose of reasonable trial only. In this case, the provisional application was lodged on 10 April 1990, i.e. less than a month after Keith Harris had heard from Neville Maley of the success of the water bubbler filter. Bearing in mind that Spoutvac would have had to instruct their attorneys to draft a provisional specification which drafting would have taken some time, in my opinion, it could hardly be said that the working of the invention went on for a very long period before the patent application was made, and therefore there is no impediment to me considering that the use of the invention before the priority date was for the purposes of reasonable trial from the point of view of Spoutvac.
The Effect of the Agreement.
I have been careful to consider the prior use from the viewpoint of how Spoutvac understood the situation and it probably would be of benefit if I explained this stance.
Harold Memery in his statutory declaration states that in May 1990 Keith Harris offered to install a water filtration system free of charge as a test upgrade to his Spoutvac machine on the basis that Memery was not to open the filter to show the operation of the baffles and that he was to report back to Spoutvac periodically on the operation of the filter system, which he says he did.
Keith Harris maintains that he made the same offer to Starwest. Although this is confirmed by Robert Whittaker, who at the time was a director of Starwest, it is denied by Neville Maley, another director of Starwest. A study of the Agreement shows, as I have previously pointed out, Starwest had committed to writing, by signing the Agreement, that they would "Use every effort to safeguard such of the Company's (Spoutvac's) intellectual property rights and interests as relate to the Products". Neville Maley claims that the SV 800D and SV 1800DT machines that Starwest were using had been paid for by Starwest and that Starwest were free to do with them whatever they pleased. This is not an argument with which I agree. Clearly, Starwest had been appointed by Spoutvac as their distributors and Spoutvac would have had every expectation that Starwest would abide by the Agreement and not publish the invention before the priority date by divulging any intellectual property details during the period of the distributorship, which included the "trialling period". As to the payment for the machines, the Agreement makes it clear that all Products purchased from Spoutvac were to be paid for by Starwest and this must include goods for resale since it was a Distribution Agreement that Starwest signed. This being the case, using Neville Maley's argument that as Starwest had paid for the machines they could use them as they pleased, there would never come a time when Starwest had to abide by the Agreement, which is manifestly absurd.
Fetters on the Use of the Machines
Had Starwest abided by the Agreement, they would have taken steps to ensure that when the machines were used during the "trialling period" the public were precluded from seeing the water bubbler filters. From the evidence before me I conclude that they did not do so. As it is, there is no evidence on file to show that Starwest's clients actually saw the filters, even though they saw the machines. The only people, other than Starwest personnel, who say they actually saw water bubbler filters were Neil Buck and, by inference, Gary Milne.
I find the involvement of Neil Buck in the affair somewhat curious. According to the evidence, his only connection with Starwest was that he was a friend of Neville Maley and a potential client for a Spoutvac machine yet Neville Maley states in his earlier declaration that it was Neil Buck and himself who made the decision to modify both of Starwest's machines. Only afterwards were the other directors of Starwest acquainted with the decision. While I find it understandable that Neville Maley sought advice from Neil Buck, I find it difficult to comprehend why Neil Buck had any say in the modifications carried out on the machines, given their cost, unless he had a financial or other interest in Starwest. As it stands, the state of the evidence is such that it is not clear whether or not Neil Buck had an interest in Starwest or in what way he was associated to have an authoritative say in company decisions. However, it is well established that the onus is on the opponent to establish that a patent, if granted, would be clearly invalid [Commissioner of Patents v Microcell (1959) 102 CLR 232 and McDonald v Commissioner of Patents (1913) 15 CLR 713]. There is some evidence on file from which I could find that Neil Buck is at least an associate of Starwest and so bound by the Agreement. It would have been within the power of the opponent to bring unambiguous evidence as to whether or not Neil Buck was part of Starwest. Since the opponent has not brought any such evidence I can more confidently draw the conclusion that there is sufficiency of facts to support the inference that Neil Buck was so associated with Starwest as to be bound by the Agreement [Jones v Dunkel (1959) 101 CLR 298].
Gary Milne was a neighbour of Neville Maley and, according to Neville Maley, helped him with some electrical work on the SV 1800DT. This is confirmed by Robert Whittaker. Surprisingly, Gary Milne does not mention this in his statutory declaration. Accepting that Gary Milne did indeed undertake the work on the SV 1800DT, had it been shown that he had been paid for his endeavours then it could be said he had been contracted by Starwest and, as an employee or contract worker, equally bound by the Agreement.
As it is, I do not have conclusive evidence before me to show that Neil Buck or Gary Milne ought to have been bound by the Agreement.
The only person of Starwest to argue that the Agreement is of no effect is Neville Maley. Robert Whittaker in his statutory declaration makes no mention of the Agreement while, as previously mentioned, I do not have the benefit of any evidence from the other Starwest director, Greg James. I have nothing before me to show that Neville Maley's view of the Agreement was the view of Starwest. Since I have found earlier that the Agreement was in effect, I can only conclude that Neville Maley did not understand the import of the Agreement signed between Starwest and Spoutvac, or if he did understand the Agreement, he treated it in a cavalier fashion without any regard to the consequences.
Conclusion on Prior Use and Secret Use
In view of the foregoing I conclude that the invention was publicly worked in Australia within one year before the priority date of the claims by a person with the consent of the applicant, that the working was for reasonable trial only and that it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should have been in public.
Furthermore, it is my opinion, that in view of the foregoing considerations, the use of the SV 800D and SV 1800DT machines by Starwest in public before the priority date of the claims, without taking any firm steps to ensure that the invention would not be disclosed, was in breach of the written Agreement between Starwest and Spoutvac. This being the case, the provision of sub-section 158(1), sub-paragraph (b)(i) is also applicable. This provision states:
"Objection shall not be taken to an application for a patent
... by reason only of ... the invention, so far as so claimed,
having been published ... before the priority date of that
claim, if the Commissioner or prescribed court is satisfied-
that the publication was made ... without the knowledge and
consent of the applicant ..."
Accordingly, I also find that the publication of the invention took place, in contravention of the Agreement, without the knowledge and consent of Spoutvac.
SUMMARY
I find POLAR VAC PTY. LIMITED has not succeeded in proving any of the grounds raised with respect to their Notice of Opposition lodged 20 March 1992 and accordingly, I dismiss the opposition.
COSTS
Having found that POLAR VAC PTY. LIMITED has not succeeded in proving any of the grounds with respect to their Notice of Opposition, I cannot see any reason why costs should not follow the event and I therefore award costs against POLAR VAC PTY. LIMITED.
J.M.Sellars
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Kelvin Lord & Company,
Perth
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