Voxson Pty Ltd v Telstra Corporation Limited (No 9)
[2018] FCA 227
•6 March 2018
FEDERAL COURT OF AUSTRALIA
Voxson Pty Ltd v Telstra Corporation Limited (No 9) [2018] FCA 227
File number: NSD 2436 of 2013 Judge: PERRAM J Date of judgment: 6 March 2018 Catchwords: PRACTICE AND PROCEDURE – expert evidence – whether questions may be put to experts in joint expert conclave Legislation: Patents Act 1990 (Cth) s 40(2)(a)
Intellectual Property Law Amendment (Raising the Bar) Act 2012 (Cth) Schedule One
Cases cited: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1
Lockwood Security v Doric Product [2004] HCA 58; (2004) 217 CLR 274
Date of hearing: 6 February 2018 Date of last submissions: 9 February 2018 (Respondents)
12 February 2018 (Applicant)Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and Associated Statutes Category: Catchwords Number of paragraphs: 14 Counsel for the Applicant: Mr D Shavin QC Solicitor for the Applicant: K & L Gates Counsel for the First Respondent: Mr N Murray with Mr R Clark Solicitor for the First Respondent: Spruson & Ferguson Lawyers Counsel for the Fifth, Seventh, Eighth and Ninth Respondent: Ms C Cochrane with Ms L McGovern Solicitor for the Fifth, Seventh, Eighth and Ninth Respondent: Allens ORDERS
NSD 2436 of 2013 BETWEEN: VOXSON PTY LTD (ACN 005 291 458)
Applicant
AND: TELSTRA CORPORATION LIMITED (ACN 051 775 556)
First Respondent
VODAFONE HUTCHISON AUSTRALIA PTY LIMITED (ACN 096 304 620)
Fifth Respondent
VODAFONE AUSTRALIA PTY LTD (ACN 056 161 043)
Seventh RespondentVODAFONE PTY LTD (ACN 062 954 554)
Eighth RespondentVODAFONE NETWORK PTY LTD (ACN 081 918 461)
Ninth RespondentJUDGE:
PERRAM J
DATE OF ORDER:
13 FEBRUARY 2018
THE COURT ORDERS THAT:
1.The questions asked for the purposes of the joint experts’ report include proposed questions 11, 12, 14 and 15.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
PERRAM J:
On Tuesday 13 February 2018 I indicated to the parties that I had concluded that the experts should be asked four contested questions. These are my reasons for that conclusion.
A complex issue has arisen between the parties as to an important and pressing aspect of the preparations for the trial. It concerns the questions which are to be asked of the expert witnesses in their preparation of the joint experts’ report. Four questions are in dispute but the scope of the debate is adequately addressed by considering only two. These are questions 11 and 14 and are as follows (emphasis in original):
‘11.If the Vox 1 patent does describe “wide area” D-GPS, does it describe how to produce, or enable the addressee of the Vox 1 Patent as at December 1992 to produce, without new inventions or additions or prolonged study of matters presenting initial difficulty, a “wide area” D-GPS system with the features of claims 1-6, 10, 14-17 and 22 of the Vox 1 Patent? Please provide reasons.
…
14.If the Vox 1 Patent does describe A-GPS, does it describe how to produce, or enable the addressee of the Vox 1 Patent as at December 1992 to produce, without new inventions or additions or prolonged study of matters presenting initial difficulty, an A-GPS system with the features of claims 1-6, 10, 14-17 and 22 of the Vox 1 Patent? Please provide reasons.
…’
Questions 12 and 15 are also involved but their outcome flows on from the outcome to questions 11 and 14 respectively.
Pausing here, I note that there was an incongruity in the wording of the contested questions as set out by the Applicant and the Respondents in their respective written submissions. The Applicant included claims 6 and 17 of the Vox 1 patent as the features of the D-GPS and A-GPS system; the Respondents did not include those claims. Whatever the reason for this incongruity, it does not affect my reasons below.
It is the Respondents (Telstra and Vodafone; not Optus which recently settled) which press for the inclusion of these questions. Voxson objects on three grounds. First, it is submitted that they have no basis in the pleading; secondly, that they have no basis in the evidence; and, thirdly, that they do not pose, in any event, the correct question as a matter of law even assuming it is otherwise open to pose the questions.
It is not in dispute that the issue to which the questions relate is that of sufficiency within the meaning of s 40(2)(a) of the Patents Act 1990 (Cth) (as it was prior to the amendments brought about by Schedule One to the Intellectual Property Law Amendment (Raising the Bar) Act 2012 (Cth)). It provided:
‘(2) A complete specification must:
(a)describe the invention fully, including the best method known to the applicant of performing the invention; …’
Thus the specification must ‘describe the invention fully’. Both sides agreed that the question to be posed was expounded by the High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 (‘Kimberly-Clark’) at 16-17 [25] in these terms:
‘the question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?’
[emphasis added, citations removed]
The Respondents emphasised the words ‘the disclosure’ whilst Voxson emphasised the word ‘something’. The Respondents’ point was that a specification would fail to be sufficient where it failed to describe any method for carrying out the invention. Voxson’s point was that the specification would be sufficient if the skilled addressee could make a single embodiment within the claim: Lockwood Security v Doric Product [2004] HCA 58; (2004) 217 CLR 274 at 300 [67].
The patent in suit is Australian standard patent no 676242 (‘Vox 1 Patent’). It is said to relate to improvements in global positioning systems. Voxson alleges, inter alia, that the Respondents are infringing the Vox 1 patent by their utilisation in their network operations of a technology known as assisted-GPS (‘A-GPS’). The Respondents deny that the use of A-GPS infringes the Vox 1 Patent and they also allege, by cross-claim, that the Vox 1 Patent is invalid. The denial that the Vox 1 Patent covers A-GPS means that the Respondents put that directly in issue on the pleadings. There is an issue, therefore, as to whether the Vox 1 Patent covers A-GPS.
Voxson’s expert witness, Mr Crowe, has prepared an affidavit in which he says that the ‘core’ of the invention disclosed by the Vox 1 Patent is contained in claim 1 and that it describes A-GPS. This is what is denied, of course, by the Respondents in their defence. But the Respondents also plead, in relation to their invalidity allegations, that if the Vox 1 Patent does cover A-GPS technology then the specification does not, within the meaning of s 40(2) of the Act, describe the invention as claimed in claims 1-5, 10, 14-16 or 22. The particulars of invalidity provided for this allegation indicate that the denial is based on the idea that the Vox 1 Patent ‘does not describe fully the invention fully as it does not describe A-GPS technology’.
Voxson’s argument that the wrong question has been posed should be rejected. It rests on a submission that it was not correct that ‘an A-GPS system… is an integer in Claim 1 of the Vox 1 Patent’. But the evidence of Voxson’s own expert is that claim 1 does disclose A-GPS. Consequently, the Kimberly-Clark question requires one to ask whether the specification discloses a single embodiment of A-GPS. Question 14 is correctly framed. Analogous reasoning supports Question 11 in relation to wide area D-GPS.
For the reasons which I have set out above I also do not accept that the issue is not pleaded. The particularised case is that A-GPS is not described in the specification. I do not see how it could be clearer.
Voxson’s evidential point should be given short-shrift too. Professor Drayne, one of the Respondents’ experts, will give evidence that A-GPS is not described in the Vox 1 patent. It is true that he does not give evidence in the alternative that if A-GPS is disclosed (as Mr Crowe thinks) then the specification does not adequately address how to implement it. But this is of no moment. I accept there is an air of unreality in asking a person whether something that they say they cannot perceive in a document is, if they be wrong about that, adequately described in that document (cf. ‘What colour hair has that man you say you cannot see’). But I see no unfairness to Voxson in allowing the experts to attempt to answer that question notwithstanding my doubts that much that will be intelligible will result. Voxson’s own expert will be involved. Its main point was that the first time Mr Crowe would hear Professor Drayne’s view on why the specification did not adequately describe A-GPS would be when he was discussing it in confidential session. Given that Professor Drayne denies it is disclosed at all I do not think that such explanation as he proposes to give will be substantial. In any event, contrary to Voxson’s submission, its counsel can cross-examine Professor Drayne on the issue.
Similar reasoning applies to wide area D-GPS. It was for these reasons that I decided that all four questions should go forward.
I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram. Associate:
Dated: 6 March 2018
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