Carter Holt Harvey v Weyerhaeuser Company HC Wellington CIV 2009-485-244

[2010] NZHC 573

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2009-485-000244

UNDER  the Patents Act 1953

IN THE MATTER OF     an appeal from part of the decision of

Assistant Commissioner Hazlewood dated
12 January 2009 directing that Patent
Application No 525582 be sealed

BETWEEN  CARTER HOLT HARVEY Appellant

ANDWEYERHAEUSER COMPANY Respondent

Hearing:         15 September 2009

Appearances: K W McLeod for the Appellant

A H Brown QC for the Respondent

Judgment:      31 March 2010

JUDGMENT OF DUFFY J

This judgment was delivered by Justice Duffy on 31 March 2010 at 4.45 pm, pursuant to

r 11.5 of the High Court Rules

Registrar/Deputy Registrar
Date:

Counsel:     A  H  Brown  QC  P  O  Box  2815  Shortland  Street  Auckland  1140  for  the

Respondent

Solicitors:   A J Park Law P O Box 565 Shortland Street Auckland 1140 for the Appellant

CARTER HOLT HARVEY V WEYERHAEUSER COMPANY HC AK CIV-2009-485-000244  31 March 2010

[1]      The appellant, Carter Holt Harvey (CHH), appeals against a decision of an Assistant Commissioner of Patents (the Assistant Commissioner) granting a patent to the respondent, Weyerhaeuser, for its claimed invention.    The issues for determination in the appeal are:

a)       Whether the Assistant Commissioner was wrong in his finding that the claimed invention was not anticipated (s 21(1)(b) of the Patents Act 1953 (the Act)); and

b)Whether the Assistant Commissioner was wrong in his finding that the claimed invention was not obvious (s 21(1)(e) of the Act).

[2]      The Assistant Commissioner’s decision to grant Weyerhaeuser a patent for its claimed  invention  followed  an  opposed  hearing.    As  part  of  his  decision,  the Assistant Commissioner rejected CHH’s arguments that the claimed invention was anticipated and was obvious.  Had CHH been able to establish either of these two arguments, the patent would have to have been refused.

[3]      The claimed invention can broadly be described as constituting methods and systems of information management for silviculture which records information of interest to silviculturalists over the life cycle of a forested tree.   “Silviculture” is defined in the specification part of Weyerhaeuser’s patent application to mean, “information that relates to the cultivation, location, harvesting, processing and/or properties of one or more trees”.

[4]      The methods and systems of the claimed invention generally involve:

a)       tagging tree seedlings with radio frequency identification (RFID) tags, or placing RFID tags close to the seedlings;

b)        recording information of interest about the tree/s on the RFID tags;

c)        maintaining a separate information database on the trees; and

d)using electronic means to read the RFID tags, and to pass information between the RFID tags and the information database.

[5]      These methods and systems are usually applied at three stages of the life of forested trees: the growth stage, the harvesting stage and the processing stage.  The claimed invention allows information to be gathered on anything a silviculturalist may wish to know and to record about a seedling, tree, or the timber into which it is turned.  Examples of the type of information and events that may be of interest to silviculturalists to record include: the genetic identity of a tree, its growth rate, wood quality, disease resistance, treatment with fertiliser, treatment with pesticide and pruning.

[6]      In case the summary of the claimed invention that I have attempted has in some way either over or understated what is involved, a full description of the claims from Weyerhaeuser’s patent application is attached in schedule 1 to this judgment.

[7]      The specification describes the “practice of the invention” as having two separate portions of information: the first portion of information is stored on one or more tags that are either attached to a tree or located proximate to it; the second portion of information is stored separately in one or more databases.  The tags can be “read-write” tags that allow for information to be augmented, updated or otherwise altered, or “read only” tags that allow for information stored on the tag to be read, but do not allow for any subsequent alteration to that information.   The tags are available in numerous configurations such as nail tags, injectible tags, glass tags and button tags.  The tags can be active: that is they are powered by an internal battery. Such tags are typically read-write.  Tags can also be passive, meaning they have no internal power source and obtain operating power from a separate reader.  These tags are typically read only.

[8]      The  specification  describes  the  use  of  an  RFID  tag  as  having  three components: an antenna, a transceiver and a tag that is electrically programmed with information.   The antenna emits radio signals to activate the tag, and in some embodiments reads and writes information to it.  The antenna is the conduit between the   tag  and   the   receiver.     The   latter   controls   information   acquisition   and

communication within the system.   The electromagnetic fields which an antenna produces can be constantly present, activated by a sensor device when the tag is being interrogated, or activated when information is being deposited on the tag.

[9]      Weyerhaeuser describes the patent as containing four independent claims, being claims 1, 12, 15 and 16 of its application.  These claims are set out in full in schedule 1 to this judgment.  It seemed to be common ground between the parties that if claims 1 and 12 failed under either s 21(1)(b) or s 21(1)(e), all other claims would fail as well.

[10]     CHH contends that the concepts behind the claimed invention were already known through prior publication.  It relies on “Into the 21st  Century” New Zealand Pine International Journal 1994 July/August 8-10” (D5), as constituting the prior publication of these concepts.  As a separate ground of attack, CHH argues that there is nothing inventive about the claimed invention, and that its “obviousness” would be  apparent  to  any  skilled  addressee  with  knowledge  of  the  relevant  prior

publications.

[11]     Weyerhaeuser   argues   that   its   method   of   information   management   is sufficiently unique to be inventive.  It disputes that anything previously published is sufficiently informative  to  constitute  prior  publication  that  would  disqualify the method for patenting.   Regarding the type of publication disclosed by D5, Weyerhaeuser   contends   that   D5   does   not   provide   information   about   the Weyerhaeuser method of information management, nor can the information in D5 be described as “enabling” as that term is understood in the law of patents.  Regarding CHH’s second argument, Weyerhaeuser submits that in terms of the accepted criteria for determining “obviousness”, its invention could not be so described.

Appeal principles

[12]     CHH is exercising a general right of appeal under s 97 of the Act.   The Supreme Court in Austin, Nichols & Co Inc v Stichting Lodestar [2008] NZSC 103, [2008] 2 NZLR 141 makes it clear that when dealing with general rights of appeal (in that case an appeal under s 27(6) the Trade Marks Act 1953), there is no legal

principle requiring this Court to defer to the decisions of a specialist tribunal; instead it is for this Court to form its own view on the appropriate outcome: (see [3]):

... the general appeal under s 27(6) requires the High Court to come to its own view on the merits.   The weight it gives to the decision of the Commissioner is a matter of judgment.  If the High Court is of a different view from the Commissioner and is, therefore, of the opinion that the Commissioner’s decision is wrong, it must act on its own view.

At [16] there is the firm reminder that:

Those exercising general rights of appeal are entitled to judgment in accordance with the opinion of the appellate court, even where that opinion is an assessment of fact and degree and entails a value judgment.

Further, at [5] the Court said:

It may take the view that it has no basis for rejecting the reasoning of the tribunal appealed from and that its decision should stand.  But the extent of the consideration in appeal court exercising a general power of appeal gives to the decision appealed from is a matter for its judgment.

And at [19] Austin Nichols makes clear that wrong means no more than the appellate

Court taking a different view on the merits:

If the appellate court’s opinion is different from the conclusion of the tribunal appealed from,  then the decision under appeal is wrong in the only sense that matters, even if it was a conclusion on which minds might reasonably differ.

[13]     Whilst  this  Court  is  not  bound  to  accept  the  Assistant  Commissioner’s findings, as  a specialist  tribunal with a particular experience and expertise, due regard  is  usually had  to  the  Assistant  Commissioner’s  findings.    Weyerhaeuser submitted that the Assistant Commissioner who granted the patent is someone who has considerable experience, both as a patent examiner and a hearings officer, thus his findings are entitled to some weight.

[14]     In     this     case,     I     have     found     that     any     assessment     of     the Assistant Commissioner’s decision is made difficult by the paucity of reasons he has given to support his findings.  Whilst his findings are clearly stated, his reasons for reaching them are not so well disclosed.  This has meant that I have had to consider the issues afresh without the assistance that may otherwise have been derived from having the benefit of the Assistant Commissioner’s views.

Preliminary Matters

Burden of proof and standard of proof

[15]     The outcome of a disputed decision-making process can sometimes turn on where the burden of proof lies and the standard of proof that the law requires.  In an opposed  application  for  the  grant  of  a  patent,  the  burden  of  proof  lies  on  the opponent to establish its grounds of opposition.  The standard of proof is the civil standard of the balance of probabilities.

[16]   However, opposed applications for the grant of a patent have unique characteristics.   The procedure is intended to weed out the “manifestly untenable” cases and not to dispose of “truly contentious” cases, which are seen as being more suitably considered  in  the  context  of  revocation  hearings:  see  the  discussion  in Sealed Air New Zealand Ltd v Machinery Developments Ltd HC Wellington CIV

2003-485-2274, 25 August 2004 at [10]-[11].   In this regard, the courts have recognised that whereas an unsuccessful opponent in opposition proceedings has a further opportunity to challenge the grant of a patent through the revocation procedure, an unsuccessful applicant has no further opportunity to make its case for the grant of a patent.  Thus, the courts have developed a principle which sets a high threshold of proof (on the civil standard) for an opponent to reach in opposition proceedings.     This  principle  is  best  expressed  in  an  often  cited  passage  of Buckley LJ’s in Dunlop Holdings Ltd [1979] RPC 523 at 544-545.

If, on the assessment of all the evidence adduced, regarded in the light of the civil standard of proof, the tribunal were to reach the conclusion that, if the application for a patent were dismissed, there would be a real risk that an injustice might be done by depriving the applicant of an opportunity to protect his right to the patent in a full scale revocation action in the High Court, it seems to me at least arguable that special weight should be given to that consideration by the tribunal hearing the opposition proceedings in considering what degree of certainty it should have in relation to the alleged grounds  of  opposition.  It  is  for  the  tribunal  hearing  the  opposition proceedings to determine, on the balance of probabilities, what degree of risk of  that  kind  there  is.  I  would  think  that  that  would  be  one  of  the circumstances that it would be proper for the tribunal to take into account in considering whether, on the balance of probabilities, the opponent had succeeded in making out their case.

[17]     Nonetheless,  there  will  be  times  when  the  efforts  of  the  opponent  in opposition proceedings manages to, on the evidence, shift the onus of proof to the applicant.  This was recognised by Barker J in Beecham Group Ltd v Bristol-Myers Company  (No  2)  [1980] 1 NZLR 192 (SC). Although an appeal against the judgment was later allowed in part (Beecham Group Ltd v Bristol-Myers Company [1981] 1 NZLR 600), it was not in relation to this aspect of the judgment. At 212

Barker J said:

... whilst the overall onus to prove obviousness or anticipation in opposition proceedings rests on the opponent, that onus may shift, if on a consideration of the documents alone and without the necessity for cross-examination to resolve any conflict, the opponent makes out a prima facie case, on the balance of probabilities. In that event, the applicant may then bear the onus to rebut this conclusion.

[18]     This    statement    of    the    law    is    consistent    with    the    passage    the Assistant Commissioner  cited  from  Diplock  LJ  in  General  Electric  Company’s Application [1964] RPCD 413 at 455-456:

... look at the evidence filed on behalf of the applicants and the opponents in order to see (1) whether the opponents’ evidence read by itself clearly establishes the opponents’ case, and, if so, (2) whether the applicants’ evidence in reply raises any bona fide conflict of fact or expert opinion on a question on the answer to which the opponents’ case depends.

[19]     At 213 of Beecham, Barker J posed three questions which he considered reflected the principles at work.  I propose to adopt his questions in this case.  They are:

a)       Is the patent claim manifestly untenable?;

b)       Is there a prima facie case for the grant of a patent?; and

c)       Does the justice of the case require the applicant to be permitted to resist the claim for invalidity in properly constituted revocation proceedings?

I recognise, as did Barker J, that all these tests amount to the same thing.

[20]    Weyerhaeuser argued before the Assistant Commissioner that where two opposing expert views are both presented bona fide by accepted expertise, then unless one set of views can be rejected on proper grounds, the legal burden to establish    a    particular    ground    of    oppositon    is    not    discharged.       The Assistant Commissioner  has  not  recorded  his  finding  on  this  argument  in  his decision.   Given the disposition in opposition proceedings towards only refusing patents that are manifestly untenable, I accept that it would logically follow that where the parties’ cases are evenly balanced on a particular substantive issue, it would mean that the opponent failed to establish its case on that issue.

How to approach expert evidence?

[21]     An issue arises in this appeal as to how the Assistant Commissioner dealt with the expert evidence of CHH’s witness, Christopher Goulding.  When it comes to dealing with expert evidence in opposition proceedings based on obviousness, helpful guidance can be found in the decisions of Jacob LJ in Technip France SA’s Patent [2004] RPC 46 at [6]-[12], and SmithKline Beecham Plc v Apotex Europe [2005] FSR 23 at [52]-[53]. In those decisions, Jacob LJ makes it clear that there is little to be gained in counsel for one party arguing that the other party’s expert witness is overly qualified in an attempt to persuade the court not to accept that evidence, while at the same time submitting that the evidence of counsel’s own expert witness should be accepted as that witness is “more nerdlike than” his opponents: see Technip France SA at [11].

[22]     These attempts to downgrade an expert’s qualifications are done in order to give the expert some semblance to the “man skilled in the art” who forms the measure for evaluating obviousness, and knowledge when it comes to questions of what can be taken from any prior publication.  For this purpose, the man skilled in the art is perceived to be a skilled technician, but one who lacks imagination and inventive capacity; hence the motivation to argue that an opponent’s expert witness is overly qualified and therefore unable to give any insight into what the man skilled in the art would know or do.

[23]     At [10]-[12] of Technip France SA Jacob LJ said:

The man can, in appropriate cases, be a team – an assembly of nerds of different  basic  skills,  all  unimaginative.  But  the  skilled  man  is  not  a complete android, for it is also settled that he will share the common prejudices or conservatism which prevail in the art concerned.

None of the above is controversial.   However, sometimes the requirement that the skilled man be uninventive is used by counsel for a patentee in an attempt to downgrade or dismiss the evidence of an expert called to say that a patent is obvious- “my witness is more nerdlike than his” is the general theme.  I do not find this a helpful approach.  It is frequently invoked and Mr Waugh QC invoked it in this case in an effort to downgrade Rockwater’s expert evidence on obviousness given by Professor Witz.  Mr Waugh said his witness, Mr Nash, was more appropriately qualified than Professor Witz, that the latter, because he had patents in his name “was of an inventive turn of mind.”

I must explain why I think the attempt to approximate real people to the notional man is not helpful.  It is to do with the function of expert witnesses in patent actions.   Their primary function is to educate the court in the technology – they come as teachers, as makers of the mantle for the court to don.   For that purpose it does not matter whether they do or do not approximate to the skilled man.   What matters is how good they are at explaining things.

[24]     The  idea  that  the  role  of  the  expert  witness  is  to  explain  the  relevant technology to the court, and that the focus should be on the expert witness’ reasons for holding a particular view, rather than the view itself, was developed further by Jacob LJ in Apotex Europe.  After referring to what he had said in Technip France SA at [12], Jacob LJ went on to say the following about expert witnesses (at [52]- [53] of Apotex Europe):

... although it is inevitable that when an expert is asked what he would understand from a prior document's teaching he will give an answer as an individual, that answer is not as such all that helpful. What matters is what the notional skilled man would understand from the document. So it is not so much the expert's personal view but his reasons for that view – these the court can examine against the standard of the notional unimaginative skilled man. There is an analogy here with the well-known Bolam test for professional negligence – what matters is not what the individual expert witness says he personally would have done, but whether the conduct said to be negligent falls short of what a reasonable professional would have done. (emphasis added)

Thus in weighing the views of rival experts as to what is taught or what is obvious from what is taught, a judge should be careful to distinguish his views on the experts as to whether they are good witnesses or good teachers

– good at answering the questions asked and not others, not argumentative and so on, from the more fundamental reasons for their opinions. Ultimately

it is the latter which matter – are they reasons which would be perceived by

the skilled man? (emphasis added)

[25]     I find Jacob LJ's approach helpful and insightful.   It provides a means by which a court can readily assess the expert evidence available.  In patent cases the court often has to grapple with technical and scientific information with which it is unfamiliar.   In such circumstances, the evidence of experts may be heavily relied upon.  The court, therefore, needs a method by which it can assess such evidence.  I propose to adopt the approach of Jacobs LJ.  This means I will be looking closely at the reasons each expert gives for his opinion, rather than the opinion itself.  For the reasons identified by Jacobs LJ, I will be paying little attention to the question of whether the expert is over or under-qualified.  What matters in terms of his or her qualifications is whether they are relevant to the subject matter of the invention under investigation.  The benefit to the court of focusing on an expert’s reasons for holding the opinion proffered in evidence is also helpful when it comes to assessing prior publication in the context of an opposition based on lack of novelty.

Lack of novelty: applicable principles

[26]     Section 21(1)(b) provides that the Commissioner may refuse the grant of a patent if the invention lacks novelty as a result of a prior publication of the claimed invention:

21       Opposition to grant of patent

(1)At any time within the period prescribed by subsection (2) of this section any person interested may give notice to the Commissioner of opposition to the grant of the patent on any of the following grounds:

…

(b)That the invention, so far as claimed in any claim of the complete specification, has been published in New Zealand before the priority date of the claim—

(i)In   any   specification   filed   in   pursuance   of   an application for a patent made in New Zealand and dated within 50 years next before the date of filing of the applicant's complete specification:

(ii)      In any other document (not being a document of any class described in subsection (1) of section 59 of this Act):

[27]     The classical test for determining if there has been prior publication of the claimed invention is found in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457, 485-486:

If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated.   The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason,  or it  may be  for other reasons, have  so  described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.

If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness.  To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented … A signpost, however clear, upon the road to the patentee’s invention will not suffice.  The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.

[28]     The test for lack of novelty is strict.   To establish a prior disclosure as a succesful ground of opposition, an opponent must establish that the prior disclosure incorporated all of the features in the claimed invention: see Lucas v Peterson Portable Sawing Systems Ltd [2006] NZSC 20, [2006] 3 NZLR 721 at [3]. The relevant time for determining how a reader would construe the prior publication is the date of its publication: see Apotex Europe at [89].  This is said in the sense that the document’s meaning does not change over time.  However, the reader will read the document with all the knowledge of the reader skilled in the art at the relevant date of the prior publication (here 21 May 2002), but when it comes to understanding the writer’s meaning, the reader will read the document’s contents with the “eyes of a contemporary to the publication”.

[29]     The prior publication must disclose enough information to enable the “reader skilled in the art” to be able to put the claimed invention into practice: see Asahi

Kasei Kogyo KK’s Application [1991] RPC 485. This requirement for the prior publication to be “enabling” was affirmed in SmithKline   Beecham   PLC’s (Paroxetine Methanesulfonate) Patent [2006] RPC 10 at [14] where Lord Hoffman explained the two points on which a party claiming prior publication as a ground for revoking a patent (in that case Synthon) had to satisfy the court:

In order to make good their case, Synthon had to satisfy the judge on two points.  The first was that their [earlier in time patent] application disclosed the  invention  which  had  been  patented  as  claim  1.    I  shall  call  this requirement “disclosure”.   The second was that an ordinary skilled man would be able to perform the disclosed invention if he attempted to do so by using the disclosed matter and common general knowledge.  I shall call this requirement “enablement”.   If both these requirements are satisfied, the invention is not new.  I shall later have to discuss the law on disclosure and enablement and the relationship between them in some detail, but for the moment that is enough to explain the course which the proceedings took before the judge.

[30]   Later in the judgment, Lord Hoffman reviewed the authorities on prior disclosure and summarised them in this way (at [22]):

If I may summarise the effect of these two well known statements, the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent.   That may be because the prior art discloses the same invention.  In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so.  But patent infringement does not require that one should be aware that one is infringing: “whether or not a person is working [an] … invention is an objective fact independent of what he knows or thinks about what he is doing”: Merrell Dow Pharmaceuticals Inc v H N Norton and Co Ltd [1996] RPC 76, 90. It follows that, whether or not it would be apparent to anyone at the time, whenever subject-matter described in the prior disclosure is capable of being performed and is such that, if performed, it must result in the patent being infringed, the disclosure condition is satisfied. The flag has been planted, even though the author or maker of the prior art was not aware that he was doing so.

[31]     Whilst earlier authorities had drawn a distinction between prior disclosure of the patented invention itself and prior disclosure of an invention which, if performed, would necesssarily infringe the patened invention, Lord Hoffman decided (at [24]) that the two recognised categories of prior disclosure were both aspects of a single principle:  namely,  that  “anticipation  requires  prior  disclosure  of  subject-matter which, when performed, must necessarily infringe the patented invention”.

[32]     Lord  Hoffman  then  went  on  to  consider  “enablement”.     He  defined enablement (at [26]) as meaning:

Enablement means that the ordinary skilled person would have been able to perform the invention which satisfies the requirement of disclosure.   This requirement applies whether the disclosure is in matter which forms part of the state of the art by virtue of s 2(2) or, as in this case, s 2(3).  The latter point was settled by the decision of this house in Asahi Kasei Kogyo KK’s Application [1991] RPC 485.

[33]     At  [27]  Lord  Hoffman  described  the  test  for  deciding  what  degree  of knowledge, skill and perseverance the skilled man was assumed to have.  He referred to a test which had been posed by Buckley LJ in Valensi v British Radio Corp [1973] RPC 337 at 377:

… the hypothetical addressee is not a person of exceptional skill and knowledge, that he is not to be expected to exercise any invention nor any prolonged research, inquiry or experiment.  He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification if a means of correcting them can readily be found.

The hypothetical addressee or reader can be a person or a team of persons: see

General Tire and Rubber at 485.

[34]     Lord Hoffman concluded that the test of enablement of a prior disclosure for the purpose of anticipation should be the same as the test of enablement of the patent itself for the purpose of sufficiency.   He considered the authorities to be equally applicable for both purposes.   He acknowledged there could be differences in the application of the test to the facts because in a case of sufficiency, the skilled person was attempting to perform a claimed invention and had that goal in mind, whereas in the case of anticipation, the subject matter of the prior art may have disclosed the invention without identifying it as such.

[35]     At [28] Lord Hoffman reaffirmed the importance of keeping the concepts of disclosure and enablement separate.  This separation is important because the way the role of the person skilled in the art is assessed is different in each case.  This was explained by Lord Hoffman at [32]:

In the case of disclosure, when the matter relied upon as prior art consists (as in this case) of a written description, the skilled person is taken to be trying to understand what the author of the description meant. His common general knowledge forms the background to an exercise in construction of the kind recently discussed by this house in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9. And of course the patent itself must be construed on similar principles. But once the meanings of the prior disclosure and the patent have been determined, the disclosure is either of an invention, which, if performed, would infringe the patent, or it is not. The person skilled in the art has no further part to play. For the purpose of enablement, however, the question is no longer what the skilled person would think the disclosure meant but whether he would be able to work the invention which the court has held it to disclose … To satisfy the requirement of disclosure, it must be shown that there will necessarily be infringement of the patented invention. But the invention which must be enabled is the one disclosed by the prior art. It makes no sense to enquire as to whether the prior disclosure enables the skilled person to perform the patented invention, since ex hypothesi in such a case the skilled person will not even realise that he is doing so.

Lack of inventiveness: applicable principles

[36]     Lack  of  inventiveness,  or  “obviousness”  as  it  is  otherwise  known,  is  a separate concept from lack of novelty.  Section 21(1)(e) of the Act provides that the Commissioner may refuse the grant of a patent application if the invention is obvious and clearly does not involve any inventive step.  The section reads:

(e)That the invention, so far as claimed in any claim of the complete specification, is obvious and clearly does not involve any inventive step having regard to matter published as mentioned in paragraph (b) of   this   subsection,   or   having   regard   to   what   was   used   in New Zealand before the priority date of the applicant's claim:

[37]     Ancare New Zealand Ltd v Cyanamide of NZ [2003] NZLR 299 (CA) and Peterson  are  the  two  leading  New Zealand  appellate  authorities  on  lack  of inventiveness.  In Peterson the Supreme Court confirmed at [54] that the test for lack of inventiveness developed in English case law and applied in Ancare v Cyanamide is still relevant today.  In Ancare the Court of Appeal stated at [43]:

… the test is well established.  It postulates a person (or, where appropriate, a team) skilled in the field but not inventive, invested with the common general knowledge available in the field at the priority date, presented with the prior knowledge or prior use relied upon.   Prior documents may be looked at together if that is what the skilled person or team would do.  It asks whether to that person or team the alleged inventive test would be obvious and would be recognised, without bringing to bear any inventiveness, as something that could be done or is at least worth trying.  That is a question of fact.   If any embodiment within the scope of the claim is obvious, the

claim is invalid.   These propositions are helpfully expanded upon in the recent English cases which are still applicable though under the 1977 Act; see the Windsurfing International case [Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 at 73-74] , Hallen Co v Brabantia (UK) Ltd [1991] RPC 195 at 211 and Molnlycke AB v Procter and Gamble [1994] RPC 49 at 112.

[38]     The four step test identified in Windsurfing is the key test that is applied to determine lack of inventiveness.  It involves the following steps:

Step one:

Identify the inventive concept; Step two:

Assume the mantle of the normally skilled but unimaginative addressee at the priority date and impute to him what was common general knowledge in the art in question;

Step three:

Identify what, if any, differences exist between the matters cited as being

“known or used” and the alleged invention; and

Step four:

Viewed without any knowledge of the alleged invention, do any of these differences constitute steps which would have been obvious to the skilled man, or do they require a degree of invention?

[39]     Windsurfing   and   Peterson   involved   invalidity   proceedings.      As   was confirmed by the Supreme Court in Peterson, in such proceedings in New Zealand the  Windsurfing  test  is  directly  applicable.    However,  that  may  not  be  so  in opposition proceedings based on the claimed invention’s lack of inventiveness.  This is because the scope of the inquiry under s 21(1)(e) may be narrower than it is under s 41, which provides the grounds for revocation of a patent.

[40]     Under s 21(1)(e), the “obviousness” of the claimed invention is to be assessed by having regard to published material as defined in s 21(1)(b), or having regard to what was in use in New Zealand before the priority date of the applicant’s claim. Under s 41(1)(f), the inquiry into the patented invention’s “obviousness” extends to looking at what was known or in use in New Zealand before that date.  Insofar as what was known at the relevant time is a broader concept than what was published or in  use  at  that  time,  the  scope  of  an  inquiry  under  s  41(1)(f)  will  be  broader. However, just how much broader it will be is difficult to say.

[41]     Regarding s 21(1)(e), knowledge of what is in use in a particular field, as well as what has been published can cover a broad range of matters.   What these concepts probably do not cover is knowledge of ideas or theories that have not been put into in use and which, although known and discussed by those versed in the art or skill, have not yet been mentioned in any “publication” as that word is defined in s 21(1)(b).

[42]     The case law makes it clear that for opposition proceedings in New Zealand, the construct of the reader skilled in the art is still the measure when it comes to construing a prior publication.  Nor do I understand Weyerhaeuser to be submitting otherwise.  Such a person must bring to this task some knowledge of the relevant art. Unless the reader is seen to have this knowledge, it is hard to see how he or she could be said to be a reader skilled in the art.  In this way, therefore, the knowledge a reader skilled in the art would be seen to have must come into the equation.  It may be then that the difference in effect between s 21(1)(e) and s 41 is more apparent that it is real.

[43]     Weyerhaeuser in its submissions drew attention to the difference in language between ss 21(1)(e) and 41.  It referred to Sealed Air New Zealand as authority for the proposition that in oppostion proceedings the third step of the Windsurfing test is to consider the difference between the publication relied on and the invention as claimed.  Whilst this is what McKenzie J did in Sealed Air New Zealand, I do not read his judgment as evidencing a departure from assessing obviousness from the perspective of the reader skilled in the art.

[44]     As to what this person would be like, a good description of the characteristics of a reader skilled in the art can be found in Beecham Group Ltd.   I note that Weyerhaeuser, in its submissions, has accepted that the description is a “helpful summary of the characteristics to be imputed to the normally skilled but unimaginative addressee in the art”.   At 232 Barker J described the reader in this way:

a)He is presumed to be a skilled technician, knowledgeable in the relevant literature, including patent specifications, but incapable of a

‘scintilla of invention’: Tenograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 at 355;

b)        He  may  be  an  individual  or  a  research  team:  Olin  Mathieson

Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at
184;

c)He will seek advice on aspects with which he is not personally familiar: Tetra Molectric Ltd v Japan Imports Ltd [1976] RPC 547 at

583;

d)        He will believe that what he reads in documentation is true: May & Baker Ltd v Boots Pure Drug Co Ltd (1950) 67 RPC 23 at 36.

[45]     Since I am approaching the appeal on the basis of whether CHH can establish that the patent is manifestly untenable, I propose to accept Weyerhaeuser’s submission that the four step test in Windsurfing should be adjusted to better reflect the language of s 21(1)(e).   But in doing so, I intend to retain the construct of a reader skilled in the art.   It follows that steps two and three of the test will be adjusted as follows:

Step two:

Assume the mantle of the normally skilled but unimaginative addressee at the priority date and impute to him what was known from the published documents (as defined in s 21(1)(b)) that were available at the relevant time or from what was in use in New Zealand at that time; and

Step three:

Identify what, if any, differences exist between the matters cited as being published or in use, and the alleged invention.

Identifying the inventive concept when the invention comprises more than one already known integer

[46]     The identification of the inventive concept is the first step in assessing if there is a lack of inventiveness due to common knowledge of the art in question. Successful completion of this step can be tricky when the subject invention is made up of integers which are already well known.  In Sabaf Spa v MFI Furniture Centres Ltd [2005] RPC 209, Lord Hoffman made it clear that a mere aggregation of already known integers was not a new invention. To consititue a new invention there needed to be a combined technical effect which was different from (for example greater than) the sum of the technical effects of the individual integers. If there was no such synergistic effect, there was nothing more than an aggregation of already known features, and this could not qualify as an invention. The approach the House of Lords outlined in Sabaf Spa was applied by the Supreme Court in Peterson.

[47]     In Sabaf Spa, the House of Lords was dealing with an appeal from a decision of the Court of Appeal (UK) in which that court had found that the Judge at first instance had failed to apply the tests from Windsurfing in order to determine if the invention lacked inventiveness.  The Judge at first instance had applied what he had called the law of collocation.  This principle was formulated in British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171. The principle is best expressed at 193 of the judgment:

A mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of a working interrelation brought about by the collocation of the integers.

[48]     Whilst Lord Hoffman acknowledged that there was no law of collocation in the sense of that principle placing a gloss on the legislation (in that case s 3 of the Patents Act 1977 (UK)), he considered, nonetheless, that the first instance Judge was correct in that his approach was relevant to the start of an inquiry into lack of inventiveness.   This was because before a Court could commence its inquiry into seeing if the subject invention involved an inventive step, the Court had first to decide what the invention was (at [24] and [26]):

But before you can apply s.3 and ask whether the invention involves an inventive step, you first have to decide what the invention is.  In particular, you have to decide whether you are dealing with one invention or two or more inventions.  Two inventions do not become one invention because they are included in the same hardware.  A compact motor car may contain many inventions, each operating independently of each other but all designed to contribute to the overall goal of having a compact car.  That does not make the car a single invention.

...one must not try to consider as a whole what are in fact two separate inventions.

[49]     The judgment of the Court of Appeal was reversed, and the findings of the first instance Judge were reinstated.  The House of Lords agreed with the view of the first instance Judge that the “invention” comprised two integers each of which operated independently of the other.  Since both integers were already well known and their combination had no synergistic effect, the way they were being used lacked inventiveness.

Application of legal principles to the facts

Lack of novelty due to prior publication

[50]   The Assistant Commissioner found that D5 did not disclose storage of silvicultural information in two separate but associated portions, the first being an RFID tag and the second in a database.  The Assistant Commissioner also found that D5 did not disclose tracking of the information held on the two separate facilities for storing information.

[51]     The  Assistant  Commissioner  decided  there  was  an  important  difference between  D5  and  the  claimed  invention.    In  D5  the  identity  of  a  tree  and  its silviculture information was stored on a microchip contained on the tag.   The information about the tree was read from the tag.  D5 was said to make provision for additional    storage    of    this    information    on    a    computer.        But    the Assistant Commissioner  considered  that  D5  did  not  make  it  clear  whether  the information held on the computer database was there for association with the information on the micro-chipped tag.

[52]     The Assistant Commissioner held that D5 did not mention RFIDs so that “no flag was planted” as is required by the test in General Tire and Rubber.  He also said that D5 envisaged more silviculture information being stored on the tag than an RFID tag could store.  This led him to conclude that the tag, referred to in D5, would contain a microchip rather than a RFID.

[53]     In  reaching his view that D5 did not disclose a prior publication of the claimed invention, the Assistant Commissioner did not make any finding on whether D5 disclosed, to a reader skilled in the art, subject matter which if performed would necessarily infringe the patented invention.  Instead, he appears to have confined his inquiry to the question of whether or not D5 discloses the same invention as Weyerhaeuser’s.  But this is to take an overly confined approach.  As was recognised in SmithKline Beecham, the inquiry does not stop at whether the prior art discloses the same invention; it is necessary to go on and consider if the prior art if performed would   necessarily   infringe   the   patented   invention.      The   differences   the Assistant Commissioner identified between the subject matter in D5 and the claimed invention would only preclude a finding of lack of novelty due to prior publication if such differences meant that Lord Hoffman’s no infringement test would be passed.

[54]     The standard by which the prior publication is to be construed is that of a reader, who can be an individual or a team of persons, skilled in the art at the relevant time.  How then would such a person/s construe D5 and would they take from D5 subject matter which when performed would necessarily infringe Weyerhaeuser’s patent?

[55]     The Assistant Commissioner’s omission to apply Lord Hoffman’s two step test for determining lack of novelty means that the Assistant Commissioner has not defined his idea of what the reader skilled in the art might be like.  This construct was considered in the context of the opposition based on lack of inventiveness.  In that  context  the  Assistant  Commissioner  found  that  the  opponent’s  witness, Alisdaire Woore, was a more appropriate representation of the skilled reader than was  Christopher  Goulding,  whom  the  Assistant  Commissioner  considered  to  be over-qualified.

[56]     Discounting an expert’s evidence because he is seen to be overly qualified, and therefore too imaginative to be able to say how a reader skilled in the art would react, is the issue Jacobs LJ was critical of in Technip France SA and Apotex. However skilled an expert witness might be, the reasons he gives for his opinion may relate to matters that are commonly known and understood by all persons with some involvement in a particular art.   It should not be assumed that because a witness has academic qualifications of the highest level, he or she will only deal with esoteric matters in his or her field.  Such persons often have to stoop to dealing with the mundane as well as the sublime when they come to practise their particular skill or art.  There is no reason, therefore, why their evidence on mundane topics in their field of expertise should be discounted simply because of their top level qualifications.  This is why it makes sense to look at the reasons given for an opinion as they should reveal whether the expert has drawn on highly refined sophisticated concepts known only to those with his or her high level qualifications, or on more basic knowledge.

[57]     I  have  considered  what  the  Assistant  Commissioner  had  to  say  about Messrs Woore and Goulding’s evidence for the purpose of seeing if anything that was said could be helpful when it comes to determining the question of lack of novelty.  There can be found in the Assistant Commissioner’s decision some implicit general findings which will assist the Court in forming a view of what the reader skilled in the art would be like.   They are as follows: such a person would be someone with a tertiary qualification in silviculture, and he or she will have worked or been involved in forestry management, including silvicultural data collection and management, for more than 10 years.   I would add to that my view that the archetypical skilled reader in the art is someone who would be reasonably conscientious  in  keeping  up  to  date  with  relatively well  known  and  recognised literature and publications on silviculture, including silvicultural data collection and management.

[58]     I intend to consider Mr Goulding’s evidence for the purpose of seeing if he has expressed reasons which might give me further insight into the likely attributes and knowledge of a reader skilled in the art.  What I am looking to determine is if the construct of the reader skilled in the art that I arrive at would be someone who on

reading D5 would be able to take the subject matter of that publication, and on performing it make something that would necessarily infringe a patent for the Weyerhaeuser invention.

[59]     Mr Woore’s evidence informs me that since at least 1904 methods of tracking sivilcultural information over the product life cycle of a tree have been in use.  The range of information tracked has included: the status of the plot (current, felled abandoned); location of the plot (region, forest name, northing and easting, road name); topography of the plot (altitude, slope, aspect, general topographical comment); shape of the plot; previous land cover; date of planting; genera and species; bearing and distance of each tree in a plot from a known point; initial stocking of the plot; number and timing of treatments applied to each plot (thinning, pruning, fertilising); physical tree measurements at each measurement date (diameter at breast height, tree height, crown height, pruned height); physical tree descriptions at each measurement date; (alive, dead, windthrown, felled, leaning, toppled, forked, multi-leadered, broken top, defective top, swept butt, wobble, unrepresentative diameter, suppressed); and plot summary statistics at each measurement date (mean top height, mean top diameter, predominant height, volume per heactare, current stocking rate, mean crown rate).  It is hard to see how before the advent of electronic technology all this information could be stored on a tag or other identifier of a tree. The early methods of tagging trees included: coloured and labelled posts on the road edge to locate a plot; slashing of undergrowth to mark a clear path to each plot; marking  trees  with  spray  painted  symbols  to  demarcate  the  path  to  each  plot; coloured and labelled posts to demarcate the boundary of the plot and the plot buffer; and numbers on the stem of each tree in the plot in the form of one of or a combination of spray paint, metal and/or plastic tags.

[60]     The logical inference to be drawn from Mr Woore’s evidence is that in the days  of  hard  copy  record  keeping  there  would  have  been  two  portions  of information.   The first would have been some identifying mark on a tree or to identify a plot of trees, and the second would be detailed information of the type described above about the particular tree or plot of trees.   The second portion of information would have been stored in a hard copy database.  I would expect there to be some way of connecting the first portion of information with the second, because

unless the information on the database could be referred or tracked back to a specific tree or plot of trees, it is hard to see why a silviculturalist would want to collect and retain it.

[61]     The rest of Mr Woore’s evidence informs me that before 21 May 2002, as electronic   technology   developed,   it   came   to   be   used   more   in   silviculture management.  He refers to the use of global positioning systems to record where a plot was located.   He refers to silvicultural information being stored and regularly accessed from an electronic database, and subsequently analysed for use in short and long term planning decisions.   The general impression I gain from Mr Woore’s evidence is that in the period before 21 May 2002 as electronic information technology has developed, silviculturalists have taken it up and moved away from their old methods of hard copy record keeping.   I also consider that the new technology would still have been used in a way that resulted in two or more portions of information: the first being stored on or proximate to a tree; and the second on an electronic data base.

[62]     Mr Goulding’s evidence confirms that of Mr Woore.   Mr Goulding’s first written affirmation of evidence states that before 21 May 2002, methods for tracking silvicultural information during a tree’s product cycle by recording information on an electronically programmable tag and accessing that information at key times in the tree’s life cycle, were in common use in forestry and forest products companies both in New Zealand and abroad.

[63]     Mr Goulding identifies the type of silvicultural information that would be managed.  His list is much the same as Mr Woore’s.  Mr Goulding describes how methods of marking trees have advanced from the use of paint and metal tags to electronic tags such as bar codes or more recently commercially available RFID tags. He refers to a publication that came out in 2000 which described computer software that was then available to store pre-harvest inventory analysis and databases.   He also refers to a system which CHH used in 1999 which recorded information via tags with electronically readable bar codes that were attached to tree stems, as they were transported from tree stump to a log merchandising site, as well as to an associated database.

[64]     Mr Goulding also describes a system that was manufactured in New Zealand and implemented in Australia in 2001.   This system involved tags on logs with information being stored on a related database that identified the logs’ origin, their associated tree and silvicultural history data.

[65]     Mr Goulding’s first affirmation informs me that with the development of the Forest Stewardship Council’s chain of custody certification, there is a greater need to be able to verify the origin of lumber.  For this reason, methods of identification and tracking  of  trees  throughout  their  life  and  processing  cycle  have  develeloped. Mr Goulding refers to work in this respect carried out by Tenon Manufacturing Limited (formerly Fletcher Challenge Forest Limited) which has enabled that company to provide a chain of custody certificate from forest to mill gate for its sawn lumber.   Mr Goulding opines that the need for and use of sound chain of custody record keeping demonstrates the existence of integrated tagging and associated databases prior to 21 May 2002 that were capable of tracking information relating to the cultivation, location, harvesting, processing and or properties of the subject  trees.    He  also  opines  that  the  requirement  of  the  Forest  Stewardship Council’s certification process demonstrates that the ability to track information was well  known,  common  general  knowledge  both  in  New  Zealand  and  worldwide. What Mr Goulding says in this regard seems logical and probable to me.

[66]     Mr Goulding’s first written affirmation also identifies a factor that those working in silviculture are likely to have known: namely, the difficulty if not impossibility of maintaining the same tag on a tree throughout its various life cycles (from seedling to tree to sawn lumber and finally processed logs).   This would necessitate the use of new replacement tags along the way.  The ability to both read from and write on these tags would allow existing information to be forwarded on to the new tags.  Hence a reader skilled in the art would have the expectation that some kind of information transfer would occur.  In his second affirmation, Mr Goulding confirms this aspect of tag record management.

[67]     In his second written affirmation, Mr Goulding reiterates that methods and systems for gathering, recording and tracking silviculture information over the product cycle of a tree during the growing, harvesting and processing stages of its

lifecycle were well known and in common practice before 21 May 2002.   Such systems   would   include   storing   a   first   portion   of   silvicultural   information electronically using programmable tags attached to trees, logs, pieces of timber or packets of wood products and having a second portion stored in a computer database.

[68]     There is nothing in Mr Goulding’s evidence to suggest that knowledge of the methods and systems he describes was confined to highly academic specialists in the silviculture field.  The clear impression I have from reading Mr Goulding’s evidence is that any person skilled in the practical use and application of silviculture information management would have been aware of those methods and systems.

[69]     The inference I draw from Dr Goulding’s evidence is that once electronic tagging of trees and electronic storage of information on computers came into use in silviculture, the recognition of how these items might work together would be understood by a reader skilled in the art.  This view of what a reader skilled in the art would have known before 21 May 2002 gives insight into the reader’s mind-set at that time.  It enables the Court to form a view on how the reader would construe the contents of D5.   It can suggest whether the concepts of silviculture information management in D5 would appear novel and difficult to understand and apply, or whether they would be easily understood as no more than an adaptation or extension of existing concepts through the use of modern technology.  If it was the latter, this could lead to D5 teaching a reader skilled in the art how to develop an information management system that resembled the claimed invention.

[70]     In his third affirmation, Mr Goulding deals specifically with the information contained in D5.  This was an article for which he was one of the interviewees and his own comments are reported in the article.  Mr Goulding says that D5 refers to the use of scanable microchips that contain information about the tree.   He says that microchips as he understands the word being used in D5 is a generic term that describes electronic chips that can have information written to them and be scanned by other devices.  He says that RFID tags are a subset of such devices, therefore, he would  read  the  references  in  D5  to  scanable  microchips  as  describing  the functionality of an RFID tag.  The reference in the article to the microchips being located proximate to a tree or attached to a tree is consistent with the use of RFID

tags in the claimed invention.   D5 states that information on the electronic tags would  be  tracked  “all  the  way to  shipment”,  which  is  also  consistent  with  the claimed invention.

[71]     Mr Goulding says D5 teaches that forestry needs to be able to react to market demands.  This means that any information gathered for a tree needs to be accessed through its lifespan to allow selection of those trees that the market desires at any given point in time during the cycles of growth, harvesting and processing of the tree.  The explanation Mr Goulding gives for what D5 teaches in relation to the need to track information about the tree all the way to shipment seems to me to be something that a reader skilled in the art of silviculture is likely to take from the article.  I do not see the interpretation Mr Goulding has placed on this aspect of the article as being related to his high level academic qualifications or expertise.

[72]     Mr  Goulding  says  that  the  reference  in  D5  to  pieces  of  silviculture information being stored on a microchip, and the log being tracked all the way through to shipment indicates that some portion of the silviculture information must remain  on  the  tag  to  allow  tracking  of  the  log  through  the  processing  stage. Mr Goulding considers that given the widespread use of tags, including metal tags, attached or proximate to trees well before 21 May 2002, the reader skilled in the art would have read D5 as dealing with standard variations in identification systems.

[73]     Mr Goulding says that prior to 21 May 2002, electronic databases for storing silviculture information collected in the field were well known and an integral part of forest management.   This information was put into databases.   Programmes were available to provide yield predictions for example.  Those programmes did not just allow for inputting and tracking information, but also for the analysis of it.   The types of information that could be recorded were the genetic identity, growth rate, wood quality, disease resistance, treatment with fertiliser, treating with pesticide and pruning of the tree.

[74]     Mr Goulding says that D5 discusses the need to manage a forest to allow decisions to be made in respect of delivering logs to customers requiring their own different needs in terms of the quality of timber and moisture content treatment.

Forestry management as discussed in D5 describes various information that can be collected, including log numbering or identification, location, age and silvicultural history.  Such information is used to manage the forest and allow forestry to “react almost entirely to market demand”.  Mr Goulding takes from this the view that D5 teaches the use of at least two or more portions of silvicultural information.  He also reads D5 as teaching the use of information systems throughout the cycle of harvesting, transporting and processing.  In his third affirmation, Mr Goulding works his way through each of the claims and discusses how D5 relates to those claims. His view, in essence, is that D5 teaches a reader skilled in the art to assemble an electronic information management system that is the same as the claimed invention.

[75]     CHH also produced evidence from Roger Dunn, who is a technical director of Global ID Solutions Limited.   This is a New Zealand registered company that trades solely in the area of RFID equipment design and RFID applications.  Mr Dunn has affirmed that RFID technology has been known of since the early 1940s.   He describes it as comprising three basic components: an antenna or coil, a transceiver with decoder usually referred to as a reader, and a transponder (RF tag).   RFID systems are made up of a RFID reader and a RF tag.  It is the RF tag that contains an integrated circuit that stores particular information such as identification number and location.  Mr Dunn says that tags can be either active or passive, and some have a read/write capability, which means the tag has the capability of having user data written into the tag.  He says there are a number of manufacturers offering tags with read/write capability.  The antenna and receiver are typically bundled together in the RFID reader, and in a typical RFID system the tag contains a transponder with a memory chip that stores particular information.  The RFID reader omits a signal that activates the RFID tag so that it can read and/or write data to it.   The RFID tag detects the RFID reader’s activation signal once it passes within the operating range of the reader, that is, its electro-magnetic zone.   The reader then decodes the data encoded in the tag’s integrated circuit which can then be stored on the reader or passed on to, for example, a computer.  For an active system the RF tag can actually contribute information to the process.  The additional information may be parameters such as temperature.

[76]     Mr Dunn says that RFID systems have been available since the 1960s, and have been utilised in various applications for tracking items including logs.  He says he has been aware of two tags: one called the lipstick tag, which has been around since 1996; and the other, the nail tag, which has been around since 2000.   The lipstick tag is a read only RFID tag, and one of the applications it is listed for is in the area of forestry for tree identification.  Mr Dunn has offered the product for sale since approximately 1996.  The nail tag is a robust transponder which can be nailed into almost any type of wood such as tree trunks and pellets.  Nail tags are read only tags that can store information that can be read by an RFID reader.  They have been on sale since approximately 2000.   In his view, attaching an RFID tag with information to a tree for the duration of its life to allow the tracking of particular data, and allowing adding to or updating the information if it is a read/write tag is simply using an RFID tag as it has been designed to be used.

[77]     The Assistant Commissioner found that there were significant differences between D5 and the claimed invention.  I take a different view of the teaching to be understood from D5 than that of the Assistant Commissioner.  A reader skilled in the art would take from D5 the idea of assembling two separate, but associated portions of information: one being an electronic device associated with a tree or tree lots; and the other an electronic database on which information about those trees could be stored.   There is sufficient instruction in D5 for a reader skilled in the art to take from the article the notion that information would be electronically tracked so that information was either transferred from the first portion to the second, or exchanged between the two.  However, the Assistant Commissioner was correct in finding that D5 did not “plant a flag”, as is required by the test in General Tire and Rubber.

[78]     When I stand back and consider CHH’s evidence, I conclude that a reader skilled in the art of silviculture who read D5 would have taken from it sufficient instruction to enable him or her to assemble an information managment system that used  an  electronic  tag  of  any description  to  identify  a  tree  or  tree  lot,  and  an electronic database such as a computer in which information about the tagged trees would be stored.   The reader would also take from D5 the instruction that some electronic device to read and exchange information between the two sets of information was required if the system was to work.  Since all the components that

are necessary for such a system were readily available before 21 May 2002, I would expect a reader skilled in the art to have no difficulty in drawing them together.  The result would be to achieve the same outcome as the claimed invention.  Thus it is probable that a reader skilled in the art could, through a combination of his or her skills in the art and through reading D5, take from D5 directions that would enable him or her to assemble an information system that would infringe Weyerhaeuser’s patent.  However, I do not consider that to be the inevitable outcome of applying the teaching of D5.  A reader skilled in the art could also read D5 and come up with an assembly of electronic devices that included a specific type of microchip tag that differed from an RFID tag, and scanners which read that type of microchip, rather than a transponder used to read an RFID tag.  Since the impact of D5 on a reader skilled in the art might be to direct him or her to assemble an information system that was not based on devices using radio frequency technology, it could not be said that this publication has anticipated the claimed invention.   I agree, therefore, with the conclusion the Assistant Commissioner reached on the opposition based on lack of novelty.   CHH has not established a prima facie case that D5 contains “clear and unmistakeable directions” to do what Weyerhaeuser claims to have invented.   It follows that the claimed invention does not lack novelty.

Lack of inventiveness due to prior publication

[79]     Before 21 May 2002 the recording of information on RFID tags was well known; capability of the electronic readers to read electronically stored data on RFID tags was well known; the ability to write additonal data on RFID tags was also well known; the use of computers and software programmes to store and manage data was well known.  Weyerhaeuser accepts that its invention is made up of integers that others have developed, and which were well known before 21 May 2002.

[80]     What Weyerhaeuser has done is to group those integers together.  It follows that, as was recognised in Sabaf Spa, for this grouping to be seen as inventive, it must produce a synergistic effect; that is from the grouping of known integers. There must come a quality or characteristic that makes the grouping more than simply an aggregate of existing integers.   This new quality or characteristic (the

synergistic effect) is what would constitute the inventive concept.  The identification of the inventive concept is the first step of the Windsurfing test.

[81]     The Assistant Commissioner described what he saw as the inventive concept at [83] of his decision.  The Assistant Commissioner said the inventive concept or step can often be found in the independent claim or claims.  He considered claim 1, which he said showed a method for tracking silvicultural information during the

product cycle of a tree, the method included the steps of:

a)	Storing a first portion of silvicultural information on an electronically programmable tag, being a RFID tag that is located proximate to a
tree or that is attached to a tree;
b)	Storing a second portion of silvicultural information on at least one database,  which  second  portion  of  information  is  electronically
associated with the first portion of silvicultural information; and
c)	Tracking the first and second portions of silvicultural information,
including accessing the first portion of silvicultural information on at least one occasion during growth of the tree, on at least occasion
during  harvesting  of  the  tree,  and  at  least  one  occasion  during processing of the tree.
[82]	The	Assistant   Commissioner   said   that   both   portions   of   silvicultural

information are tracked by accessing the first portion of silviculture information on the RFID tag.

[83]     He then turned to independent claim 12, which related to the apparatus for carrying out the method according to claim 1.   He said Weyerhaeuser says the claimed invention provides a number of advantages by facilitating differential treatment of trees or groups of trees within a forest, including separate cultivation, harvesting and processing of mixed tree species.  Furthermore, the method claimed enables real-time accessing of data in the field to facilitate application of various silviculture procedures.  The monitoring of data collected at various stages of the life

cycle of each tree may be analysed and used to provide a tool for improving or assisting with forest management practices.  The invention was also said to allow for an RFID tag that need store only a small amount of information, that is the identity of the tree, and this means a relatively cheap and technically unsophisticated tag can be used.

[84]     I  have  difficulty  identifying  the  inventive  concept  from  the  individual integers.  Whilst I can see that grouping together well known integers can give rise to something over and above their constituent, parts, here all I can see are RFID tags being used to store read only or read and write information.  This is what RFID tags were designed to do.  The use of electronic readers to read the information from the RFID tags is also what such devices are designed to do.  The electronic storage of the electronic information retrieved from the RFID tags through a computer and information software is only using those devices in the way they are designed to be used.  None of the integers are being used in a way that is any different from their respective well recognised uses.  Each integer is doing the job it was designed to do independently of the other.   What they all lead to in this case is an electronic information managment system of silviculture data but that is only to be expected when such integers are put into use.  The circumstances are much the same as those in Sabaf Spa where the use of the two integers, each doing its own intended job, produced the outcome that was sought: namely sufficient ventiliation of gas cooking hobs to allow them to be constructed with a low profile.  In the present case, each integer in its own intended way captures and records information, which silviculturalists are interested in collecting and recording, for the purpose of silviculture analysis and management.

[85]     Because there is no inventive concept, it is not possible to move through the steps of the test in Windsurfing.  This is why Lord Hoffman found that the Court of Appeal in Sabaf Spa was wrong when it was critical of the Judge at first instance for not having applied the four step test from Windsurfing.   Since I cannot see any synergistic effect resulting from the combination of integers, that in itself would bring the inquiry under the Windsurfing test to a halt, and result in the claimed invention failing under s 21(1)(e) to qualify for the grant of a patent.   However, because I am looking at the issues from the perspective of whether the claim for a

patent is manifestly untenable,  I will proceed to apply the  Windsurfing tests to

Weyerhaeuser’s invention.

[86]     The next step in the Windsurfing test is to assume the mantle of the normally skilled but unimaginative addressee at the priority date, and impute to him or her what was common general knowledge in the art in question.  It is here that I consider that the Assistant Commissioner has gone wrong in discounting the evidence of Mr Goulding on the ground he is too qualifed to provide insight on the skilled addressee.  For the reasons I have already identified at [25], looking at the level of an expert’s qualifications is not helpful.  What is more important are the reasons he or she gives for his or her opinion.   The reasons set out in Mr Goulding’s evidence seem to me to be of general application.  I have described earlier in this judgment the clear  impression  I have  gained  from  Mr Goulding’s  evidence  (as  well  as  from Mr Woore) that keeping records of a tree’s life experiences throughout its product cycle has always been a part of silviculture management.  I also have the impression that how this record keeping is done has changed over time with technological developments.  Hence the move from metal tags on trees with identifying numbers to electronic tags which may contain more information than just identification of the tree.   I also take from his evidence that the benefits of having information on the tree’s  life  experiences  is  and  always  has  been  recognised  as  necessary  for silvicultural management.  I would expect, therefore, that as technology developed and  allowed  for  better  accessing  and  recording  of  such  information,  the  reader skilled in the art would recognise the worth of the new technological developments, and their relevance to silviculture management.

[87]     The differences between the directions which D5 provides and the claimed invention is that D5 directs on the various generic electronic components that can be grouped together to provide an information management system.   Thus as I have already said, D5 instructs on the use of any sort of electronic tag for trees or tree lots. D5 instructs on the use of any sort of electronic scanner to read the tags.  D5 also instructs on the use of an electronic database to store the information which is associated with the tagged trees.   The claimed invention does all this, but using a specific type of electronic device.

[88]     When it comes to considering whether a reader of D5 would have taken from the mention of generic electronic devices being used for information management that radio frequency technology and RDIF tags and transponders could be used to read or exchange information between the RFID tags and the computer database, I consider that this step would have been obvious to the skilled reader.  All that the reader would be doing is replacing a known earlier system of, for example, using metal tags to identify particular trees or tree lots and keeping a hard copy record of the relevant information about the tree or tree lots with an electronic version of the same using readily available electronic devices.

[89]     The Assistant Commissioner found at [115] of his decision that:

The opponent has shown that all the integers were well known at the priority date and has drawn attention to the relative simplicitity involved in the invention claimed.   It appears to me that the invention claimed may be obvious to a skilled addressee such as Mr Goulding.  However, I cannot say that the opponent has shown that this arrangement clearly does not involve any inventive step on the part of the notional skilled addressee and would be obvious to this addressee.

[90]     I take a different view.  CHH has established that the claimed invention does not involve any inventive step.  For the reasons I have outlined earlier when dealing with the lack of novelty ground, since early in the 20th century information systems for silviculture have been using the principle of having two portions of information, one on or proximate to a tree to identify it and perhaps record something else about the tree, and the second a database holding information relevant to all of the trees so marked.  The reader skilled in the art would also know of the use of chain of custody systems to track the identity, and record other informaiton about trees all the way

through from growing, harvesting, milling and sale as timber.  The reader skilled in the art would read D5 and either know about radio frequency tracking systems or, having read D 5, seek advice on what electronic systems for tagging and reading tags on trees were available.  Since radio frequency systems have been in general use for many years, including use in forestry, I would expect an electronic expert to refer the reader to those systems.  There is a strong probability, therefore, that a reader skilled in the art would from the generic directions in D5 assemble an information system that used all of the integers that are used in the claimed invention.  I acknowledge the need to avoid hindsight bias but here the outcome is so obvious that there is no

danger  of hindsight  influencing the  outcome.    The  claimed  invention  is  clearly lacking in inventiveness.

[91]     Since CHH has established that the patent claim should fail, the next question is  whether  Weyerhaeuser  has  produced  anything  in  its  evidence  that  would contradict this view.  It has not.  Its witnesses have not addressed D5.  Furthermore, its witnesses have not produced evidence that would suggest that the use of the integers in the claimed invention would not be obvious to a reader skilled in the art who had read D5.

[92]     Since this is an appeal from an opposition proceeding, I have taken the time to consider if the patent claim is manifestly untenable.  I consider it is.  First I cannot see any inventive concept.  The claimed invention is no more than an aggregate of well known integers each working as they are intended to do.  This would preclude the grant of a patent.   The way in which the integers are being used would be obvious to a reader skilled in the art who has read D5.   Indeed, I think the same could  be  said  without  regard  to  that  publication.    What  the  claimed  invention amounts to is no more than a clearly obvious use of existing technology.  It follows that  the  appeal  on  the  ground  of  lack  of  inventiveness  is  successful.     The Assistant Commissioner’s decision granting Weyerhaeuser a patent for its claimed invention is set aside.

Result

[93]   The appeal is successful on the ground the claimed invention lacks inventiveness.

[94]     If the parties are unable to agree on costs they should file memoranda on costs.

Duffy J

SCHEDULE 1

19.      The claims as proposed by way of amendment read:

1.A method for tracking silvicultural information during the product cycle of a tree, said method including the steps of:

(a)       storing a first portion of silvicultural information on an electronically programmable tag, being a Radio Frequency  Identification  tag,  that  is  located proximate to a tree, or that is attached to a tree;

(b)       storing a second portion of silvicultural information on at least one database, said second portion of information being associated with said first portion of silvicultural information; and

(c)       tracking said first and second portion of silvicultural information including accessing said first portion of silvicultural information on at least one occasion during growth of the tree, on at least one occasion during harvesting of the tree, and on at least one occasion during processing of the tree.

2.The method of claim 1, wherein the Radio Frequency Identification tag is attached to an external surface of the tree.

3.        The  method  of  claim  1,  wherein  the  Radio  Frequency

Identification tag is disposed within the tree.

4.        The  method  of  claim  1,  wherein  the  Radio  Frequency

Identification tag is located within twenty feet of the tree.

5.The method of any one of the preceding claims, wherein the first portion of silvicultural information includes the identity of the tree.

6.The method of any one of the preceding claims, wherein the first portion of silvicultural information includes the identity of the tree.

7.The method of any one of the preceding claims, wherein the first portion of silvicultural information is used to access the second portion of silvicultural information.

8.The method of any one of the preceding claims, wherein the second portion of silvicultural information includes information about at least one parameter selected from the group of parameters consisting of genetic identity, growth rate,   wood   quality,   disease   resistance,   treatment   with

fertilizer, treating with pesticide, pruning and geographical location.

9.The method of any one of the preceding claims, wherein the combination of the first and second portions of silvicultural information is used to manage at least one silvicultural procedure.

10.The method of claim 9, wherein the silvicultural procedure is selected from the group consisting of fertilizing one or more   trees,  applying  pesticide  to   one   or   more  trees, harvesting one or more trees, transporting one or more harvested trees and processing one or more trees.

11.The method of any one of claims 1 to 10, wherein said method further includes:

(a)       processing the tree to yield lumber; and

(b)attaching a tag to the lumber, said tag bearing the first portion of silvicultural information.

12.      A  system  for  tracing  silvicultural  information  during  the product cycle of a tree, the system including:

(a)       at least one electronically programmable tag, being a Radio  Frequency  Identification  tag,  on  which  is stored  a  first  portion  of  silvicultural  information, said tag being located proximate to a tree or being attached to a tree;

(b)at least one database on which a second portion of silvicultural   information   is   stored,   said   second portion  of  information  being  associated  with  said first portion of silvicultural information; and

(c)computer means for tracking said first and second portions   of   silvicultural   information,   including means for accessing said first portion of silvicultural information during growth of said tree, means for accessing said first portion of silvicultural information during harvesting of said tree and means for accessing said first portion of silvicultural information during processing of said tree.

13.      The  system  of  claim  12,  wherein  the  Radio  Frequency

Identification tag is a read/write tag.

14.      The  system  of  claim  12,  wherein  the  Radio  Frequency

Identification tag is a read-only tag.

15.A method for tracking silvicultural information during the product cycle of a tree, substantially as hereinbefore described with reference to the example.

16.A  system of  tracking silvicultural  information  during the product cycle of a tree, substantially as hereinbefore described with reference to the example.

SCHEDULE 2

METHODS AND SYSTEMS FOR TRACKING SILVICULTURAL INFORMATION

FIELD OF THE INVENTION

This patent application relates to methods and systems for tracking information  relating  to  the  cultivation,  location,  harvesting,  processing, and/or properties of one or more trees.

BACKGROUND OF THE INVENTION

The  demand  for  trees  to  make  wood  products  continues  to  increase. Effective management and harvesting of forests requires knowledge of the properties of the individual trees within the forest.  For example, a particular industry might require a consistent supply of wood having a hardness that falls within a specified range of hardness values.  To satisfy this need, the forester must identified and propagate trees possessing the desired hardness characteristic, and track these trees, and logs and boards derived therefrom, through the logging and milling processes.

Consequently, there is a need for methods that permit tracking information relating to the growth and processing of trees, such as the location and properties of trees, and the location and properties of logs or boards derived therefrom.  Preferably, the methods permit the information to be stored in a device associated with the trees, and/or associated with processed wood derived therefrom (e.g., logs and boards), and updated when desired.

SUMMARY OF THE INVENTION

Viewed from one aspect, the present invention provides a method for tracing silvicultural information during the product cycle of a tree, said method including the step of:

(a)      storing a first portion of silvicultural information on an electronically programmable tag, being a Radio Frequency Identification tag, that is located proximate to a tree, or that is attached to a tree;

(b)       storing a second portion of silvicultural information on at least one database, said second portion of information being associated with said first portion of silvicultural information; and

(c)making   the   first   and   second   portions   of   silvicultural information   including   accessing   said   first   portion   of

silvicultural information on at least one occasion during growth of the tree, on at least one occasion during harvesting of the tree, and on at least one occasion during processing of the tree.

Viewed from another aspect, the present invention provides a system for tracking silvicultural information during the product cycle of a tree, the system including:

(a)       at least one electronically programmable tag, being a Radio Frequency  Identification  tag,  on  which  is  stored  a  first portion of silvicultural information, said tag being located proximate to a tree or being attached to a tree;

(b)       at  least  one  database  on  which  a  second  portion  of silvicultural information is  stored, said  second  portion  of information being associated with said first portion of silvicultural information; and

(c)computer means for tracking said first and second portions of silvicultural information, including means for accessing said first portion of silvicultural information during growth of said tree, means for accessing said first portion of silvicultural information during harvesting of said tree and means for accessing said first portion of silvicultural information during processing of said tree.

A tag may be attached to an external surface of a tree (e.g., the bark), or can be disposed within a portion of a tree (e.g., within the tree trunk), or can be attached to an object (e.g., a stake) proximate to a tree.   The tags record information in an electronic form, and are Radio Frequency Identification tags.  Bar codes may also be used for lumber marking.  Examples of the first portion of silvicultural information that can be stored on the tag includes the identity of the tree, location of the tree, growth rate of the tree, disease resistance of the tree and hardness of wood derived from the tree.

A second portion of silvicultural information is stored in association with the first portion of silvicultural information.  For example, the second portion of silvicultural information is stored in a database separate from the tag (e.g., in an electronic database).   In some embodiments, the first portion of silvicultural information includes the identity of the tree, which is used to access the second portion of silvicultural information which can include information about any aspect of the cultivation, location, harvesting, processing, and/or properties of the tree.  In some embodiments, the methods of the invention are used to track silvicultural information with respect to a population of trees (e.g., a stand or forest of trees).

Some methods of the invention further include the steps of: (a) processing the tree to yield lumber; and (b) attaching a tag to the lumber, the tag bearing at least some of the first portion of silvicultural information.   Thus, for example, the tag attached to the lumber can include information about such properties as the quality and hardness of the lumber, and the identity and/or genotype of the tree from which the lumber was obtained.

The methods of the invention are useful in any situation in which it is desirable to track silvicultural information.  For example, the methods of the invention can be used to promote efficient tree cultivation by tracking the location, age, and wood properties of a tree population (e.g., a population of cloned, genetically-identical, trees), and providing this information to computers that execute algorithms that facilitate such choices as the most desirable harvest time, the best processing facility to process the felled trees, and the availability of a purchaser for the trees or wood products derived therefrom.   Thus, again by way of example, the methods of the invention provide the forester with ongoing information about a specified population of trees throughout the complete product cycle of the tree, from sapling to milled board (or other processed wood product); and can also provide the end-user of the milled board (or other processed wood product) with relevant information about the wood and its source.