FEDERAL COURT OF AUSTRALIA
Fieldturf Tarkett Inc v Tigerturf International Limited [2014] FCA 647
| IN THE FEDERAL COURT OF AUSTRALIA | |
| ON APPEAL FROM THE COMMISSIONER OF PATENTS | |
| Applicant | |
| AND: | TIGERTURF INTERNATIONAL LIMITED Respondent |
| DATE OF ORDER: | |
| WHERE MADE: |
THE COURT ORDERS THAT:
1. Subject to the amendment in order 2, the appeal be allowed.
2. Leave be granted to the applicant, Fieldturf Tarkett Inc, to amend claim 21 of its patent application no. 2004201711 (the 2004 application) by deleting the words “1/4 inch (0.365 cm)” and replacing them with “5/8 inch (1.588 cm)” so that claim 21 reads:
A surface as claimed in claim 20, wherein the ribbons extend between 5/8 inch (1.588 cm) and 1 ½ inches (3.81 cm) above the layer of particulate material.
3. Subject to the amendment in order 2, the decision of the Commissioner of Patents given on 18 January 2011, allowing the respondent’s opposition to the 2004 application, be set aside to the extent that it found:
(a) the invention as disclosed in claims 3, 4 and 5 of the 2004 application lacked novelty;
(b) the invention as disclosed in claims 3, 4 and 5 of the 2004 application lacked an inventive step;
(c) claims 11 and 21 of the 2004 application lacked clarity.
4. Subject to the amendment in order 2, the 2004 application proceed to grant.
5. The cross-appeal be dismissed.
6. The respondent, Tigerturf International Limited, pay the applicant’s costs as agreed or taxed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
| IN THE FEDERAL COURT OF AUSTRALIA | |
| NEW SOUTH WALES DISTRICT REGISTRY | |
| GENERAL DIVISION | NSD 227 of 2011 |
| ON APPEAL FROM THE COMMISSIONER OF PATENTS | |
| BETWEEN: | TIGERTURF INTERNATIONAL LTD Applicant |
| AND: | FIELDTURF TARKETT INC Respondent |
| JUDGE: | JAGOT J |
| DATE OF ORDER: | 20 June 2014 |
| WHERE MADE: | SYDNEY |
THE COURT ORDERS THAT:
1. The appeal be dismissed.
2. The applicant, Tigerturf International Ltd, pay the respondent’s costs as agreed or taxed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
| NEW SOUTH WALES DISTRICT REGISTRY | |
| GENERAL DIVISION | NSD 96 of 2011 |
| ON APPEAL FROM THE COMMISSIONER OF PATENTS | |
| BETWEEN: | FIELDTURF TARKETT INC Applicant |
| AND: | TIGERTURF INTERNATIONAL LIMITED Respondent |
| NSD 227 of 2011 |
| ON APPEAL FROM THE COMMISSIONER OF PATENTS | |
| BETWEEN: | TIGERTURF INTERNATIONAL LTD Applicant |
| AND: | FIELDTURF TARKETT INC Respondent |
| JUDGE: | JAGOT J |
| 20 June 2014 | |
| WHERE MADE: | SYDNEY |
REASONS FOR JUDGMENT
1. THE APPEALS
1 These proceedings involve appeals against decisions of the Commissioner of Patents under s 60(4) of the Patents Act 1990 (Cth) (the Act) in respect of two patent applications relating to artificial turf. FieldTurf Tarkett Inc (FieldTurf) is the applicant for each patent. TigerTurf International Limited (TigerTurf) is the opponent of the grant of the patents.
2 In proceedings NSD 96 of 2011, FieldTurf appeals against the Commissioner’s decision in respect of FieldTurf’s patent application No 2004201711 (referred to as the 2004 application or the 711 application in the evidence and submissions) ([2011] APO 2). The Commissioner decided that claims 3, 4 and 5 of the 2004 application lacked novelty and an inventive step and that claims 11 and 21 lacked clarity. FieldTurf contends to the contrary in the appeal. TigerTurf opposed the grant of the 2004 application before the Commissioner and, in the appeal, contends that claims 1 to 8, 19 to 23 and 25 to 28 lack novelty, claims 1 to 9 and 19 to 28 lack an inventive step, and claims 11 and 21 lack clarity.
3 In proceedings NSD 227 of 2011, TigerTurf appeals against the Commissioner’s decision in respect of FieldTurf’s patent application No 2006201560 (referred to as the 2006 application or the 560 application in the evidence and submissions) [2011] APO 3. The Commissioner decided that the 2006 application should proceed to grant. TigerTurf contends that claims 1 to 5 and 7 of the 2006 application lack novelty. FieldTurf contends to the contrary.
4 Although the appeals were heard together, with evidence in one appeal being evidence in the other, it is convenient to deal separately with the issues concerning the 2004 application and the 2006 application.
5 In the following reasons, I refer to the evidence of the witnesses only insofar as necessary to resolve the issues in dispute. Some of the evidence, such as that of Darren Gill, the Vice President Global Marketing for FieldTurf, was relevant only if other issues were resolved in a particular way. As those issues were not so resolved, Mr Gill’s evidence became of marginal relevance and is not addressed. The same applies to some of the other evidence including some evidence from Philip Rossi (the Managing Director of a yarn manufacturing company who has expertise in yarns), Frederikus Oudendyk (who has worked in the synthetic turf industry since 1990), and Robert Jones (who has worked in the worked in the synthetic turf industry in New Zealand since the mid-1970s and in New Zealand and Australia since 1989). The witness whose evidence must be considered in detail is that of John Rooks (who worked in the synthetic turf industry between 1979 and 2002).
2. THE 2004 APPLICATION
2.1 General
6 The 2004 application was filed on 23 April 2004. Although FieldTurf claimed a priority date of 10 March 1997, the Commissioner decided that the claims were entitled to a priority date of 9 October 1997. Some of the evidence refers to circumstances as at 10 March 1997 for this reason. However, it was common ground between the parties that there was no relevant change in circumstances between 10 March and 9 October 2007.
2.2 The specification
7 The title of the specification is “synthetic surface”. The field of the invention is said to be directed towards “synthetic grass surfaces”, more particularly towards “improved, synthetic grass sports surfaces”.
8 The section on background art, following a disclaimer of any admission that the prior art forms part of the common general knowledge, records that:
Synthetic grass sports surface are well known. They are used to replace natural grass surfaces which do not stand up well to wear and which require a great deal of maintenance. Also, natural grass surfaces do not grow well in partly or fully enclosed sports stadiums. The synthetic grass surfaces stand up to wear much better than the natural grass surfaces, do not require as much maintenance, and can be used in closed stadiums. Some synthetic grass surfaces comprise rows of strips or ribbons of synthetic material, extending vertically from a backing mat with particulate material infilled in between the ribbons on the mat. The ribbons of synthetic material usually extend a short distance above the layer of particulate material and represent blades of grass. The particulate material usually comprises sand, as shown by way of example in U.S. Patents 3,995,079, 1976, Haas, Jr. and 4,389,435, 1983, Haas, Jr., but can comprise other materials or a mixture of sand and other materials, as shown in U.S. Patent 4,337,283, 1982, Haas, Jr., by way of example. The particulate material provides resiliency to the synthetic grass surfaces, and the surfaces are often laid on a resilient pad to provide further resiliency to the surfaces.
The known sand-filled synthetic grass sports surfaces have some disadvantages. The surfaces usually become hard after extended use because the sand, between the rows of ribbons, becomes compacted. Compacting occurs, in part, because the rows of ribbons are quite close together, and the sand cannot spread a great deal laterally during use. Compacting also occurs, in part, because the close spacing of the ribbon rows traps debris, worn and torn off the ribbons, in the sand, even when the particulate material comprises rounded sand particles. With an increase in compaction, the surface becomes progressively harder and less resilient. The performance of the surface is shortened, and it has lessened playing qualities. The surfaces also become harder after use because the resilient pads, if used, slowly collapse under use, becoming denser. …
Another problem with the known synthetic grass sport surfaces is the problem of drainage. Water flow through the surfaces has generally been slow. The ribbons are usually attached to the mat by tufting them through the mat, and then the bottom of the mat is coated with a bonding layer to bond the ends of the ribbons to the mat. The bonding layer is non-porous. To provide adequate porosity, the coated mat is punctured to provide holes. However, the particulate material often flows into these holes, plugging them up and thus reducing the drainage qualities of the surface. The loss of the particulate material into and through the holes also requires that it be replaced on top of the mat, adding to the costs of maintaining these surfaces. Compaction of the surface also inhibits drainage.
The known synthetic surfaces also have relatively poor playing qualities. When infilled with rounded sand particles more rounded than angular, because the rounded particles are thought to compact less and cause less abrasion, the surface can become too slippery, particularly when the ribbons are only slightly longer than the thickness of the layer of particulate material. Also, the closely spaced fine ribbons, if penetrated, can tightly grip the cleats and do not tear as easily as grass, thus making release of the cleats more difficult and making playing on the surface more difficult and dangerous than when playing on grass. …
The known synthetic surfaces, with closely spaced rows of ribbons, also increase the speed of a rolling ball from the speed with which it rolls on natural grass. The closely spaced ribbons create an almost solid, low resistance surface for a rolling ball, thus adversely affecting the playing qualities of the surface. If the surfaces are employed with a resilient base pad, balls bounce more on the surfaces than on grass, subtly changing the nature of the game. The low resistance surface also makes it more slippery for tennis players.
The known surfaces have other disadvantages. Usually the ribbons employed are quite narrow, and they can curl creating an appearance unlike grass. The narrow ribbons also abrade easier, creating debris that can increase compaction of the surface. The close spacing of the ribbon rows also causes skin abrasion on players falling or sliding on the surfaces.
9 The object of the invention is stated as follows:
It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative.
10 The summary of the invention includes the following statements:
In accordance with a first aspect of the present invention there is provided a synthetic surface comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2 ¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.
In accordance with a second aspect of the present invention there is provided a synthetic surface for a sports playing field comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other, whereby the relationship of the length of the ribbons and the spacing between the rows is
2A ≤ L
such that the length of the ribbons is at least twice the spacing; where A is the spacing between the rows, and L is the length of the ribbon measured from the flexible backing, whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.
…
Improved synthetic grass surface may be provided by employing relatively widely spaced rows of ribbons. The wider spacing of the ribbon rows reduces the compaction of the infill that normally occurs with more closely spaced rows, thus extending the life of the surface with respect to resiliency. Reduced compaction also ensures better drainage. Wider row spacing should also ensure less wear and abrasion of the ribbons, extending the life of the surface and minimising the formation of ribbon debris which affects compaction and drainage. Wider row spacing also allows better cleat penetration and allows the cleats to release easier, thus improving the playing qualities and reducing the risk of injury. Wider ribbon row spacing can also cause balls on the surface to roll more like they roll on grass, thus improving playing qualities. Wider ribbon row spacing also makes it easier to loosen the particulate material if it does start to compact, and to clean or replace it. Wider ribbon row spacing also reduces abrasion to the players when contacting the surface. Wider ribbon row spacing can make it easier to seam the surface.
It has been found that an improved synthetic grass surface can be provided by providing ribbons having a length about twice as long as the spacing between the rows of ribbons. The preferred embodiment employs ribbons that are quite long compared to the ribbons now employed. The longer ribbons allow a thicker layer of particulate material to be used which can eliminate the need for a resilient pad and make installation of the surface simpler and cheaper. A thicker layer of particulate material or infill promotes better drainage because of the higher water head created by water on the synthetic grass. Preferably, the layer of particulate material has a thickness at least two-thirds the length of the ribbons. The longer ribbons can also provide more ribbon material above the infill for certain sport surfaces, creating a more realistic grass-like surface that, in combination with the wider spacing of the ribbon rows, allows a player’s cleats to both penetrate the surface for traction but also easily release. The player’s cleats can move the ribbons and infill material sideways to allow easier release.
…
Improved drainage properties may also be obtained by having at least one of the backing layers, a needle punched fabric, provided with fuzzy fibers on one or both surfaces. The fuzzy fibers improve the drainage qualities of the backing layer, and thus of the surface, since the fuzzy fiber ends wick away the moisture.
The surface may be provided with an improved infill layer of particulate material. The infill preferably comprises a mixture of silica sand and cryogenically ground rubber particles. The cryogenically ground rubber particles wet more easily than non-cryogenically ground rubber particles and thus allow faster drainage. The ratio of sand to rubber can be varied depending on the end use of the surface; the more resilient surface required, the more rubber employed. …
11 The mode for carrying out the invention is described by reference to nine figures depicting the invention. Relevant statements include:
While the backing member 3 has been shown as comprising two layers, it can also be formed from one layer or more. One or more of the layers in the backing member 3 can be a needle punched woven fabric to provide better drainage, the fabric being relatively thick if used only as a single layer. At least one of the layers 11 in the backing member 3 can be needle punched with synthetic, fuzzy fibers (flw) 15, as shown in Fig. 2, to provide means to wick moisture through the layer. The fuzzy fibers further improve drainage of the surface.
…
The spacing of the rows of ribbons is dependent on the activity to be performed on the field. For instance, cleats worn on the shoes of athletes for different sports have a spacing on the average of about three-quarters of an inch. Football cleats or soccer cleats may be wider than baseball cleats. The spacing is in relation to the type of sport to be played on the field and is a consequence of the spacing of the cleats on the shoes of the players. Likewise, in sports such as horse racing, it is contemplated that much wider spacing will be required between the rows to accommodate the wider hooves of the horses. Thus, it is contemplated that for horse racing, a spacing between the rows of up to 2-1/4 inches would be necessary with a proportionally longer ribbon of up to 5 inches.
…
The relatively wide spacing between the rows of ribbons has several advantages. The wide spacing reduces the tendency of the surface to compact. If the tendency to compact is reduced, drainage of the surface is improved. The wide spacing also reduces the amount of material required for the ribbons. The wide spacing further enhances the playing qualities of the surface. A player playing on the surface is able to obtain better traction because the player’s cleats are better able to dig into the particulate material between the ribbon rows. At the same time, the cleats release better because there is more room between the rows to move the particulate material during release. …
The length of the ribbons is also an important feature of this embodiment of the invention. The length “L” of the ribbons 7, that is, the distance from the backing member 3 to the free ends 17, is at least twice the spacing “A” between the rows 5 of ribbons and preferably between three and six times the spacing “A”. …
The layer 9 of particulate material preferably comprises a mixture of a hard sand, such as silica, and cryogenically ground crumb rubber. Cryogenically ground crumb rubber is preferred because the particles are rounder, minimizing abrasion and also lessening compaction. …
The mix of sand and resilient material can vary depending on the end use of the surface. More rubber is used if the surface requires more resiliency.
12 The disputed claims are as follows:
1. A synthetic surface comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2 ¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, whereby the synthetic surface can receive an infill of particular [sic] material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.
2. A synthetic surface for a sports playing field comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other, whereby the relationship of the length of the ribbons and the spacing between the rows is
2A ≤ L
such that the length of the ribbons is at least twice the spacing; where A is the spacing between the rows, and L is the length of the ribbon measured from the flexible backing, whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.
3. A synthetic surface having a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2 ¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, the surface including a layer of particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member.
4. A synthetic surface for a sports playing field wherein the synthetic surface comprises a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other, the surface including a relatively thick layer of particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member, whereby the relationship of the length of the ribbons and the spacing between the rows is
2A ≤ L
such that the length of the ribbons is at least twice the spacing; and the particulate material having a thickness, T, which is substantially equal to 2/3 the length, L, of the ribbons, where A is the spacing between the rows, L is the length of the ribbon measured from the flexible backing and T is the thickness of the layer of particulate material.
5. A surface as claimed in any one of the claims 1 to 4, wherein the length of the ribbons, extending upwardly from the backing member, is from between 1 ½ inches (3.81 cm) and 5 inches (12.7 cm).
6. A surface as claimed in any one of the claims 1 to 5, wherein the ribbon has a width of about one-half of an inch (1.27 cm).
7. A surface as claimed in any one of the claims 1 to 6, wherein the backing member is a single layer of permeable fabric.
8. A surface as claimed in any one of the claims 1 to 6, wherein the backing member is a double layer of permeable fabric.
9. A surface as claimed in any one of the claims 1 to 6, wherein the backing member is a triple layer of permeable fabric.
…
11. A surface as claimed in claim 10 [(being a surface as claimed in any of claims 1 to 6, wherein the backing member comprises one or more layers of fabric, at least one of which is needle punched to produce fuzzy fibres on its surface)], wherein at least one of the layers of permeable fabric is needle punched to produce fuzzy fibres on its surfaces [sic].
…
19. A surface as claimed in any one of claims 5 to 18 when dependant [sic] on claim 2 or 4, wherein the dimension A is between 5/8 inch (1.588 cm) and 2 ¼ inches (5.715 cm) the dimension L is between 1 ¼ inches and 5 inches (3.175 cm and 12.7 cm).
20. A surface for a sports field as defined in claim 19, wherein L is in a range of between 3A and 6A.
21. A surface as claimed in claim 20, wherein the ribbons extend between ¼ inch (0.635 cm) and 1 ½ inches (3.81 cm) above the layer of particulate material.
22. A synthetic surface as claimed in any one of claims 19 to 21, wherein the particulate material comprises a mixture of resilient particulate material and hard particulate material wherein the particles are in a range of between 4 to 70 mesh.
23. A surface as defined in claim 22, wherein at least the resilient particles are spherical.
…
25. A surface as defined in any one of claims 22 to 24, wherein the resilient particulate material is selected from a group having the properties of cryogenically ground rubber such as cork, styrene, epdm rubber, used tires and neoprene, while the hard particulate material is selected from a group containing silica sand, graded stone and hard and heavy plastics.
26. A surface as claimed in claim 25, wherein the particulate layer is a mixture of cryogenically ground rubber and sand.
27. A synthetic surface substantially as described herein with reference to and as illustrated in the accompanying drawings.
28. A synthetic surface for a sports playing field surface substantially as described herein with reference to and as illustrated in the accompanying drawings.
2.3 The onus of proof and evidentiary matters
13 It was common ground between the parties that, as TigerTurf put it:
appeals of this nature are in the original jurisdiction of the Court and are conducted as hearings de novo [F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56; [2000] FCA 283 at [29] and New England Biolabs Inc v F Hoffman-La Roche AG (2004) 141 FCR 1; [2004] FCAFC 213, at [23]-[45]]. The opposition will be upheld only where it is “practically certain” or ”clearly satisfied” that the patent, if granted, would be invalid [Commissioner of Patents v Microcell Ltd (1958) 102 CLR 232 at 244–5; [1959] HCA 71; Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106; [1999] FCA 742 at [17]; Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52; [2010] FCA 1061 at [33]-[35]]. The primary facts are to be established on the balance of probabilities, but the ultimate facts must be proved to the level of practical certainty [Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420; [2005] FCA 805 at [12]; Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52; [2010] FCA 1061 at [ [35].].
14 TigerTurf’s case of lack of novelty is based on prior art information comprising both acts and documents. The acts concern four installations of synthetic turf in the mid-1980s. There is no dispute between the parties that each installation occurred. The dispute concerns the features of each installation. The primary evidence on which TigerTurf relies about the installations and their features is that of Mr Rooks who was involved, one way or another, in each of the installations at the time they were carried out some 25 or more years ago. Mr Rooks, now retired, worked for a company, Supergrasse Pty Ltd (Supergrasse) between about 1979 and 1990. He was the company’s installation manager and then general manager responsible for the manufacture, installation and sale of Supergrasse’s various synthetic surfaces throughout the period 1984 to 1990. After Supergrasse went into liquidation in 1990, the business and name were acquired by another company, Balsam Pacific Pty Ltd (Balsam) in 1991. During 1990, Mr Rooks worked for himself conducting synthetic turf installations for about 12 months and from 1991 worked for another company known as Evergreen Action Grass Pty Limited (Evergreen) which was a competitor to Supergrasse. Balsam subsequently also acquired Evergreen in about 1992 and Mr Rooks continued to work for Balsam until his retirement in 2002 overseeing and advising on the manufacture, design and installation of Balsam’s synthetic grass surfaces.
15 FieldTurf submitted that evidence of prior uses gives rise to evidentiary considerations potentially different from those where the prior art consists of the publication of a document. In the latter case, the document is available to be construed as it would have been by the notional skilled addressee at the date of publication; as such, there can be no doubt about the terms of the document. In the former, the evidence proving the prior acts may be documentary but also may consist of oral evidence from witnesses who observed or were otherwise involved in those acts. Oral evidence of this kind, particularly where based on recollections from years before, FieldTurf submitted, should be weighed with caution, citing in support Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43; [2000] FCA 676 (Old Digger) and Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52; [2010] FCA 1061 (Aspirating IP).
16 In Old Digger at [156] Von Doussa J said:
The onus of proof is on the respondents to establish a clear case of invalidity: see Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593 at 595-596 per Gibbs J. The evidence adduced by the respondents as to the prior use of the invention is the oral evidence of witnesses to the alleged use based on their recollections of events years beforehand. The alleged use is said to have taken place in the course of trialling reverse circulation percussive hammers incorporating prototype face sampling drill bit assemblies. The particular assemblies have not been produced in evidence. Oral evidence led in these circumstances must be viewed with particular caution, partly for the reason that the memory of the witnesses is likely to have been influenced by other products seen in the meantime, and to reflect reconstruction on the basis of these later observations: see Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 at 165-166, and Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 525 per Gummow J.
17 In Aspirating IP at [199] to [202] Besanko J said:
[199] The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.
[200] The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago. In Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 (at 165–166) Menzies J said:
It is not that I dismiss the evidence as deliberately untruthful — although I am disposed to think that the evidence relating to Ex 8 and Ex 9 — which was a less than accurate representation of Ex 8 — was not wholly frank — it is rather that I cannot accept as reliable, oral evidence relating to particular pieces of equipment to which some reference has been found in the records of the defendant company, and then, as if by unaided recollection of observations made up to twenty-eight years ago, that equipment has been identified and described by the witnesses. It is apparent that during the long period since the equipment was seen, the witnesses must have looked at hundreds, if not thousands, of unremarkable pieces of similar equipment, and I have no confidence in their stated recollections of particular pieces of equipment among those numbers.
[201] In Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at 556–557 Gummow J said that proving an alleged anticipation by the recollection of witnesses and by drawings in catalogues and brochures is to be approached with “some caution”.
[202] In Windsurfing International Inc v Petit (1983) 3 IPR 449, Waddell J (at 489) referred to the need to scrutinise evidence of an alleged prior public use with great care and said that such a use should be strictly proved.
18 I accept these principles. They are to be kept in mind when assessing the disputed factual issues.
2.4 Two construction issues
19 There were two issues of construction between the parties. Given my conclusions about the evidence below, it is not apparent to me that either issue is determinative. Nevertheless, it is appropriate to record my conclusions about those issues.
20 First, an integer of claims 1 and 2 and dependent claims is that the “synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill” (emphases added).
21 TigerTurf submitted that the word “can” ought to be understood as meaning “capable of”, as this “meaning is consistent with the meaning of the word as a matter of ordinary English. The Macquarie Dictionary [Sixth Edition (2013)] defines “can” (relevantly) as “to be able to; have the strength, means, authority to””. Accordingly, “claims 1 and 2 do not require the claimed synthetic surface to have a level of infill to approximately 2/3 height of the ribbons but rather to have a gauge and length whereby the synthetic surface is capable of receiving an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill” (original emphasis).
22 FieldTurf submitted that this does not mean that “the synthetic surface is capable of receiving sufficient infill to extend two-thirds up the length of the ribbon. Rather, the height of the infill is but one element of a combination…interacting with other elements, to achieve the benefits of the invention. Thus “can receive” in the claims means “is designed or intended to receive””. Otherwise, the integer would include any surface with infill up to any level provided the surface was capable of receiving infill to extend two-thirds up the length of the ribbon, which is an unlikely construction given the claimed benefits of the invention.
23 I prefer FieldTurf’s construction. The claims are to be construed in context. The invention concerns a field of practical application. It is not concerned with hypotheses or potentialities. In this context, which includes a detailed discussion of preferred infill characteristics (including the two-thirds infill ratio) and associated benefits, the integer is not satisfied by a theoretical potential for the surface to receive the two-thirds infill or for the ribbons to overlap. The integer requires that the surface be designed or intended to receive the two-thirds infill and the ribbons designed or intended to overlap.
24 Second, claims 2, 4 and dependent claims relate to a synthetic surface for a “sports playing field”.
25 TigerTurf submitted that a “sports playing field”, construed in the context of the specification as a whole, should not be construed narrowly so as to exclude areas for activities such as horse racing and golf. In particular, “as a matter of ordinary English, the word “field” is not limited to an area where a team sport involving a ball is played. The Macquarie Dictionary [Sixth Edition (2013)] defines “field” (relevantly) as “a piece of ground devoted to sports or contests”. Further, the specification refers to “sports such as horse racing” and “a surface that is used for less physical activity, such as a golf green for example, and a larger spacing being used where more physical activity is encountered, such as a race track for horses”. Golf players, like those playing ball sports, wear cleats. Balsam created a document entitled “A complete guide to sports facilities” which included synthetic surfaces for equestrian applications. TigerTurf also contended that:
Claims 1 and 3 claim synthetic grass surfaces for any application. Claims 2 and 4 claim a synthetic surface for any sports playing fields. The difference between the respective claims is between a synthetic grass used for sports (claims 2 and 4) and any application including but not limited to sports (claims 1 and 3). It follows, therefore, that where there is a reference to any sports in the specification (including horseracing tracks and golf) it must apply to any of claims 1-4.
26 FieldTurf submitted that the claims to a “sports playing field” should be understood as narrower claims than those to “a synthetic surface” so that, construed in the context of the specification, a sports playing field means “a defined area on which players participate in a sports game, ordinarily a team sport involving a ball and often one in which players wear footwear containing cleats, such as football, soccer or baseball, and does not extend to a horse racing track or a golf tee area”.
27 I prefer TigerTurf’s construction. The claims distinguish between “a synthetic surface” and “a synthetic surface for a sports playing field”. Although meaning is to be given to the phrase “sports playing field” on the basis of all of its elements, not just the word “field”, the relevant distinction in the claims appears to be between non-sports surfaces and sports surfaces. The specification refers to “synthetic grass surfaces” and “synthetic grass sports surfaces”. It is true that the concept of a “synthetic grass sports surface” appears broader than a synthetic grass “sports playing field”. A sports surface, without doubt, is any surface on which a sport is played. It is also true that the claims could have used the phrase in the specification “sports surface”, rather than “sports playing field”, but did not do so. However, there is nothing in the latter formulation in the context of the claims or the 2004 application as a whole to support the narrow reading for which Fieldturf contends. Read in context, the words “sports playing field” at least include a surface on which sports are played within a dedicated area. Horse racing and golf are sports and thus surfaces for horse racing and golf are each a sports surface. Once it is accepted that horse racing and golf are sports, it must also be accepted that they are contests or games which are played out on a dedicated area. In the context of the specification, surfaces for golf and for horse racing or other equestrian activities fall within the term “a sports playing field”.
2.5 Lack of novelty?
2.5.1 Provisions and principles
28 An invention will only be a patentable invention for the purposes of a standard patent if the invention, as claimed, is novel when compared with the prior art base as it existed before the priority date of the claim: s 18(1)(b)(i) of the Act.
29 Section 7(1) of the Act, in its relevant form at the time the 2004 application was filed, provided that:
For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of “prior art base” in Schedule 1.
30 The Full Court of this court in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20; [2008] FCAFC 139 (Insta Image) considered the concept of “publicly available” by the doing of an act, summarising the relevant principles at [124] as follows:
• The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it (PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 226 per Aldous J cited in Jupiters [Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155; [2005] FCAFC 90 (Jupiters)] at [141]). (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887 in Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen LJ).
• It is immaterial whether or not the invention has become known to many people or a few people (Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 at 111 per Windeyer J). As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality (Fomento Industrial SA v Mentmore Manufacturing Co Ltd [1956] RPC 87 at 99–100; Re Bristol-Myers Co’s Application [1969] RPC 146 at 155 per Parker LJ).
• The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity (Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31; [2006] FCAFC 91 (Merck) at [98]–[103]).
• In order to be “available”, information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention (cf RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 593–594).
• In order to be “available”, information said to destroy novelty must “enable” the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point ( [Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 581–582; [1996] FCA 1544 (Stanway Oyster)]).
31 The parties emphasised other principles relevant to anticipation or prior disclosure of an invention such as to destroy novelty by an act.
32 Seeking to support its proposition that “the use of measuring devices such as a ruler, a probe, a skewer, a depth gauge or vernier calipers were standard tools of the trade that were available and used by skilled addressees before the priority date to ascertain various features of synthetic grass surfaces such as the height of the ribbon, gauge, level of infill and width of the ribbon” and that such uses to ascertain features of the prior acts relied upon should be understood to be orthodox, TigerTurf made the following points:
(1) In Jupiters, the Full Court held at [138] that what is required to satisfy anticipation by an act is an “enabling disclosure” of the invention by the prior conduct and, in the course of its reasoning, referred to a number of UK decisions including PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 225 (PLG Research) (unaffected by the subsequent appeal [1995] RPC 287) and noted (at [141]) that Aldous J held that a skilled addressee may use “available investigation techniques to analyse samples of product and glean the information that could be so gleaned”, an approach confirmed by Lord Hoffmann in Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1995) 33 IPR 1 at 11.
(2) The Full Court in Jupiters also referred to Lux Traffic Controls Ltd v Pike Signals Ltd [1993] RPC 107 (Lux Traffic) where Aldous J at 133 said:
It is settled law that to invalidate a patent a disclosure has to be what has been called an enabling disclosure. That is to say the disclosure has to be such as to enable the public to make or obtain the invention. Further it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public. Thus an anticipating description in a book will invalidate a patent if the book is on a shelf of a library open to the public, whether or not anybody read the book and whether or not it was situated in a dark and dusty corner of the library. If the book is available to the public, then the public have the right to make and use the information in the book without the hindrance from a monopoly granted by the State.
(3) At 134 in Lux Traffic, Aldous J made this point:
In the case of a written description, what is made available to the public is the description and it is irrelevant whether it is read. In the case of a machine it is that machine which is made available and it is irrelevant whether it is operated in public. A machine like a book can be examined and the information gleaned can be written down. Thus what is made available to the public by a machine, such as a light control system, is that which the skilled man would, if asked to describe its construction and operation, write down having carried out an appropriate test or examination. To invalidate the patent, the description that such a man would write down must be a clear and unambiguous description of the invention claimed.
(4) In Insta Image, the Full Court held at [124] that:
[i]n order to be “available”, information said to destroy novelty must “enable” the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point (Stanway Oyster at 581–2; 35 IPR 71 at 75-6).
(5) This limitation derives from Hill v Evans (1862) 1A IPR 1 at 6 (Hill v Evans). However, the “further experiments” do not include those that formed part of standard procedure, common general knowledge or ordinary means of trial and error but rather experiments with a view to discovering something not disclosed: C Van der Lely NV v Bamfords Ltd [(1962) 1A IPR 86] at 90; H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151; [2009] FCAFC 70 (Lundbeck) at [173]-[192].
33 I accept these submissions. I accept also that the kinds of activities necessary to determine the features of artificial turf which were central to these appeals – the gauge or distance between the rows of ribbons, the overall length of the ribbons, the extent of the ribbons above the infill, the depth and general constitution of the infill, and the nature of the backing layer or layers – would all be readily ascertainable by a person skilled in the art if presented with a sample or an installation of artificial turf.
34 FieldTurf emphasised that s 7(1) does not treat information made publicly available in a document differently from information made available by the doing of an act. In both cases, as stated in Hill v Evans at 1A IPR 7, the prior art information:
must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. … Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited and accurate, and gives a specific rule of practical application.
35 To the same effect, in Lundbeck at [190], the Full Court of this court said:
the Court … must determine whether the prior disclosure is sufficient to enable the skilled addressee to perceive, understand and, where appropriate, apply the prior disclosure necessarily to obtain the invention.
36 Accordingly, the statement in General Tire & Rubber Co v Firestone Tyre and Rubber Co [1972] RPC 457 (General Tire) at 485 to 486 applies to not only prior publications but also prior acts, that statement being:
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. …[I]f carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which…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 a 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.
37 Further, Lux Traffic at [1993] RPC 134 provides a useful guide:
Thus what is made available to the public by a machine … is that which the skilled man would, if asked to describe its construction and operation, write down having carried out an appropriate test or examination. To invalidate the patent, the description that such a man would write down must be a clear and unambiguous description of the invention claimed.
38 FieldTurf also stressed that where the nature of the invention claimed comprises a combination of features, in order to properly anticipate the invention, the prior art must disclose all of the essential integers together in that combination, citing in support the observation of Lockhart J in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517; 16 IPR 545; [1990] FCA 40 (Nicaro) that:
In the case of combination patents cross-references in one specification which has some of the elements of a combination patent to another specification which has other elements do not disclose the combination. The essential point is that it is the combination which must be disclosed in the case of a combination patent.
39 FieldTurf’s final main point of principle was that the cautions against hindsight often found in the context of resolving claims of obviousness or lack of inventive step are relevant to the skilled addressee’s ascertainment and understanding of prior art documents and prior acts. Both are to be assessed at the date of publication of the document or the doing of the act (General Tire at 485; Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (2012) 210 FCR 21; [2012] FCA 944 at [213]-[214] and Aspirating IP at [168]).
40 In Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420; [2005] FCA 805 (Austal Ships) at [156] Bennett J characterised a witness’s evidence as an attempt to be objective in circumstance where the witness was:
looking for the integers of the claims in the…article and trying to find them, if necessary by combining different parts of the article without explanation of why he would have done so at its publication date in the absence of knowledge of the claims.
41 This, said Bennett J, was evidence that “could not be said to have weight as evidence of what the article would have disclosed at the relevant time or what would have been read out of the article at that time without knowledge of the patent application”.
42 According to FieldTurf:
Hindsight is just as “insidious” in a novelty context as with obviousness because the invention cannot have “been before made known” if one uses (even subconsciously) one’s knowledge of the invention as claimed in the patent in suit to identify the relevant features in the prior art.
43 I accept FieldTurf’s submissions in this regard. In particular, I accept that the invention as claimed involves a combination of integers including the relationship between the specified distances between the rows (or the gauge) and the length of the ribbons (the length must be at least twice the gauge) together with the relationship between the depth of the infill and the length of the ribbons extending beyond the infill (a surface designed or intended for infill of two-thirds the height of the ribbons so that the free length of ribbon extending above the infill can overlap with the corresponding free length of ribbon from adjacent rows) so as to encapsulate the infill.
2.5.2 Prior acts said to destroy novelty
44 TigerTurf identified each of the following acts as one which resulted in enabling disclosure or anticipation of the invention:
(1) the installation of a synthetic grass surface by Supergrasse at Randwick Racecourse in or around 1986 (the Randwick Installation);
(2) the installation of a synthetic grass surface by Supergrasse at Cronulla Golf Club in or around 1988 (the Cronulla Golf Installation);
(3) the installation of a synthetic grass surface by Supergrasse at Gold Coast Turf Club in or around 1986 (the Gold Coast Installation);
(4) the installation of a synthetic grass surface by Supergrasse at the Cronulla Rugby League Club, commonly known as Endeavour Fields, in or around 1986 (the Cronulla Rugby Installation); and
(5) the display at the premises of Supergrasse of samples of the synthetic grass surface used in the Randwick Installation, which were shown to customers of Supergrasse including officials of Randwick Racecourse and the Cronulla Rugby League Club (the Supergrasse samples),
as well as a combination of related acts, being:
(6) the Supergrass samples and the Randwick Installation; or
(7) the Supergrasse samples and the Cronulla Rugby Installation.
45 Mr Rooks gave evidence about each of these installations and samples. There are also some documentary records relating to the installations and samples.
46 Some facts about the installations are not in dispute.
47 It is common ground that:
(1) Supergrasse installed an artificial turf crossover at Randwick Racecourse in November 1986. The crossover was installed at the 2000 metre mark of the racetrack and was used by pedestrians and cars to cross over the racetrack into and out of the car park which was located at the centre of the racetrack.
(2) Supergrasse installed an artificial turf crossover at the Gold Coast or Southport Racecourse in early 1986. The crossover was used by pedestrians and cars to cross over the racetrack into and out of the car park which was located at the centre of the racetrack.
(3) Supergrasse installed a strip of artificial turf at the Cronulla Rugby League Club in November or December 1986.
(4) Supergrasse installed synthetic grass surfaces as practice tees at the Cronulla Golf Club in 1988.
48 Leaving aside Mr Rooks’ evidence as to his recollections of the installations, there is some other evidence about them which should be identified.
49 Randwick Installation: On 23 August 1987, the Sydney Morning Herald (the SMH) published an article about three installations of artificial turf at the Randwick Racecourse, including the Randwick Installation. The SMH article said the first crossings were at the 2000 (the Randwick Installation) and 1600 metre marks. Wood fibre surfaces had previously been used for the three crossings, but had been covered by the “nylon-type Supergrasse strip”, which was intended as a “temporary measure only”. The article continued:
Supergrasse is polypropylene fibre. It is woven into rubberised backing and looks like grass. The millions of green strands measure about 9cm and resemble a carpet of green.
After being laid the tiny spaces between the strands are filled with sand which keeps them perpendicular.
50 Photographs of the Randwick Installation show the crossover. It is not possible to discern from these photographs anything other than the surface on which the turf was laid and the turf itself. The turf looks like grass with no sand or infill obviously visible.
51 Gary Waterford, the former Managing Director and owner of Supergrasse, produced four boxes of samples to the court under subpoena. From those four boxes, Mr Rooks identified one sample which he believed exhibited the features of the artificial turf at the Randwick Installation (Exhibit 4). As this evidence depends on Mr Rooks’ evidence of recollection it is not the same type of evidence as the SMH article and is encompassed by the discussion of Mr Rooks’ evidence below.
52 Exhibit 11 is a Balsam product specification dated November 1995. One specification relates to equestrian turf for track crossover. The specification includes features being twisted polypropylene tape, a pile height of 72 mm +/- 3%, a machine gauge of 9.52 mm (approximately 3/8 of an inch), a polypropylene and rubber latex backing, with infill of fine graded silica sand.
53 Exhibit 12 is a Balsam publication from April 1996 entitled “A Complete Guide to Sports Facilities”. The document includes a section entitled “Equestrian”. That section states:
1. SUPERGRASSE RACE TURF
1.1. History
• Supergrasse Race Turf was developed in the mid 1980’s as a durable, physically friendly and aesthetically pleasing surface for horses.
1.2. Overview
• 72mm sand filled synthetic grass over an optional 50mm Elastic Layer (E-Layer)
...
1.6. Installation
• Loose laid and sand filled over compacted earth, roadbase, asphalt or concrete.
• If laid over E-Layer it may be glued down and sand infilled.
1.7 References
| Country | City | Project Name |
| Australia | Gold Coast | Southport Racecourse |
| Sydney | Randwick Racecourse | |
| Sydney | Horse World Equestrian Centre | |
| Canberra | Canberra Racecourse |
54 The specification in this section of Exhibit 12 relates to equestrian turf for track crossovers. The specification includes the same features as Exhibit 11.
55 Exhibit 14 is a sample of artificial turf. It was produced in response to a subpoena to Mr Waterford requiring, relevantly, production of a sample of the synthetic turf installed at Randwick Racecourse in 1986. The sample as produced has a tag on it, the admissibility of which is in dispute. The tag bears handwriting in pencil and in pen. The pencil states “Royal Randwick” and “Flemington Caulfield” and the pen, in a different hand, states “2-3-4D”. The gauge of the sample is 3/8 of an inch or 9.52 mm, in other words, the same gauge as described in the Balsam documents. The length of the ribbon is 55 mm. The tag is undated. No evidence was given as to the identity of the author or authors of the handwriting. It may be supposed that the marking “2-3-4D” was intended to be a reference to categories 2(d), 3(d), and 4(d) of the subpoena which call for production of “a sample of the synthetic turf product(s) installed” at various locations including the Randwick Racecourse.
56 If the tag on Exhibit 14 is admissible to prove the truth of the statements on the tag, then it cannot prove that Exhibit 14 is a sample of the artificial turf as laid in the Randwick Installation. This is because there were three installations at Randwick around 1986 to 1987 and the alleged prior use is the first of those installations only. At best, the tag represents Mr Waterford’s opinion that Exhibit 14 is a sample of what was installed at Randwick on one occasion in 1986. Mr Waterford was not called to give evidence. His opinion, if admissible, is untested. The statements are also untested hearsay, their provenance entirely speculative. They could have been made at any time during the 24 to 28 years since the installations referred to in the subpoena. For these reasons, if admissible, the tag is not reliable evidence. All that Exhibit 14 proves is that, among the Supergrasse samples Mr Waterford held, at least one is for artificial turf with a gauge of 3/8 of an inch or 9.52 mm and a ribbon length of 55 mm.
57 Apart from this, the evidence about the Randwick Installation depends on Mr Rooks’ evidence. The overall effect of Mr Rooks’ evidence is that, insofar as material to the dispute between the parties, the Randwick Installation had a flexible backing member made from a single layer of woven polypropylene material (itself a permeable material) with its underside coated with latex (which, according to Mr Rooks, although not permeable, could be made permeable by perforating the latex using needles), a gauge of 3/4 inch, a pile height of 75 mm, a capacity to receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill could overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill, and had an infill layer substantially equal to 2/3 the length of the ribbons, consisting of a combination of sand and cryogenically ground rubber.
58 Gold Coast Installation: Photographs of the Gold Coast Installation show the artificial turf being laid in squares. The ribbon length looks relatively long compared to the other grass visible.
59 The Gold Coast Installation was also the subject of various contemporaneous articles. One, in a newspaper, described the installation as a test strip of artificial turf about 12 metres wide by 30 metres long.
60 Another roughly contemporaneous article in a racing publication about the Gold Coast Installation said that the synthetic turf used in racing was very different from other applications such as tennis courts and hockey fields. Thus:
The “turf” used in the world of thoroughbreds is very different; it gives the appearance of long (6” – 8”) of synthetic fibres bonded together in tufts. They are joined to matting of incredible durability and sand is spread over the section.
61 Six to eight inches is 152.4 mm to 203.2 mm.
62 Photographs in the racing publication show horses racing across the Gold Coast Installation. These display the artificial grass as having a mottled appearance with sand visible at the surface across the installation and, where the horses are racing, sand being kicked up.
63 The Balsam publications, which reference the Gold Coast Installation, are referred to above.
64 Mr Rooks identified one sample produced in Mr Waterford’s four boxes which he initially believed to be a sample of the Gold Coast Installation. In a subsequent affidavit, he concluded that, while the sample exhibited a number of features of the artificial turf at the Gold Coast Installation, it had a different backing and did not have twisted ribbons. Ultimately, Mr Rooks concluded that the sample was not a sample of the Gold Coast Installation.
65 Apart from the photographs and publications, the evidence about the Gold Coast Installation depends on Mr Rooks’ evidence. The overall effect of Mr Rooks’ evidence is that, insofar as material to the dispute between the parties, the Gold Coast Installation had a flexible backing member made from a single layer of woven polypropylene material with its underside coated with latex, a gauge of 3/4 inch, a pile height of 90 mm, a capacity to receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill could overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill, and had an infill layer substantially equal to 2/3 the length of the ribbons, consisting of a combination of sand and cryogenically ground rubber.
66 Cronulla Rugby Installation: The Cronulla Rugby Installation was publicised in a television news feature in 1987. The news feature shows three samples of Supergrasse, two in perspex boxes with infill and one loose sample without infill. The loose sample is depicted adjacent to a fourth sample of artificial turf (also without infill) displaying a much shorter pile. Later in the video, the strip of installed Supergrasse is shown adjacent to the natural grass playing field at Endeavour Field.
67 Apart from this, the evidence about the Cronulla Rugby Installation depends on Mr Rooks’ evidence. The overall effect of Mr Rooks’ evidence is that, insofar as material to the dispute between the parties, the Cronulla Rugby Installation had a flexible backing member made from a single layer of woven polypropylene material with its underside coated with latex, a gauge of 3/4 inch, a pile height of 65 mm, a capacity to receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill could overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill, and had an infill layer substantially equal to 2/3 the length of the ribbons, consisting of a combination of sand and cryogenically ground rubber.
68 Cronulla Golf Installation: There are no contemporaneous documents relating to the Cronulla Golf Installation.
69 There are other documents which are potentially relevant to the Cronulla Golf Installation, however.
70 A Supergrasse publication about golf from 1988 refers to 75 mm pile height sand filled polypropylene Supergrasse. The publication includes a diagram showing a tee driven into the infill between the ribbons. A version of the drawing, to scale, is in evidence (exhibit 16). It depicts the pile height as 75 mm and the infill height as 64 mm or about 85% infill. If the infill height were materially lower, at 2/3 (50 mm) or 66% (49.5 mm), the tee as shown could not readily be embedded in the infill and still project above the height of the ribbons so as to enable the ball to be teed up.
71 A Supergrasse “Technical information” brochure which can be dated to the period between 1987 and 1990 includes a “Golf Tee Installation Procedure” showing a diagram of 75 mm sand filled synthetic turf with a 5 mm un-sanded pile. The height of the infill is thus 70 mm, being approximately 93% the height of the ribbons.
72 A set of Supergrasse “Manufacturing Quality Control Sheets” for “Golf Turf Tee” refers to a pile height of 50 mm and a gauge of 3/8 inch.
73 A Balsam publication “Guide to Golf” from the early 1990s refers to pile heights up to 50 mm and infill of either graded silica sand or rubber granulate (not sand and rubber granulate).
74 Exhibit 12, Balsam’s “A Complete Guide to Sports Facilities”, has a section dealing with golf tees which refers to long pile, sand filled synthetic grass and includes specifications of 50 mm pile height with a gauge of 9.52 mm or 3/8 inch. This publication also discusses the use of rubber granules as a substitute for sand in Korea.
75 Apart from this, the evidence about the Cronulla Golf Installation depends on Mr Rooks’ evidence. The overall effect of Mr Rooks’ evidence is that, insofar as material to the dispute between the parties, the Cronulla Golf Installation had a flexible backing member made from a double layer of polypropylene material with its underside coated with latex, a gauge of 3/4 inch, a pile height of 75 mm, a capacity to receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill could overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill, consisting of a combination of sand and cryogenically ground rubber.
76 Supergrasse samples: The Supergrasse samples are two of the samples of Supergrasse turf shown on the news feature about the Cronulla Rugby Installation, being one of the samples in a perspex box (with infill) and the loose sample (without infill). Leaving aside Mr Rooks’ evidence about those samples, it may be accepted that various customers of Supergrasse saw those samples when they visited Supergrasse’s premises in and around 1986 to 1987. Those customers could have ascertained from the samples their features including the length of the ribbon, the depth of the infill, the length of the exposed ribbon extending above the infill, the gauge, and the general composition of the infill. Insofar as what those features were, again leaving aside Mr Rooks’ evidence, all that can safely be said is that the samples show a much longer pile than the adjacent sample indicated as representative of the turf used in American football. There is some evidence (dealt with below) that suggests the pile length is at least 10 times that of the adjacent short pile sample, an estimate that I accept. The sample in perspex also shows sand infill. There is some evidence about the height of that infill from Mr Rooks which is dealt with as part of the assessment of his evidence. Based on nothing more than a visual estimate of the screen shots, it is apparent that the infill is unevenly distributed but clearly extends towards the top of the perspex box. To the extent that it was submitted that a person could ascertain that the sample in the top box showed a 2/3 infill from the news feature, as opposed for example to some higher level infill such as 3/4 or 4/5, I do not agree.
77 It is now necessary to consider Mr Rooks’ evidence.
78 Mr Rooks worked in the industry between 1979 and 2002. I infer that during this period he must have seen many hundreds, possibly thousands, of samples of artificial turf and numerous installations across a wide range of venues. As he put it in an affidavit he made in 2004:
I have been directly involved in the manufacture and installation of hundreds of synthetic grass surfaces that have been installed over the years for use on tennis courts, hockey pitches, bowling greens, cricket pitches, golf greens, golf tees, horse racing tracks, dog racing tracks, athletic tracks, netball courts, basketball courts, baseball diamonds, children’s playgrounds, leisure areas and croquet greens in Australia prior to 1997.
79 Mr Rooks retired in 2002.
80 It appears that Mr Rooks was first requested to provide evidence relating to his recollections of Supergrasse’s products in the context of a proceeding commenced in 2002 between FieldTurf and Mr Rooks’ former employer, Balsam, which opposed the grant of a FieldTurf patent, Australian patent No 730904 (the 904 application), the parent of the 2004 application. Mr Rooks provided an affidavit in that proceeding in 2004. For that purpose he was provided with the 904 application which claimed, amongst other things, a synthetic turf having an infill substantially equal to 2/3 of the length of the ribbons. In this affidavit (Rooks 1) Mr Rooks referred to the Randwick and Gold Coast Installations, as well as the Cronulla Golf Club Installation. He did not mention the Cronulla Rugby Installation. He also referred to a sample that he found in his garage which he said was a sample of the turf installed in the Randwick Installation.
81 In 2006, he made another affidavit in respect of a proceeding in Canada. Again, FieldTurf was the applicant for patents including the Canadian equivalent of the 904 application. In this affidavit (Rooks 2), he referred to a number of installations including the Randwick Installation, the Gold Coast Installation and the Cronulla Golf Club Installation. No reference was made, however, to the Cronulla Rugby Installation.
82 In October 2011, he made an affidavit in this proceeding (Rooks 3). For the purpose of doing so he re-read Rooks 1 but not the 904 application. In this affidavit, he referred to the Randwick Installation, the Gold Coast Installation and the Cronulla Golf Club Installation. He also referred to the sample identified in Rooks 1 and said an equivalent sample was used in discussions concerning the Randwick Installation. He said samples of each installation were used in discussions with racing officials prior to the installation. He referred also to a sample produced by Mr Waterford (presumably in the four boxes of samples which Mr Waterford produced under subpoena) which Mr Rooks said matched the artificial turf used at the Gold Coast Installation.
83 In another affidavit made later in 2011 (Rooks 4), he dealt with the samples in more detail. He also dealt with the 2004 application with which, by that time, he had been provided.
84 In yet another affidavit made later again in 2011 (Rooks 5), Mr Rooks dealt with two Canadian patents relied upon by TigerTurf as prior art disclosing the invention claimed in the 2004 application.
85 In 2012, Mr Rooks made an affidavit in reply (Rooks 6) in which, amongst other things, he dealt with Randwick Installation and a sample, Exhibit 3, which he said “has all of the characteristics of” the Randwick Installation.
86 In December 2013, Mr Rooks made another affidavit (Rooks 7). In this affidavit he dealt with a request from TigerTurf’s lawyers that he review the news feature relating to the Cronulla Rugby Installation, which reminded him of that installation. He discussed his recollections of the Cronulla Rugby Installation and the other installations in that context.
87 In his final affidavit made in 2014 (Rooks 8), Mr Rooks dealt with the samples shown in the news feature and further recollections about each of the four installations, the Randwick Installation, the Gold Coast Installation, the Cronulla Golf Club Installation and the Cronulla Rugby Installation.
88 TigerTurf submitted that Mr Rooks’ evidence should be accepted. As TigerTurf put it, Mr Rooks “was no longer involved in the synthetic turf industry and had nothing to gain financially or otherwise from these proceedings (or the Canadian proceedings or the 2004 Balsam proceedings)”. Further, Mr Rooks’ evidence was consistent about the characteristics of the installations and corroborated by other evidence.
89 To the extent that corroboration is called in aid, some observations should be made, excluding those comments about other sources of evidence already made above.
90 TigerTurf submitted that Exhibits 3 and 19 are “powerful evidence corroborating Mr Rooks’ consistent evidence as to the features of the Randwick Installation (including the 3/4 inch gauge and 75 mm height)”. Exhibit 3 is a small and rather dilapidated section of artificial turf which has a 3/4 inch gauge and 75 mm ribbon length. Exhibit 19 is a subpoena to the solicitor in the 2004 proceeding requiring production of the sample Mr Rooks exhibited to his 2004 affidavit as turf having the same characteristics as the Randwick Installation. Exhibit 3 was produced in response to this subpoena. The relevant fact is that it was Mr Rooks who first identified this sample, found in his garage, as being a sample of the Randwick Installation. No evidence, save that he located the sample in his garage, was given as to how Mr Rooks identified the sample. Mr Rooks’ own evidence was that he could not confirm, one way or the other, whether Exhibit 3 was in fact the sample exhibited to his 2004 affidavit, the 2004 exhibit being “a brand new sample” and “much larger” than Exhibit 3. Mr Rooks’ basis for concluding that Exhibit 3 may be the 2004 sample is that Exhibit 3 “has all of the characteristics of” the Randwick Installation. However, under cross-examination, Mr Rooks agreed that Exhibit 3 had a green backing which was not latex, whereas the Randwick Installation had a black latex backing. To the extent that it may be inferred from the subpoena that Exhibit 3 was in fact the 2004 sample, the corroboration remains only as good as Mr Rooks’ recollection in 2004 about those characteristics of an installation that occurred in 1986. TigerTurf’s submission is that it “is no coincidence that the sample produced by Ms Platt had the same features as the Randwick Installation as evidenced by Mr Rooks (including a gauge of 3/4 inches and a height of 75 mm)”. This submission overlooks the original source of the sample, Mr Rooks. He recollected what he believed the characteristics of the Randwick Installation to be and then located a sample that matched. It is not clear what other samples, if any, Mr Rooks had available in 2004. What is clear is that Mr Waterford at least retained numerous samples of artificial turf exhibiting many different characteristics. Accordingly, apart from Mr Rooks’ recollection, all that can be said is that Exhibit 3 shows that Supergrasse products included a product which has a 3/4 inch gauge and 75 mm ribbon length.
91 TigerTurf said also that it was “no coincidence” that Exhibit 4, another sample with a 3/4 inch gauge and 75 mm ribbon length, was produced by Mr Waterford under subpoena. The import of this submission is unclear. As discussed, it is apparent that Supergrasse products included turf with a 3/4 inch gauge and 75 mm ribbon length. Hence, it is no surprise that Mr Waterford produced this sample. The relevant point is he did so amongst four boxes of samples in circumstances where the samples tendered in evidence show many different characteristics. The identification of Exhibit 4 as having the same characteristics as the Randwick Installation and the Cronulla Golf Installation does not emerge from the sample itself. It is dependent on Mr Rooks’ recollection.
92 TigerTurf said the news feature “plainly showed the sample without the infill as having a gauge of 3/4 inches”. I cannot agree with this submission. I accept the news feature shows a sample of longer pile turf with a gauge which is wider than the gauge of Exhibit 14 (the exhibit with the disputed tag – yet another sample Mr Waterford produced, with a gauge of 3/8 inch and a pile height or ribbon length of 55 mm) and that, if a person skilled in the art had Exhibit 14 and the news feature available for comparison, the person would be able to see the gauge difference. This supports the inference that Supergrasse products included a long pile turf with a wider gauge than 3/8 inch and that such a product was used in the Cronulla Rugby Installation.
93 It is this evidentiary context in which FieldTurf submitted that “TigerTurf relies solely on the evidence of Mr Rooks to establish its prior use case”. To the extent that TigerTurf’s prior use case depends on proving the characteristics of the prior uses above and beyond the generality of artificial turf with a long pile height and a gauge wider than 3/8 inch, this submission is accepted. This is because the evidence discloses that Supergrasse had a range of products with different pile heights, gauges, infill heights, backing layers, and infill composition. The thing linking products and samples having particular characteristics (specific pile heights, gauges, infill heights, backing layers, and infill composition) with the four installations is Mr Rooks’ recollection.
94 Mr Rooks, I accept, was responsible for the manufacture and installation of the Randwick Installation, the Cronulla Golf Installation and the Cronulla Rugby Installation, and the manufacture but not installation of the Gold Coast Installation. I accept also that Randwick was seen by Supergrasse as a “world first” and very important, and that Mr Rooks would have good reason to recall the fact of that installation. What is inherently more difficult to accept is that from the hundreds of different installations in which Mr Rooks was involved over 23 years, he could, when asked some 18 years after the events in question, recall the details (in terms of specific pile heights, gauges, infill heights, backing layers, and infill composition) of any particular installation. Having been asked to do so in the context of opposition to a patent in 2004 (the 904 application), in circumstances where Mr Rooks had been given the patent, it is also likely that his entire process of initial recollection was affected by knowledge of the relevant integers of the 904 application which included a 2/3 infill height, long pile and wide gauge. This would have been reinforced in 2006 when Mr Rooks again gave evidence in opposition proceedings relating to other patents which he read including the Canadian equivalent of the 904 application. Mr Rooks re-read his 2004 affidavit before he made any affidavit in this proceeding, again likely reinforcing in his mind the relevant integers of the 904 application despite not having read that application again.
95 FieldTurf described the process of Mr Rooks’ evidence as a form of “self-reinforcing tapestry”. I consider this accurately reflects what is apparent from Mr Rooks’ numerous affidavits. In particular, it is apparent that additional information made available to Mr Rooks over the past ten years, unsurprisingly, has been understood by him within the framework which he has had in his mind since 2004. None of this is said by way of criticism of Mr Rooks. It is said only to explain that the cautions expressed about witnesses trying to recall details from many years before, particularly when the recollections are affected by knowledge of what is now relevant, have real force in this case. FieldTurf’s analysis of Mr Rooks’ evidence discloses why these cautions have that effect. It is difficult to improve on the structure and content of that part of FieldTurf’s submissions and thus the following section relies heavily upon them.
96 The first point FieldTurf made was that “the first time that Mr Rooks swore an affidavit setting out the features of three of the installations was nearly two decades after the surfaces were installed. It is now nearly three decades”. I have made the same point above. The significance of it should not be underestimated. It is an extraordinarily long time after the events in question. The risk of incorrect recollection and reconstruction instead is thus heightened.
97 The second point FieldTurf made was that “all of Mr Rooks’ evidence had been provided with full knowledge of the claimed invention” because in 2004 before he made his first affidavit he was shown the 904 application, the parent of the 2004 application and then, in 2006, was shown the equivalent Canadian patents. Again, the significance of this also cannot be overlooked. All of Mr Rooks’ evidence in 2004 and 2006 involved an attempt to recollect things relevant to the 904 application, the parent of the 2004 application. The subsequent fact of not reading the 2004 application before his evidence in 2011 cannot change the effect of what occurred in 2004 and 2006. His evidence in this proceeding was based on his 2004 and 2006 evidence. Accordingly, it must be accepted that Mr Rooks was never in a position to avoid the effects of hindsight.
98 The third point FieldTurf made was that Mr Rooks’ evidence changed over time. This too should be accepted. The course of development of Mr Rooks’ evidence is significant. It tends to reinforce the overall impression of reconstruction and forcing new information to fit within a framework first identified in 2004. Adopting FieldTurf’s examples, my comments are set out in the following paragraphs.
99 Mr Rooks appears not to have recollected the Cronulla Rugby Installation at all until shown the news feature in 2013. However, when shown it he appeared to recollect details based more on the evidence he had already given than things readily apparent from the news feature itself. It is difficult to accept that, simply having been reminded of the Cronulla Rugby Installation, specific details about pile height, infill level and the like would return to Mr Rooks’ mind after 25 years separate from what is clear from the news feature, being a long ribbon height and wide gauge.
100 In Rooks 1 and Rooks 2, Mr Rooks said that the Gold Coast Installation had the “same characteristics” as the Randwick Installation, characteristics said to include a pile height of 75 mm. In Rooks 3, some 5 to 7 years later, he said the pile height of the Gold Coast Installation was 90 mm. He then explained this by saying that, in the industry, “same” meant “similar”. I find this evidence unpersuasive. It is far more likely that Mr Rooks, in 2004 and 2006, believed that Gold Coast Installation had the same characteristics, including 75 mm pile height and 3/4 inch gauge, as the Randwick Installation. I do not accept that he simply meant long pile and wide gauge. If he had meant so, his evidence would have remained at that level of generality. His evidence, however, purported to give precise details about the installations. It is also likely that he was reminded that the Gold Coast might have had a different pile length by reason of the fact that, by the time he identified the Gold Coast Installation as having a pile length of 90 mm, he had seen a sample with a 90 mm pile length produced by Mr Waterford. That sample started in Mr Rooks’ description in Rooks 3 as a sample of what had in fact been installed at the Gold Coast, transformed in Rooks 4 to a sample identical to that which had been installed at the Gold Coast and, in Rooks 8, ultimately became not a sample of what had been installed at the Gold Coast because it had a different backing (which he had “never worked with” while at Supergrasse) and was not fibrillated but otherwise had the “same characteristics” as what had been installed at the Gold Coast.
101 As FieldTurf said, this sequence “places Mr Rooks’ evidence of his recollection of the details of the Gold Coast Installation on a very uncertain footing”. So too does the article about the Gold Coast Installation referring to tufts of 6 to 8 inches (152 to 203 mm). Even if the length of the tufts has to be halved (the evidence on this issue is confusing to the say the least and is incapable of resolution with any degree of confidence) then the range is 76 to 101 mm. While 90 mm is within this range, it is more a reflection of the breadth of the range than anything else. Mr Rooks’ explanation that the range of 6 to 8 inches was a reference to the Randwick Installation and Gold Coast Installation respectively (each being halved to give the actual pile height) is unpersuasive. The nearest imperial measurement to 90 mm (as doubled) is 7 inches, not 8 inches. The article is about the Gold Coast Installation, yet there is no reference to 7 inches. Moreover, if the tuft length should not be halved (and there is some weight to the view it should not, as the author was describing the appearance of the turf) then the range of 152 to 203 mm is far longer than Mr Rooks said.
102 Mr Rooks originally gave evidence in Rooks 1 that the Randwick Installation included a rubber underlay. However, during cross-examination, he said there was no underlay at Randwick. When this inconsistency was pointed out to him, the evidence emerged as follows. Mr Rooks said (in order):
(1) “…it was a road base on Randwick, rubber underlay on Gold Coast. Combination of sand and rubber infill ..... there might have been a portion of rubber underlay but mainly it was on road base on both sides”.
(2) “…we might have put a patch where the cars come in, but it was mainly road base on Randwick”.
(3) “We would have put a patch of rubber underlay just as a trial system but not totally over the whole field – the whole area”.
(4) “That’s why I probably used it, because we may have used a section of ..... when it was pulled up, you know, or installed”.
(5) Rubber underlay “definitely wasn’t totally right over”.
(6) “But at the time, we – we were trialling sections where the cars were driving and we may have put a section in. I probably thought at the time, “Well, I must have put rubber underlay because of the little portion of that there,” you know. But I remember it was mainly road base on the size of that area and it was also – it wasn’t a thick underlay; it was only a very fine underlay just as a trial, being the first, you know, experimental racehorse turf”.
(7) “can’t give you the total area. I don’t – you know, whether it’s five square metres or two square metres ..... that situation, you know. But I put it in that reason for that – we must have used it in that declaration in 2004. Hang on. Wait a minute. Sorry. Sorry. It’s – my apologies. It has got Gold Coast Turf Club. Sorry. I thought we were talking Randwick, and the Gold – it’s the Gold Coast. The Gold Coast had rubber underlay. That’s – that’s where the confusing part is”.
103 Apart from the fact that this evidence goes from something that might have been, to would have been, to may have been and then back again, it is apparent that Mr Rooks’ conviction that there must have been some rubber underlay at Randwick is because he referred to it in his 2004 affidavit. None of the evidence suggests an actual recollection of anything. It suggests reconstruction based on what might or might not have been recalled or reconstructed in 2004. Moreover, when repeatedly confronted by what was a simple but basic inconsistency and a proposition that he did not actually recall the detail one way or another, Mr Rooks ultimately tried to explain it away as a result of some non-existent confusion about the heading of the section in his affidavit which referred to Randwick and the Gold Coast. This shows a marked tendency to attempt to force facts to fit within a particular framework. As FieldTurf submitted, “[m]istaken recollection, or a failure to recollect, is a completely normal part of the human condition”. The problem in evidentiary terms is when the distinction between recollection and reconstruction (the latter being another completely normal human process which we all use all the time in everyday life) is not recognised, particularly when, as FieldTurf said, the reconstruction is carried out “with full knowledge of the target, being the claimed invention”.
104 This tendency was apparent from other evidence including Mr Rooks’ evidence that a “professional-type person” would know the length of grass at Cronulla Golf Course, even if they had never visited the golf course and that the gauge of the Randwick installation was chosen to the match the “gauge” of the natural grass at the Randwick site. As FieldTurf said, given “gauge” is a product of needle spacing on a tufting machine, it does not make sense to speak of the “gauge” of natural grass. Mr Rooks’ explanation for the reference to 6 to 8 inch tufts in the article about the Gold Coast Installation referred to above is a further example.
105 Although I accept that Mr Rooks may have attempted to match the length of the pile to the actual grass height at the Randwick Racecourse, his explanations of why the photographs show the artificial turf as shorter than the adjoining natural grass were strained. Hence, he engaged in speculation that the natural grass “mightn’t have been mowed”, the artificial grass had not been groomed, and that it was hard to mow the grass near the edge of the installation. He ultimately said the natural and artificial grass looked exactly the same in one of the photographs but the fact is they do not in any of the photographs. The artificial turf is markedly shorter than the adjoining natural grass. The same problems affected his evidence about the Gold Coast Installation. All of the evidence about attempting to match natural grass heights raises another issue. It seems a sensible endeavour to attempt to match the artificial turf to the general length at which the natural grass was sought to be maintained at the facilities. Racecourses and golf courses, I infer, have to be regularly maintained and mowing the grass to appropriate levels for the sports would be a part of routine maintenance for such places. I thus accept that this is generally what Mr Rooks did. He agreed, however, that it was an “amazing coincidence that the height of the natural turf at Cronulla Golf Club was the same as in the straight at Randwick”. For both to be 75 mm this coincidence must be so – and it does seem amazing.
106 When Exhibits 11 and 12, the Balsam documents, were put to Mr Rooks he was at pains to dismiss them as mistaken, wrong and even false. It is true that the documents are not contemporaneous. But they refer expressly to the Supergrasse products, the rights to which Balsam had acquired from Supergrasse and, in Exhibit 12, also refer expressly to the Randwick and Gold Coast Installations. The inference that Exhibit 12 asks the reader to draw is that the referenced installations used a Supergrasse product with the characteristics identified in the specifications – specifically, a 3/8 inch gauge and sand only infill. I do not find persuasive TigerTurf’s attempts to dismiss these documents out of hand. I consider Mr Rooks rejected them as wrong simply because they did not match his evidence. However, the documents are entitled to weight and are thus evidence suggesting that Mr Rooks has not correctly recalled the gauge and infill composition of those installations. Moreover, some samples produced by Mr Waterford do have a 3/8 inch gauge, just as others have a 3/4 inch gauge. Supergrasse thus must have had products with both gauges. Supergrasse also certainly had products using sand only infill, and a newspaper article about the Randwick Installation described it as having sand infill. Another article, about the Gold Coast Installation, also referred to sand on top of the grass. Mr Rooks’ explanation that there was only a very small percentage of rubber in these installations so that Exhibits 11 and 12 would not bother to mention the rubber also suggests an attempt to make the facts fit his beliefs. This description of the rubber as a small percentage only is also difficult to reconcile with the balance of Mr Rooks’ evidence about the infill, discussed below.
107 Mr Rooks said in Rooks 1 that the Randwick Installation had a combination of sand and rubber infill. He said in Rooks 3 that the sand and rubber were mixed “to provide for a homogenous mixture”. Despite TigerTurf’s submission that Mr Rooks was not asked what he meant by “homogenous mixture”, the context of his statement indicates that the two were simply mixed together. However, the process he used to make Exhibit 6 (an example of a perspex box with 72-73 mm ribbons, a gauge of 3/4 inch and infill height of 2/3 of the ribbon height) was different and involved placing “rubber and sand alternately” into a sample box. Again, this might be thought to be a detail but it is the details which are critical in this case. But for the details, the evidence is simply long pile and wide gauge which cannot possibly anticipate the combination of the invention claimed.
108 Mr Rooks said in Rooks 1 that the level of the infill, and thus the length of exposed ribbon above the infill, varied widely over the Randwick Installation, being greater (20 to 25 mm) at the edge and less in the centre (15 mm) where cars would drive. On this basis, the infill height at Randwick varied between 2/3 (66%) and 4/5 (80%). Yet in this proceeding Mr Rooks’ consistently described Randwick as having a 2/3 infill. Despite Mr Rooks’ evidence to the contrary, the only plausible explanation for this is, as FieldTurf submitted, because Mr Rooks always knew the invention claimed involved 2/3 infill. Otherwise, there is simply no rational basis to characterise Randwick as 2/3 infill as opposed to 2/3 to 4/5 infill. When the variation in infill height was put to Mr Rooks, he said that an expert would test the infill height at one location only, at the edge where the infill was 2/3 height. This evidence was inconsistent with the evidence of others that infill height would be tested across an installation. Mr Rook’s determination not to concede that his own evidence could not support a characterisation of the Randwick Installation as simply having a 2/3 infill height was apparent from this evidence. His evidence about the equivalent Canadian patent was also telling. The Canadian patent claims used different language (“at least two thirds the length of the ribbons”) and in Rooks 2, his evidence in the Canadian proceeding, Mr Rooks’ evidence was that the Randwick Installation had infill “varying from at least 2/3 the length of the ribbons, more particularly varying from 2/3 to 0.8 the length of the ribbons”. The language of the 2004 application claims (an infill height of approximately two-thirds the ribbon height) is plainly implicated in Mr Rooks’ evidence in this proceeding that refers only to 2/3 infill height.
109 In respect of the Gold Coast Installation, Mr Rooks said that the infill was 2/3 (60 mm compared to a 90 mm ribbon length). However, Mr Rooks was not present at the installation of the artificial turf at the Gold Coast. The basis for his evidence is thus not apparent. As FieldTurf also said, the photographic evidence of the Gold Coast Installation shows sand across the surface. The infill would seem to be much higher than 2/3 the height of the ribbons.
110 In respect of the Cronulla Rugby Installation, Mr Rooks said the synthetic grass was “substantially the same, if not identical, to that used at Randwick Racecourse…, Cronulla Golf Club and the Gold Coast Turf Club” except for the 65 mm pile which was used either because it was rugby league or to match the natural grass height (which explanation prevailed was unclear). Mr Rooks considers the “same” to include “similar” and thus the precise characteristics of the Cronulla Rugby Installation, from his point of view, remain unclear. His evidence that if he saw the Cronulla Rugby Installation he would know it had a gauge of 3/4 inch, in my view, must be taken to reflect his belief that this was the gauge of the other installations.
111 Another valid concern to which the evidence gives rise is that if the Randwick, Gold Coast and Cronulla Rugby Installations used synthetic grass having the same characteristics (but for the pile height being 75 mm at Randwick, 90 mm at the Gold Coast and 65 mm at Cronulla, but all having an infill height of 2/3) then one would expect the contemporaneous photographic evidence to indicate that the installations looked the same or very similar. They do not, however. In particular, the Gold Coast Installation, said by Mr Rooks to have the longest pile at 90 mm and an infill of 2/3 or 60 mm, looks nothing like the Randwick or Cronulla Rugby Installations. As noted, sand is visible across the Gold Coast Installation. Sand is not visible in the Randwick or Cronulla Rugby Installations. A close-up of the Cronulla Rugby Installation, in particular, discloses a thick grass cover through which no infill is visible at all. If these installations had the same infill height and the Cronulla Rugby Installation the shortest pile, it would be natural to expect the opposite result; that is, visible sand at the Cronulla Rugby Installation but not at the Gold Coast Installation. Further, Exhibit 6, a sample Mr Rooks prepared for the purpose of this proceeding, with a 72-73 mm pile height and a 2/3 infill, said to have been prepared in accordance with the procedures used at the Randwick Installation looks different again. Even allowing for the fact that he pile has not been trodden down and flattened in Exhibit 6, it is difficult to imagine that wear could result in Exhibit 6 looking like, at the least, the Randwick and Cronulla Rugby Installations (that is, no visible infill). All of this casts real doubt on the accuracy of Mr Rooks’ evidence. At the least it suggests something far less than a 2/3 infill height at the Randwick and Cronulla Rugby Installations (the other alternative is far longer pile, but this seems unlikely given the appearance of the pile compared to the natural grass).
112 The evidence about the Cronulla Golf Installation also changed over time. In Rooks 1 and 2 the Cronulla Golf Installation had a single layer backing of permeable fabric (Mr Rooks’ evidence was that polypropylene backing was “usually used in single layers”). By Rooks 3 the Cronulla Golf Installation had a “multi-layer polypropylene backing”, a detail absent from his previous affidavits. Mr Rooks said the Cronulla Golf Installation had a 75 mm ribbon and 2/3 infill height (that is, 50 mm). However, Mr Rooks agreed that on the tee areas the exposed ribbon was only 5 mm indicating a 70 mm infill in those areas if the ribbon height was 75 mm. He was also challenged about the capacity to tee up if the infill was 50 mm and the ribbon height 75 mm (see the discussion above on this issue). His answer suggested two different infill heights – one for tee areas and one for irons play where the ribbon length was 60 mm. He also said the level of infill would have varied across the Cronulla Golf Installation from 2/3 at the edges to higher in the centre. He was also unsure of the size and nature of the installation and his evidence included attempts to reconstruct those details. I find this evidence unsatisfactory proof of Cronulla Golf Installation having any particular characteristics other than the fact of some installation of artificial turf, probably with a longish ribbon and probably with sand infill.
113 The fourth, and related, point FieldTurf made was that Mr Rooks refused to countenance any possibility that his purported recollections might be wrong. This is so. Mr Rooks, despite knowing he was dealing with events from 30 years ago when he was giving evidence, refused to accept that he might be wrong about details. This is inherently unlikely. Moreover, Mr Rooks was certainly wrong about some things. He was wrong about which installation came first, Randwick or the Gold Coast. This might be dismissed as a mere detail but, of course, the relevant parts of Mr Rooks’ evidence were the details. He was wrong in his initial belief that a sample was a sample from the Gold Coast Installation. He was wrong in his initial belief that the Randwick and Gold Coast Installations had the same characteristics. He forgot about the Cronulla Rugby Installation until reminded of it. The fact of being wrong is not the problem. The problem was Mr Rooks’ apparent belief that his memory of events from nearly 30 years before was unassailable and that, accordingly, all information to the contrary must be wrong or explained away by one means or another.
114 As to the Supergrasse samples, FieldTurf is correct in its submission that there is no evidence that these particular samples (the ones shown in the news feature at the Supergrasse premises) were shown to officials of Randwick Racecourse and Cronulla Rugby Club. It may be accepted those samples were at Supergrasse’s premises and available to be viewed by the public, but the characteristics of those samples, apart from the generalities of long pile and sand infill, and perhaps relatively wide gauge, is another matter.
115 Given my concerns about the quality of Mr Rooks’ evidence based on purported recollections as set out above, I do not accept his evidence that these samples have the same characteristics as the surface installed at Randwick Racecourse. This evidence, in any event, was inconsistent with the fact that the sample had a pile height at least 10 times as long as the adjoining short pile product. It does not matter that the short pile product is not necessarily Astroturf, a particular brand used for American football fields. What is relevant is that the short pile product was used to show synthetic surfaces used in other sport such as American football. For the sample to be the same as Mr Rooks said was used at Randwick, the pile height of the short pile product would have to be 7.5 mm or less. This seems untenable given that the evidence points to pile heights for American football fields of no less than 12 mm. More importantly, when the possible discrepancy became apparent to Mr Rooks, the following evidence emerged:
Well, if the short pile product there had a pile height in the order of 12 millimetres, that would make the pile height of the long pile product you can see in the order of 120 millimetres, wouldn’t it? Well, there’s 12 – I've ..... I just need some time just marking this, if I – just checking some – if that product was 12 mille, then in quick calculation measurements, it would put that long pile up to about 50, 60 milles.
I thought you agreed that the relationship of the short pile to the long pile was in the order of ten times? No.
You have changed your view about that now, have you? Ten times – no, it couldn’t be ten times. The – just trying to think ten –
Because you were measuring just the pile height on that short pile product on the left, not its underlay? One, two, three, four, five, six, seven, eight, nine, ten – ten times would – would bring it up to, yes, to close to 90 mille which is the Gold Coast – and I'm – could bring it close to the Gold Coast turf, that sample there.
Well, if – and different eyes might measure it different ways, but if the difference was in the order of ten times and if that short pile sample is in the order of 12 millimetres, that puts the long pile product at about 120 millimetres as a matter of simple mathematics, doesn’t it? No, not my mathematics, no. Keep – it’s up – it’s well under the 100 mille, just – just my measurements there. And it’s subject to – we
don’t know – not sure of the pile height there because that’s definitely the Gold Coast sample, which is 90 millimetres.
116 In other words, the sample in the news feature went from being a sample of what was used in the Randwick Installation (75 mm pile) to a sample of what was used in the Gold Coast Installation (90 mm pile) because it was apparent that the pile of the sample looked too long compared to the short pile product. This is not recollection; it is reconstruction.
117 Mr Rooks also attempted to measure the height of the infill shown on the news feature from a screen shot and came up with the answer that it was a 2/3 infill. FieldTurf’s criticisms of this exercise are sound. On any view of the screen shot, Mr Rooks has taken the wrong starting point for the bottom of the box so as to achieve the 2/3 infill result. As FieldTurf said it is actually “very difficult from the available evidence to determine the relative height of the infill, given the difficulty of locating the bottom of the box on the screen or on a screen shot, the quality of the images available, and the unevenness of the top of the infill”. Whatever the precise level, what is clear from Mr Rooks’ exercise is that the infill was materially greater than 2/3 because the bottom of the box is lower than Mr Rooks allowed. When challenged about this, Mr Rooks said “But that product there is – is our Randwick Racecourse which we knew was two - -”. In other words, Mr Rooks’ measuring exercise was designed to prove that the sample was the Randwick Installation which he believes has a 2/3 infill height. Again, this is evidence of Mr Rooks’ approaching data on the basis it should fit and support his beliefs.
118 It should be apparent from the above discussion that I am not satisfied that any of the installations or samples on which TigerTurf relied would have enabled a person skilled in the art to “write down…a clear and unambiguous description of the invention claimed” (Lux Traffic at 134). This is because, beyond the generalities of pile relatively long compared to synthetic turf used for tennis courts and hockey fields and the like, sand infill, and perhaps (but by no means practically certain) a relatively wide gauge compared to synthetic turf used for tennis courts and hockey fields and the like, it is not possible to make any finding as to what specific characteristics the skilled person would have discerned from any of the prior uses.
119 I accept FieldTurf’s submissions in this regard as follows:
TigerTurf has failed to discharge its onus with respect to enabling disclosure for at least the following reasons.
First, an integer or combination of integers that is not in fact present in the doing of an act cannot be disclosed, whether in an enabling fashion or otherwise. As submitted above, TigerTurf has not established that the prior acts involved surfaces with the requisite combinations of features.
Secondly, one cannot use hindsight to identify what it is that has been disclosed. All of TigerTurf’s evidence as to prior use was contaminated by hindsight. Only Mr Rooks could give direct evidence of the alleged prior uses and the shortcomings of that evidence are addressed above. The claimed combinations of features require, for example, particular relationships between pile and gauge, and pile and infill height.
120 I accept also FieldTurf’s submission that:
…it is only with the benefit of hindsight that a person of skill in the art could know that a particular relationship between the infill height and the pile height of two-thirds was a relevant consideration. A person skilled in the art is equally likely to have regard to the length of exposed ribbon as an absolute, stand-alone feature, as opposed to the question of proportion of the ribbon height as a whole. A similar conclusion may be drawn in respect of the pile/gauge ratio; without hindsight, there is no reason why the person skilled in the art would concentrate on, or determine, the relationship between those parameters.
121 It follows from these conclusions that, as FieldTurf put it:
…hypothetical evidence, whether given on affidavit or adduced in cross-examination, as to what a person could have observed on the assumption that certain properties were present is of limited utility. TigerTurf’s case is that the various installations and samples were publicly available, and that, generally with respect to installed properties, it would be possible to observe their properties. However, the Court must be satisfied that, in the case of each installation, it was in fact possible to observe each of the relevant features of the particular surface.
122 I agree, and I am not so satisfied. It is thus unnecessary to delve into the issues of the capacity of a skilled person to ascertain the properties of a synthetic surface. As discussed above, I generally accept TigerTurf’s case that such a person could have worked out the pile height, infill height, general infill composition, gauge, and backing layers from inspecting the installations and samples. The problem is, beyond the generalities identified, I do not know what they might have ascertained. Nor do I accept that, at the time of the installations, they would have been looking for the combination constituting the invention as claimed. That search is based on knowledge of the invention as claimed, and thus is a result of hindsight. Apart from Mr Rooks, none of the other witnesses’ evidence supported the inference that the person skilled in the art, at the relevant times in the mid-1980s, would have been looking for the combination of features comprising the invention.
123 For these reasons I also do not accept TigerTurf’s alternative submission that:
If contrary to TigerTurf’s submission, the Court does not accept Mr Rooks’ evidence in relation to the pile height of any of the Supergrasse Installations or the Supergrasse Samples, the evidence referred to above supports a finding that the ribbon length was at least in excess of 38 mm (the bottom end of the range in the claims) and no more than 127 mm (the top end of the range in the claims). In those circumstances, the position set out…above [ie enabling disclosure] remains unaltered.
124 It follows that TigerTurf’s case of lack of novelty based on prior uses, separately or in combination as pleaded, cannot succeed in respect of any claim.
2.5.3 Prior documents
125 TigerTurf relies on Canadian patents 2,095,158 (CA 158) and 1,182,484 (CA 484), both of which were publicly available before the priority date.
126 TigerTurf submitted that CA 158 “teaches the skilled addressee to use the constituents of the infill disclosed in CA ‘484” and otherwise teaches “certain advantages over CA ‘484”, including a longer pile height and a wider gauge. TigerTurf relied in particular on extracts from the specification as identified below.
Objects of the Invention
The gist of the present invention is therefore to provide a synthetic turf playing surface that addresses the needs of players wearing spike (or cleat)-bearing shoes, particularly for sports such as soccer, football and golf.
…
An important object of the invention is to provide such a synthetic turf as above-disclosed, wherein the top-dressing would be sand-filled with resilient material (such as the particulate material disclosed in the above-captioned Canadian patent No 1,182,484) so as to be appropriate to use in driving golf balls off driving ranges as well as for use over tee off areas, thereby simulating real grass without altering the normal down stroke of golfers that hit on natural grass.
…
Summary of the Invention
Accordingly with the objects of the invention, there is disclosed a playing surface for field sports games where the players wear cleat-bearing shoes, said playing surface comprising: a firm, stable subsurface; a pile fabric, having a flexible backing and normally upstanding grass-like pile elements, the length of said pile elements being substantially uniform and lying in the range from 0.375 to 3 inches, wherein said pile elements further define an interspacing gap between any two successive said pile elements (preferably pile element rows), Σ , whereby: 0.75 inch ≤ Σ < 1.25 inch; and a top-dressing layer, comprising sand (preferably a mixture of from 24 to 95 volume percent resilient particles and from 5 to 75 volume percent fine sand) interspersed among the pile elements and on the backing to a substantially uniform depth at least half the length of said pile elements.
Detailed description of said sand and of said resilient particles will be found in Canadian patent No 1,182,484.
Preferably, said pile elements are arranged in generally parallel rows.
…
Description of the Invention
…
It is the present inventor’s position that an unexpected, particularly advantageous outcome results from selecting an interspacing gap (which could be as large as 0.75 to 1.50 inch, but preferably ranging between 0.75 to 1.25 inch, and most preferably being limited to a range between 0.75 to 1.00 inch) between two successive rows of turf pile elements according to the present invention…
127 According to TigerTurf:
(1) “A synthetic surface having a pile length of 3 inches and a gauge of between 0.75 to 1 inch has a length which is greater than twice the gauge, within the meaning of each of claims 1, 2 and 3 and dependent claims and claims 27 and 28 of the 2004 Patent Application”.
(2) “Knowing the length of the ribbons (3 inches) and the gauge (0.75 to 1 inches) from CA ‘158, the notional skilled addressee he would understand that the installation could receive an infill to approximately 2/3 the height of the ribbons such that the free lengths of ribbons extending above such infill could overlap with a corresponding free length of ribbons from adjacent rows to encapsulate the infill. This is because it formed part of the common general knowledge that having a length of exposed ribbon greater than the gauge necessarily meant that the free length of ribbon lying flat against the infill would overlap with the adjacent rows of ribbons to encapsulate such infill. Accordingly, the overlapping feature of claims 1 and 2 of the 2004 Patent Application is disclosed by CA 158 teaching a synthetic grass surface with a length of the ribbons (3 inches) and a gauge (0.75 to 1 inches)”.
(3) “The other features of each of claims 1, 2 and 3 and dependent claims 19, 20 and 21 and claims 27 and 28 are disclosed in CA ‘158 in the description under the “Summary of the Invention”…and by claim 3 of CA ‘158. CA ‘158 also describes backing members made from single and multiple layers of permeable material the subject of claims 7-9 of the 2004 Patent Application”.
(4) “CA ‘484 teaches the infill of the alleged invention claimed in dependent claims 22, 23, 24, 25 and 26 of the 2004 Patent Application”.
(5) “The Delegate found that CA '158 and CA '484 anticipated claims 3 and 5 of the 2004 Patent Application: 2004 Patent Application Decision, [36], [37]. In view of the plain teachings of CA '158 and CA '484 anticipate each of claims 1, 2, 3, and dependent claims 5, 7, 8, 9, 19, 20, 21, 22, 23, 25, and 26 and claims 27 and 28 of the 2004 Patent Application are anticipated”.
128 According to FieldTurf:
none of [the disputed] claims are anticipated. Whether read individually or together, even where required integers are encompassed by the description (and not all of them are), there is no clear and unmistakeable direction to choose the particular combination of integers required by the claims. To the extent any integers are disclosed by one or both of these prior art documents, TigerTurf’s case amounts to selective “cherry-picking” [Eli Lilly & Company Ltd v Apotex Pty Ltd (2013) 100 IPR 451 at [326].] of individual integers and as such is contrary to the accepted approach in relation to combination inventions.
129 Further:
There is no discussion at all in CA 158 of:
(a) a particular relationship between the length of the pile and the gauge;
(b) the use of a long pile;
(c) a particular relationship between the length of the pile and the height of the infill; or
(d) encapsulation of the infill.
130 What CA 158 discloses is ribbon lengths in the range from 0.375 inch to 3 inches and gauges in the range of 0.75 to 1.50 inches but does not disclose, according to FieldTurf, a desired relationship of a ribbon length at least twice the width of the gauge. FieldTurf said:
While the claimed relationship will exist for some measurements within the ranges of ribbon length and gauge disclosed in CA 158, it does not exist for all ribbon lengths and gauges disclosed in CA 158. Disclosure of a range in which only some of the amounts within the range satisfy the claim integer does not amount to clear and unmistakeable directions that such a relationship should be used.
131 To conclude otherwise, in my view, would be inconsistent with the principle that “[t]he prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee” (General Tire at 486).
132 As to infill, claims 1, 2 and 4 of the 2004 application require that the height of the particulate infill material is approximately 2/3 the height of the ribbons whereas, FieldTurf said, CA 158 describes an infill height of “at least half the length” of the pile elements so that it discloses “an infill height ranging from 50 to 100% of the height of the ribbons” with:
no suggestion within CA 158 that a particular height of infill within this broad range is preferred. This cannot amount to a clear and unmistakeable direction to use an infill height of 2/3.
133 As to encapsulation, claims 1 and 2 of the 2004 application require that the free length of ribbon extending above the infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate the infill. This requires that the length of exposed ribbon is at least as long as the width of the gauge. According to FieldTurf:
There is no explicit disclosure of this integer in CA 158. While it is possible that this feature may result from a particular combination of gauge, pile height and infill selected from the ranges disclosed CA 158, it will not result from all combinations. This cannot amount to a clear and unmistakeable direction that the free length of ribbon encapsulates the infill.
134 Further:
Dependent claims 5 and 19 require a ribbon length in the range 1 ¼” (31.75 mm) to 5” (127 mm). As noted above, CA 158 discloses ribbon lengths in the range from 0.375 inch to 3 inches, which does not correspond to the claimed range.
…
…CA 158 does not disclose the integer required by dependent claim 20 of the length of the pile being between 3 and 6 times the width of the gauge.
135 As to the conclusion of the Commissioner’s delegate that CA 158 anticipated claims 3 and 5, FieldTurf said:
this was based on the delegate’s erroneous conclusion that the disclosure of a range of 0.375 – 3 inches for the length of the ribbons and a range of ¾ - 1 ½ inches for the spacing between rows of ribbons is a sufficient disclosure of the length of the ribbons being at least twice the spacing between rows. For the reasons outlined above, a disclosure of a range, only part of which falls within the claimed range, is not a clear and unmistakeable direction to choose a surface that has this feature. Instead, CA 158 contains a direction that is at least as likely to be carried out in a way that does not infringe claims 3 and 5. The sniper’s gun has missed its mark [see Apotex Pty Ltd (formerly Genrx Pty Ltd) v Sanofi-Aventis (2008) 78 IPR 485; [2008] FCA 1194 at [91] cited in H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151; [2009] FCAFC 70 at [170]]. Accordingly, this aspect of the delegate’s decisions should be set aside.
136 I accept FieldTurf’s submissions. The combination of the claimed invention in the 2004 application, in both the disputed independent and dependent claims, is not disclosed. At best CA 158, which incorporates CA 484, contains directions some of which are capable of being carried out in a manner which would infringe some of the claims but are at least as likely to be carried out in a way which would not do so. The knowledge of the skilled addressee does not supplement what is disclosed in such a way as to make good disclosure of the combination claimed.
137 It follows that TigerTurf’s case of lack of novelty based on prior published documents cannot succeed in respect of any claim. FieldTurf’s appeal against the Commissioner’s decision on claims 3 and 5 of the 2004 application, however, should succeed.
2.6 Lack of inventive step?
2.6.1 Provisions and principles
138 An invention will only be a patentable invention for the purposes of a standard patent if the invention, as claimed, has an inventive step when compared with the prior art base as it existed before the priority date of the claim: s 18(1)(b)(ii) of the Act.
139 Section 7(2) of the Act in its relevant form at the time the 2004 application was filed, provided that:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
140 TigerTurf and FieldTurf emphasised various principles relating to the concept of obviousness.
141 Accordingly, TigerTurf submitted that:
As to what is “common general knowledge” (s 7(2)) in Australia before the priority date, must be assessed by considering whether the information is “part of the mental equipment of those concerned in the art under consideration” being “the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old”: [Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 292; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274; [2004] HCA 58 (Lockwood (No. 1)) at [55].
In order for prior art to be “ascertained” it is necessary for the person skilled in the relevant art to reasonably have been expected to have “discovered or found out” that prior art: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 at [132] (Lockwood (No. 2)).
In order for there to be an inventive step, there must be some difficulty overcome or some barrier crossed. The question is whether the claimed invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that field alone or together with s 7(3) prior art information: Lockwood No. 2 at [51]–[56].
The test for obviousness was stated by the majority in Aktiebolaget HÄssle v Alphapharm Pty Ltd (2002) 212 CLR 411 at 433 at [53] [(citing with approval Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187-188)] … as being:
Would the notional research group at the relevant date, in all the circumstances... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful result]?
…
The Full Court has recognised that the element of the test of obviousness expressed in [Aktiebolaget HÄssle v Alphapharm Pty Ltd] at [53] concerning the necessary expectation that the invention might well produce a useful result whilst apt for some cases such as those involving pharmaceutical patents it is not apt for other cases of a different nature where it can be assumed: Dynamite Games Pty Ltd v Aruze Gaming Australia Pty Ltd (2013) 103 IPR 373 (Dynamite).
142 TigerTurf said this was a case like Dynamite in that the useful result could be assumed.
143 According to TigerTurf, on the basis of these principles, it should be concluded that:
… the features claimed in the challenged claims in the 2004 Patent Application looked at in isolation or as a combination, involved nothing more than the “application of existing ideas”, there being “no barrier crossed” and thus no “inventive step”. A combination must itself result in something new: Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels Pty Ltd (1993) 26 IPR 565; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173; Dynamite at [46]. None of the relevant claims in the 2004 Patent Application met this threshold.
144 FieldTurf noted that the common general knowledge is not merely knowledge that is available or able to be located by the person skilled in the art; it is knowledge which “is “generally accepted without question” or “generally regarded as a good basis for further action” by the bulk of those in the art” (Alphapharm Pty Ltd v H Lundbeck A/S (2008) 76 IPR 618; [2008] FCA 559 at [221]; Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248; [2002] FCAFC 315 at [100]). Further, as stated in Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11; [2013] FCA 368 at [217]:
…information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art: see Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496; [2011] FCA 1002 at [96], citing [British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221 (British Acoustic Films)] at 250 (which was also affirmed in General Tire [(1971) 1A IPR 121] at 135). Reference in this regard is made to the words of Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget HÄssle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at [39]:
In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.
2.6.2 Discussion
145 To the extent that TigerTurf’s case rested on the notion that the four Supergrasse installations and samples discussed above constituted s 7(3) information (separately and in combination), I am unable to accept it. Such publicity as there was about those installations does not lead to the inference that the notional skilled addressee would reasonably have been expected to have discovered or found out and, therefore, “ascertained” the existence of these installations and samples. The witnesses called by FieldTurf, Mr Jones and Mr Oudendyk, both worked in the Australian industry from 1989 and 1990 respectively. While this is after the date of the Supergrasse installations, it is before the priority date. They were unaware of the installations and samples. Indeed, they were unaware of any product like the claimed invention before the priority date. As FieldTurf submitted:
Before the priority date, Mr Jones was not aware of a synthetic grass product with a pile height of greater than 25 mm. The widest gauge of which he was aware was “probably half an inch” which, given the usual gauges revealed in the evidence, was probably more accurately 3/8 inch. Before the priority date, the longest pile of which Mr Oudendyk was aware was 30 mm, and he was not aware of any products using a 3/4 inch gauge before the priority date. Neither Mr Jones nor Mr Oudendyk was aware of synthetic grass surfaces intended to be filled to about two-thirds the height of the pile. Neither Mr Jones nor Mr Oudendyk was aware of the use of rubber infill either alone or in combination with sand before the priority date. Neither Mr Jones nor Mr Oudendyk was aware of the alleged prior uses relied upon by TigerTurf.
146 The idea that the notional skilled addressee would have reasonably been expected to have discovered or found out and, therefore, “ascertained” the existence of the installations and samples is not founded in the evidence. Mr Rooks’ knowledge of the installations and sample is not that of the notional skilled addressee. As FieldTurf said that would be like “trying to prove that a scientific publication satisfies s 7(3) by asking the author whether he or she was aware of the publication”. Mr Waterford being well known in the industry and known to Mr Jones and Mr Rossi is hardly sufficient proof of anything relating to the four specific installations and the samples, given that Supergrasse must have installed hundreds of surfaces before it went into liquidation. The fact that a Mr Clark, another industry player, knew about the Gold Coast Installation and samples does not prove that he would have ascertained or considered relevant the combinations of features constituting the invention as claimed.
147 I accept also FieldTurf’s submission that:
Given the installations and samples are very limited in number, were installed by one company only and, on Mr Rooks’ evidence, may not have been offered at all after the liquidation of Supergrasse in 1991, it is unclear on what basis a person skilled in the art would regard these installations and samples as relevant to the development of new surfaces.
148 Further, and as FieldTurf pointed out:
The observations of Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 293 as to combination patents are apposite here. In particular:
In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious.
149 TigerTurf also submitted that, based on common general knowledge alone, each of claims 2 and dependent claims 5, 6, 7, 8 and 9 and claims 27 and 28 lack an inventive step. This submission was based on some evidence from Mr Oudendyk. However, all of the evidence relied upon was predicated on an assumption that Mr Oudendyk “came across a long pile synthetic turf product prior to March 1997”. The fact is, he did not do so. Nor did anyone else who gave evidence apart from Mr Rooks. The assumption, that the notional skilled addressee would have ascertained a long pile synthetic turf product, is not supported by the evidence. Nor is the implicit assumption that if Mr Oudendyk or any other person skilled in the art saw a long pile product, they would have ascertained or regarded as relevant any aspect of the relationship between pile height and gauge. To the contrary, the evidence proved only that if directed to consider pile height and gauge, the person skilled in the art could have ascertained the relationship as a matter of routine, but not that they would have done so or would have considered it relevant before the priority date. A general awareness of the concept of wider gauge for longer pile falls far short of establishing that knowledge of any particular relationship was routine.
150 I do not accept TigerTurf’s submission that longer pile products, meaning products with a length of ribbon in excess of those of which Mr Jones and Mr Oudendyk were familiar before the priority date (up to about 30 mm), were part of the common general knowledge (let alone products with a pile height of between 75 to 100 mm). The existence of the SuperGrasse products, such publications as there were about them (including the article by Mr Clark), and the Balsam documents, does not establish that such longer pile products formed part of the common general knowledge. Mr Jones and Mr Oudendyk did not know of the existence of such long pile products. Nor does the evidence establish that, before the priority date, there was a perceived problem, sought to be fixed by changing the qualities of synthetic turf, of cleats not releasing from the synthetic surfaces, which problem itself formed part of the common general knowledge. To the contrary, the evidence is to the effect that skin abrasion was the real perceived problem with synthetic surfaces. Mr Oudendyk had never even given thought to the effect of a surface on the level of slip on a player’s foot before the priority date. Accordingly, TigerTurf’s submission that it would have been obvious to the skilled addressee before the priority date to try to produce a synthetic grass with a gauge of 3/4 inch and a pile length of 75 to 100 mm cannot be accepted. To the contrary, I accept Mr Oudendyk’s evidence that when he first saw the FieldTurf product in 1998, after the priority date, it was “completely unlike any other synthetic grass” he had ever encountered.
151 For these reasons I do not accept TigerTurf’s submission that:
…claims 1, 2, 3 and dependent claims 5, 6, 7, 8, 9, 19, 20, 21 and claims 27 and 28 lack an inventive step in light of the common general knowledge alone. Each of the claimed features alone and in combination formed part of the common general knowledge before March 1997. The notional skilled addressee in all the circumstances would have been directly led as a matter of course to try the invention claimed (and to the extent necessary, in the expectation that it would have produced a useful result).
152 It is unnecessary, in these circumstances, to consider Field Turf’s additional submission that the commercial success of the invention tells against a finding of obviousness.
2.7 Lack of clarity?
153 TigerTurf’s submission conveniently summarises the relevant issues requiring resolution. According to TigerTurf:
A claim may be revoked under section 138(3)(f) of the Act on the ground that it does not comply with s 40(3) of the Act, in that the claim is not clear and succinct.
First, claim 11 is not clear or succinct insofar as claim 11 claims “a surface as claimed in claim 10, wherein at least one of the layers of permeable fabric…”. Claim 11 is appended to claim 10, which is appended to claims 1 to 6. None of these claims define a layer of permeable fabric. Thus, this feature lacks an antecedent in the claims to which it is appended, and claim 11 lacks clarity. This is consistent with the Delegate’s finding…In the circumstances, claim 11 (and claims 12 to 28 insofar as they are dependent) should not be allowed.
Secondly, claim 21 is not clear or succinct insofar as claim 21 claims “a surface as claimed in claim 20, wherein the ribbons extends between 1/4 inch (0.635cm) and 1 1/2 inches (3.81 cm)”. This is inconsistent with the requirements arising from the claims 20, 19, and 2 or 4, to which claim 21 is appended. This is consistent with the Delegate’s finding…FieldTurf accepts that there is a difficulty with claim 21 ... In the circumstances, claim 21 (and claims 22 to 28 insofar as they are dependent) should not be allowed.
In the 2004 Patent Application Decision, FieldTurf was granted 60 days to file suitable amendments to overcome the defects found by the Delegate…FieldTurf opted not to avail itself of this opportunity. FieldTurf should not now be granted the opportunity to propose any amendments to the 2004 Patent Application, in the manner foreshadowed at the hearing …or at all.
154 As FieldTurf submitted a patent claim must define the monopoly claimed in such a way that it is not reasonably capable of being misunderstood: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610. Further, claims are to be construed in a practical, common sense manner (see Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (2012) 290 ALR 47; [2012] FCA 467 at [273]-[274]).
155 Claim 11 is not reasonably capable of being misunderstood. Read in the context of the specification as a whole, which describes backing members and the ways in which a backing member can be made more permeable (larger spacing between rows, needle punched fabric), it is reasonably clear that claim 11 requires one or more of the layers forming the backing member to be permeable.
156 As to claim 21, FieldTurf acknowledges that the the reference to “1/4 inch (0.635 cm)” is incorrect. Claim 19, upon which claim 21 depends, involves a range starting at 5/8 inch or 1.588 cm. Accordingly, the range in claim 21 should also start with 1.588 cm.
157 TigerTurf’s submission that FieldTurf should not be given any opportunity to amend claim 21 lacks merit. Given its appeal against the Commissioner’s decision, it was convenient for and sensible of FieldTurf to defer any amendment application to the conclusion of the appeals. No possible prejudice to TigerTurf is apparent. FieldTurf should be given an opportunity to apply to amend claim 21 of the 2004 application.
2.8 Another matter
158 One other matter should be noted. The Commissioner decided that claim 4 of the 2004 application lacked novelty and an inventive step in light of the so-called Desso specifications. In the appeals, TigerTurf did not rely on the Desso specifications. The parties also tendered a concession by TigerTurf that, for the purpose of these proceedings, if the court finds claim 4 of the 2004 application otherwise valid without consideration of the Desso specifications, then it may allow FieldTurf’s appeal in respect of claim 4.
159 I consider it appropriate to rely on this concession. Neither party said anything substantive about the Desso specifications. Such evidence as there was about them was not read. Both parties were legally represented during the hearing. Accordingly, I consider that FieldTurf’s appeal should be allowed for the reasons already given including in respect of claim 4. TigerTurf’s appeal should be dismissed also for the reasons already given.
3. THE 2006 APPLICATION
3.1 The specification and claims
160 The 2006 application is said to be:
This application is a divisional application of Australian Patent Application No. 2004201711, whose contacts are hereby incorporated by reference.
161 The specification, under the heading “Technical Field”, states:
This invention is directed toward improved synthetic surfaces. The invention is more particularly directed toward improved synthetic grass surfaces, including synthetic grass sport surfaces.
The invention has been developed primarily for use as a synthetic grass sports surface. However, it will be appreciated that the invention is not limited to this particular field of use.
162 In the section entitled “Background Art”, the specification states:
Synthetic grass sports surfaces are well known. They are used to replace natural grass surfaces which do not stand up well to wear and which require a great deal of maintenance. Also, natural grass surfaces do not grow well in partly or fully enclosed sports stadiums. The synthetic grass surfaces stand up to wear much better than the natural grass surfaces, do not require as much maintenance, and can be used in closed stadiums. …
The known sand-filled synthetic grass sports surfaces have some disadvantages. The surfaces usually become hard after extended use because the sand, between the rows of ribbons, becomes compacted. …
Another problem with the known synthetic grass sport surfaces is the problem of drainage. …
The known synthetic surfaces also have relatively poor playing qualities. …
163 The specification continues as follows:
Object of the Invention
It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative.
It is an object of the present invention in at least one preferred form to provide a synthetic surface that can be tailored to meet a required surface texture or playing quality of the surface.
Summary of the Invention
In accordance with the present invention there is provided a synthetic surface comprising a flexible backing member and rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the surface including a layer of particulate material on the backing member supporting the synthetic ribbons in a relatively upright position relative to the backing member, all of the synthetic ribbons extending above the particulate material a predetermined distance and the synthetic ribbons comprising a mixture of stiffer ribbons and softer ribbons to provide a surface texture for a predetermined field requirement.
…
Preferably, the ribbons are mixed with the stiffer ribbons and softer ribbons to provide a specific surface texture for a predetermined sports playing field. The proportion of stiffer ribbons and softer ribbons is preferably 1:1.
Preferably, the alternate ribbons are stiff and soft. Preferably, the tufts of ribbons have soft and stiff ribbon portions.
Preferably, the stiffer ribbons have at least an 11,000 denier and a thickness of 100 microns. The softer ribbons preferably have from 5,600 denier to 10,000 denier and a thickness of about 80 microns.
…
It has been found that the synthetic surface in another embodiment advantageously can be provided with ribbons having a length about twice as long as the spacing between the rows of ribbons. The preferred embodiment employs ribbons that are quite long compared to the ribbons now employed.
164 In the section dealing with the “Mode for Carrying Out the Invention”, these statements appear, cross-referring to certain figures:
The synthetic grass surface 1, as shown in FIG. 1, has a thin, flexible, backing member 3 with parallel rows 5 of strips or ribbons 7 projecting upwardly from the backing member 3. A relatively thick layer 9 of infilled particulate material is provided on the backing member 3 supporting the ribbons 7 in a relatively upright position on the backing member 3.
All of the ribbons 7 extend above the particulate material a predetermined distance L - T in the embodiment. The ribbons 7 are also mixed in terms of their thickness. For instance, depending on the type of field required, i.e., a field where the ball will roll more slowly than others, stiffer and softer ribbons are mixed together. Stiffer ribbons tend to have more memory and, therefore, return the ribbons back to an upright position, relatively speaking. …
Any combination of these more rigid and softer ribbons would be determined by the particular requirements of the playing field. The ratio of stiff to soft ribbons may be 1:1. These stiff and soft ribbons may be alternating or part of the same tuft.
…
The spacing of the rows of ribbons is dependent on the activity to be performed on the field. For instance, cleats worn on the shoes of athletes for different sports have a spacing on the average of about ¾ inch. Football cleats or soccer cleats may be wider than baseball cleats. The spacing is in relation to the type of sport to be played on the field and is consequence of the spacing of the cleats on the shoes of the players. Likewise, in sports such as horse racing, it is contemplated that much wider spacing will be required between the rows to accommodate the wider hooves of the horses. Thus, it is contemplated that for horse racing, a spacing between the rows of up to 2 1/4 inches would be necessary with a proportionally longer ribbon of up to 5 inches.
…
The mix of sand and resilient material can vary depending on the end use of the surface. More rubber is used if the surface requires more resiliency. …
In accordance with another embodiment of the invention, lines for marking out a playing area can be formed in the surface by joining the adjacent edges of surface sections with a specific seam. As shown in FIG. 8, a seam band 51 is placed under the adjoining but spaced-apart edges 53, 55 of adjacent surface sections 57, 59 respectively to be joined. The seam band 51 has rows 61 of tufted ribbons 63 in its central section 65 but no ribbons on its wide side sections 67, 69. The central section 65 is located between the edges 53, 55 of the surface sections 57, 59, and the tufted ribbons 63 in the central section 65 can have a different colour and/or a different height from the ribbons 7’ in the surface sections 57, 59 to form a line 71 for marking a playing field. …
165 The claims defining the invention are as as follows:
1. A synthetic surface comprising a flexible backing member and rows of synthetic ribbons representing blades of grass projecting upwardly from the backing member, the surface including a layer of particulate material on the backing member supporting the synthetic ribbons in a relatively upright position relative to the backing member, all of the synthetic ribbons extending above the particulate material a predetermined distance and the synthetic ribbons comprising a mixture of stiffer ribbons and softer ribbons to provide a surface texture for a predetermined field requirement.
2. A surface as defined in claim 1, wherein the ribbons are mixed with stiffer ribbons and softer ribbons to provide a specific surface texture for a predetermined sports playing field.
3. A surface as defined in either claim 1 or 2, wherein the proportion of stiffer ribbons and softer ribbons is 1:1.
4. A surface as defined in any one of claims 1 to 3, wherein the alternate ribbons are stiff and soft.
5. A surface as defined in any one of claims 1 to 4, wherein the tufts of ribbons have soft and stiff ribbon portions.
6. A surface as defined in any one of claims 1 to 5, wherein the stiffer ribbons have at least an 11,000 denier and a thickness of 100 microns while the softer ribbons have from 5,600 denier to 10,000 denier and a thickness of about 80 microns.
7. A synthetic surface substantially as described herein with reference to and as illustrated in the accompanying drawings.
3.2 Discussion
3.2.1 TigerTurf’s contentions
166 TigerTurf contends that claims 1 to 5 and 7 of the 2006 application lack novelty on the basis of Japanese patent application H7-48778 (JP 778), Japanese patent application H7-331607 (JP 607), Japanese patent application H4-37923 (JP 923), and German patent application DE 3525441 (DE 441), each of which was publicly available before the priority date in 1997.
3.2.2 Construction issues
167 TigerTurf submitted that:
Claim 1 and dependent claims include the feature “all of the synthetic ribbons extending above the particulate material a predetermined distance”. When read in the context of the specification, it is plain that this feature includes where each ribbon extends above the particulate material a predetermined distance whether or not that distance is the same or different to other ribbons.
168 The submission was founded upon that part of the specification which refers to “the tufted ribbons 63 in the central section 65 can have a different colour and/or a different height from the ribbons 7 in the surface sections 57, 59 to form a line 71 for marking a playing field”. I do not consider this part of the specification supports TigerTurf’s submission. The context of the statement is the marking out of a pitch by various methods. That part of claim 1 and dependent claims which refers to “all of the synthetic ribbons extending above the particulate material a predetermined distance”, when construed in the context of the specification as a whole, does not contemplate that the ribbons may be of different lengths. This conclusion, I should note, is material to certain alternative arguments TigerTurf put about the prior art insofar as that art discloses different lengths of fibres in the one installation.
169 I accept that stiffness and softness are terms of art in the synthetic turf industry and are concerned with the resilience of the yarn or its capacity to bounce back when put under load and then released. I accept also that the specification uses the terms “stiffer ribbons” and “softer ribbons” as relative terms so that “softer ribbons” refers to ribbons that are less “stiff” (resilient) than other ribbons.
170 As to claim 1 and dependent claims which include the feature “to provide a surface texture for a predetermined field requirement” and claim 2 and dependent claims which include the feature “to provide a surface texture for a predetermined sports field”, TigerTurf contended that “this feature describes providing a surface texture to address any requirement or desired outcome for a field, including a sports field”. According to TigerTurf:
In the context of the discussion in the background art and the objects of the invention, it is plain that the use of stiffer and softer ribbons to provide a surface texture for a predetermined field requirement/sports playing field is capable of including a broad range of possible requirements to improve the use/playing qualities of the surface e.g. to improve the playing qualities of the field or sports playing field.
…
Examples of predetermined field requirements [forming part of the common general knowledge prior to the priority date] included:
(a) a surface that was less abrasive by using softer ribbons;
(b) a surface that provided better sliding by using softer ribbons;
(c) a surface on which a the ball rolled faster by using softer ribbons;
(d) a surface that had better wear resistance (longevity);
(e) a surface that looks like natural grass.
171 FieldTurf submitted that:
The claimed invention provides a synthetic surface that can be tailored to meet a required surface texture, that is a required playing quality, through the particular combination of integers in the claims.
The surface texture or playing qualities are distinguished in the specification of [the 2006 application] from other characteristics of surfaces, such as:
(a) hardness (caused by sand compaction);
(b) drainage; and
(c) appearance.
172 According to FieldTurf:
Given the discussion in the specification, the requirement in the claim for the surface to provide “a surface texture for a predetermined field requirement” is properly understood as a reference to the playing quality of the surface. This would include, for example, the slipperiness of the surface, the abrasiveness of the surface, the speed which balls move across the surface and the degree to which players’ cleats get caught in the surface.
173 I accept Field Turf’s submission that “a surface texture for a predetermined field requirement” is properly understood as a reference to the playing quality of the surface However, I do not agree with FieldTurf that matters such as compaction level, drainage and appearance fall outside the scope of provision of a surface texture for a predetermined field requirement. This is because anything that might impact on the playing quality of the surface is capable of being a part of a surface texture for a predetermined field requirement. All of the examples noted by TigerTurf, in my view, relate to the playing quality of the surface. I thus agree with TigerTurf that there would be a broad range of possible requirements to improve the use/playing qualities of a surface which might form part of a predetermined field requirement.
3.2.3 The prior publications
174 I do not deal with all integers of the 2006 application in this section. It is sufficient to say that FieldTurf’s submissions focused only on those integers said to be missing from the prior art. Given the conclusions reached, I adopt the same approach.
175 JP 778: FieldTurf’s case is that JP 778 does not teach stiffer and softer ribbons all extending above a particulate infill a predetermined distance. According to FieldTurf:
The teaching of JP 778 would not give a person skilled in the art any indication that this is an important consideration. To the contrary, the different embodiments suggest that the presence of an infill and the height of any such infill are not important considerations in the context of the invention the subject of JP 778. The document is solely focused on the mixing of polyamide and polyethylene fibres as a means of producing an improved synthetic surface.
176 TigerTurf relies on Mr Rossi’s evidence, to support the proposition that Figure 1 in JP 778 teaches that the level of sand infill is to be approximately half the length of the ribbons. I am not persuaded by this aspect of Mr Rossi’s evidence. The specification for JP 778 is to be construed as a whole. JP 778, as FieldTurf said, involves a number of embodiments:
(a) A first embodiment in which polyamide and polyethylene yarns are implanted in a polypropylene base, to achieve a pile length of 25 mm, with a sand infill having a particle size of up to [2 mm] and spread at a rate of 30 kg/m2.
(b) A second embodiment in which polyamide and polyethylene yarns are twisted together to achieve a pile length of 13 mm. This surface does not have a sand or other infill.
(c) A third embodiment in which polyamide and polyethylene yarns are twisted together to achieve a pile length of 25 mm, in which the polyethylene fibres were made to “contract by heating”. The embodiment includes a sand infill having a particle size of up to [2 mm] and spread at a rate of 30 kg/m2.
177 Figure 1 is not to scale. It happens to show infill which looks like about 50% of the pile height. However, the text describing Figure 1 says nothing about the infill height or the relationship between the infill height and the length of ribbon exposed above the infill. The reference to the weight of sand required per square metre is not a teaching about infill height. The resulting height of infill from that requirement, as FieldTurf said:
…depends on the total amount of space available between the tufts of grass to accommodate the infill. The total amount of space is determined by factors such as the thickness of the ribbons, the number of strands of yarn in each tuft, the gauge and the stitching rate. The height of the infill will also vary depending on the grade of sand used. There is therefore insufficient information in the description of the first embodiment to determine the height of the infill, and the infill may vary, in any event, depending on the grade of sand used.
178 Moreover, construed as a whole, and as FieldTurf submitted, “the different embodiments suggest that the presence of an infill and the height of any such infill are not important considerations in the context of the invention the subject of JP 778”.
179 For these reasons JP 778 does not disclose the invention claimed in the 2006 application. An integer, “all of the synthetic ribbons extending above the particulate material a predetermined distance”, is not present. That integer would not be filled in by the notional skilled addressee by reason of common general knowledge or any matter of routine (Nicaro at 91 ALR 530-531). It follows that JP 778 does not anticipate the 2006 application.
180 JP 607: JP 607, entitled “Artificial turf structure” relates to artificial turf for applications including athletics, ball games and leisure pursuits. According to TigerTurf:
Exemplary Embodiment 1 describes an installed surface, including the sand infill. That is, it is describing an embodiment for the purpose of testing the cushioning effect, which necessarily requires it to be a finished surface with infill installed. It is apparent from this description of Exemplary Embodiment 1 that the specification is directing that both the crimped yarn fibres and the straight yarn fibres, in the installed surface to be tested, are to have a length of 25 mm after installation (see for example [0015] “the length of fibres 4, 5 was 25 mm”). Accordingly, when the direction in relation to the sand infill is followed, each of the crimped yarns, and the straight yarns, will extend above the sand infill 5 mm (after installation).
Further, Figure 2…clearly depicts (in particular by the straight upper boundary) that the straight yarns and the crimped yarns extend above the height the same predetermined distance after installation. This is consistent with Mr Jones’ understanding of [0015] and Figure 2…. [00017] also refers to Figure 2 “with the length of the fibres 4, 5 being 25 mm and the amount of dry sand filling being 20 mm”.
… Mr Rossi’s cross-examination proceeded on a false premise, namely, that the specification was directing the length of the respective yarns at the manufacturing stage and not the installation stage. It clearly is not.
181 I am not persuaded by these submissions. I do not consider that the specification can be understood as suggesting that the straight and crimped fibres are 25 mm in height above the backing layer. This would require the crimped fibres to have started life longer than the straight fibres so that, after crimping, each fibre (despite any vagaries in the crimping process) would be 25 mm. Mr Rossi’s evidence was clear. The straight and crimped fibres are cut under tension so they start life at the same length. A fibre that started life at 25 mm (while straightened) will necessarily become shorter than 25 mm when it returns to its shorter, crimped form. Figure 2 is diagrammatic. It is not intended to be understood as teaching that the crimped and straight fibres are the same height above the infill.
182 There is no teaching in JP 607 of stiffer and softer ribbons all extending above a particulate infill a predetermined distance. This is sufficient to reject TigerTurf’ claim of lack of novelty by reason of prior disclosure in JP 607. That said, I do not accept FieldTurf’s submission that JP 607 does not disclose a surface to “provide a surface texture for a predetermined field requirement”. Preventing hardening of sand, maintaining elasticity to allow movement and ensuring safety when a user falls, as referred to in JP 607, are all part of predetermined filed requirements.
183 JP 923: JP 923, entitled “Sports field with artificial turf”, relates to artificial turf with sand which “can be used in different types of sports fields beginning with tennis courts or football pitches”.
184 TigerTurf submitted that:
Example 1 directs that upon manufacture and installation but before use the nylon fibres are all of the same length, and the polypropylene fibres are all of the same length, albeit the nylon fibres are slightly longer than the polypropylene. Example 1 then teaches that after the synthetic surface has been used the “polypropylene (5) will become slightly higher, or both fibres (4, 5) will be almost the same height…”. Accordingly, the specification is teaching that after use the nylon ribbons will be of the same predetermined distance above the infill as each other and that the polypropylene ribbons will be of the same predetermined distance above the infill as each other and that the polypropylene ribbons will either be the same predetermined distance above the infill as the nylon ribbons or slightly higher.
…
Example 2 directs that upon manufacture and after installation but before use the nylon ribbons and the polypropylene ribbons will be of the same length such that they will be the same predetermined distance above the infill. Example 2 then teaches that after use the nylon ribbons will all be the same predetermined distance above the infill and the polypropylene ribbons will all be of the same predetermined distance above the infill albeit the nylon ribbons will be higher.
185 Fibre length is measured under tension. That was clear from the evidence of Mr Rossi, but also the way in which each witness measured a fibre when asked. The witnesses all stretched the fibre out and measured it. They never attempted to measure a piece of fibre not under tension. It is clear from Example 1 of the specification of JP 923 that the polypropylene fibres are cut longer than the nylon fibres. When not under tension, the polypropylene fibres curl over, including when trodden on and due to wear. But that does not mean the polypropylene and nylon fibres are ever the same length, even though, due to the curling over of the polypropylene fibres, they may appear to be almost the same height after use or the polypropylene fibres slightly higher. In Example 2, the polypropylene and nylon fibres are cut to almost the same length but the nylon fibres protrude slightly above the polypropylene fibres, which curl over when used, so as to prevent wear of the polypropylene fibres. Insofar as the claims of JP 923 deal with height of the fibres, claim 3 says that the “real height of the aforementioned polypropylene fibres is slightly higher than the real height of the aforementioned nylon fibres”. As the specification discloses, the purpose of this is to ensure that when the polypropylene fibres curl over in use, the nylon fibres can be nearly as high or higher than the polypropylene fibres to give good wear resistance (nylon) and softness (polypropylene). Further, the sand infill in JP 923 is to “the tips of the leaves of the artificial turf”, with the sand described as being at the same height as the fibres, being 20 mm. It follows that JP 923 is not teaching ribbons all extending the same height above the infill. It is teaching that ribbons of different heights, in fact slightly different heights, are beneficial. This is sufficient to conclude that JP 923 does not anticipate the claims of the 2006 application. Otherwise, consistent with the reasoning above, I do not accept that the stated purpose of JP 923, good wear resistance, is not a predetermined field requirement because it is unconnected to the playing qualities of the field.
186 DE 441: DE 441 relates to
a ground covering having a backing in which pile threads which extend upwards are secured. In particular, the invention relates to what is known as a plastic lawn, as is used as a ground covering for sports facilities but also for the domestic and garden sector.
187 As FieldTurf said, DE 441 describes achieving underfoot qualities closer to natural lawn than previous plastic lawns by a surface comprising two types of pile threads, with the second type of pile threads “forming a layer of crimped threads on the backing. The first pile threads thus form a kind of nap, while the second pile threads form a cushioning layer.” The second type of pile threads are described as being “highly shrunk”. The crimped threads form a layer above which the first pile threads project. As FieldTurf also said:
The surface may or may not include a sand infill. DE 441 describes that “[t]he layer of crimped or tangled threads according to the invention [intrinsically] makes a filling of the above-described kind superfluous”. However, a filling may be used. Where it is, “the height of the filling should be less than 1/3 of the height of the first pile threads, and the height of the layer of the crimped threads should then be approximately 50% of the height of the first pile threads”.
188 I accept FieldTurf’s submission that DE 441 does not “give clear and unmistakeable directions to produce a surface that contains an infill”. I accept also that “to the extent that an infill might be used, it is clear that the two types of fibres will extend above the infill to considerably different extents”. TigerTurf accepts this is so. It relied on its construction of the 2006 application about different fibre lengths to support its argument about anticipation by DE 441. I did not accept the construction argument and thus do not accept the alleged anticipation. DE 441 is teaching different fibre lengths. It also teaches that infill is unnecessary or, if used, infill to lless than the height of the crimped fibres and preferably no more than 1/3 of the height of the first pile threads. It thus teaches away from the invention claimed in the 2006 application.
4. CONCLUSIONS
189 For these reasons TigerTurf’s appeal should be dismissed and, subject to the amendment foreshadowed, FieldTurf’s appeal should be allowed. Orders will be made accordingly.
| I certify that the preceding one hundred and eighty-nine (189) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot. |
Associate:
