CATCHWORDS

PATENTS - invention for cultivating oysters - infringement - whether respondent’s device exhibits essential characteristics of applicant’s invention.

PATENTS - validity of patent - revocation for want of novelty - relevant principles.

PATENTS - patent specification - purposive construction to be given to patent claims - necessary to read down wide and unqualified words of a claim to reflect how a person skilled in the relevant art would understand it in a practical and commonsense way.

Patents Act 1952 (Cth) - s 100(1)(g)

Patents Act 1990 (Cth) - ss 7(1), 7(1)(a), 7(1)(b), 18(1)(b),  40(3), 119, 138(3), 233(1), 233(4), Schedule 1

Cases Considered

Re Asahi Kasei Kogyo KK’s Application [1991] RPC 485

Brandi v Mingot (1976) 12 ALR 551

Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385

Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 22 IPR 551

Electrical and Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 23

Griffin v Isaacs (1942) 12 AOJP 739

Martin v Scribal Pty Ltd (1954) 92 CLR 17

Melbourne v Terry Fluid Controls Pty Ltd (1994) 28 IPR 302

Merrell Dow Pharmaceuticals Inc v N H Norton & Co Ltd [1994] RPC 1

Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228

Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253

Murray v Clayton (1872) LR 7 Ch App 570

Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513

Norton and Gregory Ltd v Jacobs (1937) 54 RPC 271

O’Donnell v Reichard [1975] VR 916

N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239

P L G Research Ltd v Ardon International Ltd (1992) FSR 197

Populin v HB Nominees Pty Ltd (1982) 41 ALR 471

Radiation Ltd v Galliers & Klaerr Pty Ltd (1938) 60 CLR 36

Sunbeam Corporation v Morphy-Richards (Australia) Pty Ltd (1961) 35 ALJR 212

Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588

R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513

STANWAY OYSTER CYLINDERS PTY LTD v CLEMENT REX MARKS

NG 85 OF 1994

DRUMMOND J

BRISBANE

12 JUNE 1996

FEDERAL COURT OF AUSTRALIA                     )           No. NG 85 of 1994

NEW SOUTH WALES DISTRICT REGISTRY      )

GENERAL DIVISION                                                )

            BETWEEN:   STANWAY OYSTER CYLINDERS PTY LTD

                                    (A.C.N. 003 320 232)

                                                                                                Applicant

            AND:               CLEMENT REX MARKS

                                                                                                Respondent

Coram:           Drummond J

Date:               12 June 1996

Place:             Brisbane

REASONS FOR JUDGMENT

                        The applicant is the registered proprietor of an Australian patent for an invention for cultivating oysters.  The priority date of each claim in the specification is 30 January 1985.  Mr W.R. Moxham, a principal of the applicant, says he is the inventor.   He is the original patentee; he assigned his patent to the applicant.  The patent, if valid, appears to be a valuable one.  The evidence indicates that many devices are now in use by New South Wales oyster growers.  It is neither appropriate nor possible to express an opinion on whether any of these devices would infringe the patent.  But it is at least possible that the applicant may, if its patent is valid, be in a position to enforce its rights on a wide scale.

          In the patent specification, the problems sought to be overcome by the invention are described as follows:  traditional methods of cultivating oysters by the use of stakes and trays result in clumping of the oysters as they grow; this retards development, results in misshapen shells and requires extra labour to break up the clumps.  The cultivation of oysters in tidal estuaries, a preferred location, results in the deposition on the stationary oysters of mud and silt; this too retards growth rates and it harbours pests and diseases destructive of the oyster.  Traditional methods of cultivation also involve high wastage as a result of fish feeding on the soft-shelled young oysters.  The patent comprises claims both for an apparatus for growing oysters and for a method of cultivating them that involves the use of an apparatus which overcomes these problems.

                        The applicant alleges that the respondent has infringed its patent by the use of an oyster growing device which possesses each of the integers of claims 1, 2 and 4 of the applicant’s patent relating to an apparatus and which also uses the method of claims 6 and 7 of the patent.  These claims are in the following terms:

                        1.         Apparatus for growing molluscs comprising a water-permeable container for holding a number of molluscs for cultivation characterised in that the container is adapted to be rotatably supported in mollusc-feeding water the container having means responsive to regular movement of the water to give the container a rotational movement to thereby regularly tumble the molluscs therein.

                        2.         Apparatus as claimed in claim 1 wherein the means responsive to movement of the water is buoyant means.

                        4.         Apparatus as claimed in claim 1, 2 or 3 wherein the movement of the water is both a level change and current flow caused by

natural tidal movement.

                        6.         A method of growing molluscs comprising the steps of placing young molluscs in a water-permeable container rotatably supporting the container in regularly moving mollusc-feeding water and at least partially rotating the container to regularly tumble the molluscs in the container by the action of the moving water on the container.

                        7.         A method of growing molluscs as claimed in claim 6 wherein rotation is caused by buoyant means on the container as the water level changes due to tidal flow or to mechanically moved water.

                        By his defence and cross-claim, the respondent puts in issue the validity of the patent.  He alleges that it lacks novelty.  He relies upon the manufacture and use by himself and his son of oyster tumblers in Limeburners Creek, a tributary of the Hastings River, about 420 kms north of Sydney, from 1982; on the manufacture and use of oyster tumblers by a Mr Mudford, also in Limeburners Creek, from about 1983, and on the manufacture and use of oyster tumblers by a Mr Rae Mohr in the Macleay River, about 520 kms north of Sydney, in about January 1982.  The respondent also alleges, in support of his allegation of want of novelty, that The Cove Oysters Pty Ltd, a company of which Mr Robert Bailey is principal, used an oyster tumbler at Port Stephens, about 220 kms north of Sydney, given to him by Mr Holliday, of the Fisheries Research Station at Salamander Bay in New South Wales, for a time prior to 27 November 1984.  It is common ground that Mr Holliday got this device, which discloses the invention claimed in the patent, from Mr Moxham.  It is also said the patented invention lacked novelty by reason of a United States patent dated 9 October 1979, which the

applicant admitted was published in Australia before 30 January 1985.  The respondent alleged that Mr W.R. Moxham was not the inventor or sole inventor of the invention the subject of the applicant’s patent.  He seeks revocation of the patent.  He also relies on s. 119 the Patents Act 1990 (Cth), alleging that immediately prior to 30 January 1985, he was making an oyster tumbler which is a product claimed in the complete specification of the patent and that he is therefore entitled to continue to make that product in Australia without infringing the patent.

                        The applicant’s patent was granted under the Patents Act 1952 (Cth).  By s 233(1) the Patents Act 1990 (Cth), subject, inter alia, to s 233(4), the 1990 Act applies to the applicant’s patent, as if it had been granted under the 1990 Act.  Section 233(4) provides that objection cannot be taken to the validity of a patent granted under the 1952 Act on any ground that would not have been available against the patent under the 1952 Act.  In N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239, Lockhart J (Northrop J agreeing), in a passage not challenged in the High Court appeal (reported at 183 CLR 655) said, at 253-254:

                        “... the evident intent of s 233(4) is to ensure that the grounds of revocation under the 1990 Act ... apply as the grounds for revocation of a 1952 Act patent; but with this important qualification, namely, that the elements of each ground of revocation under the 1990 Act apply only to the extent that they replicate in substance the elements that previously constituted a ground of revocation under the 1952 Act.  Hence, if a ground of revocation under the 1990 Act omits an element which was a necessary part of a ground under the 1952 Act, the patentee has the benefit of it.  On the other hand, if a ground under the 1990 Act contains an element not previously present under the 1952 Act, it cannot apply in aid of revocation of the 1952 Act patent ...”

                        Under s 138(3) of the 1990 Act, the Court is only permitted to order revocation of a patent if, inter alia, the invention is not a patentable invention.  Section 18(1)(b) of the 1990 Act exhaustively defines a patentable invention as an invention that, so far as claimed in any claim, is, inter alia, novel, when compared with the prior art base as it existed before the priority date of the claim.  Section 7(1) of the 1990 Act provides that, for the purposes of that 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:  “prior art information ... made publicly available in a single document or through doing a single act” (s 7(1)(a)) and “prior art information ... 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 in the patent area would treat them as a single source of that information” (s 7(1)(b)).  The term “prior art information” in s 7(1) is defined in Schedule 1 to the 1990 Act to mean information that is part of the prior art base.  The respondent’s case, on want of novelty, was based on s 7(1)(a).  The only document, the publication of which was said to anticipate the applicant’s invention, is the Walker patent.  The respondent did not suggest that the various separate acts to which I have referred and which were said to constitute prior uses were related acts within s 7(1)(b).  The “prior art base” with which the invention as claimed in any claim must be compared is defined in Schedule 1 to the 1990 Act.  In relation to deciding whether an invention is or is not novel, the expression “prior art base”, so far as is relevant to this case, means information in a document publicly available anywhere in the patent area; information made publicly available through doing an act

anywhere in the patent area, and, where the invention is the subject of “a standard patent”, information in a document publicly available outside the patent area.  The expression “patent area” is defined in Schedule 1 of the 1990 Act to mean Australia.  It was a ground of revocation of a standard patent issued under the 1952 Act, as is the applicant’s, that the invention “was not novel in Australia on the priority date of that claim” (see s 100(1)(g) of that Act).  The respondent, in contending that the applicant’s invention was not novel at the relevant date, does not rely on publications or events that occurred outside Australia.  It was common ground that the inquiry concerning novelty in the present case is the same under both the 1952 and the 1990 Acts.

                        In determining whether the applicant’s patent is revocable for want of novelty, the following principles are relevant:

                        (a)       The ground will be made out if, assuming the patent to be valid, the alleged anticipation would constitute an infringement.  Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235; Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517.  “But, on a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe.  It is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing”:  Radiation Ltd v

Galliers & Klaerr Pty Ltd (1938) 60 CLR 36 at 51 and Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 475.

                        (b)       In determining whether prior art base information is publicly available at the priority date of the patent, I take the approach to be the same as that which applies in considering the question of novelty under the 1952 Act.  In a passage in Sunbeam Corporation v Morphy-Richards (Australia) Pty Ltd (1961) 35 ALJR 212 at 218, Windeyer J said:

                                                “Since the question was, ‘is it new or has it been earlier disclosed?’, it was immaterial whether or not it had become known to many people or to few people.  A description in an obscure publication would suffice to destroy novelty, provided that it was a publication, that is to say that the document whether or not it was read generally by the public, had been available to the public:  and similar considerations applied to publication by user.”

                                    See also R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 539-540.  The concept of information being “publicly available” involves, in addition to it being accessible to the public, that a person to whom the information is disclosed in that person’s capacity as a member of the public is free, in law and equity, to make use of the information.  Cf P L G Research Ltd v Ardon International Ltd (1992) FSR 197 at 226 and Patents, Designs and Trade Marks Law, Vol 1, Lahore & Ors, para 1.5.018.

                        (c)        The information comprising the prior art base must disclose to a person skilled in the relevant art all the essential features or integers of the invention the subject of the challenged patent.  That information must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery, without the necessity of making further experiments.  If the alleged anticipation disclosed all the essential features or integers of the claimed invention, the conclusion as to lack of novelty which would follow therefrom is not avoided and the patent is not saved merely because there are differences between the patented invention and the alleged anticipation which can be described as mere mechanical equivalents.  See R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd, supra, at 542 and 550; Nicaro Holdings Pty Ltd v Martin Engineering Co, supra, at 517.

                        The range of information that the prior art base must disclose, if it is to be sufficient to anticipate the patented invention, was described by counsel for the applicant as “an enabling disclosure”, an expression found in the English cases.  See, eg, Re Asahi Kasei Kogyo KK’s Application [1991] RPC 485 at 538-539.  Counsel for the respondent challenged this and submitted, in reliance on Merrell Dow Pharmaceuticals Inc v N H Norton & Co Ltd [1994] RPC 1 at 10 and 13, that, since all that was necessary to destroy novelty was that the prior disclosure must have made the invention claimed in the patent available to the public, it was

irrelevant that the public was not told how the process the subject of the patent works.  I reject this submission.  It follows from the definition of “prior art base” in Schedule 1 to the 1990 Act and s 7(1) that the prior art information will be sufficient to defeat a patent for want of novelty only where the prior art information discloses the invention the subject of the patent.  Prior disclosure of a physical embodiment or a written description of the patented invention will not therefore destroy the novelty of the invention, unless the disclosure makes publicly available all the essential features of the invention.  Merrell Dow Pharmaceuticals Inc v N H Norton & Co Ltd, supra, provides no support for the proposition implicit in the respondent’s submissions that the prior art may be sufficient to destroy the novelty of an invention for an apparatus, even though it does not disclose to the notional skilled addressee one or more of the essential features of the invention that that addressee would need to know before he could replicate the inventive product or apparatus or implement the inventive method.  The dicta in Merrell Dow Pharmaceuticals Inc v N H Norton & Co Ltd, supra, relied on by the respondent, were made in a special context:  there, the patent challenged for want of novelty claimed a product which was the active antihistaminic agent produced by the action of the human liver as a result of the ingestion of another substance, “X”.  The prior art included an expired patent for the substance “X” for use by humans as an antihistamine.  Aldous J held that this prior art was sufficient to destroy the novelty of the patent for the particular product because it gave the public clear directions enabling the public to produce the active antihistaminic agent claimed by the patent.  It was in those special circumstances that it was said that it was irrelevant that the prior art did not reveal to the public exactly how the human liver functioned to metabolise the active agent the

subject of the patent from the substance “X” and that the prior art did not even identify that active agent.

                        It is a central issue in the case whether each of the various users relied on by the respondent as prior users anticipating the applicant’s invention, in fact, occurred before the patent’s priority date or only afterwards.

                        The respondent does not contend that the claims, and in particular claim 1, which was the main focus of the trial, are unclear and ambiguous and so incapable of amounting to a valid patent.  He cannot, given the way the trial was conducted:  he once alleged, then abandoned, and finally sought unsuccessfully to amend his pleading at the end of the trial to raise defences based on s 40(3) of the 1990 Act.  The respondent instead submits that the words of claim 1 are clear and of wide import.  It is said that they embrace a range of apparatus, from those holding only a few oysters to those holding a more vague quantity referred to by counsel for the applicant in submissions as “a commercial quantity”.  It was pointed out that nowhere in any of the claims or in the specification was any limitation placed on the meaning of the word “cultivation” appearing in it and, in particular, the specification does not limit “cultivation” to cultivation for commercial use.  It was submitted that the claims, being broadly phrased, encompass cultivation for all purposes and of any magnitude, including scientific research, hobby uses, as well as both small and large-scale commercial uses.  It was said that it is impermissible to narrow (or expand) the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.  Cf Welch Perrin &

Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Electrical and Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 23 and Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385.  On this approach, it is clear, so the respondent submitted, that the respondent’s concentric device and Mr Mohr’s device both anticipated the applicant’s invention and patent, a proposition rejected by the applicant.

                        The exercise of interpreting a patent specification is not one of semantic analysis in the abstract.  It is well established that a patent specification should be given a purposive construction rather than a purely literal one:  see Decor Corporation Pty Ltd v Dart Industries Inc, supra, at 399-400.  This involves recognising that a claim is a description of an invention which it is intended to be put to practical use and which is addressed to non-inventive readers who are nevertheless skilled in the relevant art.  It will therefore be proper and necessary to read down the wide and unqualified words of a claim, if they would otherwise encompass methods or products or devices that cannot be regarded as practical and commonsense embodiments or results of the claimed invention.  It is sufficient to refer to three authorities.

                        In Martin v Scribal Pty Ltd (1954) 92 CLR 17, the patent in question was for a ballpoint pen.  Although the claim was for a pen with an ink reservoir which maintained a continuous vein of ink to the ballpoint, the claimed pen would not write vertically upward or if held at a high angle; the trial judge upheld a defence that there was no infringement because the defendant’s pen had this same deficiency:  if a claim made a particular result of the invention an essential characteristic and that

characteristic was not exhibited by the alleged infringement, it could be no infringement.  As Dixon CJ observed at 61, this defence depended upon the proper construction of the claim.  His Honour said, at 62-63:

                        “But in the end the question is really one of the scope and meaning of the material part of the claim.  Is it speaking of exceptional uses occasionally made of some writing instruments?  For it is exceptional to write against a vertical or almost vertical surface.  Would the words be naturally understood as going beyond the ordinary commonplace way of writing?  It is a general unqualified statement, but it is evident that what logicians call a ‘universe of discourse’ is presupposed.  It is to be read secundum subjectam materiam.  I think that it would be read simply as describing what occurs in the pen when it is used in an ordinary way.  The claim and the specification should be construed as it would be ordinarily understood.  So construed I do not think it should be taken to intend to state that even when the pen is used to write on vertical or highly inclined surfaces the contact with the ball will be maintained any more than it should be construed as intending to cover cases of violence, accident or other ill-usage.  I think this defence fails.”

                        Fullagar J, at 84, agreed, saying:

                        “The words in the specification must be read in a commonsense way and in the light of normal human needs and normal intelligence.  I think that the defendant’s pen maintains a continuous vein of ink within any fair and reasonable reading of claim 1, and that it infringes claim 1.”

                        Taylor J said, at 103-104:

                        “The objection was that it was impossible [from the wording of the claim] to ascertain whether the claim was that the vein of ink extending from the ball would be maintained in all the circumstances or at all times during the normal use of the instrument.  I have no doubt that the claim should not be read in the wider sense.  The invention relates to writing instruments and it would be doing an injustice to the language of the claim to read it otherwise than as a claim that the vein of ink would be maintained in the position indicated during conditions

prevailing in the course of its normal employment and use as a writing instrument.”

                        In Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 22 IPR 551, the patent allegedly infringed was for a plastic pipe connector for plastic conduit carrying electrical wiring.  One claim was for a connector which incorporated locking means comprising a projection that was drawn more deeply into engagement with another part of the device, the stronger the withdrawal force placed on the conduiting.  It was said the claim was ambiguous and the patent invalid, because the claim did not make clear whether the projection in the locking means would continue to move inwards if stressed beyond its design strength until final failure or whether it would have that effect only under normal working stresses.  As Burchett J observed, at 574, the respondent also urged a strict literal understanding of this integer of the patent, contending that its connector did not infringe because the locking means in its connector, although moving inwards as normal stresses were applied, under higher stresses would move outwards, until ultimate failure.  After referring to a number of authorities, including Martin v Scribal Pty Ltd, supra, anda Canadian decision in which the generally worded phrase “capable of use” in a claim in a patent relating to an exercise machine was construed as meaning, to a person skilled in the relevant art, “capable of being used in a normal, stable and secure way while generally recognised exercises are being performed on it”, his Honour said, at 577:

                        “In my opinion, if the present claim is read in accordance with these principles, there is no difficulty.  The invention relates to a practical thing, a connector which will be used by tradesmen ¼ A practical commonsense approach, which looks to the ordinary use of the connector, also makes plain the meaning of the final integer of the claim.  Just as the specification with respect to the ballpoint pen in

Martin v Scribal was not talking about some extraordinary activity, such as writing upside-down, but was concerned with the normal employment of a pen as a writing instrument, so the present claim, when it speaks of the drawing inwards of the projection of the finger, the more the stronger (sic) the withdrawal force, is not speaking of what will happen upon experimental destruction of the fitting under extreme stress, but of its normal functioning when subjected to the stresses it is designed to undergo; cf Minnesota Mining and Manufacturing Co, ubi cit supra, and at 259.”

                        The reference to Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 is to a passage in the judgment of Barwick CJ in which he rejected the primary judge’s strict literal interpretation and construed the expression “inextensible” in a claim in a patent for adhesive surgical tape for “a breathable translucent pressure-sensitive adhesive tape adapted for use as surgical tape, and comprising a translucent, nonwoven inextensible porous backing ¼” as requiring only relative inextensibility.  Barwick CJ said:

                        “Not only would absolute inextensibility be in practical terms an unlikely, and, indeed, an unnecessary requisite but the claims, properly understood, stipulated for such inextensibility as was appropriate for or adequate to the practical use of the product as a surgical or adhesive tape.”

                        In Melbourne v Terry Fluid Controls Pty Ltd (1994) 28 IPR 302 at 308-310, the Full Court, in the context of rejecting the trial judge’s conclusion that a claim was not ambiguous, held that, while a patent specification must be construed in the light of the state of the common knowledge in the art before the priority date, it was not permissible to imply a limitation upon the clear words of a claim to match the general expectation of those skilled in the art.  This approach does not appear to sit

easily with that in Martin v Scribal Pty Ltd, supra, Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd, supra, and Elconnex Pty Ltd v Gerard Industries Pty Ltd, supra, where the courts, in giving a purposive rather than a literal construction to patent claims, were prepared to read unqualified words as applying only to the normal or ordinary or practical use of the patented invention contemplated by the persons to whom the patent was addressed.  But a fairly fine, although still clear distinction can, I think, be drawn between, on the one hand, reading down the unqualified words of a patent claim to reflect how a person skilled in the relevant art would understand it in a practical and commonsense way and, on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe.  Norton and Gregory Ltd v Jacobs (1937) 54 RPC 271, cited in Melbourne v Terry Fluid Controls Pty Ltd, supra, at 309, provides an example of the latter kind of case.

                        Claim 1 is for an apparatus described by reference to its physical characteristics and its capacity to perform a function or produce a result.  The apparatus is referred to as one “for growing molluscs”.  It is described as comprising a type of container “for holding a number of molluscs for cultivation”. It was not suggested that any of the wording of claim 1 bears a special or technical meaning.  The expression “for cultivation”, in the context of claim 1, conveys something different from and additional to the expression “for growing”, also used in that claim.  The expression “cultivation”, in ordinary language, commonly refers to the activity of producing or raising a crop.  See the definition of “cultivation” in the Oxford English

Dictionary and in the Macquarie Dictionary, 2nd Ed.  Both give “husbandry” as a synonym.  As each dictionary shows, this term, in ordinary language, commonly refers to the business of a farmer; agriculture; farming.  I consider that the language of claim 1 must be taken to refer to these notions.  If claim 1 is read in a practical commonsense way, as those to whom it is addressed, viz, persons experienced in growing oysters and other molluscs, would read it, rather than being given a strict literal construction, the claim is for an apparatus for growing molluscs for use in the activity of producing a sufficient number of molluscs to be called a crop.

                        This interpretation of the claim means that the boundaries of the monopoly claimed are to an extent imprecise.  But such a claim can still be valid and effective.  Martin v Scribal Pty Ltd, supra, at 60 recognises that it is permissible for an invention to be described in a way that involves matters of degree.  In Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd, supra, at 274, it was said that the lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use.  Whether claim 1 is given a reading that gives full weight to the ordinary meaning of the words used or whether it is read in the practical commonsense way which the cases I have referred to command, the result is the same:  claim 1 refers to an apparatus for use in a food producing activity - the raising of crops of molluscs - rather than for use in an experimental or a de minimus activity, such as a small-scale hobby operation.

                        A reading of other parts of the specification confirms this interpretation.  In describing the nature of the invention and the respects in which it is an

improvement upon existing matters, the specification describes the invention as enabling the production of uniformly and well-shaped shells involving less labour than existing methods and apparatus for cultivating molluscs and the production of quick-growing disease-free molluscs; it also refers to the invention overcoming the “enormous wastage” due to predators that is a feature of known methods and apparatus for cultivating molluscs.

                        Claim 1 cannot be said to describe an unlimited range of users of the apparatus in oyster growing, but only the user of the apparatus for the more limited purpose of producing what can be called a crop of oysters.  But although a reading of claim 1, both in isolation and in the context of the specification, plainly indicates that the claim includes an apparatus and method of cultivating molluscs for commercial purposes, I would not be prepared to interpret the claim, whether read with or without the specification, as being so limited.  To so limit the words of claim 1 to make them apply, as the applicant suggests, to an apparatus capable of regularly tumbling a commercial or a commercially sensible quantity of growing oysters would, I think, conflict with the ruling in Melbourne v Terry Fluid Controls Pty Ltd, supra. It would limit the ordinary meaning of the words the draftsman of the claim chose to adopt too much to so confine the claim.

                        It follows that the applicant’s patented invention will be anticipated only by a prior user of an apparatus that possesses, among others, the characteristic of being appropriate for use in the production of crops of oysters.  An apparatus capable only of being used to grow a small number of oysters, eg, for experimental

purposes, could not be said to be an apparatus for use in producing crops of oysters and would not anticipate the applicant’s patent, even though it possessed all of the other integers of claim 1.

THE DEVELOPMENT OF THE APPLICANT’S INVENTION

                        Mr W.R. Moxham has long been involved in oyster growing on the Hawkesbury River.  In early 1984, in the course of carrying out some tests for the New South Wales Department of Fisheries involving the use of mesh hatchery bags placed in traditional oyster trays to protect growing oysters from predators, he noticed that the oysters that grew better were on those of his trays so located that the oysters were exposed to being moved about by wave action.  In late March 1984, he built the first prototype of the invention he later patented to take advantage of this observation.  It took the form of a cylinder with walls of plastic flywire mesh and plywood ends; a length of PVC tubing that passed eccentrically through both plywood ends, close to the inner wall of the mesh cylinder, served as an axle from which the cylinder was suspended in the water and about which it could rotate.  On the outer wall of the mesh cylinder opposite the axle, another length of PVC tubing, closed off at each end to make a float, was fixed; this float moved vertically through an arc with the rise and fall of the tide, causing the cylinder to rotate about the axle, thereby slowly tumbling the growing oysters inside the cylinder.  Mr Moxham says he used this prototype between March and November 1984 on three or four separate occasions, each of about six weeks duration, to test its usefulness as an oyster growing aid.  He found it to be very successful, in that it encouraged the growth of

spat into healthy, regularly shaped oysters free of silt; he says the prototype resulted in much faster oyster growth than traditional methods, as well as involving very little labour, compared with those methods.  Satisfied with the success of the prototype, he engaged patent attorneys in about December 1984, who lodged a provisional patent application on 30 January 1985 for him.  Mr Moxham says that, prior to this date, he did not discuss his invention with anyone other than his father, with whom he worked the lease on which he tested his prototype, and his patent attorneys.  It was not suggested that Mr Moxham’s experiments involved a disclosure of his invention sufficient to deprive the patent of novelty.  In early 1985, he says he improved his first prototype by substituting heavy duty plastic mesh, which came in a roll of cylindrical tubing, so that the sections cut from the role to make the cylindrical portion of each tumbler did not need to be joined; he substituted plastic pot plant saucers for the plywood ends and the PVC tubing axle and float were fixed to the outer sides of the mesh cylinder with plastic cable ties.  Mr Moxham says he made about six of these devices by late March 1985.  Thereafter, Mr Moxham has produced further variants, using perforated aluminium mesh for the cylinder walls and different cylinder lengths, up to about 1 metre, and diameters, up to about 0.3 metres.  Mr Moxham says that his device, in the form in which it is now made, is used only for growing oysters in what he describes as the nursery stage of cultivation, ie, in the first six months of growth from spat of 2-4 mm in length until they have reached 30-50 mm, when they are removed and placed into mesh baskets for further growth, until harvesting about 18 months later.  Mr Moxham’s evidence is that the applicant now uses a cylinder, the walls of which are made of perforated aluminium sheeting.  These containers hold, at the initial stage of use,

about 5,000 oyster spat weighing about 1.2 kg; after a period of about three months, the spat weigh about 12.5 kg, when they are thinned out by the removal of about 80% into other containers, leaving about 1,000 spat weighing roughly 2.5 kg.  After a further three months, when the oysters have reached about 30-50 mm in length and the contents of each device weigh about 10 kg, the oysters are removed and placed in the mesh bags I have referred to.  Mr Moxham describes what is a quite highly developed version of the patented invention.

THE MARKS AND MUDFORD DEVICES

                        The respondent, Mr Clem Marks, has operated an oyster farm on Limeburners Creek, a tributary of the Hastings River, for many years.  Since 1980, he has worked it in partnership with his son, Mr Kevin Marks.  Mr Mudford was a neighbouring oyster farmer and friend of the Markses.  He retired and sold his own oyster farm in 1987.

                        The respondent relies on three devices produced by himself and his son, with advice from Mr Mudford, as anticipations of the applicant’s patent.  They are the Marks cylindrical device, which had an axle mounted concentrically through the cylinder ends; the Marks rectangular device, which rotated about an axle fixed to one edge; and the Marks cylindrical device fitted with an eccentric axle, of which an example was tendered as Exhibit CRM-1.  I deal later with whether this was their chronological order of development.  The respondent also relies upon two devices

made and used by Mr Mudford.  Both do not differ in any essential respect from the eccentrically mounted Marks cylindrical device, Exhibit CRM-1.

                        The applicant’s primary contention is that the evidence of the Messrs Marks and Mr Mudford that these five devices were all used before the priority date of the patent should be rejected.  The applicant concedes that, if the relevant device was, in fact, used prior to January 1985 in circumstances that made it publicly available, each of the Marks rectangular device, the Marks Exhibit CRM-1 and both the Mudford devices would be anticipations of the applicant’s patent.

                        It is convenient to deal with all five devices as a group, given Mr Mudford’s close involvement with the Markses in developing the latter’s devices.  The oral evidence of the Markses and Mr Mudford suggests that the history of the development of these devices is as follows:

                        (a)       In 1982 the Markses first got the idea of making a basket that was roughly cylindrical in shape from wire mesh crimped at each end, which they suspended in the water from two sticks fixed to the opposite sides of the cylinder; these sticks rested on the racks on which trays for growing oysters were usually placed.  Such a device would obviously be incapable of rotational or any other movement.  It was about 3 feet long and 2 feet round.

                        (b)       At Mr Mudford’s suggestion, one stick was removed so that this device could hang in the water from a single stick, which was fastened at each end in a type of saddle to the oyster tray rails across which the stick lay.  This was done to allow the cylinder to move in the water.

                        (c)        Again at Mr Mudford’s suggestion, to improve the device’s capacity to move in the water, a float consisting of two two litre plastic milk bottles was tied to the side of the device opposite the supporting stick.  This stick was, at some unidentified stage of this process of developing a workable tumbler, inserted through the device closest to its inside wall; the device was fixed to this stick with galvanised nails.

                        (d)       Mr Mudford said that about the time the Markses got to this stage, he decided to build the first of his own devices, ie, the one a sketch of which is Annexure A to his affidavit and which looks very like Mr Moxham’s second prototype.  The walls were made initially of bird wire mesh, and later of PVC mesh, and the ends of plywood.  He was confident that he had done this by December 1982 or January 1983, at the latest.

                        (e)       Mr Mudford said that, after the Markses had built the cylindrical

tumbler with an eccentric axle and floats on the side of the cylinder opposite the axle and after he had built the first of his devices to which I have referred, ie, “reasonably early in 1983”, the Markses abandoned their device for the cylinder with the concentric axle that is one of the two devices described in drawings attached to the Markses’ respective affidavits and one of their own three anticipations of the patent.  But they soon decided it did not work as well as the device that Mr Mudford had developed himself and adopted one of Mr Mudford’s designs and so came to use cylinders like Exhibit CRM-1.

                        (f)         Mr Mudford said first, that it was May or June 1983 and then later, that it was getting on to late 1983 that the Markses developed their rectangular tumbler, which is the second of the two devices they described in the drawings in their affidavits and another of their anticipations.

                        (g)       The respondent said he made only two of his concentric axled cylinders in very early 1983 and only a few, perhaps as many as four, of the rectangular ones, also in early 1983.  Once he and his son adopted the Mudford design, they abandoned use of these two earlier designs.  That was before June 1983.  He said that it was only a matter of weeks between moving from the

rectangular device to the Mudford design.  It was this device alone which they thereafter used.  The only change they made to it was to substitute plastic mesh at some stage for wire mesh.  It is a version of this device which the respondent tendered in evidence as Exhibit CRM-1.  This is the third of the Markses’ anticipations.  The respondent said that, before February 1985, he did not have many of the Exhibit CRM-1 type cylinders in use, probably 12 to 15.  Mr Mudford says much the same, that he saw the Markses with about eight to 10 of these devices in use, with some on the main lease, but most on their Goat Island lease.

                        (h)        While both the Markses in their oral evidence described the original wire mesh cylindrical basket supported from two sticks, neither described the evolution of that into the version supported by a single stick with milk bottle floats to which Mr Mudford referred.  Neither of the Markses mentioned either of these early devices before giving their evidence at the trial.

                        I do not accept that, before January 1985, the Markses or Mr Mudford devised or used any of these devices.

                        The respondent and his son each swore statutory declarations in

November and in December 1993.  They gave these declarations to a patent attorney, Mr Sutton, who was then acting for another oyster farmer, Mr Boreham, who was being threatened with patent infringement by Mr Moxham’s lawyers.  The respondent annexed his sketch of the rectangular device to his December declaration and his son annexed the respondent’s sketch of the concentric device to his December declaration.  Each refers, in the body of his December declaration, to reading the other’s declaration and to both sketches.  The rectangular device is described in the respondent’s handwriting in his sketch as the “first design”, while the concentric device is described in the respondent’s handwriting in his other sketch as the “second design”.  Consistently with what he said in his December 1993 statutory declaration, the respondent, in his first affidavit of June 1994, described a sequence of development of the concentric and rectangular devices which appeared to place the rectangular one first in time.  In oral evidence, however, he reversed this sequence of development.  He did not there refer to using the rectangular device to cultivate oysters, referring only to the cylinders being used for this purpose.

                        The oral evidence of the respondent, his son and Mr Mudford is that the Markses in late 1982/early 1983 moved quickly from their concentric device, of which they made only two, to their rectangular device, of which they made only two to four, to copying the Mudford device, which, from the first half of 1983, was the type of device they used for years thereafter, ie, that like Exhibit CRM-1.  In the first affidavits each filed in June 1994, the respondent and his son referred to their having developed containers for growing oysters and referred to the rectangular

device and to the concentric device as examples of devices they developed.  Both said that the containers they used were commonly cylindrical in shape.  Both said they attached to the devices means of flotation such as plastic bottles, plastic pipes and lengths of polystyrene.  But neither in their statutory declarations sworn in late 1993 nor in the affidavits they swore in the proceedings in June 1994 did the respondent or his son refer to any devices other than the concentric one and the rectangular one.  In none of this material did they mention that the device which they claim they made far the greatest use of was a third device which they copied from Mr Mudford in early 1983.  This device looks very like the devices depicted in the drawings in the applicant’s patent and the devices they knew the applicant had been using when it made its allegation of patent infringement against the respondent.  Despite having numerous opportunities and every reason to disclose their user of this third device, they made no mention at all of it until they swore their affidavits of March 1995, a week before the trial.

                        On 24 March 1994, directions were given for the conduct of the action.  A short minute of the orders then made contains a note by the respondent’s solicitor, Mr Condon, that the respondent would informally allow inspection by the applicant of the allegedly infringing device and any prior art devices.  The events of 24 March 1994 were preceded by a request from the applicant’s solicitors of 7 December 1993 to the patent attorney acting for the respondent for access to any samples held by the respondent of the various devices he said in his declaration of November 1993 he and his son had manufactured and which consisted of generally cylindrical
containers with flotation means consisting of plastic bottles or polystyrene or plastic pipe.  The respondent’s patent attorney’s response of 13 December was that no samples, drawings or photographs of these devices remained in existence;  instead, it was foreshadowed that the respondent and his son would prepare “true drawings of those arrangements”, which would be annexed to further statutory declarations, ie, the statutory declarations of 29 December 1993.  Mr Condon said that, until shortly before the trial, he dealt with the respondent through the patent attorney, Mr Sutton.  He also said that both he and Mr Sutton, at all relevant times, were well aware of the importance of any devices used by the respondent that might form part of the prior art.  According to the respondent, Exhibit CRM-1 was, at all relevant times, lying on the bank of the respondent’s oyster lease near his sheds.

                        The respondent volunteered that the most important device, from the point of view of his commercial use before January 1985, was Exhibit CRM-1.  At one stage, he gave as his explanation for not disclosing it until the eve of the trial that, while he acknowledged that his patent attorney did ask him for samples of his inventions, he must have misunderstood him by thinking that the patent attorney was requiring only samples of the early versions, of which none was in existence.  He said he was under the impression that the concentric and the rectangular ones were the only relevant ones, even though he says he never made or used more than two of the one and four of the other.  He offers no explanation why, if this was truly his belief then, he did not disclose the very first device and its important variant, the cylindrical basket supported on one stick with a float rather like Mr Moxham’s

prototype that it is now claimed that he developed.  At another stage, the respondent gave this evidence:

                        "Which was the most important device from the point of view of your commercial use before January 85, the round one with the central axis, the square one, or the one in court? --- The one in court [ie Exhibit CRM-1].

                        Why did not you mention that in your affidavit of June 27th 1994? --- I just don't understand your question on that one, again.

                        ¼

                        Why did you not mention that device, CRM-1, in that affidavit? --- Because I thought it was only - the only thing that was applicable to this was the early devices that we had made back in '82/83.

                        But is it not your evidence that you made that device in 1983? --- Yes.

                        Well, then, why is that not a device which was relevant and applicable, in your mind, to these proceedings? --- I don't know."

                        Mr Kevin Marks’ position was that the patent attorney only asked for the earlier devices, hence his disclosure only of the concentric and the rectangular versions:  but this does not explain his failure to disclose the very first version, one variant of which was close to Mr Moxham’s prototype.  Although counsel raised it as a possible explanation in addresses, neither the respondent nor Mr Kevin Marks suggested that the reason for their failure to disclose their most successful device, ie, that like Exhibit CRM-1, was that they did not regard it as one of their inventions because it had been copied from Mr Mudford.  They had ample opportunity to offer that explanation.

                        Against this background, it stretches credulity to accept that Exhibit CRM-1, said by the respondent to be typical of the devices he and his son consistently used from early 1983 after abandoning their brief experiments with their concentric and rectangular devices, had all along been readily available to the respondent, but was unfortunately overlooked for so long because the respondent thought he was only ever required to disclose the first type of devices he developed.

                        Nowhere in their declarations or in their first affidavits do either the respondent or his son make any reference to the role Mr Mudford played in developing the device which, in oral evidence, they said was the one which they quickly adopted in substitution for the concentric and rectangular models, which were the only two devices they described in any detail in this written material.  It was only in the affidavits they swore on the eve of the trial that they mentioned Mr Mudford’s role.  Mr Mudford, in the first written disclosure he made of his activities, a declaration sworn on 18 January 1994 at the request of the patent attorney for the Markses when commencement of the applicant’s action was imminent, confirmed what the respondent and his son had to say in their own declarations of November and December 1993.  He referred to his developing his device in its two forms, but made no mention of the detailed involvement he claimed in oral evidence he had with the Markses.  He did not then mention the device similar to Exhibit CRM-1 which the Markses now say they adopted after seeing Mr Mudford’s devices.  His affidavit of June 1994 follows the same pattern.  It was only in his oral evidence that he mentioned his involvement with the Markses in developing the Marks devices,

including the one similar to Exhibit CRM-1.  This, and the failure of all three to mention Mr Mudford’s key role in the Markses’ activities until very late in the day, does not engender confidence in the reliability of their evidence.

                        Mr Mudford said that, well prior to January 1985, he devised and put into use on his oyster farm cylindrical tumblers that were, for all material purposes, identical in general shape and method of operation to Mr Moxham’s prototype, although Mr Mudford said the cylinders of his devices were made of wire mesh and the ends of plywood.  The first documentary disclosure by Mr Mudford of his devices was his statutory declaration of January 1994.  He had an opportunity and reason to disclose his invention of his devices in 1987.  In September 1987, Mr Moxham’s solicitors wrote to Mr Mudford a letter before action asserting that he was using devices which infringed Mr Moxham’s patent; they enclosed a copy of the patent.  The patent identifies the priority date and includes drawings of devices strikingly similar to those which Mr Mudford claims he had himself invented well before the priority date.  Mr Mudford engaged a solicitor, who replied to this letter in October 1987 with a simple denial of any patent infringement and advice that Mr Mudford had sold his oyster leases in June of that year and no longer had any interests in the oyster industry.  Mr Moxham’s solicitors made further demands on Mr Mudford through October 1987.  In response, Mr Mudford’s solicitor in December 1987 refused to give the undertakings sought because Mr Mudford did not admit the correctness of the allegations and because he was no longer in the industry and could see no reason for giving an undertaking concerning future conduct.  It is

surprising that the aggressive actions of Mr Moxham’s solicitors in late 1987 did not provoke from Mr Mudford, who took the trouble to engage a solicitor to act for him, an assertion that he himself had devised and used a large number of devices very similar to those shown in the patent drawings well prior to the date from which the patent conferred rights on Mr Moxham.  This is further reason to doubt Mr Mudford.

                        Each of the respondent, his son and Mr Mudford initially said, in their statutory declarations and in their first affidavit, that the Marks concentric device did work.  It is, I think, significant that Exhibit CRM-1 emerged only after Mr Anderson’s affidavit of August 1994 indicating that the concentric device, which both the respondent and his son had previously mentioned as the latest device developed by them, did not work.

                        It may well be that the respondent did use Exhibit CRM-1 and similar devices in his farming operations for a considerable period prior to the start of the trial.  But it looks very like the Moxham cylinder displayed at the field day in September 1985 and depicted in the article in “Australian Oyster”, published at about the same time.  The respondent said he saw the cylinder at the field day where Mr Moxham was demonstrating it.  He also acknowledged reading the article in the August 1985 issue of “Australian Oyster”, in which there was reference to Mr Moxham expressing enthusiasm for his invention.  The respondent does not suggest he commented to Mr Moxham or to anyone else that the device he claims he was then using, of which CRM-1 is typical and which he acknowledged was very like the

one Mr Moxham demonstrated at the field day, was really no different from something he had been using for years before that and which he and Mr Mudford had developed.

                        In my view, the probabilities are that the respondent and his son only commenced to use cylindrical tumblers in growing oysters after having learned of Mr Moxham’s invention, probably at the September 1985 field day.  I also think it likely that Mr Mudford, who had close contact with the Markses, probably only commenced to use cylinders of the kind he illustrated about this same time and after learning of the Moxham invention from the Markses or some other source, as a result of the field day demonstration or other publicity.  Support for this view also comes from Mr Mudford’s confirmation of Mr Davis’ evidence that Mr Mudford generally got his growing stock from Port Stephens until the 1985 infestation of Pacific oysters there:  it would seem that it was only from that time that he decided to grow his own feed from the beginning.  The close similarities between Exhibit CRM-1 and the Mudford devices on the one hand, and the Moxham invention on the other, are more likely explained by the Markses and Mr Mudford having copied the Moxham device than by coincidence in them all arriving at much the same solution independently.

                        It follows that I think it likely that the concentric and rectangular devices referred to by the Markses and Mr Mudford were only devised to answer the claims made by the applicant on the Markses.  This involves accepting that Mr Mudford was

prepared to co-operate with them in presenting a false defence, without obtaining any obvious advantage for himself from doing that.

                        The applicant called a number of persons (Messrs Cole, South, Lyle and Davis) who worked oyster farms in the vicinity of the respondent’s and Mr Mudford’s leases near the mouth of Limeburners Creek to contradict the evidence of the respondent, Mr Kevin Marks and Mr Mudford that they used the devices they referred to before January 1985.  I do not accept the testimony of any of these witnesses as providing a foundation for finding that either the respondent or Mr Mudford did not have containers in use in that period.

                        Mr Cole was completely discredited in cross-examination.  The letter threatening infringement proceedings which Mr Moxham’s solicitor sent to Mr Mudford in September 1987 confirms Mr Mudford’s evidence that he was using devices like the applicant’s at about that time (although Mr Mudford sold his oyster leases in June 1987).  Mr South worked in the area for years, into 1987.  Yet he did not observe any devices in use on Mr Mudford’s lease in early 1987, when it would appear that Mr Mudford was using copies of the applicant’s devices.  As I have said, I think it likely that the respondent did use devices similar to Exhibit CRM-1 after he became aware of the applicant’s devices in circumstances in which Mr South could also be expected to have seen them, if he had done anything other than look in a casual way over the respondent’s lease areas.  The proposition that Mr. South is a reliable observer, when he said he did not see any of these devices in use at any

time by either Mr Mudford or the respondent, is unacceptable.  While he says he never saw the respondent using any cylinders to actually grow oysters, despite his fairly frequent presence in the area of the respondent’s leases, Mr South claims he saw a number of brand new oyster tumblers in the respondent’s shed when he worked for the respondent culling oysters at Christmas 1985 (although he conceded it was possible it may have been Christmas 1986).  He is definite that these cylinders were of the Marks concentric type, not devices like Exhibit CRM-1.  He says he had a conversation with the respondent about these cylinders that touched on Mr Moxham’s patent and which is damaging to the respondent.  There is no reason to think that Mr South has some bias in favour of the applicant.  But given the doubts I have about the reliability of Mr South as an observer, I am not prepared to accept his evidence of the conversation he says he had with the respondent; nor do I accept his evidence of seeing concentric devices in the respondent’s shed in either late 1985 or late 1986.  Although Mr Lyle, on the face of things, had good reason for closely observing Mr Mudford’s lease in 1985, the circumstances in which he gave different answers concerning his seeing floating devices on a lease owned by a Mr Herbert in Limeburners Creek a week before the trial started is a major reason for making it unsafe, in my opinion, to act on the evidence of his observations of either the respondent’s or Mr Mudford’s lease in 1985.

                        Mr Davis said he regularly supplied both the respondent and Mr Mudford with oyster stock from the late 1970s up to 1986 (although, in his affidavit, he erroneously said that he continued to supply them “for at least 10 years prior to

about 1988”).  Mr Davis travelled frequently on the Hastings River and in Limeburners Creek in the vicinity of Mr Mudford’s lease; he said if the tide was high enough, he would sometimes take a short cut in between the creek bank where Mr Mudford’s shed stood and his lease.  He also travelled close to the respondent’s lease near the mouth of Limeburners Creek.  Mr Davis said that he first saw oyster tumbling containers in the Hastings River region in about late 1985 or early 1986, ie, probably after the field demonstration of the applicant’s invention.  He describes a device like the respondent’s rectangular container, but covered in plastic mesh rather than wire netting, and quite small, only the size of a 20 litre container.  He said that such devices were only used in the Hastings River after the Pacific oyster infestation affected Port Stephens to the south.  He said it was this which put a stop to the practice of Hastings River growers of bringing in growing stock from Port Stephens and led to them using cylinders.  His evidence is broadly consistent with that of Mr Bailey, the Port Stephens grower, in that this infestation did not affect the Port Stephens area until 1985, ie, until after the priority date of the patent.  Mr Mudford provided some confirmation of what Mr Davis had to say:  he said that, up to 1985, he operated by buying stock from Port Stephens and putting it out in trays for on-growing save that, prior to 1985, he did make limited use of traditional oyster sticks to catch sprat as feed for the tumblers, which he claimed he put into use before 1985.  There is no suggestion that Mr Davis is anything other than an independent witness.  But since I think the respondent and Mr Mudford both used devices similar to Exhibit CRM-1 after August 1985, Mr Davis is in much the same position as Mr South, ie, he did not see in his regular visits to the area of Mr Mudford’s and the Markses’ leases between late 1985 and 1986 the respondent or

Mr Mudford using any tumblers when, in fact, they were both likely to have been using them in that period.

                        Mr Mudford said his daughter worked intermittently on his leases on which he used his cylinders over a number of years up until the birth of her daughter on 30 March, 1984; he said she last worked on his leases shortly before that.  Ms Mudford confirms that she worked on a casual basis on her father’s leases from approximately 1979 until shortly before the birth of her daughter in March 1984.  Her affidavit suggests that, throughout this five year period, she saw cylinders in use.  Her oral evidence, that she only saw them in use in one short period around Christmas 1983 in this five year period, is inconsistent with her affidavit evidence.  Despite this inconsistency, I would have been inclined to accept her as a reliable witness with respect to Mr Mudford’s user of tumblers prior to 1985.  However, given the grounds that I have referred to which cast real doubt on the reliability of Mr Mudford’s claims, I am not prepared to accept her evidence as sufficient to convince me to accept Mr Mudford’s evidence as to his involvement prior to January 1985 with the Markses in developing their tumblers and as to his own inventive activities.

THE USER BY MR RAE MOHR

                        The applicant does not dispute that if the Mohr device was used before 30 January 1985, it was so used as to be publicly available, given its exposure to the witness Mr Les Mohr.  The applicant’s primary contention, however, is that this user
is not an anticipation of the patent because it does not possess one of the essential features of each of the claims:  it is said that the Mohr device is not able to regularly tumble the oysters in it.

                        Mr Les Mohr says that in early 1982, immediately after his return to Australia from Papua New Guinea, he saw his uncle, Mr Rae Mohr, an oyster farmer with leases on the Macleay River, using mesh cylinders to grow oysters on one of his leases.  Mr Mohr put in evidence a cylinder which he found in a shed on his uncle’s property shortly before the trial.  The cylinder walls are of small gauge galvanised mesh, the ends are of plastic mesh; there is a metal axle fixed concentrically through the cylinder ends.  A plastic foam float is attached by a rope to the outside of the cylinder wall.

                        Professor Tansley, a well-qualified, independent consultant, performed certain experiments designed to show the working characteristics of this particular cylinder.  He did not, however, perform any experiments on the cylinder in actual use.  He concluded that the weight of the float in air and the maximum rotational torque it produced on the cylinder, would be sufficient to rotate the cylinder as the water level fell, provided the cylinder contained no more than about 1.5 kgs of oysters of a size suitable for retail sale.  This would appear to equate to about 30 or so fully grown oysters.  This conclusion allows for the mechanical advantage produced by the fact that the float is not fixed firmly in position on the cylinder wall, but is tied fairly loosely to it by a rope which allows the float to move through an arc on the outside of the cylinder.  Professor Tansley’s evidence therefore indicated that

the Mohr device would regularly tumble its contents in response to tidal rises and falls, provided it was loaded to no greater extent than that.  I accept that the maximum load which the Mohr device will regularly tumble is governed by the weight of the float which, with the mechanical advantage produced by its position on the top of the cylinder, must just exceed the load in the container.   It is to be noted that Mr Rae Mohr did not use his devices to grow oysters to full size, ie, to the size of those which Professor Tansley used in his experiment:  Mr Les Mohr said they were used only to grow oysters during “the first half of their career”, after which they were put out on traditional trays.  This limited user is consistent with that which Mr Moxham said is made of the tumblers which the applicant uses.

                        The Professor’s calculations were based on a number of artificial assumptions, eg, that there was no friction in the system and that the axle was perfectly centred in the cylinder.  Some of his assumptions favour the capacity of the cylinder to rotate under load, others work against the capacity.  The tests on the Mohr device performed during the trial by Mr Anderson, the applicant’s patent attorney and one of its directors, confirm that the Mohr device possesses the capacity to regularly tumble a not insignificant maximum load of contents under conditions intended by Mr Anderson to simulate operating conditions.  As Professor Tansley observed, Mr Anderson’s experiments yielded data not too far removed from those which he calculated.

                        Mr Anderson’s initial opinion, after learning of the Mohr device, was that it did not possess the characteristic referred to in claim 1 of the patent of being

able to regularly tumble the molluscs placed in it; he then said that, while the Mohr device would partially rotate and tumble its contents when used for the first time in response to the up-thrust produced by the rising tide on the float, the weight of the oysters then lying in the bottom of the cylinder below the float would prevent any further rotational movement, once that initial tide fell.  His own experiments falsify his initial opinion.  One of Mr Anderson’s experiments was to test the device in its configuration most favourable to regular tumbling, ie, with the cylinder not tied to its axle and with the axle mounted in saddles.  This test showed that, with a maximum load of one litre (ie, 12 large oysters which weighed in air about 2/3 kg) and with a maximum load of less than one litre (ie, 20 oysters just sufficiently large not to fall through the mesh of the cylinder walls and which weighed about 1/2 kg in all) the cylinder would repeatedly rotate through arcs of 45°-50° and 35°-40° respectively, and thereby tumble most of each load as the cylinder was subjected to a condition intended to simulate a falling and then a rising tide.  That is sufficient rotation to show that the Mohr device possesses that integer of each claim described as “means responsive to regular movement of the water to give the container a rotational movement”.  Mr Anderson did not attempt to explain why the device he tested would regularly tumble a load of large oysters weighing about a third more than the maximum load of small oysters which he said could be so tumbled.  This difference, however, underlines the fact that Mr Anderson’s experiments give only a crude indication of the tumbling capacity of the Mohr device.  I accept what Professor Tansley says to the effect that the method Mr Anderson adopted to simulate tidal changes would be likely to reduce the maximum load of oysters which Mr Anderson found would regularly tumble below that at which regular tumbling

would occur with the cylinder operating in actual tidal conditions.

                        Professor Tansley’s exercise probably over-estimates the maximum load which the Mohr device could regularly tumble, while Mr Anderson’s experiments under-estimate that maximum load.  I think that something of the order of about one kilogram is likely to comprise the maximum load which the device in evidence would regularly tumble when in use in a tidal environment.  This would equate to about 40, or, something less than two litres, of Mr Anderson’s small oysters.  Mr Les Mohr, who did not pretend to recount precise observations, said he thought his uncle started with about 2 litres of small oysters, which grew up to three or four litres of larger ones, although, at another point, he did give an answer which might suggest that his uncle used his device to grow 2 litres of feed into 6 or 8 litres of large oysters before they were removed.  I do not accept that the Mohr device had the capacity to regularly tumble loads as large as Mr Les Mohr suggested in his inexact evidence on this topic.  But I accept that, in an operational environment, it was capable of working to grow a significant, ie, more than a minimal, amount of feed into a significant number of semi-mature oysters.

                        Mr Moxham’s own evidence of the applicant’s recent developments of the cylinders demonstrates that the dimensions and thus the load capacity of an apparatus possessing all the integers of claim 1 can vary.  Claim 1 does not purport to identify as an essential characteristic of the apparatus any minimum load capacity.  The only parameter of load sizes identified by the claim as I have interpreted it is that the minimum load which can be regularly tumbled must be more
than de minimus and sufficiently substantial to enable it to be described as comprising part of the activity of raising a crop of oysters.  It was not suggested that claim 1 lacks clarity or is invalid for incurable ambiguity.  I am therefore prepared to treat the question of the minimum load a particular device must be able to regularly tumble if it is to possess all the integers of claim 1 as a matter which, subject to the one parameter I have referred to being satisfied, is left to the user to determine, having regard to the size of container he elects to use and to my conclusion that claim 1 does provide “a workable standard suitable to the intended use”.  I am not prepared, on the evidence before me, to find that the maximum load which the Mohr device in evidence can regularly tumble is so little that that device cannot be regarded as possessing the characteristic of the applicant’s invention of being able to regularly tumble its contents, even if regard is had only to the Mohr device being made of chicken wire mesh which could hold only growing oysters larger than spat-size.

                        The applicant’s patent is economical in describing the means whereby the important result achieved by the claimed apparatus of regularly tumbling its mollusc contents is to be achieved.  Professor Tansley points out that rotatability under maximum load is achieved by displacing the axle as far from the float as possible.  Mounting the axle eccentrically, with the float on the side of the cylinder farthest from the axle, rather than mounting the axle concentrically in the cylinder is the configuration shown in all the embodiments of the applicant’s invention referred to in evidence and the configuration of all the embodiments of the invention depicted in the drawings in the patent specification that depend on the change in water levels

to produce repeated rotation.  (The embodiments in the specification that depend on current to produce rotation show concentrically mounted axles.)  But that this configuration is the one shown in the drawings incorporated in the specification cannot limit the words of claim 1.  The applicant did not suggest the contrary.  Claim 1 does not identify eccentric axle mounting or, more particularly, the displacement, to the maximum extent, of the axle from the float, as an integer of any of the claims the invention therein described.  The applicant has claimed widely; it has therefore accepted the risk of anticipation by a device that meets the wording of its wide claim, even though it is less efficient in operation than the particular embodiment of the invention that the applicant has chosen to make.

                        In my opinion, the Mohr device I have referred to possesses the characteristic of claim 1 (and of each of the other claims) of the capacity to regularly tumble the oysters placed in it, given the way in which I have indicated I think the claims should be read.  That it will not regularly tumble, if loaded to the same extent as those embodiments of the applicant’s invention which displace the axle as far as possible from the float, does not mean that it would not infringe the applicant’s patent, if that patent were valid.

                        However, while there is no challenge to Mr Mohr’s evidence that his uncle so used his oyster cylinder as to make the information about its operation publicly available, there is an issue as to whether Mr Mohr’s evidence that his uncle used any form of oyster tumbler before the priority date of the applicant’s patent should be accepted.  There is also an issue whether the particular Mohr device the

subject of the evidence of Professor Tansley and Mr Anderson and which I consider would be an anticipation of the applicant’s patent, if used before the priority date, was so used or was truly typical of those used by Mr Mohr’s uncle, before that date.

                        As to the first issue, in his first brief affidavit, Mr Mohr identified the cylinder put in evidence as a cylinder which he had seen in use by his uncle on one of the latter’s oyster leases well prior to 30 January 1985.  In his second affidavit, filed shortly before the start of the trial, and after having read Mr Anderson’s affidavit in which the latter expressed the opinion that this particular Mohr device did not have the capacity to rotate regularly because the weight of the oysters in the cylinder would exceed the weight of the float, Mr Mohr dealt with this proposition simply by saying that, to the best of his recollection, he saw clear evidence that the cylinders his uncle used in early 1982 rotated with the tides and that he never observed that his uncle had to turn the cylinders by hand to tumble the oysters contained in them.  Given that he was alerted by Mr Anderson’s affidavit to the possibility that his uncle’s device may not have worked because the float was too light to tumble the load and given his considered response to this possible deficiency in the device in his affidavit in reply, his late emerging description in oral evidence of the use of lead sinkers as one means adopted by his uncle to overcome this defect throws doubt on the reliability of his evidence. That Professor Tansley’s evidence, given only late in the trial, suggests that the use of a couple of lead weights of the kind described by Mr Mohr would only marginally improve the ability of the Mohr device to tumble a sizeable load provides no ground for thinking that Mr Mohr, when he gave his own evidence earlier in the trial, must have believed that the use of lead weights would

have little beneficial impact on the workability of his uncle’s device and that what he had to say about the lead weights must therefore have been regarded by him as something of no real significance, ie, as something not worth making up.  Moreover, Mr Mohr is not an entirely disinterested witness:  he has a pecuniary interest in the respondent succeeding in showing the applicant’s patent to be invalid.  But notwithstanding these doubts as to the reliability of his evidence that his uncle did in fact use some form of oyster tumbler before January 1985, I am prepared to find that that was the position on the basis of Mr Les Mohr’s evidence.  He did not strike me as a person who sought to establish a particular point, but rather as a witness who was prepared to make concessions, that could be said to be against his own interest, about the accuracy of his recollections as to important matters, in an endeavour to give truthful evidence.

                        As to the second of these issues, although Mr Mohr, in his initial affidavit, described the device that was put in evidence as a cylinder which he observed his uncle to use well prior to the priority date, in cross-examination he said that he could not say that he saw that particular device used to grow oysters, only that he did see cylinders of that type so used by his uncle prior to January 1985.  He also said that he knew that his uncle had cylinders that looked like the device put in evidence, which did not perform and which his uncle had to modify.  He referred to his uncle using lead sinkers to impregnate the plastic float.  The device in evidence shows no sign of having been so modified.  Mr Mohr also said that probably the majority of his uncle’s cylinders did not have lead weights attached, but had bigger

floats, several times larger than the float on the device in evidence and that if a sufficiently heavy float was used, the cylinder would work without any extra lead weights.  He observed:

                        “This was not a uniform production line, this was a farmer on the riverbank trying this, trying that and probably we could have found five of those type containers and they would have all varied in some way or other.”

                        Despite what he said in his second affidavit and in oral evidence to the effect that his uncle’s devices worked, he also said that he could not say whether the cylinders his uncle used were effective as an aid to growing oysters because he did not have sufficient to do with them to come to a conclusion.  Mr Mohr says the greatest number of cylinders he ever recalled seeing in use by his uncle was about a dozen.  This does not suggest that his uncle ever developed a device that he considered worked sufficiently well to make it of use in raising his oysters.  A device that will regularly tumble growing oysters under the influence of tidal changes appears, on the evidence as to the extent to which such devices are now in use, to be a valuable aid to oyster farming:  Mr Rae Mohr’s activities seem never to have progressed beyond small scale experimentation to the stage of the development of a tumbler that worked in a way that  he considered was of use to him.

                        But, notwithstanding these considerations, I accept that Mr Rae Mohr’s device that is in evidence possesses all the integers of claims 1 and 6.  I also accept that, provided he did use a device other than the one in evidence but one with the

characteristics of that device, viz, a reasonably heavy external float on a mesh cylinder mounted on a concentric axle, before January 1985, he would also have then used a device that also possessed all those integers.

                        It is the respondent who bears the onus of establishing invalidity of the patent.  Mr Les Mohr’s evidence does not establish that the device put in evidence (or one that did not differ materially from it), which I consider capable of amounting to an anticipation of the applicant’s patent, was, in fact, probably used before the priority date of the patent.  His evidence does not enable any particular device to be identified as one which was in use before January 1985 and which did possess all the integers of the applicant’s invention.

                        In reaching this conclusion, I take into account that Mr Rae Mohr was not called by the respondent to give evidence about when the Mohr device in evidence, or one similar to it, was first used.  The rule in Jones v Dunkel was stated in O’Donnell v Reichard [1975] VR 916 at 929, in a passage approved by the High Court in Brandi v Mingot (1976) 12 ALR 551 at 559, in these terms:  where a party, without explanation, fails to call as a witness a person whom he might reasonably be expected to call, if that person’s evidence would be favourable to him, then, it is open to the tribunal of fact to infer that that person’s evidence would not have helped that party’s case.  Mr Les Mohr’s evidence sufficiently shows that Mr Rae Mohr was available and able to give evidence.  He was, in my view, a witness that the respondent, rather than the applicant, might reasonably be expected to call:  in view

of what Mr Les Mohr had to say about Mr Rae Mohr’s activities and in view of the respondent’s reliance on Mr Les Mohr’s evidence to defeat the applicant’s patent, Mr Rae Mohr could be expected to prove the respondent’s case that the applicant’s patent had been anticipated and was invalid, if a device possessing all the integers of the claims was used before January 1985.

                        I have refused to find that, prior to January 1985, Mr Rae Mohr did use one of his devices that possessed all the integers of the patented invention.  But I have accepted that he did then use versions of the tumbler in evidence.  It therefore remains to be determined whether I should still find that Mr Rae Mohr had, by January 1985, progressed sufficiently far with his experiments to have identified all the essential features of the applicant’s invention.  If he had got that far, so that all that remained was for him to substitute some mechanical equivalents for elements of his device in order to have a tumbler materially identical to that described in the applicant’s patent, it could be said that his work did anticipate the patent.  See Nicaro Holding Pty Ltd v Martin Engineering Co, supra, at 517.

                        There are a number of obstacles to arriving at that conclusion.  It is not possible to identify from Mr Les Mohr’s evidence the highest stage of development of his device which Mr Rae Mohr achieved before January 1985, something that makes it difficult to assess whether that device, whichever one it was, was sufficient to amount to an anticipation of the patent.  Given the very limited scale of Mr Rae Mohr’s experiments, so far as that emerges from the evidence, there is no ground

for finding that even if he had, before January 1985, used a device that incorporated all the essential integers of the applicant’s patent, it was one of those which Mr Les Mohr saw or that it was otherwise used in circumstances that made that information publicly available.  Finally, the claims in the patent specification, properly construed, identify it as an essential characteristic of the applicant’s invention that the device must have the capacity to regularly tumble, under the action of the movement of the water, a sufficient quantity of oysters to enable it to be described as an apparatus for use in the activity of producing a crop of oysters.  Although the mechanical principles which are involved may be quite simple, I do not consider that the step of moving from an experimental device, ie, one which will regularly tumble only a few oysters, to one which will tumble enough to enable it to be described as a device for use in raising a crop of oysters, is a step that involves no more than the substitution of one non-essential mechanical equivalent for another non-essential mechanical feature.  I do not think that if Mr Rae Mohr had publicly used before January 1985 a device with that limited capacity to tumble its contents, that would be sufficient to deprive the applicant’s patented invention of novelty because the disclosure would not, in my opinion, “enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments”.  Nicaro Holdings Pty Ltd v Martin Engineering Co, supra, at 517.  Mr Les Mohr’s evidence of the apparent difficulties encountered by his uncle, who, as an experienced oyster grower, is within the category of persons skilled in the art, for present purposes, in developing a tumbler that performed, supports this view.

                        Differences only in common elementary mechanical materials between a device that works in a practical sense and an earlier device that cannot be said to work in that sense, can suffice to confer novelty on the later device.  See Murray v Clayton (1872) LR 7 Ch App 570 at 581-582.  The differences between the Mohr device in evidence and other versions of that device which, however, on Mr Les Mohr’s evidence, lacked its capacity to tumble a load of the size the former device can work with, cannot be said to be mere mechanical equivalents for each other.  In view of the effort apparently involved on Mr Rae Mohr’s part in identifying the appropriate float to give his tumbler a useful working capacity, I do not think it can be said that he was merely concerned with substituting mechanical equivalents, rather was he engaged in truly experimental activity, in identifying the element of the tumbler which would make a “substantial contribution to the working of the thing”:  Griffin v Isaacs (1942) 12 AOJP 739 per Dixon J at 740.

THE USER BY MR BAILEY

                        Soon after Mr Moxham made his second prototype in March 1985, he said he informed Mr Holliday, of the Fisheries Research Station at Salamander Bay, of his device and then gave Mr Holliday two of the second prototypes to test.  Mr Holliday did not, however, try out these devices himself.  Instead, he gave them to Mr Bailey, the principal of an oyster growing business conducted by Cove Oysters Pty Ltd at Port Stephens, without first mentioning his intention to do that to Mr Moxham.  It is not disputed that Mr Bailey’s user of the devices made the invention publicly available so that, provided it was a user prior to 30 January 1985, it would

be sufficient to deprive the patent of novelty:  there was no suggestion that he was given the devices by Mr Holliday in circumstances in which he was restricted in any way in the use he could make of the information that could be gleaned from an inspection of the device.  The only issue between the parties is when Mr Bailey got the devices from Mr Holliday.  Mr Bailey confirms receipt of at least one of Mr Moxham’s second prototypes from Mr Holliday.  However, he says this occurred in 1984 and well before the priority date of the patent.  Mr Holliday is unable to fix the date when he received the two prototypes from Mr Moxham, both of which he gave to Mr Bailey for testing.

                        I accept Mr Moxham’s evidence, in preference to Mr Bailey’s, as to when Mr Bailey obtained the two Moxham devices from Mr Holliday.  Mr Moxham’s evidence, that he gave the prototypes to Mr Holliday only after lodgment of his provisional patent specification in January 1985, is supported by Mr Holliday’s evidence about two photographs he took, each of which shows one of the two Moxham devices installed at Mr Bailey’s premises in Port Stephens.  Mr Holliday was, in some respects, an unsatisfactory witness.  He was surprisingly vague about a number of matters and he appears to have kept no record of matters that he might be thought to have recorded.  The explanation may well be that, in those early days, he did not think Mr Moxham’s device was of much importance.  But Mr Holliday was able, quite convincingly, to date these photographs as having been taken soon after 2 May 1985.

                        One of the photographs clearly shows one of the Moxham devices

installed at Mr Bailey’s premises in a clean condition and free of marine fouling.  There is evidence, which I accept, that this suggests that the photographs were taken soon after they were put into use by Mr Bailey.  There is no direct evidence from anyone when this was done.  But the probabilities I think are that it would have been soon after he got them from Mr Holliday.  Moreover, there is no evidence in the photograph of the presence of any Pacific oyster infestation on the device.  If Mr Bailey got it in late 1984 and had put it into use before late January 1985, as he claimed, the presence of that infestation on the device should have been obvious in a photograph taken in May 1985.  This suggests the device was only put into use by Mr Bailey after March 1985, when, according to him, the Pacific oyster spat fall ended.

                        I do not think that Mr Holliday’s agreement with the suggestion in cross-examination, that it was possible he may have given the devices to Mr Bailey before the priority date of the patent, justifies a finding to that effect or justifies rejecting the inferences open from the other evidence I have referred to, and which I regard as more reliable, that that delivery took place only after the priority date:  this was said in the context of the evidence of a witness who made it clear he had no recollection when he handed over the devices.

                        Mr Moxham was less than frank in his initial evidence, which created the impression that he first sought patent protection for his invention when he approached his patent attorney, Mr Anderson, in December 1984.  It emerged in cross-examination that he had himself filed a provisional specification for this

invention in July 1984.  I do not accept, however, the fairly elaborate theory which counsel for the respondent built upon this want of frankness by Mr Moxham to the effect that the fact of the earlier filing demonstrates that Mr Moxham had completed testing of his first prototype to his satisfaction by July 1984, and was thus likely to have delivered the second prototypes to Mr Holliday, which he in turn delivered to Mr Bailey, prior to January 1985.  The photographic evidence to which I have referred is in any event inconsistent with such a theory.

                        Mr and Mrs Bailey dated receipt of the device from Mr Holliday to the period when a Mr Castka was in their employ.  He ceased to work for Mr Bailey at the end of November 1984.  But in oral evidence, Mr Bailey could offer no reason why he connected receipt of the device from Mr Holliday with Mr Castka’s being in his employ.  Mrs Bailey, who supported her husband’s evidence of dating the receipt of the device to a time when Mr Castka was working for them, said in oral evidence that she linked the two events because the lease gang installed the device and Mr Castka was foreman of the lease gang.  She did not commit herself, however, to saying Mr Castka was involved in the actual installation.  Mr Bailey’s evidence conflicted materially with what he told the respondent’s patent attorney, who first approached him in April 1994.  The patent attorney’s detailed note of his initial conversation with Mr Bailey on 8 April 1994 and of the conversation he had when Mr Bailey telephoned him the next day was put in evidence.  While Mr Bailey did tell the patent attorney in the first conversation that, to the best of his belief, he got the device from Mr Holliday before January 1985, it was in the second conversation that he told the patent attorney that he and his wife had discussed the matter and had

recalled that, when Mr Holliday gave him the device, both he and his wife were sure that a number of their staff, including Mr Castka, were present.  I note that Mr Castka, who has no interest of any kind in the outcome of the case, gave evidence, which I accept, that, until he was shown the device by Mr Bailey at the Cove Oyster Company lease in mid 1994, shortly before he swore the affidavit he gave to the applicant’s lawyer in August 1994, he had never seen such a device there or anywhere else.  Mr Bailey therefore learned, after speaking to the patent attorney in April 1994 but before he gave evidence at the trial, that Mr Castka would say he was not present when Mr Bailey received the tumblers from Mr Holliday.  In oral evidence, Mr Bailey denied ever telling the patent attorney that Mr Castka was present when the device was received.  If their oral evidence is accepted, neither Mr Bailey nor his wife seem to have any reason for connecting Mr Castka with Mr Bailey’s receipt or use of the tumbler.  The fact that the Baileys only turned their mind to dating the events in question in April 1994, ie, nearly 10 years afterwards, reinforces me in my view that their evidence that they received and used the device before the priority date is unreliable.  I also accept that Mr Bailey made, on a prior occasion to his giving affidavit and oral evidence, a statement on a matter of critical significance to the issue about which he testified, which was inconsistent with his evidence.  This is further reason to refuse to accept his dating of his receipt of the two Moxham tumblers.

                        Mr Turner worked for Mr Bailey from 1980 until some time in 1985. His general duties included maintenance of the racks and trays on the Cove Oyster Pty Ltd’s leases and tending to the growing oysters.  He said that, until shown a

photograph of the device which Mr Holliday gave to Mr Bailey shortly before he provided the applicants with his affidavit sworn in September 1994, he had never seen that or any similar device used for growing oysters either on Cove Oysters Pty Ltd’s leases or anywhere else.  His evidence is inconclusive, given the absence of clarification of when he left Mr Bailey’s employ.  He was uncertain when in 1985 he left, saying on one occasion, he left in late 1985 and, on another, that he “probably” left about June or July of 1985 and that he was “probably” working for Mr Bailey in May 1985.  He may have worked for Mr Bailey when, on any view, the device was in use by Mr Bailey, in which case his failure to notice it would destroy the value for the applicant of his evidence of never having seen such a device prior to being shown the photograph.  But it is also possible that he may have left Mr Bailey’s employ sometime around the middle part of 1985, but before the device was put into use, in which case his evidence would, of course, support the applicant.  I do not think Mr O’Dell’s untested and brief affidavit evidence to the effect that he had a clear recollection that the device received by Mr Bailey was in the possession of Mr Bailey’s company when Mr Castka was employed there as a foreman is sufficient, having regard to the circumstances in which it was admitted and to the absence of any detail that might lend credence to his bare assertion, to justify a different finding.  I am also prepared to accept Mr Castka’s evidence, which contradicts what Mr O’Dell says.

                        Mr Bailey also sought to date Mr Holliday’s photographs of himself standing on some oyster trays next to one of the applicant’s devices as having been taken well prior to May 1985 because he claimed they were trays made by his

employees after July 1994 and because of the absence in the photographs of any evidence of the rapidly progressive Pacific oyster infestation on the trays or the Moxham tumbler, which he said commenced with the spat fall in the period November 1984 to March 1985, an infestation that he also said was obvious by early 1985.  But, given Mr Bailey’s evidence in cross-examination, I think it likely that Mr Holliday’s photograph shows sectionalised trays which Mr Bailey used in connection with experiments in which Mr Holliday was involved on his company’s leases in the period 9 January to 18 December 1985; the absence of evidence of Pacific oyster infestation can be explained, as Mr Bailey conceded, by the fact that the trays shown in the photograph may have been trays newly put into use, in the course of these experiments, at some time in 1985 after they commenced.

THE U.S. PATENT

                        This patent, which constitutes prior art information, is relied on by the respondent as an anticipation of the method claim of the applicant’s patent, claim 6 (and claim 7, which is dependent on it).  It is an essential element of claim 6 that the claimed method involves producing the regular tumbling of the oysters by the action of the moving water at least partially rotating the container.

                        The American patent is for a method of raising oysters.  The claims in this patent do not rely on the action of the moving water to perform the operation of turning the containers in which the oysters are grown, but rather on the containers

being turned periodically.  Claim 2 includes, as an essential feature, turning the containers over “fairly consistently ¼ at least once within every 120 hours”.  The abstract of this patent makes what is plainly implicit in the claims themselves, viz, that an essential feature of this patent is that the containers are to be turned manually.

                        Lahore, supra, at para. 1.5.013, suggests the test for determining whether a patent is deprived of novelty by prior use is less stringent than the test applicable in the case of an alleged paper anticipation.  The decision in Merrell Dow Pharmaceuticals Inc v NH Norton & Co Ltd, supra, at 14 on statutory provisions analogous to s 7(1)(a) is to the contrary.  But even if the less stringent test is applicable in determining whether Walker’s patent anticipated the applicant’s invention, it is I think clear that there was no anticipation.  A suitably skilled reader would not get from a reading of the Walker patent anything to lead him, without the exercise of inventive ingenuity, to a device or method for growing oysters that included a means of regularly tumbling the oysters by the movement of the water on the container in which the oysters were growing.

                        The American patent does not anticipate the applicant’s patent.

OTHER ISSUES

                        My conclusion that the respondent did not use any of the three devices

he relied on in his evidence as prior disclosures of the applicant’s invention before the priority date of the applicant’s patent disentitles him relying on s 119 of the 1990 Act.

                        The respondent’s contention that Mr W.R. Moxham was not the inventor or sole inventor was not pressed, although it was not formally abandoned.  This allegation was based primarily on the fact that in the period when Mr W.R. Moxham developed and then patented his invention, he was in his father’s employ.  But the evidence did not show that there was anything other than a mere coincidence in time between the period of that employment and the period of Mr W.R. Moxham’s inventive activities:  nothing was pointed to which might suggest that it was Mr W.R. Moxham’s employer who was entitled to his invention, rather than Mr W.R. Moxham.  Cf. Lahore, supra, para 1.9.012.  Nor do I accept that the statement in the “Australian Oyster” for August 1985 that the invention was the brainchild of both Mr W.R. Moxham and his father, a report denied by Mr W.R. Moxham to be an accurate one, is any basis for the conclusion that the two of them jointly invented the device.

CONCLUSION

                        I have found that the respondent did not commence to use any oyster tumblers until late 1985, when he, in effect, copied the applicant’s device to produce a tumbler of the style of Exhibit CRM-1, which he has used since that time.  The

claim that the respondent has infringed claims 1, 2, 4, 6 and 7 of the applicant’s patent is made out.  The applicant is entitled to the declaratory and injunctive relief and the order for delivery up sought and, at its election, to damages (and an appropriate enquiry) or to an account of profits.  The cross-claim is dismissed.  The applicant must bring a minute of the judgment to which it is entitled into Court.

                        If the respondent wishes to submit that an order for costs in favour of the applicant should not be made, the respondent’s submissions should be given promptly to the applicant and those submissions, together with the applicant’s response, should be delivered to my associate by 21 June 1996.

I certify that this and the preceding 57 pages

are a true copy of the reasons for judgment

herein of the Honourable Justice Drummond.

Associate:

Date:               12 June 1996

Counsel for the applicant:                            D.K. Catterns Q.C. and

                                                                        S.J. Goddard

Solicitor for the applicant:                            Sprusons

Counsel for the respondent:                         J. Baird

Solicitor for the respondent:                         Lane & Lane

Dates of Hearing:                                          20-24 March 1995