FEDERAL COURT OF AUSTRALIA
SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited [2011] FCA 452
TABLE OF CONTENTS
IN THE FEDERAL COURT OF AUSTRALIA | |
DATE OF ORDER: | |
WHERE MADE: |
THE COURT ORDERS THAT:
1. On or before 18 May 2011 the applicant and the first and second respondents each file and serve a minute of orders that it considers give effect to these reasons and are appropriate to be made at this stage of the proceeding.
Note: Settling and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court’s website.
VICTORIA DISTRICT REGISTRY | |
GENERAL DIVISION | VID 447 of 2008 |
BETWEEN: | SNF (AUSTRALIA) PTY LTD (ACN 050 056 267) Applicant
|
AND: | CIBA SPECIALTY CHEMICALS WATER TREATMENTS LIMITED First Respondent CIBA (AUSTRALIA) PTY LTD (ACN 005 061 469) Second Respondent THE COMMISSIONER OF PATENTS Third Respondent
|
JUDGE: | KENNY J |
DATE: | 6 MAY 2011 |
PLACE: | MELBOURNE |
REASONS FOR JUDGMENT
1 The applicant, SNF (Australia) Pty Ltd (‘SNF’), is in the business of manufacturing and supplying water-soluble polymers for use in various industries, including the mining industry. SNF competes with the first and second respondents (collectively, ‘the Ciba respondents’) in Australia for the provision of chemicals and associated technical assistance in the mining industry.
2 One application of water-soluble polymers is as flocculants used in the treatment of mining waste. Flocculants have been used in the mining industry for many years in order to help separate water from solid particles in mine tailings (i.e., the end product of processing operations) so that the water may be recovered and reused. The patents in suit relate to this process.
3 The patents in suit are five innovation patents numbered 2006100744, 2006100944, 2007100377, 2007100834, and 2008100396 (‘the Patents’). In these reasons, an individual Patent is indicated by the last three digits of its patent number.
4 Ciba Specialty Chemicals Water Treatments Limited (‘Ciba’) is the registered proprietor of the Patents, each of which has been certified under s 101E of the Patents Act 1990 (Cth) (‘the Act’) and filed as a divisional application of Australian Patent application number 2004203785 (‘the Parent Patent’). The Parent Patent claims a priority date of 7 May 2003. Accordingly, the Patents claim a priority date of 7 May 2003.
5 SNF seeks a declaration that the Patents are invalid and their revocation under s 138 of the Act. SNF also seeks relief under s 128 of the Act against the Ciba respondents with respect to unjustifiable threats of infringement proceedings. Ciba has cross-claimed for patent infringement.
6 To promote its flocculant products, SNF employs salesmen who advise SNF’s clients in the mining industry regarding the implementation of various tailings treatment processes using SNF flocculants, including a process referred to in these reasons simply as ‘the SNF Process’. The SNF Process is the subject of the cross-claim. SNF conceded that the SNF Process was an infringing use of the patented process if SNF’s challenge to the validity of the Patents in suit failed.
7 The second respondent, Ciba (Australia) Pty Ltd, is a member of the first respondent’s corporate group. The third respondent, the Commissioner of Patents, entered a submitting appearance and otherwise took no part in the proceedings.
8 The grounds of invalidity upon which SNF relies are those listed under s 138(3)(b) and (f) of the Act. Specifically, SNF alleges that the Patents are invalid because the inventions as claimed lack novelty (s 18(1A)(b)(i)); do not involve an innovative step (s 18(1A)(b)(ii)); and lack utility (s 18(1A)(c)). Further objections are that the claims are not fairly based on the matters described in the specifications (s 40(3)); the specifications do not fully describe the inventions, including the best method known to the patentee (s 40(2)(a)); the claims do not clearly and succinctly define the alleged inventions (s 40(3)); and the inventions as claimed are not patentable inventions for the purposes of s 18(1A)(a) of the Act. This last-mentioned ground is ‘a manner of manufacture’ ground.
9 Ciba cross-claims for infringement of the 944, 834 and 396 Patents, based on the use and implementation of the SNF Process at three mine sites in New South Wales. These mines are the Ashton coal mine (‘Ashton’), the Bulga coal mine (‘Bulga’), and the Cowal gold mine (‘Cowal’), a use that Ciba alleges was pursuant to SNF’s authorisation, direction and/or instruction. By its second further amended cross-claim dated 16 February 2010, Ciba seeks injunctive relief, damages or an account of profits, additional damages under s 122(1A) of the Act, and interest and costs. At trial, Ciba did not pursue a case of infringement in respect of a fourth mine originally mentioned in the pleadings – Carborough coal mine.
10 At trial, SNF admitted that, if the Patents were valid, then use of the SNF Process infringed the Patents as alleged and that the process had been used at these three mines. In relation to Bulga and Cowal, SNF conceded authorisation of use and that it joined in a common design with other persons with respect to that use. SNF also admitted the supply of flocculant and the provision of instructions (within s 117) with respect to that use. The live issues with respect to the cross-claim centred on Ashton.
11 Trial was had on the questions of liability alone. For the reasons set out below, I find that SNF has not made out its case with respect to invalidity; and that Ciba has made out its case with respect to infringement.
12 At trial, SNF relied on the affidavits of its managing director, Mr Russell Schroeter, sworn on 29 June 2009 and 18 February 2010; its regional sales manager for Queensland, Mr Daniel Bembrick, sworn on 10 July 2009 and 1 December 2009; its regional sales manager who was formerly employed as an account manager, Mr Deon Joubert, sworn on 24 December 2009; and its business development manager, Mr Gregory Tobin, sworn on 16 July 2009 and 16 November 2009; as well as on affidavits from various other individuals involved in the mining industry: Mr Brian Banister, sworn on 24 June 2009; Mr Jim Cigulev, sworn on 30 June 2009 and 17 February 2010; Mr Ronald Coleman, sworn on 26 June 2009 and 16 February 2010; Mr Peter Woolley, sworn on 12 July 2009 and 17 February 2010; and Mr Benjamin Gill, sworn on 12 December 2009. SNF also relied on the affidavits (and accompanying report) of Professor Paul Slatter, a professor of rheology and fluid engineering. Professor Slatter swore two affidavits, on 29 June 2009 and 18 February 2010.
13 All of these witnesses except for Mr Tobin were cross-examined. A few of the witnesses briefly gave additional evidence in chief at trial. These included Mr Bembrick, who explained the SNF Process to the Court while a video he prepared, depicting the SNF Process, was played. A DVD version of the video was received in evidence.
14 Other than the affidavit (sworn 24 July 2009) of their solicitor, Mr John Lee, the purpose of which was to exhibit certain documents, the Ciba respondents relied solely on the affidavits of their expert, Dr John Farrow, a chemist with the Commonwealth Scientific and Industrial Research Organisation (‘CSIRO’). Dr Farrow swore four affidavits, on 24 July 2009 (first affidavit), 9 November 2009 (both the second and third affidavits) and 12 February 2010 (fourth affidavit). Dr Farrow also gave additional evidence in chief in response to Professor Slatter’s second affidavit, since he had not had an opportunity to respond prior to trial. Like Professor Slatter, Dr Farrow was cross-examined extensively.
15 There were numerous objections to the experts’ affidavits. As indicated at trial, I have dealt with these objections on the basis that in general they affected weight rather than admissibility. It should be presumed that I have found the expert evidence to which I refer below admissible.
16 It is convenient at this point to describe briefly the areas of expertise of Professor Slatter and Dr Farrow.
17 Professor Slatter is Professor of Rheology and Fluid Engineering at RMIT University, Melbourne. Professor Slatter is especially knowledgeable and experienced in the field of suspension and emulsion rheology in engineering hydrodynamics. According to Professor Slatter, the processes described in the Patents belong to the technology of rheology – the study of the flow of materials. In his second affidavit, Professor Slatter said that he was an expert in the flow of tailings material in pipes (which may be accepted) and that this necessarily involved “some work in the field of polymer science because [he] need[ed] to know how polymers, such as flocculants, impact on the flow of materials”.
18 Dr Farrow holds a doctorate in physical chemistry and, since 1984, he has been with the CSIRO. Since 1984, his main research interests have been in surface chemistry and solid-liquid separation in the mining industry, focussing on flocculation, thickener technology and filtration. Dr Farrow is:
(a) the Theme Leader for High Performance Mineral Processes for Australia;
(b) the manager of CSIRO’s Waterford site, which primarily conducts research into the separation of mineral products or metals from ores by processes involving liquids and also into metals recycling, water treatment and waste treatment; and
(c) a fellow of the Australian Institute of Mining and Metallurgy and the recipient in 2002 of the Institute’s Operating Award for services to the mineral industry for “revolutionising the development and implementation of new thickener technology for mineral processing”.
Dr Farrow stated that most of his experience had been directed “towards solving problems with the minerals industry through targeted research/development activities”.
19 Professor Slatter and Dr Farrow were both experts, but in different areas of science. Although Professor Slatter did not altogether lack relevant practical knowledge, Dr Farrow had more hands-on, practical knowledge of and experience in the treatment of mining waste than Professor Slatter.
20 Before determining SNF’s objections to validity, the court must first ascertain the invention described in the specification for which the monopoly is claimed: see Welch Perrin & Company Pty Ltd v Worrel (1961) 106 CLR 588 (‘Welch Perrin’) at 609.
21 In doing this, the court must bear in mind the rules of construction referred to by Sheppard J in Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 (‘Decor’) at 400, and, a decade later, by the Full Court in Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178 (‘Kinabalu’) at [44] (Sundberg, Emmett and Greenwood JJ), including that the specification must be read as a whole and in light of common knowledge in the art before the priority date.
22 Particularly in this case, one must bear steadily in mind that the hypothetical addressee of the specification is the non-inventive person skilled in the art before the priority date. One must also bear in mind that the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of the addressee’s own general knowledge and in the light of what is disclosed in the body of the specification: Kinabalu at [44]. Reference can be made to the specification to explain the background of the claims, to ascertain the meaning of technical terms, and to resolve uncertainties in the construction of the claims: Kinabalu at [44], citing Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 (‘Flexible’) at 349-350. Whilst the claims must be construed having regard to the specification as a whole, the construing court cannot “narrow or expand the boundaries of the monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification”: Kinabalu at [44]. Of course, if a claim is clear and unambiguous, it cannot be varied, qualified, or made obscure by reference to statements in other parts of the specification.
23 In construing the Patents in suit, the authorities recognise that uncertainty about meaning may be either the product of obscure language or result from the use of a relative expression that requires an exercise of judgment: compare Martin v Scribal Pty Ltd (1954) 92 CLR 17 at 62-3 (Dixon CJ), 97 (Taylor J) and 84 (Fullagar J) and Nesbit Evans Group Australia Pty Ltd v Impro Ltd & Anor (1997) 39 IPR 56 (‘Nesbit Evans’). In Nesbit Evans at 95, Lindgren J noted that:
[I]t is not unusual for a claim to define an invention “partly by the use of a relative expression which necessitates exercise of judgment (see, eg Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173 at 190 … ; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 477 …; Leonardis v Sartas No 1 Pty Ltd (1996) 35 IPR 23 at 32-3 and cases there cited …; Blanco White, Patents for Inventions, 5th ed, 1983, para 2-112) and so long as the claims provide a workable standard suitable to the intended use, they will be valid: Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 273 et seq; 1A IPR 231 (Aickin J). The expressions in question must be understood in a practical, common sense manner.
[Emphasis added.]
See particularly Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 273. In determining SNF’s objections, as appears below, the proposition – that the use of a relative expression necessitating judgment is not objectionable providing the claim provides a workable standard suitable to the intended use – is an important one.
24 In assisting the task of patent construction, evidence may be given by experts as to the meaning that those skilled in the art would give to technical or scientific terms and as to unusual or special meanings given by such persons to words that might otherwise bear their ordinary meaning: see Glaverbel SA v British Coal Corp [1994] RPC 443 at 486. In this case, expert evidence was given to explain how ordinary words were to be understood in a particular industrial context. Admissible evidence may also be given by persons with the knowledge, skill and experience of the notional skilled addressee as to how he or she would have read the specification in the patent at issue or in a prior publication: see El Dupont de Nemours & Co v Imperial Chemical Industries Plc (2002) 54 IPR 304 (‘El Dupont’) at 323 [59]. It is for the court to determine the weight to be accorded all such evidence: compare Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 697. Ultimately, it is for the court to construe the complete specification, though with the assistance of all of the relevant evidence adduced in the proceeding: compare El Dupont at 323 [60].
25 The Patents are directed to the treatment of mine tailings with flocculants. ‘Tailings’ (or sometimes ‘tails’) is a term used in the mining industry to refer to waste produced during the process of extracting economically valuable products, such as coal or gold, from mined material. Tailings typically consist of solid particles such as sand and clay suspended in a fluid, which is generally water. Though in some cases water is already present in the mined material, additional water, often in large quantities, is added to produce a suspension. The suspension is often referred to as slurry. Tailings are generally pumped from the mineral processing operations to a deposition area or impoundment facility (often known as ‘tailings dams’) and deposited there. Ongoing challenges in relation to deposition of tailings include using limited land space effectively, rapidly rehabilitating the land, and re-using water from the tailings slurry for environmental and cost reasons.
26 The main practical difference between the Patents is the kind of material that is the subject of the claims – all of which are process claims. Broadly speaking, Patents 944 and 396 relate to coal tailings. Patent 744 relates to tailings from a mineral sands process; Patent 377, to red mud (a product of aluminium mining); and Patent 834, to “mineral tails or slimes from phosphate or diamond processing, gold slimes, tails from zinc, lead, copper, silver, uranium, nickel or iron ore processing”. For present purposes, SNF and the Ciba respondents agreed that the differences between the Patents were immaterial. They also agreed that Patent 944 would serve as an exemplar; and that the Court’s ruling on the validity of Patent 944 would also apply to Patents 396, 377, 744 and 834.
27 Patent 944 is headed “Treatment of Aqueous Suspensions”. The specification begins with a brief statement of the subject to which the invention relates. This statement reads:
The present invention relates to the treatment of mineral material, especially waste mineral slurries. The invention is particularly suitable for the disposal of tailings and other waste material resulting from mineral processing and beneficiation processes, including the co-disposal of coarse and fine solids, as a homogenous mixture.
28 The specification describes two common ways of waste disposal, amongst other things, stating that where waste is not disposed of in a mine –
… it is common practice to dispose of this material by pumping the aqueous slurry to lagoons, heaps or stacks and allowing it to dewater gradually through the actions of sedimentation, drainage and evaporation.
29 The specification also describes an existing waste disposal method – “to load multiple layers of waste onto an area to thus form higher stacks of waste”.
However, this presents a difficulty of ensuring that the waste material can only flow over the surface of previously rigidified waste within acceptable boundaries, is allowed to rigidify to form a stack, and that the waste is sufficiently consolidated to support multiple layers of rigidified material, without the risk of collapse or slip. Thus the requirements for providing a waste material with the right sort of characteristics for stacking is altogether different from those required for other forms of disposal, such as back-filling within a relatively enclosed area.
30 The specification gives the following account of an existing mineral processing operation:
In a typical mineral processing operation, waste solids are separated from solids that contain mineral values in an aqueous process. The aqueous suspension of waste solids often contain clays and other minerals, and are usually referred to as tailings. These solids are often concentrated by a flocculation process in a thickener to give a higher density underflow and to recover some of the process water. It is usual to pump the underflow to a surface holding area, often referred to as a tailings pit or dam. Once deposited at this surface holding area, water will continue to be released from the aqueous suspension resulting in further concentration of solids over a period of time. Once a sufficient volume of water has been collected this is usually pumped back to the mineral processing plant.
31 The specification notes that there are numerous difficulties with this kind of operation, including the size and costs of the tailings dam, the quality of the recovered water, and the composition of the dewatered solids. The specification refers to attempts to resolve these difficulties “by treating the feed to the tailings dam using a coagulant or a flocculant to enhance the rate of sedimentation and/or improve the clarity of the released water”. The specification continues:
However, this has been unsuccessful as these treatments have been applied at conventional doses and this has brought about little or no benefit in either rate of compaction of the fine waste material or clarity of the recovered water.
32 Thus, so the specification says, “[i]t would … be desirable to provide treatment which provides more rapid release of water from the suspension of solids”.
In addition it will be desirable to enable the concentrated solids to be held in a convenient manner that prevents both segregation of any coarse and fine fractions, and prevents contamination of the released water whilst at the same time minimises the impact on the environment.
33 The specification discusses at length the merits and demerits of various known treatment processes (the ‘Bayer process’, EP-A-388108, WO-A-96/05146 (‘Slatter 4’: see below) and WO-A-0192167 (‘Slatter 3’: see below)), concluding in relation to Slatter 3:
However, despite the improvements brought about by [it], particularly in the treatment of red mud, there is still a need to further improve the rigidification of suspensions of materials and further improve upon the clarity of liquor released.
34 The objective of the invention in Patent 944 is to improve upon Slatter 3. Thus the specification states:
In particular, an objective of the present invention is to find a more suitable method for treating coarse and/or fine particulate waste material from mineral sands, alumina or other mineral processing operations in order to provide better release of liquor and a more effective means of disposing of the concentrated solids. Furthermore, there is a need to improve the dewatering of suspensions of waste solids that have been transferred as a fluid to a settling area for disposal and provide improvements in the clarity of run-off water. In particular, it would be desirable to provide a more effective treatment of waste suspensions transferred to disposal areas, for instance tailings dams, ensuring fast, efficient concentration and more environmentally friendly storage of solids and improve clarity of released liquor.
35 The consistory clauses in Patent 944 commence with the statements:
According to one aspect the present invention provides a process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify; by combining with the material during transfer an effective rigidifying amount of aqueous solution of a water-soluble polymer …
A significant part of the argument in this case focussed on the meaning of “rigidification” and cognate words. The outcome of much of SNF’s challenge to validity depended on what was meant by this term.
36 The Patentee observed that:
The addition of the aqueous solution of water-soluble polymer to the material allows it to retain sufficient fluidity during transfer and then once the material is allowed to stand it will form a solid mass strong enough to support subsequent layers of rigidified material. We have unexpectedly found that the addition of the aqueous solution of polymer to the material does not cause instant rigidification or any settling of the solids prior to standing.
Generally suspended solids will be concentrated in a thickener and this material will leave the thickener as an underflow which will be pumped along a conduit to a deposition area. The conduit is any convenient means for transferring the material to the deposition area and may for instance be a pipe or a trench. The material remains fluid and pumpable during the transfer stage until the material is allowed to stand.
37 Detailed and lengthy descriptions of embodiments of the invention follow. It is unnecessary to set them out here, although it will be necessary to refer to aspects of them hereafter. Various examples intended to demonstrate the invention precede the claims. It will also be necessary to refer to some aspects of them below.
38 Claim 1 in Patent 944 is as follows:
Claim 1
A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25º C), in which the material comprises coal tailings.
39 Claims 2 to 5 all refer back to and incorporate claim 1. They are as follows:
Claim 2
A process according to claim 1 in which the water-soluble polymer is anionic and in which the polymer is formed from monomer(s) selected from the group consisting of (meth) acrylic acid, allyl sulphonic and 2-acrylamido-2-methyl propane sulphonic acid as the free acid or salts thereof, optionally in combination with non-ionic comonomers, selected from the group consisting of (meth) acrylamide, hydroxyl alkyl esters of (meth) acrylic acid and N-vinyl pyrrolidone, and wherein the effective rigidifying amount of the water-soluble polymer is in the order of 10 to 3000 grams per tonne of material solids.
Claim 3
A process according to claim 1 or claim 2 in which the material is pumped to an outlet, where it is allowed to flow over the surface of previously rigidified material, wherein the material is allowed to stand and rigidify to form a stack.
Claim 4
A process according to any one of claims 1 to 3 in which aqueous suspensions of fine and coarse particulate materials are combined for the purpose of co-disposal, wherein the effective rigidifying amount of the water-soluble polymer solution is added during or after the mixing of the different waste streams into a homogenous slurry.
Claim 5
A process according to any one of claims 1 to 4 in which the material is dewatered during rigidification, releasing liquor and in which the clarity of the liquor is improved by the addition of an aqueous solution of water-soluble polymer.
40 Argument focused on claim 1. For present purposes, I accept Dr Farrow’s identification of the integers of claim 1, which was as follows:
(a) a process of improving rigidification of a material whilst retaining the fluidity of the material during transfer
(b) in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify
(c) by combining with the material during transfer
(d) an effective rigidifying amount of
(e) an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25º C)
(f) in which the material comprises coal tailings.
SNF propounded a slightly different formulation, but, as SNF’s counsel stated, the differences between the formulations are not material to the case.
41 For present purposes, I also accept Dr Farrow’s identification of the essential integers of the other claims. They were as follows:
(g) a process according to claim 1 in which the water-soluble polymer is anionic
(h) in which the polymer is formed from monomer(s) selected from the group consisting of (meth) acrylic acid, allyl sulphonic and 2-acrylamido-2-methyl propane sulphonic as the free acid or salts thereof
(j) wherein the effective rigidifying amount of the water-soluble polymer is in the order of 10 to 3000 grams per tonne of material solids.
(k) a process according to claim 1 or claim 2 in which the material is pumped to an outlet
(l) where it is allowed to flow over the surface of previously rigidified material and
(m) wherein the material is allowed to stand and rigidify to form a stack.
In closing, senior counsel for the Ciba respondents submitted that if claim 1 fell, then, for reasons outlined below, the Ciba respondents must nonetheless retain claim 3.
(n) A process according to any one of claims 1 to 3 in which aqueous suspensions of fine and coarse particulate materials are combined for the purpose of co-disposal and
(o) wherein the effective rigidifying amount of the water-soluble polymer solution is added during or after the mixing of the different waste streams into a homogenous slurry.
(p) A process according to any one of claims 1 to 4 in which the material is dewatered during rigidification, releasing liquor and
(q) in which the clarity of the liquor is improved by the addition of an aqueous solution of water-soluble polymer.
Dr Farrow maintained, and for present purposes I accept, that there was an inessential integer in claim 2: namely, “(i) optionally in combination with non-ionic comonomers, selected from the group consisting of (meth) acrylamide, hydroxyl alkyl esters of (meth) acrylic acid and N-vinyl pyrrolidone”.
42 In this case the identity of the skilled addressee is important not only in answering some basic questions of construction but also in determining the grounds of alleged invalidity.
43 As counsel for the Ciba respondents submitted in closing, the relevant art is “the art of dealing with tailings in mines”. In this case, the skilled addressee is a practical person working in the mining industry, with practical knowledge of and experience in the treatment and disposal of mining wastes. Such skilled addressees would include SNF’s technical sales representatives who gave evidence at trial. The gist of their evidence in this regard was that in the course of their ordinary employment they gave technical advice to SNF’s customers with respect to processes for treating mining waste. Other skilled addressees might be mines engineers familiar with waste disposal processes (including the plant and equipment used in such processes).
44 Having regard to the evidence adduced at trial, a skilled addressee would have a good working knowledge of: (1) polymers and their use in flocculating mine wastes; and (2) the flow of flocculated and unflocculated mine wastes. A skilled addressee would be able to perform and interpret the routine tests necessary to give effect to a secondary flocculation process. A skilled addressee would not need to be a scientific expert in rheology or chemistry (or polymers).
45 A central issue in this case is the meaning of the word “rigidification” and its variants as they appear in the claims. This meaning is significant for assessing whether the prior art documents referred to below as Slatter 10, 12 and 13 and various prior art acts teach rigidification as opposed to settling or sedimentation. The meaning of “rigidification” also has implications for the clarity and sufficiency grounds discussed hereafter.
46 Claim 1 is for a “process of improving rigidification”; and there is a process of improving rigidification taught in the specification: see Patent 944 at pp 13-14. The meaning of “improving” is clear enough. “Improve” in this context, is to make “rigidification” greater in amount or degree; even “to increase the value or excellence” of “rigidification” as applied to the disposition of mineral waste. Compare The Oxford English Dictionary (2nd ed, 1989). Reading the specification as a whole, the word “improve” necessitates a comparison – here with processes other than the claimed process. As the Ciba respondents noted, neither the claims nor the specification assert that “rigidification” of tailings is the “invented” process.
47 Further, the evidence establishes that “rigidification” is not a term of art. One may accept that, in ordinary usage, “rigidify” means “[t]o become rigid, set, or inflexible”; and “rigid” means, in relation to material, “stiff; not pliant or flexible; firm; hard”. See The Oxford English Dictionary (2nd ed, 1989). The question is what does the word “rigidification” signify in the specification and claims of Patent 944?
Opposing contentions about rigidification
48 On the one hand, SNF argued that the term “rigidification” and its variants within Patent 944 did not differ from the processes of settling and sedimentation disclosed in the prior art documents and acts. On the other hand, the Ciba respondents contended that rigidification was relevantly different from settling and sedimentation. The experts also differed on this point. Professor Slatter’s view was that the processes of settling, sedimentation and rigidification were not relevantly different because settling and sedimentation would always lead to rigidification as claimed. Dr Farrow disagreed, for the reasons explored below.
49 SNF and the Ciba respondents relied heavily on their experts – Professor Slatter in the case of SNF and Dr Farrow in the case of the Ciba respondents. As already indicated, the industrial context was such that expert opinion on issues affecting construction was admissible and appropriate. The experts gave evidence as to the scientific and industrial context in which the claimed processes would operate and in which “rigidification” was to be understood.
50 In order to appreciate the nature of the debate, it is necessary to consider the competing evidence given by the two experts. I commence with the evidence given by Professor Slatter. Professor Slatter deposed that rigidification “describes the process of developing strength”. Professor Slatter expressed “strength” in terms of yield stress, saying that “rigidify” meant “the evolution of yield stress or in layman’s terms the development of solid properties”. I accept that, as SNF submitted, Professor Slatter maintained essentially the same view of rigidification throughout his evidence, although, if taken out of context, some of his later comments may carry a contrary indication.
51 It was Professor Slatter’s opinion that “rigidification” was the “last part” of the process of “settling and sedimentation”. According to Professor Slatter, in the context of secondary flocculation, the first part of the process was flocculation, “which creates floccs which leads to settling which then rigidify”. Professor Slatter’s evidence was that “[t]he process of flocculation, sedimentation and settling will always lead to rigidification”. Professor Slatter explained his understanding of the whole process in the following passages:
[F]locculation means inducing suspended particles to stick together. These agglomerates of particles are referred to as floccs. …
When an additive such as that contemplated [i.e. a relevant polymer] is added to a non-settling, or slowly-settling suspension, it is my understanding that the process starts with agglomeration of suspended particles, whether by coagulation or flocculation. The weight force of these agglomerates then exceeds the buoyancy force, and settling or sedimentation occurs. These agglomerates will move downwards until they make contact with the bottom of the container or floor or previously settled agglomerates, forming a three-dimensional structure. This structure has inherent strength, is able to resist applied stresses, developing a yield stress. This last step I understand to be “rigidification” as contemplated in the claims in the Patents. This process will occur in any event, after the passage of sufficient time and evaporation, without any intervention through the use of flocculant. …
Whilst there was evidence (in the testimony of Professor Slatter, Mr Bembrick and others) that rigidification or stiffening was enhanced by the addition of flocculant, Professor Slatter’s evidence was that this stiffening or hardening could occur without the addition of flocculant.
52 Whilst SNF challenged the notion that time was an element in the claims in the Patents in suit and relied on Professor Slatter’s opinion that rigidification was merely the last part of the settling/sedimentation process, Professor Slatter himself acknowledged that, in the context of the claimed process, time was important. Thus, in his second affidavit, Professor Slatter said:
The speed with which rigidification occurs is critically important in that it must occur immediately after leaving the pipe, but not before, so as not to impinge on fluidity in the pipe.
In cross-examination, Professor Slatter said:
The benefit which the patent seeks to bring is to make this a faster process, so that not only is the material able to be rehabilitated, but that water can be recycled. I see those as the major thrusts of the usefulness.
In relation to the “beached scenario” described by Mr Bembrick in speaking about the (infringing) SNF Process, Professor Slatter said:
I would expect that in the beached scenario, rigidification would occur more quickly because the compressive forces will be due entirely to the solid material.
Professor Slatter contrasted this with flocculated tailings that were allowed to settle, observing:
If it’s a submerged bit, there will be buoyancy forces. So given the same thickness and the same density of material, because it’s submerged, there will be a lower compressive force.
Professor Slatter agreed in cross-examination that the statements in Patent 944 at p 14, in which rigidification was described, were consistent with his evidence as to time.
53 There were evident difficulties with Professor Slatter’s approach. Notwithstanding Professor Slatter’s opinion about rigidification, Professor Slatter had seemingly little difficulty in understanding what the Patentee intended by the words “stand and rigidify” in the specification of Patent 944. As to the statement within the specification (at p 13) that “[t]he material is allowed to stand and rigidify and therefore forming a stack of rigidified material”, Professor Slatter said:
What I believe is referred to here, to stop, simply means that the applied forces are able to be resisted. I believe that there would still be a force applied to it, but the material, through its yield stress, would be able to resist any forces, and so it stops behaving like a solid material.
Professor Slatter contrasted the behaviour of material of this kind with the behaviour of “a very liquid slurry”, saying:
If it doesn’t have a yield stress then it will flow much the way water would flow and it simply wouldn’t stop and stand.
Professor Slatter’s evidence was that such material would only stop when it met resistance (like a wall) and then the slurry would stop and the particulate flocculant would settle.
54 Professor Slatter’s evidence (mentioned above) brings to mind Dr Farrow’s integers (a) and (b) of claim 1. As the Ciba respondents said, according to Patent 944, the material was to be brought into a state in which it could stand and rigidify as set out in the claim and described in the body of the specification: see Patent 944, p 13. That is, the material was to be treated with a “suitable and effective rigidifying amount of water-soluble polymer solution”. As the Ciba respondents said, the specification clarified this aspect (at p 14) by saying:
The rheological characteristics of the material as it rigidifies is important, since once the material is allowed to stand it is important that flow is minimised and that solidification of the material proceeds rapidly. If the material is too fluid then it will not form an effective stack and there is also a risk that it will contaminate water released from the material. It is also necessary that the rigidified material is sufficiently strong to remain intact and withstand the weight of subsequent layers of rigidified material being applied to it.
55 Furthermore, in cross-examination, notwithstanding some seeming hesitation, Professor Slatter ultimately agreed, in substance, that the addition of a sufficient dose of flocculant, after the thickener, can result in a bridging of the flocculant of the particulate matter and an increase in concentration. Professor Slatter agreed that Mr Schroeter had also described this type of process as occurring in the preparation of feed used in a belt press.
56 Mr Schroeter, who can properly be regarded as a skilled addressee, gave evidence (which I accept) about the operation of a belt press. Mr Schroeter described the preparation of slurry feed used in the belt press as analogous to that created in the SNF Process. His evidence was that, as a consequence of the density of the particulate matter in the slurry and the high flocculant dose applied to the slurry, the slurry feed had sufficient structure, strength and density to sit on a belt and the water stream from it.
57 The above-mentioned evidence of Professor Slatter and Mr Schroeter recalls the effect of Dr Farrow’s integer (e), when applied in an “effective rigidifying amount” as in integer (d). The evidence shows that the “effective rigidifying amount” is the dose that, immediately after discharge onto the deposition area, results in an effect of the kind described in Patent 944 at pp 13-14.
58 Professor Slatter’s evidence on dewatering in a settling and sedimentation process as opposed to a “beaching” process as described by Mr Bembrick was equivocal. At one point, Professor Slatter’s evidence was to the effect that the volume of water recovered from settling and sedimentation would not necessarily differ from “beaching” as in the process described by Mr Bembrick. Professor Slatter conceded, however, that water evaporation would not play a significant role where the sediment was covered with water. Further, when asked about the speed with which water would come out of a slurry, particularly, whether “the beached scenario will dewater more rapidly … than the settling scenario”, Professor Slatter said:
The dewatering is difficult to compare under those circumstances, because in what is described as a settling scenario, water is always present. If we consider the material which is rigidified, which has formed a beach, which has started forming a solid stack, water flows out of it. One can see the water flowing out. To say that one is more than the other is not directly available.
59 Professor Slatter’s evidence in this latter regard was not borne out by that of Mr Bembrick, who described the (infringing) SNF Process in fact trialled at the Bulga coal mine. Mr Bembrick said in evidence that an increased “beaching” dose of flocculant released water more rapidly and in greater quantity than a lower dose. Indeed, in a paper entitled “The Impact of Flocculant Addition on a Tailings Storage Facility” presented to a metallurgical conference in Perth in August 2008 (‘the Bembrick paper’), Mr Bembrick, then a SNF regional sales manager, described the result of a full trial of a secondary flocculation process conducted at the Bulga coal mine after the priority date in the following terms:
The deposition density increased from a percentage solids weight of 35% to 61 % within 24 hrs and continued to increase to 75%, 7 days after treatment. The impoundment capacity had nearly tripled due to the improvement in deposition density from an initial 420kg/m3 up to 1162 kg/m3. Water loss through retention and evaporation was greatly reduced by the increase in water release. The pilot trial results suggest that Bulga could potentially improve the water capture by more than 90% at the [Tailings Storage Facility] equaling [sic] approximately three (3) megalitres of recycled water per day.
60 Mr Bembrick was an impressive witness, and I accept his evidence. The contrast between the evidence given by Professor Slatter on dewatering and that given by Mr Bembrick highlights a difficulty faced by Professor Slatter in giving evidence – namely, that Professor Slatter had not seen Mr Bembrick’s video showing the (infringing) SNF Process at Bulga and he had not been given an opportunity to study the Bembrick paper about the trials there. The result was that Professor Slatter’s evidence about the claimed process had a substantially theoretical aspect.
61 The Ciba respondents argued that Professor Slatter’s view that the processes of settling and sedimentation would lead to rigidification as claimed was not borne out by the evidence. They relied on Dr Farrow. I turn now to Dr Farrow’s evidence on rigidification.
62 Dr Farrow said that, in his view, in the context of Patent 944, “rigidification” was a qualitative term, although one that Patent 944 explained clearly as “a networked structure”. Reading Patent 944, Dr Farrow said that:
[T]he outcome of rigidification will be a process producing a different tailings deposit, with different characteristics, different dewatering potential in a quite different period of time to natural settling and sedimentation processes.
Dr Farrow deposed (in his first affidavit) that the rigidified tailings material would: (a) be less likely to spread laterally after deposition, enabling more efficient land use; (b) more rapidly form a solid structure in the form of a beach or stack; (c) have a greater yield stress when deposited; (d) have increased uniformity or homogeneity of fine and coarse particles; (e) by reason of its heaped geometry, result in downward compression forces driving water out of the stack; and (f) result in more rapid and improved clarity of water release.
63 As to settling and sedimentation, Dr Farrow acknowledged that:
… flocculation and settling in an environment with a fixed base (eg cylinder or a walled tailings dam or pond) will lead to the formation of a denser (consolidated) sediment due to the compactions force exerted as material accumulates on top of previously settled material. This sediment will often have a higher yield stress than the original feed suspension (eg thickener underflow) which will slowly increase with time. The extent of densification will increase as the sediment height increases (i.e. the compaction force), but only up to a point.
64 Dr Farrow disagreed, however, with Professor Slatter’s proposition that, when the individual aggregates or floccs settled on the bottom of a tailings dam, there would be a mechanism by which they were linked and the result would be a structure the same as that formed by “beaching”. Dr Farrow explained how sediment formed by flocculation, settling and consolidation would have a yield stress, which was “due to entanglement of individual aggregates” rather than “due to networking of the entire solid mass”. Dr Farrow said that:
In contrast, the ‘944 process commences with networking of the solids within the tailings stream, this is a process termed rigidification with ‘944. This is, in my opinion, an entirely different process to that of settling and consolidation.
The 944 process requires a sufficiently high initial concentration (as often is achieved in a thickener underflow) so that there is the prospect of being about to create a network structure through the addition of flocculant. Hence the initial solids concentration is a key factor in the ‘944 process (as indicated on page 8, line 29 of ‘944). The solids need to be sufficiently concentrated so that when a flocculant is added the flocculant will be able to bridge all the particles together to form a network, not just form a multitude of individual aggregates. Consequently the solids concentration needs to be near the point where most solids are fairly close to touching, but it is not necessary for the initial solids concentration to be such that all solids are in contact.
Flocculants work because they are very high molecular weight molecules, for example 20 million Daltons. However, they are still soluble and when in solution have a significant molecular size e.g. 1 micron. This enables flocculant molecules to form networks from particles that are not already touching. This process is not one where the particles remain stationary and the flocculant then bridges them together, rather it is a dynamic process where small “sub-networks” will initially form and then in the presence of the remaining flocculant these smaller “sub-networks” will progressively join to form an overall network (which is the aim of ‘944). In doing so, particles will be drawn together and significant volumes of water will become particle free and ready to drain away once the network solids are allowed to stand (as is the case on the free drainage region of a Belt Press Filter).
65 I accept Dr Farrow’s evidence (outlined above) that settling and sedimentation processes were different to the process with which Patent 944 was concerned. Amongst other things, I note that Professor Slatter did not explain what type of mechanism would link the particles in a settling and sedimentation process. Perhaps because Dr Farrow’s expertise lay in chemistry, he was better placed than Professor Slatter to identify relevant differences in the chemistry of the processes of settling and sedimentation as opposed to rigidification as claimed and to explain their different outcomes from a practical perspective. There were also, as indicated earlier, other difficulties with Professor Slatter’s approach. His evidence was as a result less persuasive than that of Dr Farrow.
66 Further, as the Ciba respondents noted, Mr Schroeter had no difficulty distinguishing the SNF Process from a settling process. In describing the first step of preparing feed for the belt press, Mr Schroeter said:
The first step in that process typically involves adding a large amount of flocculant to the pipe feeding the belt press. And you form very large floccs, very heavy, strong, dense floccs. They flow out onto the belt. And now we are not seeing a settling effect from the addition of the flocculant. What we are seeing is a liberation of water from the slurry and forming a slurry which is capable of being fed into the belt.
Having accepted that the SNF Process does not use a belt press, Mr Schroeter agreed that the slurry discharged from the SNF Process:
… instead of there being a great pond of water it gradually settles down, you have got a more structured sludge, and the water, as more comes down on it, escapes any way it can, as if it were going into a belt press.
67 Dr Farrow said that a critical factor in the process of rigidification, as he saw it, was the dosage of flocculant. This had a consequence for the speed with which dewatering took place – a feature, which, as noted above, Professor Slatter conceded was important in the claimed process. Thus, according to Dr Farrow:
Enough flocculant must be added to network the solids. If insufficient is added then the solids will still be aggregated, but as a large number of individual aggregates. In this case the yield stress will be below that required to form a “beach” and the material will flow too easily. When it does stop flowing the individual aggregates will settle and then consolidate …
If the flocculant dosage is sufficiently high then a network structure will be formed which has a yield stress high enough to form a beach on discharge. The tailings will now have a structure akin to that of a highly flocculated belt press (BPF) feed. Once discharged water will drain from the networked solids due to the high permeability of the network solids (as happens in the free drainage section of a BPF).
68 According to Dr Farrow, there was no settling in the beached material and the beached material was not submerged in water. In consequence, so Dr Farrow said, “water can drain from the beached material laterally – thereby increasing very significantly the rate and extent of water release” (Dr Farrow’s emphasis). Dr Farrow continued:
If further material is beached over the previously beached material, then this will impose compression forces on the underlying material which is likely to densify to a much greater extent than would corresponding settled material since the amount of residual water will be much less. If no further material is added, then once drainage is completed the beach material will commence drying through evaporation whereas settled material has an overlying body of water.
The end result is that beached material has an entirely different structure to settled consolidated material and will release water by a different mechanism, at a much faster rate and to a much greater extent.
Conclusions about the meaning of rigidification
69 I accept that, as Professor Slatter said, rigidification is a process of developing strength (in terms of yield stress). For the reasons already stated, I also accept that, as Dr Farrow said, rigidification is a qualitative term, in which a networked structure is formed. As explained, to the extent that Dr Farrow’s evidence is inconsistent with Professor Slatter’s on this issue of rigidification, I accept the evidence of Dr Farrow.
70 The meaning that Dr Farrow accorded the word “rigidification” accorded with the natural meaning of the word, considered in the context of the specification as a whole. The meaning for which SNF contended involved focussing on individual words and phrases, without having regard to what was evidently being taught, with the result that what was being disclosed was obscured.
71 Dr Farrow’s evidence supported the Ciba respondents’ basic contention that, reading the specification as a whole, when compared with the process of settling and sedimentation, the claimed “process of improving rigidification”: (a) results in faster solidification (in that material has greater yield stress); (b) produces more recovered water; and (c) results in chemically-bonded tailings that occupy a smaller surface area, which is more quickly rehabilitated. SNF maintained that concepts of speed or time were not essential to claim 1. I reject this proposition because speed or time are inherent in the “process of improved rigidification”, of which claim 1 speaks: see, for example, Patent 944 at pp 13-14.
72 If “rigidification” is understood in this way, then I accept that, reading the specification as a whole, the specification gives meaning and content to a process of improving rigidification of a material the subject of the claims. The process as taught does not encompass settling and sedimentation.
73 By way of further explanation, I make the following further brief comments about the evidence given by the experts. Professor Slatter is undeniably expert in his field of rheology. As already noted, however, his evidence at trial was in large part at a theoretical level, and he had not been afforded an opportunity to study Mr Bembrick’s video and paper. Further, there were, as noted already, deficiencies in Professor Slatter’s evidence, some of which was not borne out by the evidence given by other witnesses such as Mr Bembrick and Mr Schroeter (both of whom were impressive witnesses).
74 More generally, the Ciba respondents criticised Professor Slatter’s approach here and elsewhere as overly technical. They complained that Professor Slatter considered the specification “as if it was a laboratory protocol in which every term should be defined with enormous technical precision”. Generally speaking, Professor Slatter’s approach was precise and, at times, exacting – an approach in keeping with his professional training and status – but not directly transferable to the method of patent construction to be adopted by a court. Further, with respect to this and other issues, Dr Farrow’s expertise in chemistry proved to be more helpful that Professor Slatter’s expertise in rheology (though the expertise of both was relevant to understanding the claimed process and the prior art).
75 Given the practical nature of what is taught by the specification, Dr Farrow’s background as an experienced member of the CSIRO placed him in a better position than Professor Slatter to identify and explain this teaching. The effect of Dr Farrow’s evidence was to assist in understanding the chemistry and practical effect of the process as taught in the specification and as claimed. Dr Farrow’s evidence focussed attention on the teaching of the specification as a whole and, when viewed in this way, the teaching in the specification made clear what was meant by a “process of improving rigidification” in integer (a) of claim 1, as well as by such words as “stand and rigidify” in integer (b) and “effective rigidifying amount” in integer (d). If, however, there had been any doubt about “rigidification” in claim 1, then, as the Ciba respondents noted, it would have been removed by claim 3, integers (l) and (m).
NOVELTY
76 SNF submits that the Patents lack novelty within the meaning of s 18(1A)(b)(i) of the Act, in that they are not novel when compared with the prior art base (as defined in Sch 1) as it existed before the priority date of each claim (7 May 2003). For the purposes of this submission, SNF relies on: (1) information in 6 documents, all of which were publicly available before the priority date; and (2) information made publicly available through the doing of an act or acts.
77 The 6 documents relied on by SNF are:
1. International patent No. WO 01/92167 A1, in Ciba’s name, with an international publication date of 6 December 2001 (in these proceedings, ‘Slatter 3’);
2. International patent No. WO 96/05146, in the name of Cytec Technology Corporation, with an international publication date of 22 February 1996 (in these proceedings, ‘Slatter 4’);
3. US Patent No. 3312070 in the name of Dai Ichi Kogyo Seliyake Kaisha, published on 4 April 1967 (in these proceedings, ‘Slatter 10’);
4. US Patent No. 3707523 in the name of American Cyanamid Company, published on 26 December 1972 (in these proceedings, ‘Slatter 12’);
5. French Patent No. 7709857 in the name of Compagnie Auxiliaire de Travaux S.A.R.L, published on 23 March 1977 (in these proceedings, ‘Slatter 13’);
6. US Patent No. 5,636,942 in the name of Fred Brackebusch, published on 10 June 1997 (in these proceedings, ‘Slatter 23’).
78 An invention is a patentable invention for the purposes of an innovation patent if the invention as claimed is novel when compared with the prior art base as it existed before the priority date of the claim: see the Act, s 18(1A)(b)(i). Section 7(1) of the Act describes the circumstances in which an invention is not to be taken to be novel.
For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
It is unnecessary to set out in detail the definition of “prior art base” in Schedule 1. It suffices to note that the definition includes information in a document publicly available anywhere. Schedule 1 defines “prior art information”, for the purposes of s 7(1) of the Act to mean “information that is part of the prior art base in relation to deciding whether an invention is or is not novel”.
79 As s 7(1) indicates, in order to establish lack of novelty, it must be shown that the disclosure made in the prior document or through the prior act was publicly available. That is, that there was disclosure of information to a recipient who was not under any restraint, in law or equity, as to the use made of that information: see Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31 (‘Merck’) at 58-59. There was, however, no contest about public availability in this case. For present purposes, it can be assumed that the information in the documents and acts relied on by SNF was publicly available information.
80 The question with respect to the novelty ground is whether any of the prior uses as alleged fell within the claims of Patent 944. Whether or not there is sufficient disclosure in a prior document or act to deprive a patentee’s claim of novelty does not always admit of a ready answer, although the test is well established. Lord Westbury set out the basic principles in Hill v Evans (1862) 1A IPR 1 at 6:
The question then is, what must be the nature of the antecedent statement? I apprehend that the principle is correctly thus expressed: the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent.
81 In order for an invention as claimed to lack novelty, Lord Westbury said (at 7):
The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication.
Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited and accurate, and gives a specific rule of practical application.
The reason is manifest, because much further information, and therefore much further discovery, are required before the real truth can be extricated and embodied in a form to serve the use of mankind. It is the difference between the ore and the refined and pure metal which is extracted from it.
Again, it is not, in my opinion, true in these cases to say, that knowledge, and the means of obtaining knowledge, are the same. There is a great difference between them. To carry me to the place at which I wish to arrive is very different from merely putting me on the road that leads to it. There may be a latent truth in the words of a former writer, not known even to the writer himself; and it would be unreasonable to say that there is no merit in discovering and unfolding it to the world.
Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a specification, namely, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use.
This approach has been regularly followed: see, for example, The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd [1972] RPC 457 (‘General Tire’), Bristol-Myers Squibb Company v FH Faulding & Co Limited (2000) 97 FCR 524 (‘Bristol-Myers’) and H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151 at 192-194 [180]-[192].
82 There was a controversy in the present case as to the tendency of the alleged prior art documents to “teach away” from the Patents. SNF referred in this connection to General Tire, Bristol-Myers and Re ICI Chemicals & Polymers Ltd and Lubrizol Corporation Inc (2000) 49 IPR 513 (‘Lubrizol’).
83 In General Tire (at 485-6) the English Court of Appeal explained anticipation by prior publication in the following terms:
To determine whether a patentee’s claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee’s claim. … If the earlier publication … discloses the same device as the device which the patentee by his claim … asserts that he has invented, the patentee’s claim has been anticipated, but not otherwise. In such circumstances, the patentee is not the true and first inventor of the device and his claimed invention is not new …
When the prior inventor’s publication and the patentee’s claim have respectively been construed … the question whether the patentee’s claim is new … falls to be decided as a question of fact. If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim, will have been shown to lack the necessary novelty, that is to say, it will have been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented: Flour Oxidizing Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457, line 34, approved in BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 RPC 1 at 24, line 1. A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
84 In Bristol-Myers at 548, Black CJ and Lehane J said (after referring to these passages from General Tire):
What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.
85 To adopt the language of the Full Court in Lubrizol at 528:
A familiar metaphor illustrating the concept of anticipation is that the prior inventor must clearly be shown to have planted his flag at the precise destination before the patentee: General Tire at RPC 485-5 … In the present case, the appellants’ argument involved the skilled addressee rummaging through the Williamitis flag locker to find a flag which Williamitis possessed and could have planted.
See also Pfizer Overseas Pharmaceuticals v Eli Lilly and Co (2005) 68 IPR 1 at 67-69 [313]-[324].
Prior art information – documents
86 I turn first to the 6 prior art documents on which SNF relied. SNF contended that there is “a clear difference between a disclosure in a prior document of something that is said to be known or already done” and “a stated preference for another option, and a more limited or incidental disclosure of something in the course of discussing or ‘teaching’ that other option”. This case fell, so SNF submitted, into the former category. The Ciba respondents responded that not one of the 6 prior documents relied on by SNF satisfied the test for lack of novelty because each document was missing at least one integer of the claims. The Ciba respondents submitted that there were three key differences: (1) whether the polymer is in the form of an aqueous solution when combined with the material to be deposited; (2) whether a process of settling and sedimentation is a process of improving “rigidification” within the meaning of the claims; and (3) whether the addition of the polymer before or in the thickener is “during transfer” as that phrase is used in the Patents.
87 For reasons that appear below, it is necessary to consider only claim 1, although the experts’ disagreement went further than this. Professor Slatter considered that all the claims were present in Slatter 3. Dr Farrow deposed that integers (e), (n), (o), and (q) of the claims (set out above) were not present in Slatter 3. At trial, however, the only issues with respect to Slatter 3 centred on integers (e) and (o).
88 Professor Slatter stated that he understood claim 1 to mean that “the material comprises an aqueous liquid with dispersed particulate solids, that the materials transferred as a fluid to a deposition area, then allowed to stand and rigidify, and that a quantity of viscous, water soluble polymer is added during transfer”. In the report accompanying his first affidavit, Professor Slatter described Slatter 3, saying “[t]he process of the invention more effectively minimises the area taken up by a stack of the material of given volume whilst maintaining the pumpability of the material”.
89 The main point of difference between SNF and the Ciba respondents was with respect to integer (e) (i.e., the combination with the slurry of “an aqueous solution of water-soluble polymer”). In response to the Ciba respondents’ proposition (supported by Dr Farrow’s evidence) that Slatter 3 was directed to, and involved, the use of polymer particles rather than an aqueous solution of water-soluble polymers as in Patent 944, SNF argued that the references in the specification to water-soluble polymers pointed to this as possible and already known modes of application; and that there was here “sufficient disclosure of the use of an aqueous solution of water-soluble polymers in the treatment of mining slurries to achieve the promised effect of rigidification”. In support of this contention, SNF relied on the statement in Slatter 3 (p 14 pars 2 and 3 and p 15 par 2) that:
It is surprising that the process according to the invention forms a product which rigidifies far better than alternative treatments, for instance the use of water swellable polymers or pre-formed solutions of water soluble polymers.
One advantage of additions in powder form is that the viscosity does not increase or diminish as rapidly as a solution-based addition.
90 Further, SNF said that the need for “water-soluble polymer” was disclosed in the steps for the preparation of the aqueous dispersion of polymer set out at p 11 par 1, which included “combining the dispersing medium a water-soluble or water swellable vinyl addition non-ionic or anionic polymer”.
91 SNF also relied on Professor Slatter’s opinion that the disclosure of polymer in emulsion was disclosure in aqueous solution. In the appendix to his second affidavit, Professor Slatter said:
[T]he critical difference is whether the polymer is added as solid particles or as dissolved solution. On page 12 in the first paragraph of this document it is stated that the polymer may be added in the form of a reverse phase emulsion. An emulsion is 2 immiscible liquids, therefore the polymer present in the emulsion must be an aqueous solution. On this basis I believe that this document does disclose addition of the polymer as an aqueous solution.
SNF submitted that Professor Slatter’s statement in cross-examination that Slatter 3 “is particularly looking at adding the polymer to the slurry in a particle form” did not involve him accepting that Slatter 3 “teaches away” from the use of an aqueous solution.
92 SNF also noted that Professor Slatter’s evidence in cross-examination pointed to another way of viewing Slatter 3 for the purposes of anticipation, when he said:
… the important point here was that the polymer does not begin to act until it is dissolved in the water. There is, in the slurry, water available and the application of the polymer would not start, in any event, until the material was dissolved …
93 SNF argued that the evidence showed that, if the skilled addressee were to perform the invention as claimed in claim 1 of Slatter 3, this would have the same effect as adding water-soluble polymer in aqueous solution, albeit the dissolution in aqueous solution starts after the polymer particles have been added. Furthermore, SNF noted that, in one preferred form of the invention, the polymer particles were mixed in a mixing device before being returned to the main flow line for pumping to a deposition area. Again, SNF noted that the evidence established that “the particulate form of the flocculant will clearly dissolve at the pre-mixing phase … prior to pumping”.
94 In response, the Ciba respondents relied on Dr Farrow’s evidence. Dr Farrow adhered to the view that the addition of polymer as “an aqueous solution” was an essential element of claim 1 (see above). According to Dr Farrow, whilst it was possible to add water soluble polymer to mineral tailings in forms other than aqueous solution, the addition of polymer in these other forms “would mean that it would act in a different manner and have different effects compared to polymer that is added in aqueous solution”. Dr Farrow explained:
This is because polymers are lengthy, complex molecules and the form they are added impacts on the timing and efficiency of their action.
95 Consistently with this understanding, Dr Farrow maintained that the critical difference between Slatter 3 and the Patents in suit was the use in Slatter 3 of polymeric particles rather than an aqueous solution of water-soluble polymer to treat tailings. As Dr Farrow explained, Slatter 3 describes the use of polymers that are water soluble, but applied as solid particles. Integer (e) of claim 1 (see above) was, so Dr Farrow maintained, missing from Slatter 3. Dr Farrow went on to say:
The addition of aqueous solution of polymer as described [in the Patents in suit] is important … because as an aqueous solution, the flocculant molecules are fully solubilised and would have a very different (beneficial) form compared to the use of polymeric particles where the molecules would be clumped together and would take consider[able] time to solubilise and disentangle due to their very large size and complex conformation.
96 Having considered the evidence of both experts, I prefer Dr Farrow’s analysis, because it is borne out by the teachings of the specifications in Slatter 3 and the Patents in suit. I accept, as the Ciba respondents argue, that, properly read, Slatter 3 recommends against the addition of polymer in aqueous solution and in favour of the use of polymeric particles. Consistently with this, Slatter 3 distinguishes between aqueous solutions, emulsions and dispersions. Slatter 3 expressly describes its own teaching (the use of polymer in the form of particles, whether solid, in dispersion or an emulsion) as “far better” than alternatives such as “pre-formed solutions of water soluble polymers”. Indeed, after being taken to the teaching in Slatter 3, Professor Slatter conceded in cross-examination that: first, Slatter 3 does not teach the administration of an aqueous solution of polymer; second, Slatter 3 teaches that adding the polymer either as a particulate dispersion or as an emulsion gives a far better result than using an aqueous solution; third, where particulate matter is present in an aqueous medium, it is not dissolved; and, finally, there is “no doubt” that Slatter 3 is particularly looking at adding the polymer to the slurry in a particle form.
97 Moreover, SNF cannot make out its novelty objection by pointing to passages in the prior document and speculating, as it was inclined to do, as to what might have occurred at some previous date.
98 I find that integer (e) is not present in Slatter 3. The Patents in suit are novel over Slatter 3. SNF has not established the contrary proposition.
99 SNF also argued that Slatter 4 discloses all the integers of the claims. The Ciba respondents maintained that it does not.
100 Professor Slatter’s evidence was to the effect that the disclosure of the addition of polymer in emulsion is, or is tantamount to, the disclosure of polymer in aqueous solution. Dr Farrow’s opinion was that Slatter 4 dealt with the use of a water-soluble polymer in the form of a water-in-oil emulsion, rather than in an aqueous solution. Hence Dr Farrow’s view was that integer (e) was missing from Slatter 4. (Again, I note, without finding it necessary to rule on the point, that Professor Slatter and Dr Farrow disagreed about the presence of integer (o) in Slatter 4. Substantially for the reasons given in relation to Slatter 3, Professor Slatter maintained that Slatter 4 contained this integer, whilst Dr Farrow considered that it did not.)
101 SNF argued, first, that Slatter 4 disclosed the use of polymers in aqueous solutions, referring in particular to the statements that:
Water-soluble polymeric emulsions have been used as flocculants, generally in the form of inverted dilute solutions, in dewatering applications for solid liquid separations. (p 2)
Moreover, the stabilizing effectiveness of the water-soluble polymers is surprisingly enhanced when they are used in their inverse emulsion form, rather than first being inverted to form a dilute aqueous solution, as such polymers are typically used in the art. See, for example, US Patent no 4,767,540. (pp 2-3)
102 SNF contended that the significance of these passages lay in their disclosure of the use of water-soluble polymers in solution following inversion (or “flipping”) from their emulsified form. The evidence at trial established that it was commonly accepted by persons skilled in the field of mining waste disposal (such as Messrs Schroeter, Coleman and Bannister) that, in the present context, before an emulsion becomes effective, it must be flipped, that is, dissolved in solution. SNF submitted that the cited passages reflected a common practice with respect to the use of water-soluble polymers, and constituted comments on the effectiveness of the emulsion form as compared with the aqueous form in achieving the object of the invention – the stacking of particulate solids in an aqueous liquid. According to SNF, Slatter 4 did not contain a teaching away, as alleged by the Ciba respondents.
103 SNF also argued that the application of the process covered by Slatter 4 “will inevitably entail the combination of polymer dissolved in aqueous solution with the slurry tailings”. That is, the performance of the process in Slatter 4 will inevitably require the “flipping” of the inverse emulsion form into an aqueous solution for it to become effective. In his second affidavit, Professor Slatter said:
[T]he central issue is the addition of polymer which is already dissolved in water as opposed to addition solid particles [sic]. Addition of polymer in an emulsion requires the addition of polymer which is already dissolved in water and is in an aqueous solution, albeit in an oil emulsion. On this basis I believe that this document discloses addition of polymer in an aqueous solution. …
[T]he admixing of the polymer in the centrifugal pump and a static mixer necessarily means that the polymer is added before deposition and therefore during transfer. In this context, the static mixer or the centrifugal pump is part of the transfer process.
According to Professor Slatter, the dissolution into aqueous solution occurred in the pipe and, although there might be delay when the emulsion form is added directly, the effect was nonetheless the same.
104 SNF maintained that, on one reading of claim 1, claim 1 is satisfied by the mixing of the emulsion polymer with the aqueous form of the material during transfer, so as to be in an aqueous solution form in transfer. In this regard, SNF made the same argument with respect to Slatter 4 as with respect to Slatter 3.
105 In Dr Farrow’s opinion, the key difference between Slatter 4 and Patent 944 was that Slatter 4 involved the use of a water-soluble polymer in the form of a water-in-oil emulsion. As he said:
This means that the water soluble polymer is not in solution, rather it is trapped within very small water droplets within a continuous oil phase.
As a result, in his opinion, integer (e) was absent.
106 Dr Farrow explained the difference:
With a aqueous solution of a water soluble polymer the molecules are separated and solvated (ie, surrounded by water molecules) and will have an elongated conformation which enhances their ability to co-absorb on two or more particles to induce flocculation. With a water in oil emulsion, the flocculant molecules are ‘trapped’ in a concentrated form within small water droplets distributed throughout an oil phase. “Activation” of a water in oil flocculant requires high shear mixing such as that induced by a centrifugal pump, as described in Slatter 4 on page 10, lines 24-31.
Consequently the properties of the flocculant molecules in an aqueous solution are very different to those in a water-in-oil form. In fact, the examples set out on pages 11-13 and Table 1 on page 14 of Slatter 4 suggests that use of an aqueous or dilute solution of polymer would not achieve the intended outcome of the process.
107 I prefer Dr Farrow’s analysis of Slatter 4 to that of Professor Slatter. Dr Farrow’s point is that the aqueous phase of an emulsion is not an aqueous solution. This is reflected in Slatter 4, which contrasts emulsions with water-soluble polymers in dilute aqueous solution. Examples 3 and 5 in Slatter 4 use polymer in aqueous solution for slump tests but these examples are shown as unsuccessful in that the treated material spreads far wider than the material treated with emulsions: see Table 1. Slatter 4 is thus teaching the use of emulsions rather than aqueous solutions.
108 Indeed, in cross-examination, Professor Slatter conceded that: first, Slatter 4 indicates that one does not combine an emulsion that has been inverted into solution, but rather one should combine the emulsion in its emulsion form; second, the emulsion is “physically different” to the solution form; third, there will be delay in the activation of the polymer if it is added as emulsion rather than solution; and fourth, Professor Slatter was not in a position to disagree with Dr Farrow.
109 I find that integer (e) is not present in Slatter 4. The Patents in suit are novel over Slatter 4. SNF has not established the contrary proposition.
110 SNF maintained that Slatter 10, Slatter 12 and Slatter 13 disclose all the integers of the claims in the Patents in suit. The Ciba respondents maintained that they do not. At trial, the critical question turned on whether or not the process of settling and sedimentation was relevantly different from that of improved rigidification.
111 In relation to Slatter 10, SNF relied on Professor Slatter, who maintained that Slatter 10 disclosed all the essential integers of the claims of the Patents in suit. The Ciba respondents relied on Dr Farrow’s opinion that Slatter 10 lacked integers (a), (b), (d) and (f) of claim 1 (see above) and was, in any case, directed to a different purpose, namely, enhancing settling or sedimentation rather than rigidification. (Dr Farrow also maintained that certain other integers, including integer (o), were not disclosed in Slatter 10. With respect to Slatter 10 (as with Slatter 3 and Slatter 4) SNF argued that integer (o) was incidental to the type of material to be processed and “would be inferred as applicable to the processing of minerals involving fine and coarse particles”. As with Slatter 3 and Slatter 4, it is unnecessary to determine this point.) Ultimately, the Ciba respondents and SNF accepted that the dispute as to whether Slatter 10, Slatter 12 and Slatter 13 anticipated the Patents in suit turned on the meaning of rigidification.
112 In response to Dr Farrow, Professor Slatter said, in his second affidavit, in relation to the disclosure in Slatter 10, that:
I do not agree that this is a process of settling/sedimentation not rigidification. [T]he process of settling/sedimentation must always result in rigidification. …
I do not agree that the differences in objective are relevant in the sense that the claims should be disqualified. In my opinion what is relevant is that using this invention results in a suspension of wide particle size range (see claim 1(i) in column 7 page 4 of the document) forming a homogeneous deposit (see claim 1(iii) in column 8 on page 4 and in column 2 line 9 on page 1) without separation of the coarse and fine portions (see claim 1(iii) in column 8 on page 4), the deposited material dewaters rapidly (see claim 1(ii) in column 8 on page 4), remains homogeneous (does not segregate into coarse and fine fractions) (see claim 1(iii) in column 8 on page 4) and possesses a uniform load bearing capacity (see claim 1(iii) in column 8 on page 4).
113 As Professor Slatter confirmed in cross-examination, in his view, the process of “improved aggregation” or sedimentation described in Slatter 10 was “rigidification” in terms of the Patents in suit. Cross-examination of Professor Slatter with regard to Slatter 10 was directed almost entirely to this issue.
114 Dr Farrow’s evidence was that Slater 10 was “a technology for enhancing settling or sedimentation, which are different from rigidification”. Dr Farrow’s analysis in his third affidavit sets out the basis for this conclusion, which, for the reasons Dr Farrow stated, I accept.
115 For the reasons set out earlier, I accept that the process of settling and sedimentation should be distinguished from the process of “improving rigidification” as claimed in the Patents in suit.
116 Accordingly, I conclude that the Patents in suit are novel over Slatter 10. SNF has not established the contrary proposition.
117 Relying on Professor Slatter’s evidence, SNF submitted that Slatter 12 provided a full anticipation of all the claims of the Patents in suit. In Professor Slatter’s opinion, Slatter 12 disclosed all the integers of claim 1; and flocculation/settling and sedimentation inevitably led to rigidification. With respect to integer (a) of claim 1, Professor Slatter relied on various references in Slatter 10 (as, for example, “adding a polyelectrolyte to the sands, and then mixing the sands with phosphate mine slimes, there is obtained an admixture of said sands and slimes which will compact, with the release of water to a fill material which is sufficiently strong to support men and cattle”). With respect to integer (b) of claim 1, Professor Slatter referred to references in column 1, l 40 and column 8, l 43. With respect to the integers (d) and (f) of claim 1, SNF referred to column 7, l 53-56 and the fact that the material in the process covered by Slatter 12 is “slimes from phosphate ore processing” and thus within Patent 834. As for other claims – in this case, of Patent 834 – in relation to integer (o) SNF referred to column 6, l 13-21.
118 The Ciba respondents relied on Dr Farrow’s opinion that Slatter 12 did not disclose integers (a), (b), (d) and (f) of claim 1. In addition, Dr Farrow maintained that certain other elements (namely, (j), (l)-(m) and (o)-(q)) were absent. Dr Farrow described Slatter 12 in the following terms;
This patent relates to a process for treating phosphate slimes with polymers. It involves flocculation/settling, not rigidification. This is clear from the statement in the Abstract that: “Pre-sorption of small amounts of anionic polyelectrolyte flocculants such as 35% hydrolysed-COONa polyacrylamide of about 15 million weight average molecular weight onto sands tailings from the processing of phosphate ore improves the subsequent settling and solidification on mixing with phosphate slimes”. This is also supported by the comment in column 4, line 51-54 that says “The use of polymers on the sand permits versatility of mixing with the sands and slimes remaining sufficiently homogenous to settle in a compact form …”. A further supporting statement that this is a flocculation/settling process is given column 8, line 2 “… cause the slimes to adhere to the sand particles and settle essentially homogeneously …”.
119 Thus, it was Dr Farrow’s opinion that Slatter 12 related to a process of flocculation and settling, not rigidification.
120 As with Slatter 10, the principal issue between the parties was whether settling and sedimentation processes were to be distinguished from rigidification as taught in the Patents in suit. As with Slatter 10, with respect to Slatter 12, in cross-examination, Professor Slatter was asked only to confirm that in his view the processes of agglomeration and improved sedimentation, described in Slatter 12, constituted “rigidification” in terms of the Patents in suit. This was, as we have seen, contrary to Dr Farrow’s opinion.
121 For the reasons set out earlier, including my acceptance of Dr Farrow’s analysis in preference to that of Professor Slatter, I accept that the process of settling and sedimentation should be distinguished from the process of “improving rigidification” as claimed in the Patents. Accordingly, I conclude that the Patents in suit are novel over Slatter 12. SNF has not established the contrary proposition.
122 Professor Slatter’s opinion, relied on by SNF, was that all the integers of the claims of the Patents in suit were disclosed by Slatter 13. Dr Farrow stated that at least integers (a), (b), (d), (f), (j) and (l)-(q) were absent from Slatter 13 and that, in his view, that the process disclosed in Slatter 13 was flocculation and sedimentation, not rigidification. The Ciba respondents relied on Dr Farrow’s evidence.
123 As with Slatter 10 and Slatter 12, the principal issue with respect to Slatter 13 was whether settling and sedimentation processes were to be distinguished from rigidification as taught in the Patents in suit. In cross-examination about the disclosure in Slatter 13, Professor Slatter was asked only about his view on settling/sedimentation and rigidification. As with Slatter 10 and 12, the dispute regarding Slatter 13 centred on the meaning of rigidification in the Patents in suit.
124 In his third affidavit, Dr Farrow stated that:
This patent relates to the addition of polymers to aqueous suspensions to form material suitable for use as backfill.
The process is clearly one of flocculation/sedimentation. This is supported by statements within the patent such as:
● On page 2, line 27 “… the clear water obtained following sedimentation ultimately drains off”
● On page 3, line 26 “Reuse of the clean water evacuated by the backfill once the solid particles have settled …”
It is also clear that the process described in the patent is not one of rigidification and stacking of the tailings. This is clear from comments such as on page 5, line 13 “… From the appearance of the mixture flowing into the crater formed at the point of arrival of the mixture …”. This implies a non-rigidified material which is not forming a stack.
125 For the reasons already stated, I accept Dr Farrow’s analysis in preference to that of Professor Slatter. I accept that the process of settling and sedimentation should be distinguished from the process of “improving rigidification” as claimed in the Patents. Accordingly, I conclude that the Patents in suit are novel over Slatter 13. SNF has not established the contrary proposition.
126 The materials the subject of the process in Slatter 23 are “tailings in an ore treatment using cyanidation” (claim 1) and, more generally, “tailings from mineral processing plants” (the abstract). SNF conceded that coal tailings (in Patents 944 and 386) were not covered. Nonetheless, SNF argued that Slatter 23 discloses all the integers of the claims in the relevant Patent in suit. The Ciba respondents maintained that it does not.
127 Professor Slatter’s view was that all integers of the claims of the Patents were disclosed by Slatter 23. Professor Slatter referred to p 1, column 1, l 66 to column 2, l 11; column 2, l 40-44, column 3, l 38-41, 48-53; and column 4, l 13-19.
128 Dr Farrow’s view was that Slatter 23 contained no disclosure of integers (a)-(j) and (o)-(q). Dr Farrow described Slatter 23 as follows:
This patent outlines a traditional tailings disposal approach linked to cyanide destruction. The method is based on using a paste thickener to produce a concentrated (underflow) suspension which, if it contains cyanide has cyanide destroying reagents in a tailings area where it is stacked.
129 Dr Farrow stated that the method disclosed in Slatter 23 “differs significantly from the Ciba process in that there is no reference to the addition of flocculant to the underflow line prior to discharge into the tailings area”. Dr Farrow commented that Slatter 23 “has little in common with the Ciba process”.
130 At one point Professor Slatter took a contrary view about this last-mentioned matter, referring to column 4, l 64. In cross-examination, however, Professor Slatter acknowledged that, first, there is no reference in Slatter 23 to flocculant being added to underflow coming from the bottom of the thickener to the discharge point; second, when transfer is used in the context of the specifications of the Patents, it is talking about the stage between the thickener and the deposition area; and, third, Slatter 23 does not teach or recommend combining with the slurry during transfer an effective amount of an aqueous solution of the flocculant.
131 I accept that, as Dr Farrow said, Slatter 23 discloses sedimentation of the tailings slurry in a thickener and that this is not the process of the invention of the Patents. Integer (c) of claim 1 (see above) requires the polymer to be added “during transfer” to a deposition area. The “transfer” to the deposition area occurs after the thickener underflow has left the thickener. The specifications in all Patents in suit makes this clear: see, for example, Patent 944 at p 13 l 4-8, p 14 l 29-30 and p 15 l 1-2. Further, in cross-examination, Professor Slatter acknowledged that the specification states that the invention will not work otherwise: see, for example, Patent 944, p 14, l 29-30.
132 With respect to Slatter 23, I prefer Dr Farrow’s analysis to that of Professor Slatter. Professor Slatter’s evidence with respect to Slatter 23 and the relevant Patents in suit was at times inconsistent and unclear. I reject Professor Slatter’s view that the addition of flocculant to the thickener is an addition made “during transfer”, as described in the Patents in suit.
133 Accordingly, I conclude that the Patents in suit are novel over Slatter 23. SNF has not established the contrary proposition.
134 For the reasons stated, none of the 6 prior art publications anticipates the claims in the Patents in suit.
135 The acts relied on by SNF are:
1. The use of polymers in the process of treating coal tailings at the Bulga Mine near Singleton, New South Wales, in or around 2002;
2. The use of polymers in the process of treating mineral sands tailings at the Beenup Mine at Augusta, Western Australia, between 1997 and 1999;
3. The use of polymers in the process of treating mineral sands tailings at the Londonderry Sand Mine north of Penrith, New South Wales, in or around 1981 and until at least 1989.
In closing submissions, SNF did not press an earlier claim with respect to the use of polymers in the process of treating gold and tin tailings at alluvial gold and tin mining operations near Charters Towers, Queensland.
136 SNF accepted that it bore the onus of proof of establishing a clear case of invalidity and that, in evaluating evidence of prior use of the invention, the court would bear in mind that the relevant evidence was based on witnesses’ recollections of events some years before: see Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43 at 82 [156]. Indeed, courts have accepted that evidence of this kind must be viewed with caution, particularly because the memory of witnesses is likely to be affected by developments in the industry since then: see Commonwealth Industrial Gases Limited v MWA Holdings Pty Ltd (1970) 180 CLR 160 at 165-166 and Nicaro Holdings Pty Ltd & Others v Martin Engineering Co & Another (1990) 91 ALR 513 at 525.
137 The Ciba respondents’ case was that none of the alleged prior uses was shown to possess all of the essential integers of the claims; and that SNF has not discharged its onus of establishing that, in each case, that the prior use was for a process for improved rigidification.
138 SNF adduced evidence from Mr Woolley about the use of polymers in the process of treating mineral sands tailings at the Londonderry Sand Mine in or around 1981 until at least 1989. During this time, Mr Woolley was employed to sell flocculants for various uses, including for use in the treatment of wastes in the mining industry.
139 Mr Woolley’s evidence was that during this period he tested for and implemented a “super flocculation” process at Londonderry. This process involved adding flocculant solution to slurry after the slurry had passed through a hydrocyclone (which removed the coarser particles) at a minimum of two points during the transfer of the slurry (or tailings) to the deposition area. Mr Woolley said that the slurry treated in this process was a relatively thin liquid solution of about 3% solids. In his first affidavit, Mr Woolley said that the process “caused the solids in the tailings to separate very rapidly from the water and as a result solids stacked up at the end of the pipe which deposited the tailings in the deposition area”. Mr Woolley added that “the pipe had to be moved around the deposition area so that the stacks would not build up too high”. Three photographs taken by Mr Woolley in 1981 are consistent with his account.
140 Mr Woolley’s evidence in cross-examination was that the effect of the super flocculation process was to speed up the time “dramatically” in which the deposits in the deposition area could be re-worked, i.e., with capacity to be walked upon, dug out or re-afforested, or revegetated. Mr Woolley observed that, without this process, the deposits would be like quicksand, taking months to dry out. He confirmed this evidence in re-examination.
141 Notwithstanding the need for caution mentioned above, I accept Mr Woolley’s evidence, which was not seriously challenged by the Ciba respondents.
142 Mr Coleman gave further evidence as to the use of polymers in the process of treating mineral sands tailings at the Londonderry Sand Mine in 1984 (the date being corroborated by his contemporaneous notes).
143 Mr Coleman’s memory of the process used at Londonderry for the treatment of mine tailings in the mid 1980s was challenged in cross-examination. Amongst other things, it was put that the account given by Mr Coleman at trial of his role at Londonderry differed from the account in his first affidavit, and that the change was due to the fact that Mr Coleman had subsequently spoken to Mr Woolley about the process at the mine. Indeed, Mr Coleman sought to correct his affidavit by substituting the year 1984 for a reference to 1985. This was because the notes that he found after he had made his affidavit revealed the error. Mr Coleman also disavowed that it was he, rather than Mr Woolley, who initiated the super flocculation process at Londonderry. I would not find, however, that this latter matter involved Mr Coleman in “changing” his evidence: any misapprehension about his role that might have arisen in the earlier part of his affidavit was corrected by the latter part of the same document. Further, I do not consider that Mr Coleman’s memory about the super flocculation process at Londonderry in 1984 was shown to be unreliable. I therefore accept the description that he gave of the process that he saw and improved upon at Londonderry. Mr Coleman’s evidence of this process confirms the description given by Mr Woolley, including in relation to the addition of flocculant to the overflow from the hydrocyclone, the clarity of water released, and the formation of stacks compacted in a homogenous mass that could be walked over within six weeks. Mr Coleman’s evidence was that the cracks in the deposits were 12 feet deep and that the material was, at least to the eye, very largely homogenous.
144 Professor Slatter’s view was that the process at Londonderry as described by Mr Woolley disclosed the integers of the claims in the Patents. In his second affidavit, Professor Slatter detailed his reasons for holding this opinion.
145 The real point at issue between the parties with regard to Mr Woolley’s evidence was whether the deposition of flocculated fine particle slurries in the deposition area was to be characterized as settling/sedimentation or rigidification. On the one hand, Professor Slatter took the view that Mr Woolley’s statement that the super flocculation led to the formation of floccs and subsequent settling was enough to conclude there was rigidification because this process “must always result in rigidification”. Professor Slatter expressed the view that “[r]igidification and dewatering are clearly described [by Mr Woolley] where Mr Woolley states that once the flocculants had been added the tailings almost immediately separated into large floccs of solids and clear water”. In cross-examination, Professor Slatter confirmed his view that Mr Woolley’s description of the process at Londonderry disclosed rigidification. (I note that Professor Slatter did not discuss Mr Coleman’s evidence and was not cross-examined on this omission.)
146 With respect to the super flocculation process at Londonderry, SNF again relied on the proposition that there was no material difference between the process of settling/sedimentation and the process of rigidification. This proposition was assumed in Professor Slatter’s conclusion that all elements of the claims of the patent (in this case, Patent 834) were present.
147 The Ciba respondents, on the other hand, relied on the evidence of Dr Farrow who maintained that the photographic evidence indicated that the process involved sub-surface settling or sedimentation. On Dr Farrow’s analysis, integers (e), (f), (g) (h) (i) and (q) of claim 1 were not established by the super flocculation process at the Londonderry Sand Mine, as described by Mr Woolley.
148 In his third affidavit, Dr Farrow made the following observations about Mr Woolley’s evidence:
I note the process described by Mr Woolley in paragraph 16(a), which he called Super Flocculation, “causes the solids in the tailings to form large floccs and rapidly settle”. I do not consider that this discloses or describes a process of rigidification … In paragraph 24, Mr Woolley makes a statement related to the solids rapidly forming stacks in the deposition area. The supplied photos do not show any evidence of the formation of a stacked deposit with any real structure or strength or homogenous distribution. It appears to me that what is occurring is really sub-surface settlement or sedimentation. Therefore, at least elements (a), (b) and (d) of claim 1 are not present.
Dr Farrow went on to say that he did not consider that other essential integers were disclosed in relation to what took place at Londonderry, including integers (l) and (m) of claim 3 and integers (p) and (q) of claim 5.
149 Although, as I have said, the three photographs were consistent with Mr Woolley’s account, there is, as Dr Farrow said, no evidence in them of stacked deposit. Dr Farrow’s identification of the process described by Mr Woolley as “sub-surface settling or sedimentation” was not seriously challenged by SNF, by reference to Professor Slatter or otherwise. Professor Slatter’s essential point was that settling and sedimentation inevitably lead to rigidification and cannot be relevantly distinguished. For the reasons already stated, however, I prefer Dr Farrow’s analysis with respect to this issue and therefore accept that there is a relevant difference between settling/sedimentation and rigidification. If matters rested here, SNF would not have discharged its onus with respect to the Londonderry Mine.
150 Dr Farrow was also of the view that Mr Coleman’s evidence disclosed a process of settling/sedimentation as opposed to rigidification. Dr Farrow referred to Mr Coleman’s statement that the floccs would separate from the water in the tailings upon standing, observing that this described a process of settling/sedimentation, not rigidification. Dr Farrow also noted that the stacks described by Mr Coleman were said to be due to the addition of additional flocculant as it entered the tailings dam, rather than during transfer. Dr Farrow concluded:
Based on what is described, in my experience, I suspect that what is happening is that as the slurry stream enters the tailings dam and flocculant is added at this point there is immediate separation of the coarser material from the finer, flocculated material. The coarser material would most likely immediately settle out to form the stacks referred to by Mr Coleman. …
Most of the finer flocculated material would remain in suspension and would simply run off the stack … and pool at the bottom of the tailings dam, before settling to produce clarified water for re-use. This is a traditional tailings disposal process involving the segregation of coarse and fine particles and flocculation to enhance the settling rate of the fine particles. This is not rigidification …
151 As already stated, I accept Dr Farrow’s understanding of rigidification in preference to that of Professor Slatter. Having considered the entirety of the evidence, I accept Dr Farrow’s evidence regarding the process at Londonderry. I am not persuaded that SNF has discharged its onus of proof with respect to the process adopted at the Londonderry Mine, and, in particular, that the process at Londonderry disclosed improved rigidification.
152 For the reasons stated, I conclude that the Patents in suit are novel over the acts involved in the super flocculation process at Londonderry Sand Mine. SNF has not established the contrary proposition.
153 SNF adduced evidence from Mr Banister, who was at the relevant time the Production Manager in the Coal Handling and Preparation Plant at the Bulga Mine, as to the use of polymers in the process of treating coal tailings at that mine in around 2002. Mr Banister’s evidence was that, in 2002, the mine operators were encountering problems with the poor quality of water being recovered from a deposition area. Mr Banister said that he devised a method, which he called secondary flocculation to address the problem. Mr Banister deposed:
This process involved pumping the ultra-fines forming at the top of the first [pit] through a pumping and flocculating station from the first (dirty) to the second (empty) [pit]. This additional flocculant aided in separating out the ultra fines material pumped from the first [pit].
The second [pit] did not have a flat graded floor. … As a result the second [pit] actually housed a number of smaller depressions which acted as large settling ponds.
The slurry which was pumped into the second [pit], having been treated with flocculant a second time, settled in these ponds allowing the solids to settle and the water to be clarified.
[T]he product used for the secondary flocculation was a Nalco flocculating product which was a water soluble polymer.
Liquid flocculant was injected into the slurry as it was pumped from the first [pit] to the second [pit]. … The floccculant was added as an aqueous solution to the slurry.
154 Mr Banister’s evidence, which I accept, was that this process involved the addition of polymers in solution prior to deposition. In cross-examination, other than with respect to the result of the secondary flocculation process, Mr Banister was not challenged on his description. It was not suggested that the process at Bulga did not involve a secondary flocculation process using flocculant in aqueous solution. Rather, counsel for the Ciba respondents sought to establish that the result was not rigidification within the Patents in suit.
155 Professor Slatter stated, in his second affidavit, that, in his opinion, the process described by Mr Bannister disclosed all the integers of the claims in Patent 944. It is evident from his evidence that his conclusion depended on his approach to the settling/sedimentation and rigidification debate. In his second affidavit, Professor Slatter detailed in what way he understood that all the integers of the claims were present (save for “improving rigidification of a material whilst retaining the fluidity of the material during transfer”). (I note that Professor Slatter maintained that the Patents in suit gave “no information at all regarding how ‘retaining fluidity during transfer’ is to be assessed or applied” and therefore this aspect remained “unexplained having regard to both the claims and specifications of the Patents”. I return to this issue below.)
156 Professor Slatter said that the process at Bulga, as described by Mr Bannister, involved rigidification. This was because:
The process of settling must always result in rigidification. Improved aggregation is described [by Mr Bannister] where it is stated that flocculant is added to the thickener with the slurry and this aids in the separation of the finer materials from the water by flocculating the finer materials into clumps (floccs). Sedimentation is described [by Mr Bannister] where it is stated that clumps (floccs) settle to the bottom of the thickener. Finally, rigidification and dewatering are clearly described [by Mr Bannister] where it is stated that once the slurry is pumped to the deposition area it is allowed to stand to allow the finer materials to resettle [and] the clean water is pumped away to be used again in the mining processes.
157 In cross-examination, Professor Slatter confirmed his conclusion that the process at Bulga resulted in rigidification. Further, I accept, as SNF submitted, that, contrary to the Ciba respondents’ submissions, Professor Slatter did not at any point intend to accept that there was a relevant distinction between sedimentation and rigidification in dealing with the evidence of prior use. Rather, he did no more than agree with the proposition put by senior counsel for the Ciba respondents that there was a distinction only if the interpretation favored by these respondents was accepted.
158 In relation to Bulga, Dr Farrow said:
I … note that in paragraph 13 the process described relates to “allowing the solids to settle”. …[S]ettling is quite different from rigidification. …
The process described by Mr Banister is really just the implementation of a secondary flocculation process to enhance the settling or sedimentation process in a second disposal area or pit. It does not relate to rigidification of the deposited material, nor does it relate to stacking of the rigidified material.
Dr Farrow concluded that integers (a), (b) and (d) of claim 1 (see above) were not therefore present. He also considered that integers (l), (m) and (p) were absent.
159 For the reasons previously stated, I accept Dr Farrow’s evidence that rigidification as described in the Patents in suit differs from settling/sedimentation. Having considered the evidence with respect to Bulga, I accept Dr Farrow’s evidence regarding the process there. I am not persuaded that SNF has discharged its onus of proof with respect to the process adopted at Bulga and, in particular, that it disclosed improved rigidification as described in the Patents in suit.
160 For the reasons stated, I conclude that the Patents in suit are novel over the acts involved in the secondary flocculation process at the Bulga Mine. SNF has not established the contrary proposition.
161 SNF adduced evidence from Mr Cigulev, a process metallurgist employed at the Beenup Mine from about June 1996 until June 1999, about the use of polymers as flocculants in the treatment of mineral sands tailings at the Beenup Mine between 1997 and June 1999.
162 Mr Cigulev’s evidence was that in 1996, when he started at the mine, the mine operator “was experiencing difficulties recovering water from the Tails Slurry because it included slow settling clay and sand”. Mr Ciguev said that “much of the waste materials being deposited into the deposition area … was sludge or slime from which it would take a long time to recover water” and that “[i]n order to quickly settle the fines in the Tails Slurry [he] decided to add flocculant to the Tails Slurry at a number of places in the waste stream”. Mr Cigulev deposed that:
I recommended that flocculant be added both shortly before each of the outlet points being an open ended pipe that discharged the Tails Slurry into the [deposition area] and at the end of each of the outlet points. … The flocculant was added approximately 10 metres before each outlet point and also at the outlet point directly into the stream as it flowed into the [deposition area].
163 Mr Cigulev’s evidence was that the flocculant was in an oil emulsion and was activated with water “as per the manufacturer’s recommendation”. Mr Cigulev went on to say that:
Once the doses of flocculant were added, the slurry which was deposited in the [deposition area] separated into a solid clay and sand stack, and the clarified water could be reused.
The process resulted in stacks of the sand and clay being formed in the [deposition area], that is, the floccs produced by the Co Flocculation process were so rigid so as to stack rather than flow upon being deposited in the [deposition area]. Stacks rose in height forming a ‘volcano” and threatened to tower over the wall of the [deposition area].
164 In his second affidavit, Mr Cigalev said that “[t]he Beenup process was adding clay/sand into a water-filled dam analogous to a thickener”.
165 SNF argued that this disclosure anticipated the claims. I accept Mr Cigulev’s evidence as to what occurred at Beenup, and reject the Ciba respondent’s challenge to his credit. It is immaterial to the issue as to whether this was an anticipatory prior use that the mine was decommissioned from June 1999 and may have been a failure.
166 In his second affidavit, Professor Slatter, in his review of Mr Cigulev's evidence, concluded that the process as described by Mr Cigalev at Beenup disclosed all of the claims in the Patents. In this affidavit, Professor Slatter detailed how he was so satisfied. Again, it is evident that Professor Slatter reached this conclusion on the basis of his understanding of the settling/sedimentation and rigidification controversy. In cross-examination, Professor Slatter also confirmed his conclusion that the process at Beenup resulted in settling and sedimentation and, therefore, rigidification, based on his understanding of the meaning of rigidification.
167 Dr Farrow’s evidence was that, in 1998, he was engaged as part of a CSIRO team to advise on issues relating to tailings disposal. His evidence was that “there was no successful tailings disposal operation in place at the mine site at that stage”. I accept, however, that, as SNF indicated, this evidence was not necessarily inconsistent with that of Mr Cigalev because Dr Farrow’s observation related to only one year at Beenup and may be explained in a number of ways.
168 In his third affidavit, Dr Farrow explained the “volcanoes” referred to by Mr Cigulev, and his understanding more generally as to the process at Beenup, in the following terms:
While Mr Cigulev refers to a stack being formed, there is no evidence that this is a homogenous mixture of coarse and fine particles, rather than a segregated stack. In my opinion, the “volcanoes” he stated to build up rapidly would have been composed mainly of coarse material. The remainder of the solids would quickly run-off in suspension (probably causing significant erosion at the point of contact with the “volcanoes”) and be deposited in a pool at the foot of the stack where they would settle or sediment out.
My conclusion here is supported by Mr Cigulev’s diagram of the process “JC-3”. This shows a second addition point for the flocculent as the tailings are discharged into the disposal area. As also discussed above in relation to the process described in Mr Coleman’s affidavit, what appears to be happening at Beenup is that as the polymer is added on discharge, the coarse and fine fractions immediately segregate causing the rapid build up of stacks of coarse material. Again I refer to page 3, line 3 onwards of the Patent, relating to the problems associated with such deposition including excessive beach angles and run off of aqueous waste contaminating recovered water. I would not consider the stacks to be rigidified.
169 Dr Farrow also noted that “Mr Cigulev describes adding flocculant to the tailings slurry at a number of places in the waste stream, in order to “quickly settle” the fines”, once again observing that, on his analysis, “settling is quite different from rigidification”. I have already stated that I accept Dr Farrow’s evidence on this latter point.
170 Further, Mr Cigalev’s evidence was that the tailings deposition area at Beenup was filled with water so that the process in use was analogous to a thickener. The Patents in suit do not address a situation of this kind.
171 For the reasons stated, SNF has not discharged its onus of proof with respect to the process adopted at Beenup, and, in particular, that the process used there disclosed improved rigidification as in the Patents in suit. Dr Farrow’s integers (a), (b), (d), (j), (l), (m), (o) and (p) to the extent to which they relate to rigidification are therefore missing. For the reasons stated, I conclude that the Patents in suit are novel over the acts involved in the co-flocculation process at Beenup. SNF has not established the contrary proposition.
172 For the reasons stated, none of the 3 prior art acts anticipate the claims in the Patents in suit.
173 In order for there to be a valid innovation patent, the invention as claimed must involve an innovative step: see the Act, s 18(1A)(b)(ii). SNF argued that the invention as claimed in Patent 944 does not involve an innovative step. The Ciba respondents maintained that it does.
174 Section 7 of the Act relevantly provides:
(4) For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
(5) For the purposes of subsection (4), the information is of the following kinds:
(a) prior art information made publicly available in a single document or though doing a single act;
(b) prior art information made publicly available in 2 or more related documents, or though doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information.
(6) For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.
[Notes: (1) For the meaning of document see section 25 of the Acts Interpretation Act 1901.
(2) See also the definitions of prior art base and prior art information in Schedule 1: see also paragraph 18(1)(b) and subsection 98(1).]
175 Schedule 1 defines the expression “prior art information” to mean, for the purposes of s 7(5) of the Act, “information that is part of the prior art base in relation to deciding whether an invention does or does not involve an innovative step”. For the purposes of this case, the expression “prior art base” “in relation to deciding whether an invention does or does not involve … an innovative step” comprises the same information considered in relation to deciding whether or not the invention is novel: see Schedule 1, definition of “prior art base”.
176 In Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239 (‘Dura-Post’) at 256 [73]-[74], Stone J and I described the operation of these provisions in the following way:
Section 7(4) requires a comparison to be made between the invention as claimed in each claim with the information s 7(5) describes. That is, s 7(5) identifies the kinds of information to which the invention as claimed in each claim is to be compared. This information is particular kinds of prior disclosures. Section 7(6) requires that each such prior disclosure be considered separately. That is, the invention as claimed in each claim must be compared separately with each relevant prior disclosure.
In making this comparison, s 7(4) requires that each comparison be made from the perspective of a person skilled in the art, whose task is to identify and assess the variations between the invention as claimed in each claim and the prior disclosure and determine whether or not these variations make a substantial contribution to the working of the invention as claimed in each claim. Dura-Post accepted, as do we, that the primary judge was correct in holding that “substantial” contribution in the context of s 7(4) meant “real” or “of substance”. The place of common general knowledge in this provision is straightforward enough. Section 7(4) contemplates that, in performing this task, a person skilled in the art has certain background knowledge that that person uses in identifying and assessing these variations.
177 Accordingly, in determining the issue of innovative step, the court must ascertain:
(a) the invention “so far as claimed in any claim”;
(b) the person skilled in the relevant art;
(c) the common general knowledge of the person skilled in the art as it existed in Australia before the priority date; and
(d) whether, when considered from the perspective of a person skilled in the art, in the light of that common general knowledge, the invention as claimed only varied from the kinds of information in s 7(5) – here the cited prior art information – in ways that make no substantial contribution to the working of the invention as claimed.
As noted above, there was no issue about the public availability of SNF’s prior art information.
178 Plainly enough, the innovative step requirement for innovation patents is less onerous than the inventive step requirement for standard patents: see Dura-Post at 257 [79]. As Stone J and I said in that case:
In substance, s 7(4) deems an invention as claimed to involve an innovative step unless the invention does not differ from the relevant prior disclosure in a way that makes a substantial contribution to the working of the invention as claimed – in the sense of the device or process the subject of each claim. This is a factual inquiry. The assessment is, of course, from the perspective of a person skilled in the art, having regard to the relevant common general knowledge.
The person skilled in the relevant art
179 I identified the relevant art earlier in these reasons. I also discussed the skilled addressee. For present purposes, “a person skilled in the art” is of the same description as the skilled addressee.
Common general knowledge before the priority date
180 Common general knowledge “involves the use of that which is known or used by those in the relevant trade” and “forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge”: see Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 292 (Aickin J).
181 In Aktiebolaget Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375 (‘Aktiebolaget Hässle) the Full Federal Court further explored how common knowledge was identified, saying at 391 [72]-[73]:
The question is not whether a skilled worker conducting a literature search would find pieces from which there might have been selective elements which make up a patent: Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 293 …. What might be found by a diligent searcher is not the same as “common general knowledge”.
That is not to say that the whole of the content of “common general knowledge” need be within the conscious awareness of the hypothetical non-inventive skilled worker. For example, there may be publications of technical and detailed information that are habitually consulted by the hypothetical skilled worker. Notwithstanding that the hypothetical skilled worker would not have the whole of the contents of such reference material in his or her mind, such information should be regarded as part of common general knowledge.
182 Notwithstanding that the Full Court’s decision was ultimately reversed, the High Court affirmed this point on appeal: see Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411 at 430 [43]-[44] and 435-6 [57].
183 Thus, in El Dupont at 332 [103], Branson J relied on Aktiebolaget Hässle to reject a submission that “the hypothetical fruits of … a literature search should be understood to form part of common general knowledge in the field”. At the same time, as Aktiebolaget Hässle indicates, the notion of common knowledge “is not limited to material which might be memorised and retained at the front of the skilled worker’s mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course” such as standard texts, handbooks, and English or technical dictionaries: see ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577 at 599 [112] (Emmett J), quoted with approval in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 (‘Tyco’) at 273 [101]. Also in Tyco at 273 [100], the Full Court quoted with approval the following statements in TA Blanco White, Patents for Inventions (Stevens & Sons, 1983, 5th ed) (‘Blanco White’) at 85-7 [4-207]:
The term “common general knowledge” is used in patent law to mean that which is “known to duly qualified persons engaged in that art or science”; or (in different words) that which is “part of the mental attitude of a well-instructed representative of the class to whom the specification is addressed” and nothing else; or again, that which is “part of the mental equipment of those concerned in the art under consideration.”
…
Common general knowledge is normally proved by reference to commonly used books; or by reference to what students of the art are taught; or by evidence of expert witnesses generally. It is not sufficient to show that information was published in a document having wide circulation in the art concerned, unless that information is also shown to have been “generally accepted without question” (or at least, “generally regarded as a good basis for further action”) by the bulk of those in the art, and this is unlikely unless the information was actually used. A practice established amongst an important section of those in the art is part of the “common general knowledge” for this purpose even though others in the art may not know of it … [Citations omitted.]
184 The Ciba respondents submitted that a body of prior art had been identified but there was limited evidence as to the common general knowledge of the skilled worker in the field. As the Ciba respondents noted, this is the context in which the person skilled in the art would consider whether the invention as claimed only varies from each piece of prior art information in ways that make no substantial contribution to the working of the invention. In this connection, the Ciba respondents noted, and SNF accepted, that none of the cited prior art documents had been shown to form any part of the common general knowledge in Australia at the priority date.
185 Notwithstanding this, some matters of common knowledge were clearly established. Industry witnesses, such as Messrs Bannister, Coleman and Woolley, gave evidence (which I accept) that, before the priority date, they were familiar with the use of water-soluble polymers (including in high doses) as flocculants to dewater slurries of mining waste, as indicated in the belt press example given by Mr Schroeter. The evidence of industry witnesses was that before the priority date: (1) they knew that polymer might be added as flocculant in a number of ways – as powder, in emulsions or aqueous solution; and (2) they had for some years regularly added flocculant in aqueous solution to tailings slurries. I accept that this knowledge formed part of the common general knowledge before the priority date. Mr Schroeter also gave evidence that the use of polymers in emulsions, and their mode of activation, was known in the industry before the priority date. Given Mr Schroeter’s long experience in the industry, I accept that this knowledge formed part of the common general knowledge before the priority date.
186 There was also evidence from industry witnesses that, as part of their common general knowledge before the priority date, they would have been aware that the flow properties of slurries are determined by the mineralogy and water content of the slurry, “applied shear” (as witnesses called it), and the polymer dose. Industry witnesses were also aware as part of their common general knowledge that: (1) mining tailings could be disposed of by pumping the tailings slurry through a conduit to a disposal area where the material could be allowed to stand, with a view to land reclamation and water recycling; (2) the addition of polymer as flocculant to a tailings slurry prior to, or during, pumping of the slurry to a disposal site enabled the slurry to thicken and dewater more effectively upon standing; and (3) tailings slurries dosed with polymers in this way could be deposited at a disposal site in which the material would settle and form sediments. Further, as part of this common general knowledge, the industry witnesses knew that, generally speaking, the higher the flocculant dose, the greater the flocculation. The knowledge of these industry witnesses can to be taken to have formed part of the common general knowledge of a person skilled in the art before the priority date.
The invention “so far as claimed in any claim”
187 I discuss the invention “so far as claimed” earlier in these reasons and below.
188 For the purposes of s 7(4) and (5) of the Act, SNF relies on the same documents and acts as for its novelty objection.
No substantial contribution to the working of the invention
189 The variations between each item of prior art information and the invention as claimed must be examined, with a view to assessing whether SNF has established that, on the evidence before the court, the variation of the invention as claimed would, to a person skilled in the art, in the light of the common general knowledge before the priority date, make no substantial contribution to the working of the invention.
190 The Ciba respondents submitted that there were three relevant variations for the purposes of s 7(4) of the Act:
1. settling as opposed to rigidification;
2. whether the polymer is combined with the slurry material in the form of an aqueous solution; and
3. whether the flocculant is added to the slurry material between the thickener and the deposition area.
The Ciba respondents submitted that each of these differences makes a substantial contribution to the working of the invention. Of course, the question for the court is a different one – whether SNF has established, on the balance of probabilities, that to a person skilled in the art, in the light of the common general knowledge before the priority date, when each relevant comparison is made, it can be concluded that the variations make no substantial contribution to the working of the invention.
Slatter 3
191 With respect to Slatter 3, argument about innovative step turned on the fact that the main difference between Slatter 3 and each of the claims of the Patents in suit was that Slatter 3 referred to the addition of polymer in dry particulate form rather than in aqueous solution as in each of the claims of the Patents in suit.
192 According to SNF, both the process disclosed in Slatter 3 and that in Patent 944 achieved “pumpability” or “fluidity during transfer”. Relying on Professor Slatter, SNF maintained that there was no material difference between these descriptions. The Ciba respondents submitted, first, that Professor Slatter had failed to undertake the task identified by the Court in Dura-Post at 256 [73]-[74] and, indeed, had embarked on the very type of analysis that the Court specifically rejected.
193 As I have said, the evidence of industry witnesses was that flocculant was regularly added in aqueous solution to tailings slurries for some years before the priority date.
194 Professor Slatter gave evidence that “[a]s a matter of course, flocculant can only be active when it is in an aqueous phase”. Professor Slatter also stated in cross-examination that, in his view, the effect of adding polymers in particulate form and in aqueous solution was the same, in that the polymer would only take effect when it dissolved – as would occur when flocculant in particulate form was mixed with aqueous slurry. In his opinion, therefore, the only difference between the process disclosed in Slatter 3 and the invention as claimed in Patent 944 was that in the former case there would be a delay in activation of the flocculant, but thereafter the processes disclosed in Slatter 3 and in the invention as claimed would be exactly the same. Furthermore, Professor Slatter suggested that the fact that the polymer in aqueous solution would take effect more quickly was not necessarily an advantage since this might increase the risk of rigidification within the pipe before deposition. Drawing on this, SNF submitted that Patent 944 gave no indication that the speedier activation of the flocculating polymer confers any identifiable benefit over the process of adding particulate polymer previously taught in Slatter 3.
195 As already stated, Dr Farrow’s evidence was that the addition of polymer in aqueous solution would act in a different manner and would have a different effect to the addition of polymer in other forms, including in particulate. Indeed, notwithstanding that Professor Slatter said that the processes were the same, Professor Slatter in fact agreed that the addition of polymer in aqueous solution rather than in particulate form would affect the rate at which the polymer took effect as a polymer. Professor Slatter also agreed that the time at which the process of rigidification began would be material. In the same connection, Professor Slatter agreed with the proposition that combining the polymer in particulate form might be a sensible way to go because it would delay the activation of the polymer on the solid particles in the tailings material, thus delaying the rigidification process and avoiding it taking place too early in the pipe.
196 Having regard to the above and notwithstanding his reluctance to say so, it can be seen that Professor Slatter’s evidence in substance was that the form in which the polymer was added would have a material effect on how the process worked. His evidence in this regard was borne out by the evidence of the industry witnesses. For example, Mr Schroeter agreed that the emulsion form might be used if one wanted to slow the process down. Mr Bannister agreed that the particulate form would have a different rate of reaction to the solution. Mr Cigulev expressed the view that adding flocculant in forms other than solution was less effective.
197 The evidence at trial therefore supports the conclusion that a person skilled in the art, in the light of the common general knowledge before the priority date, would consider the form in which the flocculant is added to have an important effect on the process. The evidence does not establish that the person skilled in the art, in light of relevant common general knowledge, would consider that the invention as claimed in each of the claims of Patent 944 only varied from Slatter 3 in a way or ways that make no substantial contribution to the working of the invention. SNF failed to discharge its onus of proof. Therefore, by virtue of s 7(4) of the Act, Patent 944 and the other Patents in suit have an innovative step when compared to Slatter 3.
198 SNF submitted that the present case differs from Dura-Post. In that case, there was the definite evidence of a witness of the contributions made by the variations disclosed in the challenged patent. Here the Ciba respondents called no industry witness to give evidence on any supposed contribution to the working of the invention made by any variation disclosed in the invention as claimed compared with Slatter 3. SNF submitted that in this circumstance the court should infer that the evidence that the Ciba respondents might call would not be helpful to their case: see Jones v Dunkel (1959) 101 CLR 298 (‘Jones v Dunkel’). It seems to me, however, that this is to approach the inquiry mandated by s 7(4) the wrong way round. By virtue of s 7(4), “an invention is to be taken to involve an innovative step” unless a person skilled in the art in the light of the common general knowledge before the priority date would reach the conclusion referred to in the provision – that is, that the invention as claimed varied from the relevant item of prior art base in ways that make no substantial contribution to the working of the invention. SNF bore the onus of proof in this regard. Having regard to the evidence, it did not discharge that onus. The fact that the Ciba respondents did not call industry witnesses cannot alter this.
Slatter 4
199 With respect to Slatter 4, argument about innovative step turned on the fact that the principal difference between Slatter 4 and the claims of the Patents in suit was that Slatter 4 referred to the addition of polymer in oil emulsion form rather than in aqueous solution.
200 As stated above, the common general knowledge before the priority date included knowledge of the use of polymers in emulsions, and their mode of activation, for the purpose of treating and flocculating mine tailings. There was, however, no evidence that it was common general knowledge before the priority date that there was no material difference between the use of polymers in aqueous solution and their use in emulsion in the treatment of mine tailings.
201 Professor Slatter’s evidence was that, from a mixing perspective, the addition of polymer in oil emulsion would function very similarly to an aqueous solution. He maintained this opinion in cross-examination. Dr Farrow’s evidence was, however, to the contrary. As indicated in relation to the earlier discussion of Slatter 3 above, I prefer Dr Farrow’s evidence to that of Professor Slatter. It is clear that Dr Farrow considered that the difference in the form of the polymer would have an important effect on the process. The evidence of the industry witnesses mentioned above was to the same effect.
202 I accept that, as SNF noted, Patent 944 (as the exemplar) contained no specific indication of any advantage in the use of polymer in an aqueous solution over the use of polymers in emulsion, as disclosed in Slatter 4. Assuming that the process disclosed in Slatter 4 resulted in rigidification and dewatering, there was nothing in Patent 944 (as the exemplar) to indicate how this was done more effectively through the use of polymer in aqueous solution rather than in emulsion. I do not, however, consider the mere absence of this indication in Patent 944 (and in the other Patents in suit) overcomes Dr Farrow’s evidence that the difference was significant.
203 For the reasons already stated with regard to Slatter 3, the evidence does not establish that a person skilled in the art, in the light of the common general knowledge before the priority date, would consider that the invention as claimed in each of the claims of the Patents in suit only varied from Slatter 4 in a way or ways that make no substantial contribution to the working of the invention. SNF failed to discharge its onus of proof. Therefore, by virtue of s 7(4) of the Act, the Patents in suit have an innovative step when compared to Slatter 4.
204 With respect to Slatter 10, 12 and 13, argument about innovative step turned on whether the main difference between them and the claims of the Patents in suit lay in the fact that Slatter 10, 12 and 13 were concerned with settling and sedimentation, whilst the claims of the Patents in suit were concerned with improved rigidification.
205 In discussing Slatter 10, 12 and 13 above, I held that each of these prior art documents concerned settling and sedimentation, rather than rigidification. Dr Farrow gave evidence, which I accept, as to the differences between settling/sedimentation and rigidification. Dr Farrow’s evidence, as discussed above, indicates that the process of improved rigidification had significant industrial advantages over the process of settling and sedimentation. SNF has not shown that a person skilled in the art, in the light of the common general knowledge before the priority date, would consider that the invention as claimed in each of the claims of the Patents in suit only varied from Slatter 10, 12 and 13 in a way or ways that make no substantial contribution to the working of the invention. On the contrary, Dr Farrow’s evidence indicates that a person skilled in the art, in the light of the common general knowledge, would be unlikely to reach this conclusion.
206 SNF failed to discharge its onus of proof with respect to Slatter 10, 12 and 13. Therefore, by virtue of s 7(4) of the Act, the Patents in suit have an innovative step when compared to them.
Slatter 23
207 For the reasons set out above, I find that Slatter 23 discloses sedimentation of the tailings slurry in a thickener and that this is not the process of the invention as claimed in any of the claims of the Patents in suit. The evidence of industry witnesses such as Mr Bannister, Mr Bembrick and Mr Schroeter established that the step of combining the polymer with the slurry after the thickener would have an important effect on the process of treating the mine tailings. There was evidence that pumping material any distance after the thickener would cause shearing of the flocculated particles. According to Mr Bembrick (describing the infringing SNF Process), the process of the invention as claimed in the Patents in suit permitted pumping of the thickener underflow to a deposition area that was some kilometers distant.
208 The evidence thus supports the conclusion that a person skilled in the art, in the light of the common general knowledge before the priority date, would consider the fact that the flocculant was added to the slurry between the thickener and the deposition area to have an important effect on the process. More importantly, the evidence does not establish that a person skilled in the art, in the light of the common general knowledge, would consider that the invention as claimed in each of the claims of the Patents in suit only varied from Slatter 23 in a way or ways that make no substantial contribution to the working of the invention. SNF failed to discharge its onus of proof with respect to Slatter 23. Therefore, by virtue of s 7(4) of the Act, the Patents in suit have an innovative step when compared to it.
Londonderry, Bulga and Beenup Mines
209 I have already discussed the information made available through the prior art acts at Londonderry, Bulga and Beenup. Argument about the lack of innovative step turned on whether the difference between them and each of the claims of the Patents in suit lay in the fact that the processes used and disclosed at these mines involved settling and sedimentation, whilst the claims of the Patents in suit were concerned with improved rigidification.
210 In discussing the processes at these mines earlier, I held that each of these prior art acts concerned settling and sedimentation, rather than rigidification. For the reasons stated in relation to Slatter 10, 12 and 13, SNF has not shown that a person skilled in the art, in the light of the common general knowledge before the priority date, would consider that the invention as claimed in each of the claims of the Patents in suit only varied from the prior art acts at each of the Londonderry, Bulga and Beenup Mines in a way or ways that make no substantial contribution to the working of the invention. Therefore, by virtue of s 7(4) of the Act, in relation to each of these prior art acts, the Patents in suit have an innovative step.
211 In summary, for the reasons stated, SNF has failed to make out its challenge to validity on the lack of innovation ground.
212 Section 18(1A) of the Act provides that an invention is a patentable invention for the purposes of an innovation patent if the invention as claimed is “a manner of manufacture within the meaning of section 6 of the Statute of Monopolies”. “Invention” is defined in Schedule 1 as “[a]ny manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention” (emphasis added).
213 Relying on Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 (‘Microcell’), National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (‘National Research’), N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 (‘Mirabella’), Advanced Building Systems Pty v Ramset Fasteners (Aust) Pty Limited (1998) 194 CLR 171 (‘Ramset’), Bristol-Myers, and Merck, SNF submitted that the invention as claimed in the Patents in suit was not, relevantly, a manner of manufacture. These authorities (discussed below) show that this submission can only properly be understood as a submission that the alleged invention was not, on the face of the specification, an alleged manner of new manufacture properly the subject of letters patent according to traditional principles: see, for example, Mirabella at 665.
214 In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 (‘Lockwood No 2’) at 211 [106], the High Court said that Microcell stood -
… for a narrow proposition that a Commissioner of Patents, or his or her delegate, may refuse an application for patent protection where a specification “on its face” shows the invention claimed is not a manner of new manufacture. This may arise, for example, from admissions concerning novelty. The decision in Microcell has not always been properly understood; it does not involve a separate ground of invalidity or discrete “threshold” test.
215 In Dura-Post, Stone J and I discussed some of the authorities, to which SNF refers, stating (at 246 [31]):
We accept … that Microcell stands for “a narrow proposition that a Commissioner of Patents, or his or her delegate, may refuse an application for patent protection where a specification ‘on its face’ shows the invention claimed is not a manner of new manufacture”: see [Lockwood 235 CLR 173 at [106]] per Gummow, Hayne, Callinan, Heydon and Crennan JJ; Mirabella 183 CLR at 663-664 per Brennan, Deane and Toohey JJ; and Merck 154 FCR at 51-53 per Heerey, Kiefel and Dowsett JJ. As their Honours there said in Mirabella, “if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further”.
216 In relation to a standard patent, the majority in Mirabella explained (at 663-664) the manner of manufacture requirement in s 18(1)(a) of the Act in the following way:
The effect of those opening words of s 18(1) is that the primary or threshold requirement of a “patentable invention” is that it be an “invention”. Read in the context of s 18(1) as a whole and the definition of “invention” in the Dictionary in Sch 1, that clearly means “an alleged invention”, that is to say, an “alleged” “manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies”. In the light of what has been said above about what is involved in an alleged manner of new manufacture, that threshold requirement of “an alleged invention” will, notwithstanding an assertion of “newness”, remain unsatisfied if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of absence of the necessary quality of inventiveness, not a manner of new manufacture for the purposes of the Statute of Monopolies. That does not mean that the threshold requirement of an “alleged invention” corresponds with or renders otiose the more specific requirements [of s 18(1A) of the Act]. It simply means that, if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further. (Emphasis added.)
The majority went on immediately to cite in support of this passage part of the judgment of Dixon CJ, Kitto and Windeyer JJ in National Research at 261-262.
217 Subsequently, in Ramset at 191-192, the majority discussed the significance of Mirabella, observing that Mirabella:
… came on appeal to this Court on a grant of special leave confined to the construction of s 18(1)(a) of the 1990 Act. But it was decided upon a construction of the introductory words of s 18(1), namely “a patentable invention is an invention that”. Reference to the definition of “invention” in the Dictionary which constitutes Sch 1 to the 1990 Act was held to have imported into the introductory words the requirement that a manner of new manufacture for the purposes of the Statute of Monopolies should appear on the face of the specification. …
In [Mirabella], the appellant failed in its attempt to establish that although a claimed use was nothing but a new use of an old substance this could still be a proper subject of letters patent under the 1990 Act where this character of the claimed use was apparent on the face of the specification. (Citations omitted.)
See also Bristol-Myers at 536 [30] and Merck at 52 [63].
218 The observations of Black CJ and Lehane J in Bristol-Myers at 536 [30] concerning what the specification reveals as “known” are especially helpful. For this reason, I set them out:
In our view, in the light of the authorities to which we have referred, [Mirabella] stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step – that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field -- then the threshold requirement of inventiveness is not met. Some elaboration, however, is required in relation to what the specification reveals as “known”. If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court … would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part “of the common general knowledge as it existed in the patent area”. In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell and in [Mirabella]. If, however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge or information of a kind described in s 7(2) of the 1990 Act. That again, in our view, is consistent with the approach taken in Microcell. It is also, with respect, the only approach which does not, in practical terms, render s 18(1)(b)(ii) otiose. (Citations omitted.)
Bristol-Myers involved a standard patent, and this passage reflects that fact. The present case concerns innovation patents, and regard must therefore be had to s 18(1A), especially s 18(1A)(b)(ii) and s 7(4) (rather than s 18(1)(b)(ii) and s 7(2)).
219 The Ciba respondents argued that, in considering the authorities regarding “manner of manufacture”, the court should also bear in mind that there are key differences between the legislative regime for innovation patents and standard patents. The Ciba respondents submitted that the court should take account of the provisions governing innovation patents, the different role of common general knowledge and the lower threshold for patentability in the case of an innovation patent, where an innovative step is required, as opposed to an inventive step in the case of a standard patent. The Ciba respondents argued that the Parliament cannot have intended to lower the threshold, without also relevantly altering the manner of manufacture test.
220 Having regard to the matters to which the Ciba respondents referred, I accept that, in the case of an innovation patent, the test should be “whether on the face of the specification of the innovation patent there is an admission that there is no innovative step”. I accept, as the Ciba respondents submitted, that, in the present case, this meant that “in relation to specific prior art documents referred to in the specification there is an admission that any difference does not amount to a substantial contribution to the working of the claimed invention”.
221 There is no admission to be found on the face of the specifications of the Patents in suit that, in relation to a specific prior art document mentioned in the specification, the invention does not differ in any way that does not make a substantial contribution to the working of the invention. Nor, if I am wrong about the test, is there an admission on the face of the specification that the invention as claimed is not a manner of new manufacture in any other sense.
222 SNF argued that the high molecular weight polymers (i.e, polymers with a high intrinsic viscosity value) referred to in the Patents in suit were known before the priority date as having properties that made them, to quote SNF, “suitable for fluidising suspensions of particulate material for pumping through pipelines and dewatering suspensions”: see SNF’s closing written submissions at p 53. SNF stated that this was fully disclosed in publicly available documents, which were referred to and described in each of the specifications of the Patents in suit. SNF went on to argue that:
Judging such matters from the perspective of a skilled addressee possessed of the common general knowledge in the field … it will be clear that these descriptions and incorporated documents disclose all the following matters:
a. processes for improving settling/sedimentation/rigidification of materials were known;
b. such processes occurring during transfer while retaining fluidity;
c. the addition during transfer of polymers (the process referred to as “secondary flocculation”);
d. the addition during transfer of aqueous solutions/liquids of water soluble polymers (among others);
e. where the intrinsic viscosity is high;
f. processes in which the materials treated are various. Eg red mud or other tailings from mineral processing.
223 This approach is, so it seems to me, misconceived. Overlapping between the Patents in suit and the documents or acts to which the specifications of the Patents in suit refer does not make out this ground. None of the specifications contains any relevant admission with respect to a prior publication or any matter of common general knowledge. There is no statement in the specifications of the Patents in suit that any of the prior publications or acts mentioned in them discloses the invention as claimed in the Patents in suit. Indeed, after recounting the prior art, each specification identifies a need to “further improve” rigidification and clarity of released water, stating that an objective of the invention is to find a more suitable method of treating mining waste in order to provide better release of liquid and more effective means of disposal. In any event, each of the claims goes well beyond a recital of the use of high molecular weight polymers for “fluidising suspensions of particulate material for pumping through pipelines and dewatering suspensions”.
224 In so far as SNF argues that the Patents fail to achieve their promised benefits, such an argument can only be relevant to its utility objection. As the Ciba respondents put it, “[a]n advance over the art is apparent on the face of the specification; the manner of manufacture objection must fail”.
225 Section 40(2)(a) of the Act stipulates that a complete specification must describe the invention fully, including the best method known to the patentee of performing the invention. Non-compliance with s 40(2) is a ground for revocation: see s 138(3)(f). Sufficiency is a question of fact, to be determined, if possible, by reference to the evidence of the addressees of the specification.
226 SNF argues that the specifications of the Patents do not comply with s 40(2)(a) of the Act. SNF’s argument was, in effect, that the specifications of the Patents did not contain adequate instructions to enable the patented process to be worked: see Blanco White at p 128 [4-501]. SNF bears the onus of satisfying the court that this is so.
227 SNF’s primary submission was that the claims disclosed a process of secondary flocculation performed long before the priority date. In advancing this argument, SNF referred to Mr Bembrick’s evidence in re-examination concerning flocculation at a quarry near Sydney in 2000. This evidence was generalised and vague, and I would accord it little weight. This argument fails.
228 Alternatively, SNF argued that, on the reading that I have accepted, the specifications of the Patents in suit were silent on a number of key matters. SNF argued that a skilled addressee seeking to perform the invention would need to engage in prolonged testing beyond the routine in order to determine the appropriate parameters.
229 In SNF’s Third Further Amended Particulars of Invalidity, SNF identified the key matters that were allegedly missing from the specifications and constituted a failure to comply with s 40(2)(a), namely:
(a) The specifications do not indicate the dosage and rate at which an effective rigidifying amount of an aqueous solution of water soluble polymer is to be combined with material during transfer;
(b) The specifications do not indicate whether the dosage and rate at which an effective rigidifying amount of an aqueous solution of water soluble polymer is to be combined with material during transfer differ according to whether the transfer is continuous or occurs over defined time periods;
(c) The specifications do not indicate how the dosing point is to be identified so as to minimise shearing of the treated material during transfer; and
(d) The specifications do not indicate the extent to which the dosage and rate at which an effective rigidifying amount of an aqueous solution of water polymer is to be combined with material during transfer differs according to:
(i) the level of turbulence within the conduit along which the transfer takes place;
(ii) the size, dimensions and other physical characteristics of the said conduit;
(iii) the mineralogy of the section of the mine from which the material transferred is taken; and
(iv) the type of polymer which is used.
Essentially, as the Ciba respondents said, SNF’s complaints with regard to sufficiency concerned the dosage and rate of addition of polymer; and how the dosing point is to be identified so as to minimise shearing.
230 Blanco White at 128 [4-502] states the rule as to sufficiency as follows:
To be proper and sufficient, the complete specification as a whole (that is, read together with the claims …) must in the first place contain such instructions as will enable all those to whom the specification is addressed to produce something within each claim “by following the directions of the specification, without any new inventions or additions of their own” [R v Arkwright (1785) 1 WPC 64 at 66; Otto v Linford (1882) 46 LT 35 at 41 (C.A.); No-Fume v Pitchford (1935) 52 RPC 231 at 243 (C.A.)] and without “prolonged study of matters which present some initial difficulty” [Valensi v BRC [1979] RPC 337 at 377 (C.A.)].
231 The rule as to sufficiency stated in Blanco White is reflected in s 40 of the Act as construed by the High Court in Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2000) 207 CLR 1 (‘Kimberly-Clark’). Kimberly-Clark held (at 12-13 [16]) that, in determining whether the requirements of s 40(2)(a) were met, the complete specification (including the body and the claims) was to be read as a whole. The Court also held (at 14-15 [21]) that the word “invention” in s 40(2) was the embodiment of the invention described in the complete specification and around which the claims were drawn. For this purpose, the claims are as much a part of the complete specification as the preceding matter, which the High Court identified as the “body”: see Kimberly-Clark at 12 [14], 13 [16] and 14-15 [21]. In addition, the Court in Kimberly-Clark held (at 16-17 [25]) that the sufficiency of the disclosure made by the specification was to be determined by reference to whether a skilled addressee of the specification acquainted with the common general knowledge of the relevant art as at the priority date would be enabled by the contents of the specification to produce something within each claim without new inventions or additions, or prolonged study of matters presenting initial difficulty. See also Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 (‘Lockwood’) at 292 [49], 297 [60], 311-312 [103].
232 In reading the specification to ascertain the sufficiency of disclosure, the court must therefore place itself in the position of the skilled addressee — that is, the person who would be responsible for putting the invention into practice and has the necessary skill in the appropriate field for doing this: see Blanco White at 129 [4-503]. As indicated earlier, in some instances, a specification may require two or more addressees, skilled in different branches of industry, to appreciate it: see Osram Lamp Works Ld v Pope’s Electric Lamp Company Ld (1917) 34 RPC 369 at 391. The observations of the House of Lords in Osram are helpful in describing the way a court approaches the issue of sufficiency (although today a reading of the following passage must also take account of the modern Australian authorities, some of which are mentioned above). In Osram at 391, Lord Parker (with whom Lord Atkinson concurred) said:
Both in interpreting and in considering the sufficiency of a Specification, the Court is concerned, not with what the patentee meant by the words he used, but with what those to whom the Specification is addressed would, at the date of the Patent, have understood him to mean. It follows, that, where questions of interpretation or sufficiency arise, the Court must ascertain the persons to whom the Specification is addressed, and, when the Specification deals with technical matters, must instruct itself as to the technical knowledge which those persons may reasonably be supposed to have possessed at the date of the Patent. A patentee must, in his Specification, describe and ascertain not only the nature of his invention, but also the manner in which the same is to be performed. A Specification may therefore be considered as addressed, at any rate primarily, to the persons who would, in normal course, have to act on the directions given for the performance. These persons may be assumed to possess not only reasonable amount of common sense, but also a competent knowledge of the art or arts which have to be called into play in carrying out the patentee’s directions into effect. I say “art or arts” because in carrying out the directions given by the patentee it may well be necessary to call in aid more than one art. Some of the directions contained in a Specification may have to be carried out by skilled mechanics, others by competent chemists. In such a case, the mechanic and chemist must be assumed to co-operate for the purpose in view, each making good any deficiency in the other’s technical equipment.
233 Earlier in these reasons, I discussed the identity of the skilled addressee for the purposes of the Patents in suit. I refer to this discussion again here, with respect to the issue of sufficiency.
234 A specification is not insufficient merely because some experiment of a routine character (as distinct from prolonged study of matters presenting initial difficulty) is necessary in the particular case: see Blanco White at 131 [4-504]; Kimberly-Clark (at 16-17 [24]-[25]); and No-Fume Ld v Frank Pitchford & Co Ld (1935) 52 RPC 231 (‘No-Fume’) at 238, 243-245. Nor is a specification insufficient because it fails to give detailed instructions as to matters which a “practical person … would naturally settle, and expect to have to settle … himself,” provided he “would find no difficulty in so doing”: British Ore Concentration Syndicate Ld v Minerals Separation Ld (1909) 26 RPC 124 at 139. Further, Blanco White states at 131 [4-505]:
[A]lthough the specification must disclose the method of carrying out the invention, and not merely the result to be obtained [Vidal Dyes v Levinstein (1912) 29 RPC 245 at 266] any general description is enough if in fact the desired result can be obtained with certainty [Vidal Dyes at 279-280] and without invention [No-Fume v Pitchford (1935) 52 RPC 231 at 238]. Thus a general instruction to use “any suitable material” [Bickford v Skewes (1835) 1 WPC 214 at 218-219] or “known methods” [I G Farbenindustrie (1939) 56 RPC 249] or to use chemical reagents of a general class (leaving it to the addressee to determine which members of the class will operate satisfactorily) [Leonhardt v Kalle (1895) 12 RPC 103 at 116], will be sufficient if it enables the addressee to put the invention into practice. … Nor will vagueness or obscurity of instructions render the specification insufficient if an addressee would have no serious difficulty in understanding what he had to do [cf Whatmough v Morris (1940) 57 RPC 177 at 199].
See also D Falconer, W Aldous and D Young, Terrell on the Law of Patents (London, 12th ed, 1971) pp 82-3 [219]; D Young, A Watson, S Thorley and R Miller, Terrell on the Law of Patents (London, 14th ed, 1994) pp 100-101 [5.09-5.10], R Miller, G Burkill, C Birss and D Campbell, Terrell on the Law of Patents (London, 17th ed, 2011) pp 421 [13-27], all editions citing Plimpton v Malcolmson (1876) 3 Ch D 531 at 576 and Edison and Swan Electric Light Co v Holland (1889) 6 RPC 243 at 277-278.
235 SNF did not dispute these basic principles. Rather, SNF argued that, with respect to the Patents in suit, a skilled addressee seeking to perform the invention would need to engage in prolonged testing beyond the routine in order to determine the appropriate parameters. SNF argued that “the patents provide no more than general statements of intention and desired outcomes, with little, if any, explanation of the way in which these results are to be achieved”. SNF recognized that there may be no bright line between a specification that requires routine experiments to get the invention to work and a specification that requires prolonged study: compare Kirin-Amgen Inc v Transkaryotic Therapies Inc [2003] RPC 31 at 64-67 and Chiron Corporation v Organon Teknika Ltd [1994] FSR 202 at 243-244. Its argument was, however, that these Patents fell on the insufficiency side of the line.
236 SNF made a number of points about the tests in the specification, which, so it said, indicated insufficient guidance, noting that there was a need to set reasonable standards for testing because of the expense involved in operating a mining site, and the potential for mismanagement of tailings to cause significant disruption and damage. SNF also noted that the purchase of flocculant product might also involve significant expenditure.
237 SNF relied on the evidence of Mr Bembrick as to the trial and testing procedures undertaken to give effect to the SNF Process, admitted to be within the claims of the Patents in suit. (I accept that the fact that the trial occurred after the priority date does not affect the relevance of his evidence on this point.) SNF submitted that Mr Bembrick’s evidence established that implementation involved more than “simple trial and error”.
238 Mr Bembrick’s evidence showed that a pilot trial and testing preceded the implementation of the SNF Process at Bulga coal mine. The context in which this pilot trial and testing occurred is, however, also relevant. The pilot trial and testing were part an Australian Coal Association Research Program (‘ACARP’) in which Mr Bembrick (then a SNF regional sales manager) was involved. The ACARP Project was set up to investigate the impact of flocculant addition on tailings deposition density, water retention and the tendency for tailings to form surface crusts suitable for subsequent rehabilitation. The Project involved three distinct stages: the collection of samples and laboratory testing; a pilot trial at the Bulga coal mine; and a full-scale trial, also at Bulga. The pilot trial involved adding flocculant close to the deposition area (as secondary flocculation) and the expenditure (in or about 2005) of $100,000 on flocculant plant. The subsequent full-scale trial over some months under Mr Bembrick’s leadership involved the implementation of the secondary flocculation process, with some “trial and error tests” (for example, to ascertain the optimum dosing point and flocculant dose).
239 Mr Bembrick subsequently prepared a paper on the Project entitled “The Impact of Flocculant Addition on a Tailings Storage Facility”, which was presented to a metallurgical conference in Perth in August 2008. In his paper, Mr Bembrick, concluded that the secondary flocculation process, which involved adding additional flocculant immediately prior to the deposition area, “caused water to immediately liberate from the slurry at a rapid rate allowing water to pond and be readily available for reuse”. Mr Bembrick went on to observe that “[t]he related slurry immediately formed a beached area due to an increase in deposition density. By re-flocculating the slurry the finer particles attached to the larger particles creating a uniform size distribution throughout the beach area and assisted in water clarification”.
240 The ACARP Project was an industry-specific research initiative designed to investigate a particular technological problem in the industry. The extended trial and testing procedures and commensurate expenditure were in keeping with its purpose. One cannot infer from Mr Bembrick’s evidence about the ACARP Project that the implementation of the process disclosed in the Patents in suit (or the SNF Process as known to SNF) would also involve large-scale trials and testing.
241 Both SNF and the Ciba respondents relied on the opinions of the expert witnesses, who expressed very different views on the question whether they could follow the specifications of the Patents in suit and in each case perform the invention as claimed. Professor Slatter’s opinion that insufficient was taught contrasted with Dr Farrow’s view that the skilled addressee would encounter nothing out of the ordinary.
242 SNF relied on Professor Slatter, who pointed to a large number of tests and further inputs that he would require in order to achieve the results claimed. In cross-examination, Professor Slatter emphasized that, in his opinion, implementation of the disclosure in Patent 944 would involve an unacceptable level of experimentation. At one point Professor Slatter said:
Your Honour, trial and error has been mentioned a few times, and if I can just give my engineering interpretation? At the very forefront of terminology, one would engage in experimentation to establish parameters. What engineers seek to do is develop a technology resting firmly upon science, but with applications, so that measurements of fundamentally important parameters are made, such as in this context, yield stress, plastic viscosity, and then these are incorporated in various approaches to decide what kind of pump, what [kind] of pipe. So that we don’t experiment with trial and error because these pumps are enormously expensive, difficult to fit; the pipeline, the same would apply. So we want to be as certain as we can before we build a pipeline, what size motor, what size pump … . The engineer will make allowance for an operating envelope. So this would be the worst-case conditions, this would be whatever worst means and whatever best means worst case and best case to ensure that the operating conditions will probably be in the middle, but that the system can handle the extremes to which the process is likely to expose it. So that trial and error, as I've heard it referred to, is not really acceptable to my engineering approach.
What worries me my concern, I should say, is that if flocculant is added which produces enough change in rheology that the pump becomes unserviceable then the pump will have to be changed. Now, pumps and pipelines, there is an intricate design so that there is an optimisation before it’s built, so that this pump and this pipe will work together to use the least amount of energy, power and so on. If we retrofit pumps to pipelines, we’re already dealing with huge expense and time, and that was my concern: that that eventuality is not dealt with.
243 In his first and second affidavits, Professor Slatter also said that there was “no information … given at all regarding how ‘retaining fluidity during transfer’ is to be assessed or applied”. Professor Slatter was cross-examined on this point; and I specifically refer to it here because it attracted argument from both sides in closing. Professor Slatter also gave evidence as to the variables to be addressed in implementing the process disclosed in the Patents in suit and about which the Patents gave little or no information. These variables included the rate of dissolution of the polymer in the pipe, the amount of shearing, the level of turbulence, the diameter and configuration of the pipe, the type of pump, the mineralogy of the tailings, humidity, the type and dosage of flocculant, and the size of particles.
244 SNF also relied on Professor Slatter’s evidence that the examples and plant evaluations in the Patents did not assist the skilled addressee in carrying out the invention as claimed. SNF identified a large number of matters raised in relation to the tests referred to in the specifications that diminished their value as useful information for the skilled addressee. It is unnecessary to rehearse all these matters.
245 As the Ciba respondents noted, however, Professor Slatter’s criticisms of the Patents in suit went beyond the case on insufficiency pleaded by SNF. The case as pleaded was opened at trial. There was no application to amend. It is the case as pleaded that I must consider.
246 With this in mind, I turn to the statements in Patent 944 about dosage, rate, and dosing point. Patent 944 includes the following statements relevant to these matters:
(a) The aqueous polymer solution may be added to the material in an effective amount at any convenient point, typically during transfer. (p 7 lines 25-26)
(b) Suitable doses of polymer range from 10 grams to 10,000 grams per tonne of material solids. Generally the appropriate dose can vary according to the particular material and solids content. Preferred doses are in the range 30 to 3,000 grams per tonne, while more preferred doses are in the range of from 60 to 200 or 400 grams per tonne. (p 7 line 30 to p 8 line 2)
(c) The most effective point of addition will depend upon the substrate and the distance from the thickener to the deposition area. If the conduit is relatively short, [it] may be advantageous to dose the polymer solution close to where the material flows from the thickener. On the other hand, where the deposition area is significantly remote from the thickener it may be desirable to introduce the polymer solution closer to the outlet. In some instances it may be convenient to introduce the polymer solution into the material as it exits the outlet. (p 13 lines 12-19)
(d) It is not possible to achieve the objectives of the invention by adapting the flocculation step in the thickener. (p 14 lines 29-30)
(e) The examples in Patent 944 provide slump test results for a range of doses of various polymers in various forms on a variety of slurries as follows:
(i) Mineral sands (Table 3 p 19, Table 18 p 28);
(ii) Slurry obtained from a lateritic nickel, acid leach process (Table 9 p 23);
(iii) Red mud (Table 11 p 24)'
(iv) Slurry obtained from a gold processing operation (Table 13 p 25)
(v) Lead/zinc (Table 15 p 26)
(vi) Coal (Table 17 p 27)
(f) Testing of polymer with varying doses and mixing times is described. (Table 19 p 33)
(g) A plant evaluation at a mineral sands mine is described with a specified polymer at a specified dose at a specified rate (20 and 50 litres per second) at a specified dosing point (distance 20 metres flow rate 11 seconds) based on the preceding laboratory evaluation. (p 34)
(h) The yield stress of identified polymers is measured following a range of doses and mixing times. (Table 20 p 36)
(i) A plant evaluation at a mineral sands mine is described with a specified polymer at various doses (513 gpt, 726g/T and 1050 gpt) and at various dosing positions (before and after the centrifugal pump). (Pp 37-38)
247 In his first affidavit, Professor Slatter relevantly said that Patent 944, at p 16, did not indicate where the polymer was to be added. Professor Slatter also asserted that it was not clear how the distance at flow rate quantities disclosed on p 34 of the Patent were calculated. In his third affidavit, Dr Farrow responded to these criticisms, by noting that Table 19 clearly indicates that optimal results appear to be achieved with less mixing time. Dr Farrow construed the reference to “20 metres and 11 seconds” as requiring the dosing point to be “close” to the discharge point. Dr Farrow’s view was based on the results in Table 19 indicating that less mixing time leads to better results. In general terms, Dr Farrow disagreed with what he regarded as Professor Slatter’s “very analytical and scientific approach”. Dr Farrow expressed the view that “practically skilled persons in the industry, such as SNF and the potential customers and industry members who were recipients of those SNF materials” would readily understand and be able to implement the processes, examples and descriptions used in the Patents in suit.
248 In reply, Professor Slatter reiterated that he considered there was insufficient information in the specifications “to allow a person skilled in the area to achieve the results”, observing that:
The dosing point is a critically important issue. Nothing has been detailed with any clarity to define where the dosing point should be.
249 Professor Slatter maintained that an analytical approach was required because:
If for example the dosing point was too close to the end of the pipe, then insufficient mixing of the additive would occur, and rigidification would not be achieved. If the dosing point was too far from the end of the pipe, then efficient mixing of the additive would occur, and rigidification would be achieved whilst the material was still present in the pipe, resulting in blockage of the pipe.
Professor Slatter also stated that in his opinion “there is nothing to say how many dosing points should be trialled or what the intervals or spacing should be”.
250 When cross-examined on these views, however, it became clear that Professor Slatter’s approach did not reflect what happened in the field. In cross-examination, Professor Slatter conceded that, in his experience, different flocculants were tried.
One is discovered to work better than others and the dosage is then optimized.
Professor Slatter noted that each slurry will be different, and ultimately agreed that to compile an encyclopaedia of how to deal with every conceivable type of slurry would be a “very difficult and lengthy exercise”.
251 Professor Slatter also conceded that the approach of a skilled engineer (as he was) would differ from that of a technical sales representative (such as Mr Gill or Mr Joubert). Professor Slatter agreed with the proposition “that in a practical sense to a person … skilled in applying flocculants to tailings slurries, the very precise engineering calculations” to which he referred “do not seem to have played a major role”.
252 Indeed, the Ciba respondents argued that Professor Slatter’s evidence as to the difficulties in implementing the process disclosed in Patent 944 was at odds with the experience of the skilled workers in the field. They argued that any experiment or procedure required to be carried out by the skilled addressee in order to put the invention into practice would be of a routine or standard kind and required no invention or ingenuity. I substantially accept these submissions.
253 The evidence disclosed that, in the present context, skilled addressees, such as technical sales representatives, routinely undertake test work in order to optimize the use of flocculants in the waste treatment process. Mr Schroeter’s evidence (which I accept) as to what happened ordinarily in the field was clear. Mr Schroeter frankly acknowledged that the tasks to be undertaken by SNF representatives included identifying the appropriate flocculant for a given situation and that this would include running some laboratory tests of a standard nature. Further, as part of this process of optimizing the flocculant use, such representatives would take samples of the material to be treated because there were differences between mines and even within a mine in the nature of the substrate to be flocculated. Following the standard laboratory tests, typically, technical sales representatives would undertake a plant trial.
254 Factors that such a representative would ordinarily take into account were the physical conditions in which the flocculant was to be applied, the type of equipment in use, and the outcome that SNF’s customer was seeking from the application of the flocculant. In determining the appropriate flocculant, the representatives would also consider the nature and length of the conduit to the deposition area. Once the flocculant was chosen, technical sales representatives (in conjunction with a mine engineer) would need to determine the location at which the flocculant would be added. Mr Schroeter agreed that this involved an element of trial and error. Mr Schroeter’s evidence was that, if the slurry was coming out of the pipe too thickly, a relevantly skilled person might change the pump or change the point at which the flocculant is inserted into the pipe or the dose of flocculant inserted. (Emphasis added.)
255 None of SNF’s witnesses said that they had any difficulty with the implementation of the SNF Process – itself an example of the invention. Mr Schroeter’s evidence was in effect that a skilled addressee knows the general principles of flocculant use and, significantly, Mr Schroeter said, “[t]he reality is that it always retains fluidity through the pipe”. This evidence and statements in the specification at p 14 deprive Professor Slatter’s point about “fluidity … during transfer” of its validity. Further, as noted above, Mr Bembrick referred to some “trial and error tests” at Ashton (for example, to ascertain the optimum dosing point and flocculant dose) but did not indicate that they were other than those routinely done to optimize the process.
256 Speaking of his work as a technical representative in improving the treatment of tailings at Londonderry to improve the recovery of water, Mr Coleman said that he adjusted the discharge pipe and moved the dosing point using his skill in the industry by “a bit of trial and error”. Mr Joubert’s evidence also indicated that the testing to introduce and carry on the SNF Process at the Cowal gold mine was of a routine kind.
257 In response to the Ciba respondents’ submission that witnesses skilled in the field typically carried out their work in relation to the application of flocculants on mining wastes through the application of routine “trial and error” procedures and would, therefore, have been able to apply the patented processes without particular difficulty, SNF made two points. First, SNF noted the Ciba respondents’ submission that the evidence of Messrs Woolley, Coleman and Cigulev did not establish that any of them achieved rigidification, notwithstanding their skill in the field. If this were so, then, so SNF argued, implementation of the process required more than routine trial and error. On the Ciba respondents’ case, so SNF said, there was at least one extra step to be performed, which these industry witnesses were unable to perform as at the priority date. This is a specious argument: it was not suggested that any of these witnesses had the benefit of the teachings of the Patents in suit as at the priority date.
258 Bearing in mind the above discussion, I have concluded that the evidence of Dr Farrow should be preferred to that of Professor Slatter because Dr Farrow’s affirmation that practically skilled persons in the industry would readily understand and be able to implement the processes, examples and descriptions used in the Patents in suit was corroborated by witnesses, who might properly be regarded as practically skilled persons in the field.
259 Perhaps because Professor Slatter’s approach was more theoretical than that of the practical skilled worker in the filed, Professor Slatter had more difficulty than they did with the notion of trial and error. This difficulty was made manifest in cross-examination. Further, it is, so it seems to me, again worth bearing in mind that Professor Slatter’s criticisms were to a significant extent theoretical in that he had not studied the documents in evidence about the admittedly infringing SNF Process (for example, the Bembrick paper) and, prior to trial, he had not seen Mr Bembrick’s video.
260 On the basis of this evidence, and reading the complete specification as a whole, SNF has failed to establish that, on the balance of probabilities, the disclosures in the Patents in suit are not sufficient to enable the skilled addressee (in the light of the common general knowledge at the priority date) to produce something within each claim without new inventions or additions. Having regard to the evidence and the specifications, it is tolerably clear that the specifications of the Patents in suit make the nature of the invention plain enough to persons who might be reasonably be expected to have the knowledge and competence to perform it. The tests that such persons would need to carry out are no more than routine or standard tests such that they would ordinarily carry out in the course of their work in the field. These tests required neither invention nor ingenuity.
261 For the reasons stated, I would reject SNF’s challenge to the Patents in suit on the ground of insufficiency.
262 SNF’s submitted that, in the event that the court accepted the Ciba respondents’ approach to the Patents in suit, then that approach led to invalidity for lack of clarity, in the sense that the claims of the Patents were not “clear and succinct” as required by s 40(3) of the Act.
263 In SNF’s Third Further Amended Particulars of Invalidity, SNF identified the words and phrases, which it said were ambiguous or uncertain in scope and deprived the Patents of essential clarity. These words and phrases were:
(i) “A process for [sic] improving rigidification” – the word “rigidification” is ambiguous and the specification is without guidance on the meaning of this term.
(ii) “then allowed to stand and rigidify” – the word “rigidify” is ambiguous and the specification is without guidance on the meaning of this term.
(iii) “an effective rigidifying amount” – the word “rigidifying” is ambiguous and the specification is without guidance on the meaning of this term.
(iv) “during transfer” – it is unclear as to what point in the process this is referring to, that is, whether just before deposition or at some other point, such as during transfer to a holding vessel or thickener.
(v) “the material is dewatered during rigidification” – the word “rigidification” is ambiguous and the specification is without guidance on the meaning of this term.
SNF’s opening was confined to the case as pleaded. The clarity case put by SNF foccussed on the concepts of “rigidification” and “during transfer”.
264 The rules for construing patents are mentioned earlier in these reasons. In summary, as already stated, the specification must be read as a whole from the perspective of the skilled addressee, and in the light of the common knowledge in the art before the priority date. Reference can be made to the specification to explain the background of the claims, to ascertain the meaning of technical terms, and to resolve ambiguities in the construction of the claims. Whilst the claims must be construed having regard to the specification as a whole, if a claim is clear and unambiguous, it cannot be varied, qualified, or made obscure by reference to statements in other parts of the specification. Ambiguity or uncertainty may be the product of obscure language, or the use of a relative expression that requires an exercise of judgment. In the latter case, the claims will be valid as long as they provide a workable standard suitable to the intended use. The expressions in question must be understood in a practical, common sense manner.
265 The claims must, however, define the invention in such a way that it is “not reasonably capable of being misunderstood”: see Welch Perrin at 610 and Décor at 400. If, applying the proper rules of construction and having regard to the common general knowledge in the art before the priority date, it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid: see Welch Perrin at 610 and Décor at 400.
266 As stated above, whilst construction issues are ultimately for the court to determine, evidence may be given by experts as to the meaning that those skilled in the art would give to technical or scientific terms and phrases and unusual or special meanings given by such persons to words that might otherwise bear their ordinary meaning. Admissible evidence may also be given by a person with the knowledge, skill and experience of the notional skilled addressee as to how he or she would have read the specification in the patent at issue or a prior publication.
A process of improving rigidification; then allowed to stand and rigidify; an effective rigidifying amount; the material is dewatered during rigidification
267 For the reasons set out earlier, I accept Dr Farrow’s evidence that “rigidification” is a qualitative term, although one that Patent 944 explains clearly as “a networked structure”. Further, for the reasons already stated, I conclude that Dr Farrow’s evidence supports the Ciba respondents’ basic contention that, read within the context of Patent 944 (and the other Patents in suit), compared with settling and sedimentation processes, rigidification is faster; produces more recovered water; and results in chemically-bonded tailings that occupy a smaller surface area, which are more quickly rehabilitated. I also accept that, as Dr Farrow said, rigidified tailings material would be less likely to spread laterally after deposition, enabling more efficient land use; and would more rapidly form a solid structure in the form of a beach or stack; and have a greater yield stress when deposited, with increased uniformity or homogeneity of fine and coarse particles. Further, by reason of its heaped geometry as a beach or stack, such rigidified material would result in downward compression forces driving water out of the stack and more rapid release of water, with better clarity.
268 As I have said, the meaning that Dr Farrow attributed to the word “rigidification” accorded with the natural meaning of the word, considered in the context of the specification read as a whole. Besides the passage in Patent 944 at p 14, to which I have already referred (at [54] above) when considering the meaning of “rigidification”, there were other passages in Patent 944 that made this meaning clear. The Ciba respondents cited the following examples:
(a) “[T]he requirements for providing a waste material for stacking is altogether different from those for other forms of disposal, such as back-filling within a relatively enclosed area.” (p 2, lines 4-7)
(b) “Attempts have been made to overcome all of the above problems by treating the feed to the tailings dam using a ... flocculant to enhance the rate of settling and/or improve the clarity of the released water. However this has been unsuccessful as these treatments have been applied at conventional doses and this has brought about little or no benefit in either rate of compaction of the fine waste material or clarity of the recovered water.
It would therefore be desirable to provide treatment which provides more rapid release of water from the suspension of solids. In addition it will be desirable to enable the concentrated solids to be held in a convenient manner that prevents both segregation of any coarse and fine fractions, and prevents contamination of the released water whilst at the same time minimises the impact on the environment.” (p 3 lines 16-28)
(c) [Slatter 3] “describes a process where a material comprising a suspension of particulate solids is pumped as a fluid and then allowed to stand and rigidify. The rigidification is achieved by introducing into the suspension particles of a water soluble polymer which has an intrinsic viscosity of at least 3 dl/g. This treatment enables the material to retain its fluidity while being pumped, but upon standing causes the material to rigidify. This process has the benefit that the concentrated solids can be easily stacked, which minimises the area of land required for disposal. …
However, despite the improvements brought about by [Slatter 3], ... there is still a need to further improve the rigidification of suspensions of materials and further improve upon the clarity of liquor released. In particular, an objective of the present invention is to find a more suitable method for treating coarse and/or fine particulate waste material ... in order to provide better release of liquor and a more effective means of disposing of the concentrated solids. Furthermore, there is a need to improve the dewatering of suspensions of waste solids that have been transferred as a fluid to a settling area for disposal and provide improvements in the clarity of run-off water. In particular, it would be desirable to provide a more effective treatment of waste suspensions transferred to disposal areas, for instance tailings dams, ensuring fast, efficient concentration and more environmentally friendly storage of solids and improve[ed] clarity of released liquor.” (p 5 line 23 - p 6 line 20)
(d) “The addition of the ... polymer to the material allows it to retain sufficient fluidity during transfer and then once the material is allowed to stand it will form a solid mass strong enough to support subsequent layers of rigidified material.” (p 6 line 31 - p 7 line 2).
(e) “Preferably the material will be pumped as a fluid to an outlet at the deposition area and the material allowed to flow over the surface of rigidified material. The material is allowed to stand and rigidify and therefore forming a stack of rigidified material. This process may be repeated several times to form a stack that comprises several layers of rigidified material. The formation of stacks of rigidified material has the advantage that less area is required for disposal.” (p 13 lines 26-31)
I accept that these examples support the understanding of rigidification expounded by Dr Farrow. Reference may also be made to the slump test referred to in the Examples, together with the photographs on pp 18, 28, 37 and 38 of Patent 944. A photograph from the plant evaluation is also shown at p 34. Considered in this way, what is meant by the words a “process of improving rigidification” (in claim 1) are clear enough. Further, so too is the significance of the words “rigidify” and “rigidification” in the phrase “then allowed to stand and rigidify” (in claim 1) and the statement “the material is dewatered during rigidification” (in claim 5).
269 The teaching of the specification at pp 13-14 of Patent 944 makes it clear that “an effective rigidifying amount” is that amount of the polymer (or dose) that increases the concentration of the slurry to a point that, immediately after discharge from the pipe, results in material that stops and rigidifies because there is no longer sufficient force to keep it flowing.
270 Bearing in mind the earlier discussion and the passages from the specification mentioned above, a skilled addressee, reading the specification reasonably and fairly as a whole, in the light of the common general knowledge before the priority date, would properly construe the term “rigidification” and its variants in the claims consistently with Dr Farrow’s exposition.
271 Claim 1 provides for the retention of fluidity of the material during transfer to a deposition area. As already noted when discussing Slatter 23 (in the novelty context), SNF contended that the expression “during transfer” was unclear.
272 As the earlier discussion of Slatter 23 indicates, however, Dr Farrow had no difficulty in construing these words as indicating the addition of flocculant to the underflow line coming from the bottom of the thickener to the discharge point into the deposition area. Reading the specification as a whole, Dr Farrow’s construction is, in my view, correct. As noted above, Professor Slatter conceded in cross-examination that, in the context of the specifications of the Patents in suit, the word “transfer” refers to the stage between the thickener and the deposition area.
273 Reference to the specification is clearly indicative. At pages 13, lines 12 to 19, the Patentee discusses the factors that affect precisely where between the thickener and the deposition area the polymer is added. The Patentee provides examples where polymer is added at a specific distance and flow time from discharge and also before and after a centrifugal pump.
274 In addition to the passages already mentioned (including in the earlier discussions of Slatter 23), the Ciba respondents referred to a number of passages in the specification of Patent 944, which confirm the meaning of “during transfer”. These passages are:
(a) “Generally suspended solids ... will leave the thickener as an underflow which will be pumped along a conduit to a deposition area. The conduit is any convenient means for transferring the material to the deposition area and may for instance be a pipe or a trench. The material remains fluid and pumpable during the transfer stage until the material is allowed to stand.” (p 7 lines 6-11)
(b) “In a mineral processing operation where a suspension containing solids is flocculated in a thickener in order to separate the suspension into a supernatant layer and an underflow material, the material can typically be treated at any suitable point after flocculation in the thickener but before the material is allowed to stand. A suitable and effective rigidifying amount of the … polymer solution can be mixed with the material prior to a pumping stage. In this way the polymer solution can be distributed throughout the material. Alternatively, the polymer solution can be introduced and mixed with the material during a pumping stage or subsequently. The most effective point of addition will depend upon the substrate and the distance from the thickener to the deposition area. If the conduit is relatively short it may be advantageous to dose the polymer solution close to where the material flows from the thickener. On the other hand, where the deposition area is significantly remote from the thickener it may be desirable to introduce the polymer solution closer to the outlet. In some instances it may be convenient to introduce the polymer solution into the material as it exits the outlet.” (Emphasis added; p 13 lines 4-19; and, see above, lines 26-30.)
(c) “It is not possible to achieve the objectives of the invention by adapting the flocculation step in the thickener. For instance flocculation of the suspension in the thickener to provide an underflow sufficiently concentrated such that it would stack would be of a little value since it would not be possible to pump such a concentrated underflow. Instead we have found that it is essential to treat the material that has been formed as an underflow in the thickener. It appears that separately treating the thickened solids in the underflow allows the material to rigidify effectively without compromising the fluidity during transfer.” (p 14 line 29 to p 15 line 4)
(d) “The application of this invention via the introduction of a ... polymer ... into the pipeline feeding a mixed fines (thickener underflow) and coarse rejects slurry... [at a] dosing point close (20 metres or 11 seconds) to the discharge point.” (p 34 lines 11-16)
(e) “[Polymer] was … added after the screw conveyer and before the small centrifugal pump.” (p 37 lines 17-18)
(f) “The dosing point was modified and [the polymer] added directly after the centrifugal pump.” (p 38 lines 2-3)
275 Bearing in mind the earlier discussions already mentioned and the passages from the specification referred to above, a skilled addressee, reading the specification reasonably and fairly as a whole, in the light of the common general knowledge before the priority date, would properly construe the words “during transfer” in the claims as a reference to the stage between the thickener and the deposition area. There is no lack of clarity about what is intended by these words.
276 The words of which SNF complains are clear when properly construed by reference to the specification of Patent 944, considered as a whole. The specifications in the Patents in suit therefore provide a workable standard suitable to the intended use. The fact that there may be some imprecision in the challenged terms does not render them unclear.
277 In any event, SNF has not discharged its onus of establishing that there is a lack of clarity in the challenged terms. I would reject the lack of clarity objection that it has made.
278 Section 40(3) of the Act provides that the claim or claims must be clear and succinct and fairly based on the matter described in the specification. Non-compliance with s 40(3) is a ground for revocation: see s 138(3)(f). SNF argues that the specifications of the Patents in suit do not comply with s 40(3) of the Act. The Ciba respondents say that they do.
279 In SNF’s Third Further Amended Particulars of Invalidity, SNF stated why it alleged that the claims were not fairly based on the matters described in the specifications as follows:
Claim 1 of each of the Patents states that combination, according to the claimed process, is to take place “during transfer” but does not specify whether combination should occur at any particular point during transfer. The only disclosure in the specification of combination during transfer is the example of a dosing point that is given at page 34, lines 16 to 17, which the specification says was chosen so as to minimise shearing of the treated material. Accordingly, the claims travel beyond what has been reasonably disclosed in the specification in that they cover combinations that occur at any point during transfer, including points at which shearing is not minimised.
280 This accorded with the way in which SNF opened its case on lack of fair basis. Accordingly, as the Ciba respondents submit, the sole fair basis issue is the extent of disclosure as to where “during transfer” the combination according to the claimed process should occur.
281 In Lockwood at 294 [54], the High Court held that s 40(3) requires a comparison to be made between the claims and what is described in the specification. The Court added (at 300 [68]):
It is wrong to employ “an over meticulous verbal analysis”. It is wrong to seek to isolate in the body of the specification “essential integers” or “essential features” of an alleged invention and to ask whether they correspond with the essential integers of the claim in question. [Citations omitted.]
282 The Court in Lockwood went on to say (at 300 [69]):
Section 40(3) requires, in Fullagar J’s words, “a real and reasonably clear disclosure”. But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments.
The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense described in the body of the specification.
Fullagar J’s phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the “real” disclosure, are in truth only loose or stray remarks. [Citations omitted.]
283 For an application of Lockwood, see Synthetic Turf Development Pty Ltd v Sports Technology International Pty Ltd (2005) 67 IPR 475 at 479 [26], in which the Full Federal Court affirmed that:
Fair basing for the purposes of s 40(3) of the Act requires a comparison between the matter described in the specification and the claim which defines the scope of the monopoly; the claim to a product must not travel beyond the matter disclosed in the specification. … Fair basis requires a real and reasonably clear disclosure of what is then claimed … . The question is what the body of the specification read as a whole discloses as the invention …
284 The Court in Lockwood also held (at 310 [99]) that “a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause”. The relevant inquiry is as to what the body of the specification read as a whole discloses as the invention.
285 Claim 1 of each of the Patents in suit states that the combining with the material “of an aqueous solution of water-soluble polymer” is to take place “during transfer”. SNF complained that the claim did not specify whether the combination should occur at any particular point during transfer and that the only disclosure in the body of the specification was the plant evaluation example in which a dosing point was given at p 34, lines 16-17. SNF noted that this dosing point was “chosen to minimize shearing of the treated material”. In response, the Ciba respondents correctly pointed out that there is a further discussion clearly relevant to this point in Patent 944 at p 13 lines 4 to 19 (set out above in discussing the clarity of “during transfer”).
286 In considering a fair basis objection such as this, it is necessary to take into account, apart from common general knowledge so far as it casts light on questions of construction, only what is said about the invention in the body of the specification. The evidence showed that, for persons skilled in the art such as Mr Bembrick, the dosing point did not occasion unusual difficulty. As the cited passages of the specification show, the specification discusses the addition of the polymer to the tailings slurry during transfer in some detail, indicating the factors that affect where the dosing point should be placed. The discussion in the body of the specification provides a real and reasonably clear disclosure of what is claimed – that is, of the point during transfer at which combination should occur.
287 Accordingly, I would reject SNF’s objection as to lack of fair basis.
288 In order for there to be a valid innovation patent, the invention as claimed must be useful in the sense that the invention as claimed must achieve the promise of the patent: see the Act, s 18(1A)(c). Inutility in this context is concerned only with the scope of the claim. As the majority said in Ramset at 187:
It is no objection to the validity of a patent granted under the Act that it is commercially impracticable; its utility depends upon whether, by following the teaching of the complete specification, the result claimed is produced.
Put another way, as Sheppard J said in Décor at 394:
“Inutility” means that the invention as claimed in the patent does not attain the result promised for it by the patentee. It does not mean that the article to be produced by following those directions is not commercially viable.
The invention to be considered when deciding questions of utility is that which is claimed, rather than that which is described as a preferred embodiment or the commercial embodiment: see Blanco White at 123 [4-408].
289 SNF argues that the invention as claimed in Patent 944 does not achieve its promise. SNF bears the onus on this point: see Olin Mathieson Chemical Corporation v Borex Laboratories Limited [1970] RPC 157 at 192. SNF submitted that the specifications in Patent 944 and the other Patents in suit contain a number of promises, including improved rigidification, improved clarity and better release of liquor (dewatering), more effective means of disposing of concentrated solids, and more effective treatment of waste suspensions transferred to disposal areas: see Patent 944, p 6. SNF contended that neither the claims nor the specification contain the following information or directions that would enable these results readily to be attained in all cases covered by the claims, as follows:
a. The words “during transfer” in claim 1 indicate that the aqueous solution may be added at any point during transfer, but the specifications provide no further guidance here other than at p 7, line 26, which refers simply to the addition of “an effective amount at any convenient point, typically during transfer” and the example at p 34, line 16, which is related to a result that is not the subject of any verifiable time and was adopted for a different purpose “to minimize shearing”. Apart from begging the question as to what is an “effective amount”, the reference to “any convenient point” is very general, leaving it as a matter for trial and experiment by the skilled addressee to ascertain what that point is in any given instance.
b. The concentration of water soluble polymer that is required (page 7, line 30) provides an extremely wide range of “suitable doses” and a further reference at p 9, lines 1-2 [is] to “conventional amounts”. While preferred doses are given, it is hard to believe that the claimed process will achieve its promised results across the range. The slump tests do not measure the impact of dosage on application in the field, but are essentially yield strength tests. They do not inform the dosage to be used of any particular polymer when applied to material being pumped in a pipe.
c. The amount of dispersed particulate solids (ie the solids content) in the aqueous liquid that is required (page 8, lines 13-22 again refers to an extremely wide range of solids content - from 10% to 80% by weight). This appears to be a promise that the process will work with respect to the whole of the solids content range that is identified here, although some preferred ranges are identified. Nonetheless, there are clearly practical difficulties involved with carrying out the process at the extremes of the wider range specified. … There is no suggestion in the patents, however, that the invention will not work, or work as effectively, at these different ends of the range.
290 SNF also contended that the claims promise, and the specifications promise explicitly, that the addition of polymer in the form of an aqueous solution provides an improved process over the use of polymer in particulate form, as in Slatter 3. In spite of this, so SNF submitted, the Patents do not provide anything to show that that there was any improvement over the addition of particulate polymer. SNF referred particularly to Patent 944 at p 6, lines 7 to 20 and the further examples and plant evaluations set out at page 17 and following, observing that they make no comparison with respect to the process claimed in Slatter 3 (or any other prior process). SNF submitted that it was, therefore, impossible to ascertain from the Patents whether they achieved the promises made.
291 For the purposes of utility it is necessary to consider the specification in order to ascertain what is promised and what on the correct construction is specified in the claims: see Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 337, where Burchett J said:
[I]f on their correct construction [the claims] assert a monopoly, not only in respect of something useful, but also in respect of something not useful, the patent is bad.
292 The decision of the House of Lords in Hatmaker v Joseph Nathan & Co Ld (1919) 36 RPC 231 contains some relevant observations with respect to a patent for a process. In Hatmaker Lord Birkenhead stated (at 237):
The law which is applicable in dealing with matters of this kind is well settled and has never been more clearly stated than by Mr Justice Parker in the often-quoted case of Alsop’s Patent (24 RPC 733, at p 752). “In considering the validity of a patent for a process, it is, therefore, material to ascertain precisely what the patentee claims to be the result of the process for which the patent has been granted; the real consideration which he gives for the grant is the disclosure of a process which produces a result, and not the disclosure of a process which may or may not produce any result at all. If the patentee claims protection for a process for producing a result, and that result cannot be produced by the process, in my opinion the consideration fails.” In other words, protection is purchased by the promise of results. It does not, and ought not to, survive the proved failure of the promise to produce the results.
293 Of course, the complete specification must not be construed in the abstract but in the light of the common general knowledge before the priority date: see Kimberly-Clark at 16 [24]. In construing the claims for the purposes of utility, the claims must, moreover, be construed from the perspective of a skilled addressee in a commonsense way, and not in such a way that any such addressee would appreciate would lead to an unworkable result. Thus, in Washex Machinery Corporation v Roy Burton & Co Pty Ltd (1974) 49 ALJR 12 at 19, Stephen J dealt with the respondent’s inutility claim by saying:
[T]his submission fails; only by a quite purposeful adoption of such a form of resilient supporting means as would obviously malfunction without the aid of level sensing means, coupled with the omission of such level sensing means, would inutility result from claim 1. To postulate such a happening is not an appropriate mode of testing validity of a patent specification – Welch Perrin & Company Pty Ltd v Worrel (1961) 106 CLR 589, at p 602.
294 SNF’s utility objection is in substance that the specifications of the Patents in suit are missing details as to the proper dosing point, the appropriate concentration of water soluble polymer, and the proper solids content range. The Ciba respondents argued that SNF’s argument as to inutility was misconceived. As they said, inutility is not another form of insufficiency.
295 I would reject SNF’s challenge on the utility ground. There was no evidence that some process within the claims did not work or that some process within the claim failed to fulfil the promises in the body of the specification. On the contrary, there was evidence from Mr Bembrick – a clear and reliable witness — that a process within the claims did work. Mr Bembrick’s evidence was in effect that the secondary flocculation process tested as part of the ACARP Project produced more water more rapidly than a process that did not involve secondary flocculation. Mr Bembrick also stated, and I accept, that it assisted the mine operator to limit the land used for tailings deposits.
296 It is immaterial whether or not the specifications provided support to demonstrate that a promise of the claims was satisfied. It is also immaterial that the Ciba respondents led no such evidence. The critical issue here is whether or not SNF has shown that something produced within the claim failed to fulfil the promises of the specification and it has not done so. Accordingly, SNF’s objection on the basis of inutility also fails.
the cross-claim for infringement
297 During the term of a patent, the patent confers on its owner the exclusive right to exploit the invention and to authorise another person to exploit the invention: see the Act, s 13(1). Ciba alleged that SNF had infringed the claims of Patents 944, 834 and 396 (‘the infringed Patents’). In particular, Ciba alleged that SNF directly infringed the claims of the infringed Patents: (a) by using the claimed process; and (b) by authorising the use of the claimed process by the mine operators at certain mine sites. Ciba further alleged that SNF had supplied a product (the polymer) with instructions to use the product in the claimed process within the meaning of s 117(2)(c) of the Act, and had thereby indirectly infringed the claims of the infringed Patents. Finally, Ciba alleged that SNF was liable as a joint tortfeasor in respect of a common design with the mine operators to commit the alleged infringements.
Bulga Coal Mine and Cowal Gold Mine
298 Having rejected SNF’s validity challenge, Ciba readily makes out most of its cross-claim alleging infringement by exploitation.
299 SNF has admitted that the SNF Process contains all the essential integers of the claims of the infringed Patents. Details of the SNF Process as SNF understood it were set out in letters dated 11 April 2008 and 20 May 2008 from SNF’s solicitors to Davies Collison Cave, then acting for the respondents, and in SNF’s original statement of claim. In a letter dated 21 October 2008, SNF also said that the process was the same as that described in the Bembrick paper, a presentation entitled “ACARP Project C14064: Impact of Flocculant Chemistry on Tailings Bed Level Density”, and a presentation called “Dried Tailings: Secondary Flocculation Trials”.
300 In their Second Further Amended Cross-claim, Ciba pleaded that SNF had used the SNF Process at:
(a) Bulga coal mine in the Hunter Valley from 2006;
(b) Ashton coal mine in the Hunter Valley from about October 2008; and
(c) Cowal gold mine in central New South Wales from about November 2006.
301 In its Second Further Amended Defence to the Further Amended Cross-Claim, SNF admitted the use by it of the SNF Process at Bulga and Cowal and that it had no licence from Ciba in respect of such use. This was borne out by Mr Schroeter’s affidavit of 18 February 2010, in which Mr Schroeter admitted that SNF had used the SNF Process at “approximately” seven sites, including Bulga and Cowal. Accordingly, direct infringement by exploitation of the invention at the Bulga and Cowal mines is established.
302 On the last day of the trial, senior counsel for Ciba confirmed that Ciba was “not pursuing, and [had not] run a case, of infringement on Carborough”. This was a reference to the Carborough Downs coal mine. In its pleadings, Ciba had alleged that SNF: (a) authorised an infringement by directing and instructing the operators of the Carborough Downs coal mine how to use a process – referred to in the pleadings at the Floerger Coal Process – that infringed Patents 944 and 396; (b) used and implemented a process that infringed these patents at the Carborough Downs; and/or (c) directed, procured or joined in a common design with other persons to infringe the patents. As senior counsel confirmed, these allegations were not pursued at trial.
Whether infringement at Ashton Coal Mine
303 The only substantially contested part of Ciba’s infringement case was that which concerned Ashton coal mine. Ciba’s case in this regard depended on the law with respect to authorisation, s 117 of the Act and joint tortfeasorship.
304 The evidence with respect to authorisation within s 13(1), indirect infringement by virtue of s 117, and joint tortfeasorship overlaps. I first discuss the legal standards with respect to these three bases for liability before turning to what the evidence established.
305 Whether or not one person has authorised another to exploit an invention depends on the facts and on what is meant by “authorise” in this context. Authorisation can be found even though the putative authoriser did not intend to authorise an infringement or know that the conduct would be infringing. As Bennett J said in Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525 (‘Inverness Medical’) at 568 [193]:
The “exclusive rights” of the patentee are the rights to “exclude” others from exploiting the invention or authorising another person to exploit the invention: Grain Pool of Western Australia v Commonwealth (2000) 202 CLR 479 … at [83]-[85]. Infringement of the right to authorise exploitation in s 13 looks to whether the product being exploited infringes the claimed invention and not whether the person authorising that conduct intends to authorise infringement or knows that the product will infringe. There is no requirement that the person knows that the authorisation is of an infringement of a patent.
306 The authorities agree that the word “authorise” in legislation of this kind means “sanction, approve, countenance”: University of New South Wales v Moorhouse (1975) 133 CLR 1 (“Moorhouse”) at 12 and 20-21, citing Falcon v Famous Players Film Co [1926] 2 KB 474 and Adelaide Corporation v Australasian Performing Right Association Ltd (1928) 40 CLR 481. See also Roadshow Films Pty Limited v iiNet Limited (2011) 89 IPR 1 at 40 [173] (Emmett J) and 156-158 [704]-[708] (Nicholas J) and Inverness Medical at 568 [194], 570 [202]. Further, in Moorhouse, Gibbs J at 12 added (citing Adelaide Corporation), “[a] person cannot be said to authorize an infringement of copyright unless he has some power to prevent it”. This last proposition has been generally accepted: see, for example, WEA International Inc v Hanimex Corporation Ltd (1987) 17 FCR 274 at 287. SNF placed particular reliance on it.
307 As Gibbs J said in Moorhouse (at 12-13) that:
Express or formal permission or sanction, or active conduct indicating approval, is not essential to constitute an authorization: “Inactivity or ‘indifference, exhibited by acts of commission or omission may reach a degree from which an authorization or permission may be inferred’”: Adelaide Corporation v Australasian Performing Right Association Ltd (1928) 40 CLR at p 504. However, the word “authorize” connotes a mental element and it could not be inferred that a person had, by mere inactivity, authorized something to be done if he neither knew nor had reason to suspect that the act might be done.
308 In Moorhouse, the University was held to have authorised copyright infringement because it had under its control the means by which the infringement might be done – a photocopier machine – and it made that machine available to others, “knowing, or having reasons to suspect, that it is likely to be used for the purpose of committing an infringement, and omitting to take reasonable steps to limit its use to a legitimate purpose”: see Moorehouse at 13 and 21.
309 Ciba argued that the evidence showed that SNF was closely involved in the infringements and had “sanctioned, approved, [and] countenanced” them. SNF reponded that it had no power to control or prevent the infringing acts, and therefore no question of authorisation arose.
310 Ciba also contended that SNF participated in, aided, counselled, directed or joined with their customers, including mine operators at Ashton, in carrying out a common design to infringe the infringed Patents.
311 This contention depended on the principles concerning joint tortfeasors outlined in Walker v Alemite Corp (1933) 49 CLR 643 at 650, 654 and 658, Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574 at 580-581 and 600, and Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 (‘Ramset Fasteners’) at 252 [27]-259 [41].
312 In circumstances such as the present, to establish liability, it must be shown that the vendor has made itself a party to the act of infringement. In Ramset Fasteners at [41] 258-259, the Full Court said that the leading authorities -
… show that liability for infringement may be established, in some circumstances, against a defendant who has not supplied a whole combination (in the case of a combination patent) or performed the relevant operation (in the case of a method patent). The necessary circumstances have been variously described: the defendant may “have made himself a party to the act of infringement”; or participated in it; or procured it; or persuaded another to infringe; or joined in a common design to do acts which in truth infringe. All these go beyond mere facilitation. They involve the taking of some step designed to produce the infringement, although further action by another or others is also required. Where a vendor sets out to make a profit by the supply of that which is patented, but omitting some link the customer can easily furnish, particularly if the customer is actually told how to furnish it and how to use the product in accordance with the patent, the court may find the vendor has “made himself a party to the [ultimate] act of infringement”. He has indeed procured it. So to hold is not in any way to trespass against the established line of authority which, as Dixon J made clear in Walker v Alemite, is based upon the need to confine a monopoly to the precise area in which it operates. That protects the mere vendor of an old product, though selling with knowledge of the purchaser’s intention to infringe a combination patent; but it affords no excuse to the person who sets out to induce customers to do what falls fairly within the area of the monopoly.
313 Ciba argued that, on the evidence, it was clear that SNF participated in or joined with their customers, including Ashton’s mine operators, in furtherance of a common design – the use of the SNF Process utilising products supplied by SNF. SNF submitted, however, that it had taken mere “preparatory acts of supply”, which could not make out the requisite common design.
314 Ciba presented an alternative argument based on s 117 of the Act. In their Second Further Amended Cross-Claim, Ciba alleged that SNF supplied flocculant, together with instructions to use it in the SNF Process, to mine operators, including at Ashton, as well as Bulga and Cowal. Ciba alleged that these facts engaged s 117 of the Act. SNF admitted the supply of flocculant with instructions to use it in the SNF Process in relation to the Bulga and Cowal mines. SNF did not make any such admission with respect to Ashton.
315 The terms of s 117(1) are clear enough: if the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent. The operation of s 117 in relation to process or method claims is, however, unclear.
316 In Anaesthetic Supplies Pty Ltd v Rescare Ltd (1992) 111 ALR 205 (‘Rescare’), the respondent successfully submitted that s 117 does not convert a sale of a product into an infringement of a method claim. After referring to s 13(1) of the Act, Gummow J said (at 242-3):
In the present case, the applicant urges that … there is a relevant use if the respondent's devices are used in accordance with any instructions for use or in accordance with any inducement to use them, in either case given by the supplier or contained in an advertisement published by or with the authority of the supplier. Therefore, it is submitted, the supply of the allegedly infringing devices by the respondent, with instructions for use, is itself an infringement of claim 9, a method claim, by the respondent as supplier.
The difficulty with that proposition is that a pre-condition to the operation of s 117 in relation to a method claim such as claim 9, is that there is a product the use of which by the respondent would infringe claim 9. In other words, that user would have to amount an “exploitation” within the monopoly conferred by s 13, which is to be read with para (b) of the definition of “exploit”.
As I have indicated, where the invention relevantly claims a method or process, exploitation occurs, other than by use of the method or process, only by the doing of an act mentioned in para (a) of the definition of “exploit'”. There must be an act done “in respect of a product resulting from such use”. Here, the respondent urges, and I agree, there is no such product with the result that, in a case such as the present, s 117 has no operation.
On appeal, Lockhart J, with whom Wilcox J agreed, approved, obiter dictum, Gummow J’s approach: see Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 at 24. See further Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 495.
317 In Bristol-Myers, which concerned two petty patents for methods of administering a drug which had been known for many years to have anticarcinogenic properties, Black CJ and Lehane J stated obiter dictum that, in their view, the supply of the drug (taxol) with a product information guide would constitute an infringement under s 117 (assuming patent validity): see Bristol-Myers 557-559 [92]-[97]. This involved a departure from the approach adopted by Gummow J in Rescare.
318 Even more recently, in Northern Territory of Australia v Collins (2008) 235 CLR 619, the High Court held that timber was a staple commercial product within s 117(2)(b) because it was a product supplied commercially for various uses. Three of the five members of the Court explicitly refrained from expressing a view on any other aspect of s 117. Gummow A-CJ and Kirby J agreed with the conclusion with respect to s 117(2)(b), noting that this was “the sole ground upon which we would allow the appeal” (at 627 [29]) although they reiterated some of the reasoning found in Rescare, noting (at 625 [21]) that:
The critical condition for the imposition of liability for infringement is that which is stated first. This is that “the use of [the] product” by the person to whom it is supplied “would infringe [the] patent” (s 117(1)). As the reasons of Hayne J demonstrate, this is informed by the application of s 117(2) and consideration of the exclusive rights given by the patent.
Hayne J also decided the case by reference to whether the timber was a staple commercial product within s 117(2)(c) and refrained from considering the differences between what was said by Gummow J in Rescare and Black CJ and Lehane J in Bristol-Myers: see at 629 [39]-630 [40]. Relevantly to the issue here, his Honour’s approach was not dissimilar to that of Gummow A-CJ and Kirby J. Thus, Hayne J noted (at 628 [35]) that:
In many, perhaps most, cases a convenient point at which to begin consideration of an issue about the application of s 117(1) will be to examine what is said to be the use of the product that is alleged to engage the provision. It is that use which must be identified as the use which would infringe the patent because the hinge about which s 117 turns is its introductory words: “[i]f the use of a product by a person would infringe a patent”.
319 Crennan J, with whom Heydon J agreed, went further, stating (at 649 [127]) that:
Although acts in respect of a product resulting from a patented method which infringe the monopoly will commonly be acts of direct infringement, there is no reason to doubt that s 117(1) applies to a product resulting from a use of a patented method. However, equally, a consideration of the complete definition of “exploit” in respect of a method or process indicates that there is no reason to deny the application of s 117 to a product (including, as here, an unpatented product) supplied by the supplier, preparatory to any carrying out of the patented method by a person to whom the product is supplied. The secondary materials … show that the latter type of product was the main target of the legislation. The word “product” in s 117 is not confined to a product resulting from the use of a patented method or process.
320 Crennan J continued (at 650 [131]):
Consideration of the entire definition of “exploit” in respect of a method or process patent and of the whole of s 117 confirms that s 117 can be engaged in respect of a supply of a raw material for carrying out a patented method. … Whether a particular use of an input into a method (or input into a resulting product) “would infringe” in terms of s 117 will turn on the claims.
321 For the reasons set out below, it is unnecessary to proffer any view as to the proper operation of s 117 in this case. Indeed, the parties themselves gave slight attention to this issue.
322 With respect to authorisation and liability as joint tortfeasors, Ciba case was that “a common substratum of fact, whereby SNF recommended the SNF Process to Ashton and assisted it with its implementation, establishes liability for each of these species of indirect [sic] infringement”. Ciba also submitted that, in respect of the Ashton coal mine, SNF infringed pursuant to s 117 of the Act if it established that SNF supplied flocculant to Ashton; that the flocculant was used in the SNF Process; and that that use was in accordance with instruction, inducement, or advertisement given or published by SNF.
323 Relevant evidence concerning the Ashton Coal Mine was given by Messrs Schroeter, Bembrick and Gill. Mr Schroeter accepted that SNF and its customers cooperated in a “joint endeavour” to optimise the SNF Process at the customer’s site. As with its customers generally, the communications in evidence between SNF and Ashton confirmed that SNF offered Ashton much more than the mere supply of chemical products. For instance, in a letter of 13 January 2007, Mr Bembrick wrote offering SNF’s assistance in implementing a flocculating system and in developing a management strategy for treating tailings at the Ashton Coal Mine.
324 According to the evidence, sometime after February 2004, SNF entered into a contract with the mine operator for the supply of flocculant to be added to the thickener. About this time, and at least by March 2004, the tailings processing system at Ashton already involved secondary flocculation (though not with SNF’s product). In August 2007, Mr Bembrick, as SNF’s representative, emailed Ashton a copy of a document called “ACARP Project C14064” – a Powerpoint presentation of the ACARP Project investigations at Bulga. This was in effect also about the SNF Process. In October 2007, to the knowledge of Mr Schroeter, SNF was undertaking test work in relation to tailings dewatering at the Ashton tailings dam. Around 9 October 2007, Mr Bembrick for SNF sent Paul Davis of Ashton a quote for SNF to supply flocculant for the secondary processing of the underflow. It is more likely than not that this amounted to a quote to supply flocculant for the SNF Process. In October 2008, SNF was, also to Mr Schroeter’s knowledge, discussing optimisation of flocculant usage in tailings as opposed to the thickener. Mr Gill gave evidence that SNF conducted some tests in October 2008 to ascertain whether SNF might supply flocculant product for the secondary flocculation process and subsequently supplied the results of the tests to Ashton. In response, Ashton placed an order for flocculant with SNF in October 2008, and SNF made its first delivery of flocculant on 20 October 2008. Sometime after delivery, Mr Gill attended the mine and gave some advice as to aspects of the secondary flocculation process. In January 2009, however, Ashton stopped ordering SNF product for secondary flocculation and began using the Ciba product again. Since then, SNF supplies flocculant to Ashton only for use in its thickeners. It is more probable than not that each of the above references to secondary flocculation were also references to the SNF Process.
325 On the balance of probabilities, with regard to Ashton, I conclude that SNF authorised another to exploit the invention within s 13(1) of the Act in that, without Ciba’s licence, SNF sanctioned, approved and countenanced the use of the SNF Process at Ashton. As already noted, SNF admitted that the SNF Process contained all the essential integers of the claims of the relevant Patents. SNF supplied the flocculant necessary for this secondary flocculation process, and gave technical advice for its implementation. In advising Ashton as it did, SNF knew that the flocculant was for use in the SNF Process. The supply of the flocculant and the provision of advice were under its control and, in the circumstances, including the relationship between SNF and its customer, this also meant that it had the power to control or prevent the infringement. I would reject SNF’s submission that SNF had no power to control or prevent the infringing acts. As stated above, it is immaterial whether or not SNF knew that the use of its flocculant pursuant to its advice would be an infringing use of the Patents in suit.
326 I would also reject SNF’s submission that there was no evidence that the use at Ashton was a use within the claims of the Patents. As already noted, in closing written submission (pp 145-146), SNF admitted that the SNF Process had been used with respect to the various mine sites referred to in Ciba’s pleadings, which included the Ashton Coal Mine. There was also the evidence of Mr Bembrick and Mr Gill that showed the process of secondary flocculation, which they recommended and assisted to implement, was the same process as investigated in the ACARP Project with which Mr Bembrick was involved. As indicated earlier, this process was the same as the SNF Process, which was admitted by SNF to be an infringing use.
327 Having reached this conclusion, it is unnecessary to reach any definitive conclusion with respect to Ciba’s alternative arguments on liability with respect to the Ashton Coal Mine. I would, however, reject SNF’s submission that, with regard to Ashton, it had taken only preparatory steps that did not make out common design. The evidence referred to above would lead me to conclude, on the balance of probabilities, that SNF participated in or joined with their customer at Ashton in furtherance of a common design – the use of the SNF Process with products supplied by SNF. Further, if it be relevant, I would similarly conclude that SNF supplied flocculant to Ashton, as well as technical advice and support in the nature of instructions for the use of the flocculant in the SNF Process.
The threats of unjustifiable infringement proceedings
328 Section 128 of the Act provides that where unjustifiable infringement proceedings are threatened, “a person aggrieved” may apply for declaratory and injunctive relief and damages. If, however, the threats are made in respect of a certified innovation patent (as they were here), pursuant to s 129A(3) of the Act, relief is unavailable where the court is satisfied that “the acts about which the threats were made infringed, or would infringe, a claim that is not shown by the applicant to be invalid”.
329 I accept that the Ciba respondents relevantly threatened SNF with infringement proceedings: see U & I Global Trading (Australia) Pty Limited v Tasman-Warajay Pty Ltd (1995) 60 FCR 26 at 31. For the reasons already stated, however, I find that the acts about which the threats were made infringed a claim that SNF has not shown to be invalid. Accordingly, s 129A(3) precludes the grant of relief under s 128 of the Act.
330 For the reasons set out earlier, SNF has failed to establish that the Patents in suit are invalid and in consequence its application fails. Ciba has established infringement, in respect of which it has sought various forms of relief, including damages or an account of profits (as it may elect). This appears to raise issues for determination in the second stage of the proceeding.
331 SNF and the Ciba respondents will be given an opportunity to submit a minute of the orders that they consider give effect to these reasons and are appropriate to be made at this stage of the proceeding.
I certify that the preceding three hundred and thirty-one (331) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny. |
Associate:
