FEDERAL COURT OF AUSTRALIA

Mizzi Family Holdings Pty Ltd v Morellini [2013] FCA 1435

REASONS FOR JUDGMENT

1    The applicant is the patentee pursuant to Innovation Patent No 2010100955 (the “Patent”). The invention described therein involves a “cane billet planter”, a planting apparatus and a method for planting sugarcane (the “Invention”). The Patent is dated 30 September 2010. The Patent is derived from Standard Patent Application No 20072102931 filed on 25 June 2007. At the time of trial the Standard Patent Application had not been granted, but its grant was anticipated. The applicant alleges that the respondent has infringed the Patent by the use of a cane planting device (the “Morellini device”). The respondent denies infringement and cross-claims for revocation on the grounds of:

    want of novelty;

    lack of an innovative step;

    false suggestion or misrepresentation; and

    that there has been non-compliance with s 40 of the Patents Act 1990 (Cth) (the “Act”).

2    I am not sure whether the s 40 ground is still pressed. A ground alleging that there was no “manner of manufacture” within the meaning of the Act was apparently abandoned. The respondent also alleges unjustified threats and prior use. The priority date of the Patent is 25 June 2007.

THE INVENTION

3    Billets are short lengths of the stalk of the sugarcane plant. Each billet contains an “eye” located on the surface of the stalk. New roots and shoots grow from the eye of the billet. Billets are usually planted using a cane billet planter. For small paddocks such a planter may be towed behind a tractor. Larger, self-propelled planters are also used. Most planters plant a single row at a time, although multiple-row planting is known. The planting method involves the formation of rows in the paddock, the billets being planted in the rows.

4    Conventionally, billets have been planted at the bottom of a furrow and covered with soil. Paul Lawrence Mizzi is the inventor of the invention which is the subject of the Patent. According to Mr Mizzi the conventional planting method results in low-lying soil in the furrow not being heated by the sun to an optimal level. As a consequence the billets take longer to germinate than they would, were the soil surrounding them warmer. Further, excess water in the soil retards growth. In 2005-6, Mr Mizzi experimented with planting billets in mounds above ground level. He noted that germination rates differed, depending on the shape and size of the mound. He also found that the mounds drained better than the furrows. He developed a concept for a “single pass planter” which would also mound the soil to an optimal shape and size to suit soil type. He eventually obtained funding for the development of a prototype and commenced construction in December, 2006. By about April 2007, construction was almost complete. In May 2007 he instructed a patent attorney to prepare a patent application. He realized that he had to lodge the application before he used the planter commercially. The application was lodged on 25 June 2007.

5    One other concept requires description. In a field, a canefarmer implements what is called “controlled trafficking”. Vehicles used in planting and harvesting travel in defined lanes so that the wheel marks left by the wheels on one side of a vehicle in passing up the field, will be used by the wheels on the other side of the vehicle in passing back down the field. The width of the area in which planting occurs will, to some extent be dictated by the distance between the wheels of the vehicle. Figures 82 and 83 in exhibit 18 demonstrate this effect. On the left of each photograph is a conventionally planted crop. On the right of each photograph is a mound-planted crop. In the conventionally planted crop, the billets lie at the bottom of a furrow between the wheel marks. In the mound-planted crop, the billets are under the mounds which are above ground level. With conventional planting, in the period between germination and harvesting the raised soil on either side of the furrow is, from time to time, knocked back into the furrow, so that the eventual shape of the soil around the growing cane stalk will be suitable for the passage of the harvester and the performance of its cutting and collecting functions.

6    The specification of the patent refers at p 1 to both conventional and mound planting. In both cases, the billets are planted in rows. At ll 16-17, the specification seems to assume the pre-existence of mounds. It then states that a furrow is formed in the top of the mound, and billets are dropped into the furrow. The furrow is then covered. The furrow may be formed prior to planting, using a separate machine from that used for planting. However the cane billet planter may also form the furrow just prior to dropping the billets into it.

7    Such a planter involves some form of pre-former, or wedge-shaped “shoe” which forms a furrow in the top of the mound. To prevent the soil from falling back into the furrow before the billets are dropped into it, a furrow-forming plate on either side of the pre-former keeps the furrow open until the billets are dropped. A separate machine may be used to cover the cane billets after dropping. Alternatively, an attachment to the cane billet planter, usually a tine or something similar, may be located at the rear of the cane billet planter to till the sides of the furrow so that soil covers the cane. A compaction wheel may be used to compact the soil after the cane has been covered. The cane billet planter may also, during planting, drop fertiliser in, or next to the furrow. Typically the planter will have a fertiliser bin. Some form of metering device (usually an auger) is provided to meter the fertiliser. The fertiliser is dropped down a rigid tube and discharged into the furrow to the side of the planted billet.

8    The specification then identifies disadvantages in current planting machinery and methods. It is said to be desirable that cane billets sprout as quickly as possible so as to prevent attack by fungus, rot or other disease. Proper positioning may improve the speed at which billets sprout. If the billets are planted in soil which is too dry, they may not sprout quickly. The soil adjacent to the billets must be kept warm by the sun. Conventional planting techniques do not achieve this result efficiently. Because some of the billets may not germinate properly, there is a limit on the number of sugarcane plants which will grow in a row. Sugarcane plants should grow densely together on a row, thus facilitating efficient harvesting. Harvesting is usually performed on a cost per tonne basis. The more material which can be harvested in a particular time, the better. Increasing the speed of the harvester will enable it to cut more cane per unit time, but it will also result in large quantities of soil or stone being collected by the harvester, leading to deterioration of the harvester components and of the crushing rollers in the sugar mill. Therefore simply increasing speed does not solve the problem of improved harvesting efficiency.

9    Figures 9a to 9d illustrate conventional planting methods. Flat ground is turned into furrows in a number of different ways. Figure 9b shows the results of a machine which simply pushes the dirt to each side so that the billets can be dropped into the furrow and lightly covered. Figures 9c and 9d show the situation which is produced when the ground has been mounded in a previous season, with furrows formed in the mounds, and cane billets planted at the bottom of each furrow. A disadvantage with this conventional planting method is that the soil around the cane billets is not warmed by the morning or afternoon sun. The side mounds prevent the sun from striking the soil around the billets. Another disadvantage is that the furrows can collect water during rain. The water may not drain off efficiently but rather soak the cane billets, causing fungal disease and preventing germination.

10    The specification identifies an advantage in providing a method which will enable more sugarcane to be grown in a particular row and/or a cane billet planter designed to improve the amount of sugarcane which can be grown in a particular row. The object of the invention is therefore to provide a method and/or a planter which may overcome at least some of the disadvantages identified in the specification, or provide a useful or commercial choice.

11    Various embodiments are discussed. The “Best Mode” is described at pp 10-13 of the specification. Figures 1 and 2 illustrate a cane billet planter which is a towed vehicle, comprising ground wheels, a relatively large hopper to hold cane billets, two fertiliser bins and an elevator, which is an endless conveyor for lifting cane billets from the hopper to a discharge chute, through which the billets are dropped to the ground. The bottom of each fertiliser bin is connected to a metering device such as a feed auger. Fertiliser is fed on to the mound. In the lower front portion of the planter there is a pre-former which is illustrated in figure 3. It has an arrowhead-type configuration. Its function is to scrape or push off a layer of soil, typically 10 to 40 cms, pushing the soil to each side, and so forming a central bed having a width of about 700 mm. The bed may comprise damper soil, such soil being better for generation of the cane billets.

12    The upper “wall” of the pre-former, which appears as feature 16a in figure 3, extends slightly forward so that the soil is pushed to each side of the pre-former rather than falling over the top of it. Figure 2 demonstrates the rear end of the pre-former (which is feature 16) comprising a short “inwardly turned” wall portion. The pre-former configures the bed into a slightly inverted V-shaped configuration. Behind the pre-former is an opening which forms the lower part of the billet discharge chute. The elevator lifts cane billets from the hopper and drops them into the discharge chute, through which they are discharged on to the bed which has been formed by the pre-former. In this particular embodiment the opening is of such a size that about five billets can be dropped across the bed as the planter travels along the field. A “cover means” is used to cover the billets with soil. It is a circular disc, feature 18 in figures 1, 2 and 6. It is angled so that it forms a rough mound. The mound can be seen in figure 10c. The cane billets are dropped so that there is a clear edge area of about 50 mm on each side of the bed. The disc can then dig up the damper soil in this edge area, pushing it back over the top of the billets so that a furrow is formed in each edge area. This furrow is feature 51 in figure 10d. There may be a disc (or cover means) of this kind on each side of, and slightly behind the mound scraper. The furrow is then filled in with the drier soil which has been pushed to each side of the bed by the pre-former. In this embodiment a small sweeper, feature 16c in figure 10d and in figure 6, positioned on the outside of the disc, functions to scrape the drier soil into the furrow.

13    Behind the disc, feature 18, is a mound profiler, feature 19. It appears in figures 2, 4, 5 and 6. It is a profiled roller extending underneath the planter. Its function is to compress the soil in the roughly formed mound, and to smoothe and profile the mound to have a particular “cross-section configuration”. Although the specification is a little unclear on this aspect, I understand figure 10(e) to show the mound profile prior to the passage of the mound profiler, whilst figure 10(f) shows the desired profile after such passage. This profile will correspond to that of the profiled roller, feature 19. In figure 5 the shape of the mound can be seen beneath the roller. The mound profiler is rotated by an hydraulic motor and is designed to roll over the mound at the same speed as the planter. A scraper, feature 21 in figure 5, is provided to scrape any attached dirt off the profiler so that its outer wall stays clean and smooth in order to provide a smoothly profiled mound. The roller may be pressed onto the soil using hydraulic ramps. Other components of the planter may also be powered by hydraulics connected to the lead tractor or some other source such as a small engine mounted on the planter.

14    Figures 9a and 9b illustrate a conventional prior art planting method in which a furrow is formed by pushing the soil to each side of the furrow, the cane billet then being dropped into the furrow and lightly covered. Figures 9c and 9d illustrate something similar, but with a pre-formed mound. Figures 10a to 10e illustrate a method according to one embodiment of the invention. They show a top layer of drier soil which is removed by the planter so that a bed is formed, with the drier soil lying on either side of the bed. Cane billets may then be planted across the bed, possibly with five billets at any one point, thus improving density. The outermost billets are spaced about 50 mm from each edge of the bed. The disc on the planter digs up the damp soil in that area and pushes it over the billets to form a rough, un-profiled heap. The furrow is filled using a scraper, so that drier soil forms a rough mound. The profile roller profiles the mound in such a way that the sides are at an angle of about 40o, or thereabouts, so that the billets are buried but can be warmed by the sun for longer than is achieved by conventional techniques.

15    Figures 10G and 10H illustrate the first two steps, according to this embodiment of the invention. They show a pre-formed mound, typically formed in the previous cane season. The pre-former pushes through the mound to form the bed.

16    The planter may also contain other accessories. For example, a forward part of the planter may contain a device or apparatus to remove weeds.

17    The claims are follows:

1.    A cane billet planter comprising a hopper to store cane billets, a pre former which removes an upper layer of soil to form a bed, a discharge chute to drop the cane billets onto the bed, a cover means to cover the cane billets with soil to form a mound, and a mound profiler which profiles the mound after the cane billets have been covered with soil to form a shaped mound in which each side of the mound is at an incline of between 20o to 60o, all achieved in a single pass.

2.    The planter as claimed in claim 1, wherein the mound profiler comprises a roller.

3.    The planter as claimed in claim 1 or claim 2, wherein the mound profiler also compresses the soil in the mound.

4.    A planting apparatus, which in a single pass is adapted to:

a.    loosen the top layer of soil on the ground to form a bed and push the loosened soil at least to one side,

b.    drop sugarcane billets onto the bed,

c.    replace at least the loosened soil back over the sugarcane billets to form a rough mound, and,

d.    profile the mound such that the top of the mound is relatively flat and each side of the mound is inclined at an angle which promotes warming of the soil by the sun.

5.    A method for planting sugarcane, the method comprising (pre-forming) the ground along a row to be formed to loosen the soil, pushing the loosened soil to at least one side to expose damper underneath soil and to form a bed, dropping sugarcane billets onto the bed such that between 1-8 billets extend across the bed from one edge of the bed to the other edge of the bed, covering the billets with soil to form a mound and profiling the mound to form a shaped mound in which each side of the mound is an incline of between 20o to 60o such that the soil about the billets are better warmed by the sun’s rays, all the above steps being carried out in a single pass along the ground.

18    Claims 1, 2 and 3 deal with a cane planter which meets certain specifications, claims 2 and 3 being dependent on claim 1. Claim 2 claims a planter, as claimed in claim 1, in which the mound profiler comprises a roller. Claim 3 claims a planter, as claimed in claim 1 or claim 2, wherein the mound profiler also compresses the soil in the mound. Claim 4 is for a planting apparatus which will do certain things. Claim 5 is for a method of planting sugarcane.

19    In para 7 of the statement of claim The applicant identifies the integers of claim 1 as:

(a)    a hopper for storing cane billets;

(b)    a pre-former which removes an upper layer of soil to form a bed;

(c)    a chute to drop the cane billets onto the bed;

(d)    a component which covers the billets with soil and which forms a mound;

(e)    a component which profiles the mound so that its sides incline at between 20 and 60 degrees and which ensures the billets are better warmed by the sun’s rays;

(f)    a mound profiler comprised of a roller; and

(g)    a roller which compresses the soil in the mound.

20    Mr Robotham, an agricultural engineer called by the respondent, identifies similar, although not identical integers. I accept that he and Mr Sulman, called by the applicant, are skilled addressees for present purposes. Claim 4 contains the following integers:

(a)    an apparatus;

(b)    which, in a single pass is adapted to;

(c)    loosen the top layer of soil on the ground to form a bed;

(d)    push the loosened soil at least to one side;

(e)    drop sugarcane billets on to the bed;

(f)    replace the loosened soil over the sugarcane billets to form a rough mound;

(g)    profile the mound such that the top of the mound is relatively flat; and

(h)    each side of the mound is inclined at an angle which promotes warming of the soil by the sun.

21    Claim 5 claims a method for planting sugarcane, the method comprising:

(a)    pre-forming the ground along a row to be formed to loosen the soil;

(b)    pushing the loosened soil to at least one side to expose the damper soil underneath and to form a bed;

(c)    dropping sugarcane billets onto the bed such that between one to eight billets extend across the bed from one edge of the bed to the other edge of the bed;

(d)    covering the billets with soil to form a mound;

(e)    profiling the mound to form a shaped mound in which each side of the mound is at an incline of between 20o to 60o;

(f)    such that the soil about the billets are better warmed by the sun’s rays; and

(g)    all of the above steps being carried out in a single pass along the ground.

22    By his further amended defence (the “defence”) the respondent admits that the allegedly infringing device possesses a hopper for storing cane billets, a chute to drop the cane billets onto the bed, a component which covers the billets with soil and a roller which compresses the soil in the mound. He otherwise denies infringement. This seems to involve an admission of integers (a), (c), part of (d) and (g) of claim 1. The respondent admits a part of integer (d) in that he admits the presence of a component which covers the billets with soil but does not, at that point admit that it forms a mound. However, in admitting the presence of a roller which compresses the soil, he seems effectively to accept that a mound is formed. In fact, by the end of the trial, the respondent’s case on infringement was much narrower.

CONSTRUCTION OF THE PATENT

23    The words “relatively flat” appear in claim 4. The respondent refers to passages at p 4 ll 16-20 and p 6 ll 20-24 of the specification which provide:

24    At p 4:

Typically, the warming effect may be achieved by making the top of the mound relatively flat and each side of the mound inclined at an angle which promotes warming of the soil by the sun. It is found that the mound can be much better kept warm by the sun if each side of the mound is an inclined [sic] of between 20-60o and typically about 40o.

25    At p 6:

It is found that a desirable profile is one where the soil is, pressed and smoothed to catch the sun’s rays to warm the soil to a temperature that promotes shooting (sprouting) of the billets. This profile may include a profile where the top of the mound is relatively flat and each side wall of the mound is at an angle of between 30 to 50o and typically 40o to catch the sun’s rays.

26    The respondent submits that the word “relatively” has the meaning “in comparison or relation to something else; not absolutely”. That definition contains two distinct meanings. The first requires a relevant comparator. The second involves a recognizable standard. In the specification, the word is used as an adverb of degree to describe a degree of “flatness”. The applicant’s expert witness, Mr Sulman considers that the relative flatness of the top of the mound is, at least to some extent, to be determined by reference to the steepness of the sides of the mound. The respondent submits that relative flatness is to be assessed by reference to a horizontal plane. In my view the term, as used in claim 4, reflects both views. The top must be generally in the horizontal plane. That is a question of impression, and impressions may differ. Any such impression may be influenced by the proximity of sloping sides against which the top will, inevitably and probably subconsciously, be compared.

27    A construction question also arises concerning the words in claim 4 “each side of the mound is inclined at an angle which promotes warming of the soil by the sun”. A similar issue arises out of the words in claim 5, “each side of the mound is an incline of between 20o and 60o such that the soil about the billets are better warmed by the sun’s rays”.

28    The respondent submits that in claim 4 the words “each side of the mound is inclined at an angle which promotes warming of the soil by the sun” may mean “inclined at an angle of between 20 degrees and 60 degrees”, in which case the respondent says that the Morellini device does not infringe. Alternatively, he submits that they mean something else, and that therefore the specification does not clearly and fully disclose the invention.

29    The specification addresses the warming effect of the sun on the soil and the importance of such warming to germination. It also addresses the fact that in conventional planting, side mounds prevent the sun from striking the soil which surrounds the billets. The respondent submits that the specification teaches that the mound can be better warmed if each side of the mound is inclined at between 20o and 60o, typically about 40o. There is, however, no explanation as to this choice of a range, nor is there any other direction as to calculation of the incline. Nonetheless, it is hardly surprising that such a mound would catch the sun better than would the bottom of a furrow. Although claim 4 seems to suggest that the angle of incline will affect the warming effect of the sun, the specification, at p 3 ll 10-12, p 4 ll 16-23 and figures 9b, 9d and 10f demonstrate that the true meaning is otherwise.

30    Figures 9b and 9d demonstrate the situation in which the billets lie at the bottom of a furrow with a side mound on either side. Figure 10 demonstrates the typical profile of a mound which will catch the morning and afternoon sun. The passage at p 4 ll 20-22 highlights the fact that the typical profile will “catch” the sun whilst the bottom of a furrow will not do so. Claim 4, understood having regard to the specification, addresses this proposition. It does not advance some arcane and unexplained notion that the angle at which the sun strikes the surface will affect the resulting degree of heating. Understood in this way, no problem arises in performing the invention according to claim 4. In cross-examination at ts 107 Mr Mizzi said that the range of 20o to 60o is associated with the natural angle of repose of the soil rather than warming effect. As I understand Mr Mizzi’s evidence, it is that a mound above surface level will have sides which naturally incline at between 20o and 60o, at least if the top is relatively flat.

31    This approach is also suggested by Mr Sulman at ts 169 ll 25-41 and ts 174 l 44 to ts 176 l 9. It is true that some of his evidence addresses more complex aspects, but his emphasis on shape supports the view which I have expressed, that the skilled addressee would understand the claim as describing the physical characteristics of a mound above ground level, the shape of which will be dictated by the angle of repose of the soil. It is the existence of the mound above ground level, rather than the angle of the sides, which creates the perceived advantage.

32    Claim 5 should be similarly understood.

INVALIDITY

33    The respondent submits that the Patent should be revoked because the claimed invention:

    lacks novelty;

    is not innovative;

    was obtained by false suggestion or misrepresentation;

    as regards claim 4, on the ground that it does not comply with s 40(2)(a) and (c) and s 40(3) of the Act (although it is not clear that the respondent perseveres in this submission).

34    As I have said, I understand the respondent to have abandoned any reliance on an earlier submission concerning manner of manufacture. The respondent did not address the matter in submissions.

Want of novelty and want of innovation

35    Section 18(1A) of the Patents Act provides:

(1A)    Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim:

(a)    is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and

(b)    when compared with the prior art base as it existed before the priority date of that claim:

(i)    is novel; and

(ii)    involves an innovative step; and

(c)    is useful; and

(d)    was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor entitled to the invention.

(2)    Human beings, and biological processes for their generation, are not patentable inventions.

(3)    For the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions.

(4)    Subsection (3) does not apply if the invention is a microbiological process or a product of such a process.

36    Section 7(1) provides:

For the purposes of this Act, an invention is taken not 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.

37    The term “prior art base” means:

(a)    in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:

(i)    information in a document that is publicly available, whether in or out of the patent area; and

(ii)    information made publicly available through doing an act, whether in or out of the patent area.

(b)    in relation to deciding whether an invention is or is not novel:

(i)    information of a kind mentioned in paragraph (a); and

(ii)    information contained in a published specification filed in respect of the complete application where:

(A)    if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and

(B)    the specification was published after the priority date of the claim under consideration; and

(C)    the information was contained in the specification on its filing date and when it was published.

38    The term “prior art information” means:

Information that is part of the prior art base in relation to deciding whether an invention is or is not novel … .

Lack of novelty

39    The respondent’s case on lack of novelty is based upon two devices, the “Roncato device” and the “O’Grady device”. The Roncato device was designed and built by Mr Gisuee Santo (Josh) Roncato who is a cane farmer in the Burdekin district. He has constructed various types of farming equipment for use on his cane farm. In the middle of 2004 his son, Michael and he became aware of the introduction of mound planting for sugarcane billets, particularly in work carried out by a Mr David Cox in the Burdekin district. This method was disclosed in a publication entitled Davco Journey Into Precision Farming. The document, dated 29 March 2006, demonstrates what is called the “Davco controlled traffic system at 3 metres” and the “Sugarcane row spacing standard”. It contains a diagram showing planted cane in cross-section. The cane grows out of the flat tops of mounds, with depressed areas between such mounds. The depressed areas have flat bottoms. They are designated as “traffic zones” or “minimal traffic zones”. I infer that they have been caused by the passage of vehicles to which I have previously referred.

40    The mounds have sloping sides. The distance from the bottom of one sloping side to that on the other side of the mound is “1000”, presumably millimetres. The width of each traffic or minimal traffic zone, from the bottom of one sloping side to the bottom of the nearest sloping side of the next mound is “500”, presumably millimetres. The distance between the centre of one zone and the next is “3000”, presumably millimetres. There is also a picture of a device described as a “bed former 6m” and a reference to “4-1.5 metre beds”, which may suggest that the device creates four 1.5 metre beds in a six metre span. Mr Roncato understands the operation as described in this publication to involve a series of raised mounds or beds formed in the ground by separate mound- or bed-forming machinery, in which sugarcane billets are to be planted, using the bed former 6m.

41    In 2004 Mr Roncato was planning to manufacture a sugarcane billet planter for use on his farm. His son suggested that they construct a billet planter, incorporating mound-forming equipment which would, in one pass of the planter, raise a mound and plant sugarcane billets in it. In late 2004 Mr Roncato completed construction of a prototype of his planter. In November and December 2004, he conducted trials at his farm at Klondike Road in Ayr. His planter was a “double row planter”, designed to form a pair of parallel, raised planting mounds similar to the raised mounds described in the Davco publication. The machine then deposited cane billets on to beds formed in the mound, covered them with soil and rolled the soil to press and flatten it over the billets.

42    Mr Roncato attaches a number of photographs of his billet planter “in its current form” (presumably in April 2009, the date of his statutory declaration). He says that it was then in its original form, save that the planter in the photograph has double-disc openers for forming planting beds. He says that the “double-disc openers” or “bed formers” comprise pairs of spaced discs arranged in a V-shaped configuration so that as the planter moves forward, the discs push soil to either side and so form planting beds. The double-disc openers were installed in 2008. His original planter used mould boards arranged in a V-shaped configuration for this purpose. These are shown in one of the attached photographs. His planter includes a pair of hoppers for storing cane billets, a pair of pre-formers which remove an upper layer of soil to form beds, discharge chutes which extend from the hoppers to drop cane billets on to the beds, cover means or discs to cover the billets with soil, forming mounds of soil over the billets, and rollers which press the soil and flatten the top of the mound after the billets have been covered. The pre-formers push soil to at least one side in order to form a bed.

43    Mr Roncato claims that his planter additionally includes two mounders on the outside of the two pre-formers and a middle mounder between the two pre-formers, each mounder being V-shaped. As the planter advances, the central mounder pushes soil inwardly to assist in forming the raised mounds, while the two side mounders push soil outwardly for formation of mounds in the next pass of the planter. The pre-formers, which are located between the central and side mounders, push soil to both sides to form beds for receiving billets. Billets stored within the hoppers are directed by the discharge chute behind the pre-formers and on to the bed formed by the pre-formers. Usually, between three and five billets are dropped. The pairs of discs at the rear of the pre-formers push soil over the billets to form mounds of soil. The mounds are then rolled by the roller wheels behind the discs. The tops of the mounds over the billets are relatively flat. Each side of the mound is angled outwardly. These operations are carried out in one operation and in a single pass of the planter.

44    Following the initial trial of his planter in 2004, Mr Roncato undertook planting operations in February, March and April 2005 and in subsequent planting years “without any secrecy”. Since 2006 his planter has been seen by a number of farmers in the Burdekin region. He named three of them. In 2006, one of the three farmers manufactured a similar machine for use on his farm. Farmers from the co-operative group HCL Harvesting Pty Ltd have also seen the planter.

45    Mr Roncato gave oral evidence in which he explained certain of the photographs attached to his statutory declaration. Exhibit GSR 2 shows the cane planter to which he refers in his statutory declaration. The photograph was taken in January 2009. The double discs shown in exhibit GSR 2 were not on his planter in 2004/5. Their function was performed by “ordinary” shoes on the front of the “boards”.

46    Both Mr Robotham and Mr Sulman gave evidence concerning the Roncato device and the O’Grady device. Concerning the Roncato device, Mr Robotham says at para 143 of his report:

143    I understand from Mr Roncato’s declaration, that his planter had the following features:

•    pre-formers in a V-shape or arrowhead configuration which push soil to each side as the planter moves forward to form the beds for the billets;

•    a chute to direct from the hopper and drop across the bed between 3 to 5 billets;

•    pairs of discs at the rear of the pre-former to push soil over the billets to form mounds of soil over the billets;

•    rollers behind the discs to compact and flatten the tops of the mounds.

144    I consider that the declaration describes a one pass, sugarcane billet mound planter that results in mounds with relatively flat tops and inclined sides. I consider it likely, in view of the shape of the mounds described in the Davco publication and the features of the planter described in the declaration, that the sides of mounds made by the Roncato planter would have been more aggressive (ie slightly steeper) than the mounds made using the Morellini device that I inspected.

145    I consider that the Roncato planter has all the features of claims 1, 2, 3 and 5, save that:

145.1    I do not consider that press wheels are within the meaning of the term “mound profiler” as it is used in the patent; and

145.2    I cannot say with certainty the angle of incline of mounds made using the planter would be above 20 degrees.

146    I consider that use of the Roncato planter involves all the features of claim 4, save that I cannot say that the resulting incline of the side of the mound is “an angle which promotes warming of the soil by the sun”. For the reasons given above, I think it is impossible to quantify such an angle.

47    Concerning the Roncato device Mr Sulman says at para 11 and 12 of his report dated 21 May 2012:

11.    Based on paragraph 6 of the Roncato Declaration, I observe that Mr Roncato had designed a double row planter that functioned in the following sequence:

i)    forming a pair of parallel raised planting mounds similar to the raised mounds as described in the DAVCO publication, annexed as “EXHIBIT GSR1” to the Roncato Declaration and,

ii)    then depositing onto beds formed in the mounds cane billets which were then,

iii)    covered with soil and,

iv)    the soil rolled to press and flatten the soil over the billets.

12.    The sequence as described by Mr Roncato paragraph 6 in his declaration, is different to the device described in the Mizzi Innovation Patent in that, the device in described the patent does not have the capability to:

i)    First – form a pair of parallel raised planting mounds and then,

ii)    Second – deposit cane billets onto the bed in a pre-existing mound.

48    The respondent submits that the applicant’s case is that the Roncato device did not form a mound, but used pre-existing mounds. The respondent then submits that Mr Roncato’s evidence was that his device performed “all of the above operations”, and that this statement included the creation of mounds. The respondent then identifies an alternative argument by the applicant that the Roncato device created mounds and then planted in them, whilst the patent teaches formation of the mound after planting. The respondent submits that the sequence is irrelevant and that “(a)ll that is required is that the process should end up with a mound of covered billets”. The respondent points out that the soil went between the side and central mounders and the drills or bed-formers so that three different amounts of soil were used to make two mounds. The respondent then submits that the Roncato device:

    gathered amounts of soil which passed between the mounds and the drills;

    pushed the gathered soil over the billets to make mounds; and

    pressed the mounds of soil over the billets.

49    To the extent that the applicant submits that the Roncato device plants in pre-formed mounds, the respondent replies that the claims in the Patent are not limited to planting in flat ground.

50    Mr Robotham’s description of the Roncato device does not, to my mind, accurately reflect Mr Roncato’s declaration. I understand the declaration to have been filed in the Patents Office in opposition to the Mizzi application. In effect Mr Roncato said that prior to designing his device, he was aware of the Davco publication. He understood it to disclose the pre-formation of raised beds or mounds for the planting of sugarcane. He understood the process to involve the formation of a series of raised mounds in beds in the ground by separate mound- or bed-forming machinery, after which sugarcane billet planters are used to plant billets in the mounds or beds. As the result of a suggestion by his son, he sought to construct a billet planter which incorporated raised mound-forming equipment. It could create two raised mounds, similar to those described in the Davco publication, and then deposit “on to beds formed in the mounds cane billets which were then covered with soil and the soil rolled to press and flatten the soil over the billets”. See para 6.

51    In para 10 of his declaration he suggests that his planter, as originally constructed, contained a pair of pre-formers which removed an upper layer of soil to form beds, followed by a discharge chute to drop cane billets onto the beds, then a cover means to cover the billets in order to form mounds of soil over the billets, and rollers which pressed the soil and flattened the top of the mound after the billets had been covered.

52    There seems to be an inconsistency between para 6 of the declaration and para 10. In para 6 Mr Roncato clearly describes the formation of mounds, followed by the deposit of billets on to beds formed in the mounds. Thus the sequence is:

    formation of the mound;

    formation of the bed; and

    deposit of the cane billets.

53    However in para 10 Mr Roncato seems to describe a process by which an upper layer of soil is removed, the cane billets are dropped and soil pushed over the billets to form a mound which is then shaped. The first explanation in para 6 does not in my view reflect the sequence disclosed in the Patent. The description in para 10 is much closer to that described in the Patent.

54    I note that at ts 276 ll 42-45 in Mr Roncato’s oral evidence, the following passage appears:

Now would you mind telling us how your planter worked?---The idea was – going back 64, 65, 66 – is as it went along, it made a mound and then the drill opened it out where the sticks fell in and then it was pressed, buried, and pressed. And it left the mound.

55    Thus he seems to have adopted the version contained in para 6 of his declaration, and not that in para 10.

56    The evidence as to the function of Mr Roncato’s device appears only from his statutory declaration and cross-examination. I cannot simply overlook this inconsistency. I conclude that it is uncertain whether the Roncato device forms the mound before or after planting of the billets.

57    I turn to the O’Grady device. Mr O’Grady says, at para 10 of his affidavit that he used his device “to plant into raised beds or pre-formed mounds”. In para 11, there is a tacit suggestion that the planter was not only used in pre-formed mounds. However Mr O’Grady describes the process as simply dropping billets on to a mound and then covering them. Nowhere in his affidavit does he expressly discuss the operation of his planter in the absence of a pre-formed mound. It is said that the mounds were about 150-200 mm high, and that the billets were dropped onto the mound and then covered with the soil. It is said that the mound had a flat top and an incline on each side of 30o to 45o.

58    As with Mr Roncato, other parts of Mr O’Grady’s affidavit suggest a different description of his machine. In para 14 he speaks of the “planting boots” parting the soil to create beds. He says nothing at that point about a mound, although he mentions a “duck foot tine”, the function of which is to “push soil back over the billets in the two beds”. In para 15 he says that “crowding plates” at the rear are “pushing the soil in over the billets and making a mound” which is then smoothed and shaped.

59    Mr Robotham does not say anything about the O’Grady device. Concerning that device, Mr Sulman had a largely unproductive exchange with counsel for the respondent.

60    Thus it also is unclear whether the O’Grady device creates a mound before or after planting. It is also unclear whether it operates only on pre-formed mounds which have been separately created. The Patent, on the other hand, describes apparatus and a method involving the formation of a mound after planting, and regardless of whether there has been previous mounding or not. I proceed upon the basis that for the purposes of the case on novelty, these propositions identify the only differences between the claims in the Patent and the Roncato and O’Grady devices.

61    The respondent submits that any such difference is immaterial but does not explain the reasoning process by which he arrives at that conclusion. The applicant submits that the difference is important in that:

    the sequence of events differs; and

    there is a difference between the two approaches which makes a substantial contribution to the working of the invention in that planting billets into a mound which has already been formed means that the billets have better contact with moist soil (which aids germination).

62    The first proposition is obvious. I am not sure that I understand the second proposition. However the onus is on the respondent to prove anticipation. The purpose of the mound is to achieve increased warming and efficient harvesting. In my view, the question of whether a particular device or method starts with a pre-formed mound may well be significant in the production of the desired outcome and the mechanism by which it is achieved. Similarly, a device which, itself, at the commencement of the planting process, creates a mound is not readily identifiable as a device which deposits billets and covers them to form a mound. One produces a mound in to which billets are then planted. The other creates a mound of which the billets are part. Quite apart from anything else, the quantity of soil to be moved would be quite different, as may be the elevation of the billets above pre-existing ground level.

63    I conclude that the respondent has not proven anticipation.

Lack of innovation

64    In his original submissions the respondent puts his case on innovation as follows:

If the Roncato device and the O’Grady device fall short of establishing anticipation of the … Patent, then the differences between them and the … Patent are such that a person skilled in the relevant art in the light of the common general knowledge as it existed in Australia before 25 June 2007, would consider that the claims in the … Patent only varied from the Roncato device and/or the O’Grady device in ways that made no substantial contribution to the working of the invention.

65    In his supplementary submissions the respondent submits that:

If the Roncato planter does not anticipate the claims because the sides of the mounds are inclined at angles outside the claimed ranges, then the claims do not involve an innovative step because the angles specified do not make any substantial contribution to the working of the invention. The Applicant’s case was that any elevated mound, (including Roncato’s), will keep the billets dry, assist warming, and assist harvesting.

66    The respondent’s submission concerning innovation has substance only if the sole reason for finding no anticipation is that the Roncato and O’Grady devices have not been shown to have produced a mound with sides inclined at angles between 20o and 60o. However I have rejected the allegation of anticipation on other grounds. In those circumstances, it is not necessary that I consider the respondent’s submission concerning lack of innovation.

Section 40

67    Section 138(3)(f) provides for revocation of the patent upon the ground of non-compliance with ss 40(2) and 40(3) of the Act. Section 40 provides as follows:

Specifications

Requirements relating to provisional specifications

(1)    A provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

(2)    A complete specification must:

(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and

(aa)    disclose the best method known to the applicant of performing the invention; and

(b)    where it relates to an application for a standard patent--end with a claim or claims defining the invention; and

(c)    where it relates to an application for an innovation patent--end with at least one and no more than 5 claims defining the invention.

(3)    The claim or claims must be clear and succinct and supported by matter disclosed in the specification.

(3A)    The claim or claims must not rely on references to descriptions or drawings unless absolutely necessary to define the invention.

(4)    The claim or claims must relate to one invention only.

68    This issue was not dealt with in the respondent’s written or oral submissions. It was raised in opening at ts 189 ll 28-36. I assume that the ground has been abandoned but, as the applicant deals with it in its written submissions, I shall deal briefly with it. The respondent submits that the words in claim 4, “each side of the mound is inclined at an angle which promotes warming of the soil by the sun” may mean that the sides are inclined at angles between 20o and 60o. If so, then the respondent submits that the Morellini device does not infringe. If the words mean something else, then the claim lacks clarity or is incomplete. I have given my reasons for attributing a particular meaning to these words which, in my view, answers this criticism. I need not say any more about it.

False suggestion and misrepresentation

69    Section 138(3)(d) provides for revocation of a patent on the ground of false suggestion or misrepresentation. However those terms are not explained. Parker J said in In the matter of Alsop’s Patent (1907) 24 RPC 733 at 752-753:

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 of producing a result, and that result cannot be produced by the process, in my opinion the consideration fails. Similarly if the patentee claims for a process producing two results combined and only one of these results is in fact produced by the process, there is a partial failure of consideration, just as there is in the case of a Patent containing one valid and one invalid Claim; and such partial failure of consideration is sufficient to avoid the Patent … .

An analogous principle applies to patents for improvements. Of course the patentee must in such a case state the nature of the improvement, or in other words, the result which he claims to have secured by his invention. If no such result is in fact secured by following the directions given in the Specification there is a failure of consideration and the Patent is void.

Objections to Patents on the grounds above referred to were sometimes treated as objections for want of utility, and when so treated the well-known rule is that the utility of an invention depends upon whether, by following the directions of the patentee, the result which the patentee professed to produce can in fact be produced … . Want of utility in this sense must however, in my opinion, be distinguished from want of utility in the sense of the invention being useless for any purpose whatever. In the case of an invention not serving any useful purpose at all, the Patent would no doubt be void, but not entirely for the same reason. It would be probably void at common law on the ground that the King’s prerogative could not be properly exercised unless there was some consideration moving to the public and the public could not be benefitted by the disclosure of something absolutely useless. It would certainly be avoided as mischievous to the State and generally inconvenient within the meaning of the Statute of Monopolies. But it may well be that an invention which is void because it does not produce the result, or one of the results, claimed, may nevertheless be useful as producing other results. Further, there may be cases in which the result which the patentee claims to have produced can in fact be produced, but the patentee has gone on to detail the useful purposes to which such result can be applied, and that in fact the result produced cannot be applied to one or more of such purposes. In such a case I do not think the Patent is necessarily void, provided there are purposes for which the result is useful. If it be avoided it can only be because it contains misrepresentations so material that it can be said the Crown has been deceived. The importance of drawing a distinction between what the patentee claims to have effected by the invention for which he claims protection, and the statement of the additional purposes to which the invention can be applied, … .

70    In JMBV Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 Crennan J said at 134-136:

134    While section 138(3)(d), extracted above, provides that a court may revoke a patent on the grounds that it was obtained by fraud, false suggestion or misrepresentation, a patent can also be revoked in the situation where amendment of the patent request was made or obtained by fraud, false suggestion or misrepresentation … . The respondents submitted that the patent was obtained, or amended, on the basis of false suggestions or misrepresentations, and that the patent should be revoked under one of these provisions.

135    This ground of revocation derives from the common law premise that if the grant of a privilege by the Crown was obtained by fraud or false suggestion then the Crown was entitled to revoke it. The “false suggestion” does not need to be fraudulent in the common law sense of the word. What is clear is that it must be “a misrepresentation so material that it can be said that the Crown has been deceived” … .

136    An incorrect statement to the commissioner as to the identity of the inventor of the patent application which is later granted will make the patent susceptible to revocation on the ground of false suggestion or misrepresentation … .

71    In para 8 of the amended particulars of invalidity (exhibit 3) the respondent pleads as follows:

The alleged invention as claimed in each of the claims of the Innovation Patent is liable to be revoked on the ground that the Innovation Patent was obtained by false suggestion or misrepresentation under s 138(3)(d) of the Patents Act.

Particulars:

(a)    The specification states at page 4 lines 18 to 20:

In one form, the invention resides in … profiling the mound such that the soil about the billets are better warmed by the sun’s rays …

It is found that the mound can be much better kept warm by the sun if each side of the mound is an inclined [sic] of between 20-60o and typically about 40o (the Statement)

(b)    The Statement comprised representations to the Commissioner of Patents in support of the certification of the Innovation Patent that:

(i)    the soil around the billets in the mound can be much better kept warm by the sun if each side of the mound is inclined between 20-60o and typically about 40o (the First Representation);

(ii)    the applicant had taken such steps as were necessary, by experiment or otherwise, to establish the soil around the billets in the mound can be much better kept warm by the sun if each side of the mound is inclined between 20-60o and typically about 40o (the Second Representation).

(c)    The First Representation and the Second Representation are false.

(d)    The First Representation and the Second Representation were material to the decision of the Commissioner of Patents to certify the Innovation Patent.

72    The respondent’s case is that the specification asserts that it has been found that the mound can be much better kept warm by the sun if each side be inclined at between 20-60o degrees and typically at about 40o. The respondent submits that there has been no such finding, and that the representation is fallacious. He further submits that the representation has materially contributed to, or induced the grant of the Patent. In my view this argument is disposed of by my explanation as to the meaning of the references to angles of incline. The Patent does not claim that the angles of incline affect the heating effect of the sun on the soil. The angles rather indicate the likely shape of a mound which will catch the sun. Notwithstanding this view, I shall say a little about the evidence of Mr Robotham and Mr Sulman.

73    Concerning this matter Mr Robotham says at para 55 of his affidavit:

Contrary to these assertions, I understand that the intensity of sunlight striking a planar surface is maximised if the angle of incidence is 90o to the surface. When the sun is relatively close to the horizon in early morning or late afternoon, the amount of solar energy that will be captured by one side of the mound will be maximized if that side is relatively steep. For example, if the sun were directly east and 15 degrees above the horizon, (relatively early in the morning) and the mound was oriented precisely north-south, then the optimal incline of the side of the mound to collect solar energy at that point in time would be 85o. However, as the sun rises and moves across the sky these angles change. The asserted advantage of the specified mound shape catching the morning sun and afternoon sun is not quantified, but it must be remembered that morning sun and afternoon sun have significantly less energy than the sun in the middle part of the day. The Patent also offers no real comparison between the efficiency of the “existing techniques” and the technique referred to in the Patent.

74    In Mr Robotham’s cross-examination the following passage appears at ts 293 l 29 to ts 294 l 10:

If you have conventional planting and the sun coming from the east and the west in the late afternoon, and had the furrow in shadow, it is less attractive to germination because it isn’t getting the benefit of the sun?---No. I can’t know it – I cannot answer that yes or no, because late in the afternoon, and early in the morning, there’s very little energy in the sunlight, and I need to – I would have to know what effect that’s going to have. The other thing is, you can even hypothesize – you’re considering the day when you pick up. What if we look at the other hours? What about the cooling effect in the evening, like what would cool quicker? A raised mound or a valley? So that---

I suppose---No, can I just finish. There’s no research on that, and there’s even a belief in the sugar industry that north south rows might get more sun than east west rows because of shading, but there is no data whatsoever to support that.

So you’re telling his Honour that you have no data and no academic research one way or the other---?---Yes.

---with regard to the effect of the sun?---That’s correct.

But Mr Robotham, you know this, that mounds work?---I have done some research on mounds for this particular case.

Yes?---The only reference I can find as to improvements in mounds – and I haven’t been able to get citable references, and work by Gary Ham and Gary McMahon, when they looked at the ability of mounds to free drain---

Yes?---And they found there was an increase in temperature in mounds purely because they drained better, sorry, it was more related to moisture content, and it wasn’t related to solar radiation.

75    Counsel then took Mr Robotham to a document which provides the average tonnage of cane per hectare produced in the Herbert area from cane extracted from mound-planted cane and from non-mound-planted cane. The tonnage in the former case was generally greater than that in the latter. It was put to Mr Robotham that the figures suggested some advantage in planting cane in a mound. Mr Robotham agreed. However he did not agree that any advantage necessarily reflected better germination rates.

76    Mr Sulman dealt with this matter in a series of diagrams which comprise exhibit 9. The first of these documents shows ground profiles using the conventional planting method, the Morellini device and the Mizzi method or device. Mr Sulman suggests that in the conventional method the billets are cramped into a fairly narrow area between mounds. With the Morellini device and the Mizzi device and method, the billets are spread over a wider area. He considers that those devices and the Mizzi method, were designed in a search for “more moisture and temperature per billet”.

77    At ts 137 l 44 et seq the following passage appears:

Now, you’re aware, having read Mr Robotham’s report, that there is some controversy with regard to the benefit of the sun upon mounding. Can you go to the next document. document 4 [in exhibit 9]. What have you attempted to do with this document?---In this – this document is, again, representations where you have a conventional planting system, where the – a furrow is dug soil is – is moved to the side, some of that soil is brought back to cover the billets, but left with a residual hill that still remains beside the furrow with the cane billets. The - the purpose of showing this is that in this – in this representation, your Honour, I’ve chosen an angle of 15 degrees so the sun is – it’s early morning, not too early. I’m not actually sure what time of day that would be, but I assume it would be about 9 o’clock, so the sun’s up at about that angle. So there is some warmth in that soil. It’s not in that – in that sunlight. It’s not – I think its incorrect to say that there is very insufficient intensity. There is intensity in some light at that angle but the – what we’re trying to explain here, with this image – what I’m trying to explain, sorry, is that the hills that are left by this device – and I’ve seen this in other photographs where there is a shadowing effect, and that shadowing effect is real if those hills exist.

78    I understand drawing 4 to suggest that in the conventional method of planting, the side mounds tend to cast shadows over the soil covering the billets. With mound planting there is no such shadow. Further, by virtue of the billets being spread over a wider area, there is greater opportunity for them to absorb the warmth produced by the sun. Such warmth is transmitted to the billets through the soil.

79    Mr Sulman draws attention to a report of research work done by the respondent. At p 303 of exhibit 18, there is a table of “stalk counts”. He reads it as demonstrating increased production using the respondent’s device, as opposed to conventional planting. Mr Sulman also says, concerning the angles referred to in the Patent:

… one major importance that I see is that it creates the structure of the mound that presents it above the surface. So there’s a clear definition to the – to the shape of the mound. Secondly the angle is essentially set where if it’s 20 degrees – if slightly under 20 degrees if it’s 15, the only – the only way that we can say that its cooler or warmer is – the only evidence provided to me is my basic training, which – which tells me that the angle of incidence of sunlight hitting a plane, if that is reduced, then you would expect less warming imparted into the plane. But we do not have any evidence to – to provide the court that would state the significance of that change in angle. That’s – we would need to do testing to provide that.

80    He also says:

Well essentially, your Honour, if sunlight was to hit a surface at 90 degrees then it would heat that surface more rapidly than if the sunlight was hitting it at, say again at say 40 degrees.

81    Mr Sulman was then taken to the fifth page of exhibit 9 in which he suggests that the Mizzi device produces a situation in which the cane billets are spread over a wider area and therefore exposed to a greater degree of sunlight, a point to which I have already referred. Mr Sulman agreed in cross-examination that in a “Mizzi mound”, there would be a thicker coverage of soil which may tend to reduce the warming effect.

82    This expert evidence seems to support the fairly obvious conclusion that if a mound is designed to maximize exposure to the sun, it will warm to a greater extent than would soil at the bottom of a furrow. I understand the Patent to make that assertion. As I read the Patent it describes a shape which will effectively catch the sun. The range of angles reflects the likely angle of repose of soil. There is no direct link between those angles and the heating effect of the rays of the sun at any point in time or place. Rather, the shape of the mound as described will maximize the extent to which the rays of the sun are caught by the surface of the mound, particularly as compared to the extent of such capture at the bottom of a furrow.

83    I should add that Mr O’Grady also recognizes that mounds above ground level will warm more effectively than other planting methods, in his view, because mounding will allow moisture to drain away. The drier soil will heat more effectively because there is no moisture to absorb the sun’s energy in transforming itself from liquous to vaporous state.

84    Counsel for the respondent points out that this question was a live question when the Patent was examined. The examiner had, on 29 January 2010 published a first report advising that certain amendments were not allowable on the basis of comments made by Mr Morellini. Apparently a proposed amendment to the claims used the expression “a shaped for harvest mound”. The examiner considered that the amendments would result in the claims being for matters not otherwise disclosed, so that they would not be fairly based on matters disclosed in the specification. The examiner also considered that the expression was insufficiently clear in its meaning. In response the applicant’s patent attorneys proposed amendments which limited the shape of the mound in that each side was to be inclined at between 20o and 60o. The respondent effectively submits that in proposing the introduction of the limitation upon the angle of inclination, the applicant represented that the angles had some special significance in the heating process. As I have explained, I consider that this submission is based upon a misunderstanding of the specification which, properly understood, simply seeks to describe the contour of a mound which will catch the sun’s rays. As was said in exhibit JGL 9 to Mr Lambert’s affidavit (a letter to the Commissioner):

Therefore, the specification teaches that in order that the billets be kept warm within the mound, the mound should have angled sides. The mound may also have a flattened top though it is clear from this portion of the description that the flattened top is a preferred feature rather than an essential feature as alternative shapes without the flattened top are given in the paragraph also. The flattened top with angled-sided mound profile is the most preferred mound profile, but not the only mound profile disclosed.

85    I am somewhat concerned as to the extent to which this history of proceedings should be used for present purposes. At the most it may go to the significance of the allegedly false suggestion or misrepresentation in the certification process.

86    I accept that a superficial reading of the specification might suggest that a particular inclination of the side of a mound would increase the warming effect of the sun. However a reading of p 4 ll 16-25 with the diagrams discloses a quite different proposition. As I have previously observed, the inclination simply describes a mound which will catch the sun’s rays. This purely mechanical proposition is clearly demonstrated by the diagrams in the Patent. Mr Sulman demonstrates the same point in exhibit 9. The allegation of false suggestion or misrepresentation lacks substance.

Conclusion on validity

87    No ground of invalidity has been established.

INFRINGEMENT

88    The applicant submits that the Morellini device exhibits the integers of all five claims. The respondent asserts that the device does not infringe any of the claims for the following reasons:

3.    The Morellini Device does not infringe any of the 5 claims of the … [Patent] patent.

4.    Claim 1 is not infringed as:

(a)    The Morellini Device does not produce a mound where each side of the mound is at an incline of between 20o to 60o;

(b)    The press wheels used by the Morellini Device are not a mound profiler. They are used to press the top of the mound so that the billets have better sett to soil contact.

5.    Claim 2 is a dependent claim on Claim 1 and so the same arguments that apply to Claim 1 apply to claim 2.

6.    Claim 3 is a dependent claim on Claim 1 and so the same arguments that apply to Claim 1 apply to claim 3.

7.    Claim 4 is not infringed as:

(a)    The top of the mound created by the Morellini Device is not ‘relatively flat’ as required by subparagraph (d).

(b)    the requirement in subparagraph (d) that “each side of the mound is inclined at an angle which promotes warming by the sun” may either mean:

(i)    That the angle is construed as being between 20o to 60o, in which case the same argument applies to this claim as it does in respect of Claim 1.

(ii)    Where the angle is not identified as being between 20o to 60o, the claim is invalid under s 40 of the Patents Act as there is nothing in the claim or the body of the specifications to identify the measurement of the angle.

8.    Claim 5 is not infringed as the Morellini Device does not produce a mound where each side of the mount is at an incline of between 20o to 60o.

Prior Use

9.    It is found that the Morellini Device infringed the ’955 patent, Mr Morellini claims that he was immediately before the priority date of the ’955 patent, 25 June 2007:

(a)    Exploiting the Morellini Device in Australia, or alternative,

(b)    Taking definite steps to exploit the Morellini Device,

within s 119 of the Patents Act.

89    The evidence concerning these matters comes primarily from Mr Sulman and Mr Robotham. Most of their evidence is derived from an examination of the Morellini device and a test operation conducted in their presence on 29 March 2012. Setting aside the claim of prior use, the respondent submits that use of the Morellini device does not infringe because:

    the shape of the mound which it produces is not the shape identified in the Patent; and

    it lacks a mound profiler as required by claims 1, 2 and 3.

90    Mr Sulman considers that the Morellini device has a mound profiler which produces an “apex angle” of “10o along each side of the top surface”. The mound profiler comprises four tyres, which tyres are located to the rear of the device. They are in pairs, each pair apparently being on a separate axle. The axles are oblique to the horizontal such that the top of the left-hand side pair of tyres is tilted to the left, whilst the top of the right-hand side pair is tilted to the right. The inner tyre on each side, at its base, is close to the inner tyre of the other pair, so that the two inner tyres are at an angle of about 20o to each other.

91    Mr Sulman considers that the mound profiler fitted to the Morellini device is “designed to imprint an apex angle with an inclination of approximately 10o along each side of the top surface”. I understand this to mean that after the “profiler” has passed over a pre-formed mound, the surface will have an apex in the centre, with the sides falling away from that apex, each at an angle of about 10o below the horizontal plane.

92    Mr Sulman said that the demonstration of the Morellini device in operation was conducted in soil which he would classify as “sandy to sandy loam”. He and Mr Robotham measured the cross-sectional profile of two rows formed by the passing of the planter, at four randomly selected positions within each row. Mr Sulman considers that:

The soil along the surface of all mounds formed during [the] demonstration did not exhibit the expected compaction that would be attributed to an imprint created by a functioning mound profiler device.

93    He considers that the surface contained loose, uncompacted soil over the centre of the mound. However he noted an imprint by the profiler over a distance of about two metres, at a point at which the device had slowed. Mr Sulman noted that the device had previously had a “down-force compression spring” which exerted a downward force through the press wheels to the ground. At the demonstration, this spring had been removed. Further, two tension springs had been installed, providing some support for the static weight of the mound profiler and associated mechanisms. Mr Sulman fairly clearly implies that a device designed to force the press wheels downwards had been removed, and another device installed to take further weight off them. Mr Sulman asked Mr Morellini why the down-force compression spring had been removed. Mr Morellini said that he had removed it because operational experience suggested that unless down force was applied, the mound profiler would tend to push the soil forward rather than roll efficiently over it.

94    From the measurements taken at the demonstration, Mr Sulman developed “a cross-sectional profile of the formed mounds” which demonstrates the resulting width, apex height and slope angle of the rough mound based on the setup and operation of the Morellini device and the soil type during the demonstration. In summary this exercise showed that the sides of the resulting mounds had a minimum slope of 13o and a maximum slope of 18.9o, with an average slope of 15.1o, these figures obviously being outside the range identified in claims 1, 2, 3 and 5. Mr Sulman concluded that the Morellini device was “designed to form a shallow apex on the top of the mound with approximately 10o incline”. He also concluded that:

… the mound profiler device on the Morellini Device is the same essential integer by design and function to achieve the same objective as described in the Mizzi Innovation Patent, such that it compresses the top of the mound using the apex roller, resulting in the soil along the lower sides of the mound to squeeze outwards to form an increased incline between 20o and 60o.

95    Mr Sulman concluded:

… it is my opinion that if the Morellini mound profiler had been fitted with a down-force spring combined with a hydraulic drive to assist rotating the mound profiler, allowing for correct engagement along the top of the mound, then it would be expected that one would witness a final mound profile consisting of a top surface that is relatively flat, resulting in the soil along the lower sides of the mound squeezed outwards to form an increased incline between 20o and 60o as described in the Mizzi Innovation Patent.

96    There is no evidence that the Morellini device ever incorporated an hydraulic drive.

97    In oral evidence in chief Mr Sulman pointed out that in an earlier photograph of the Morellini device the relevant spring was in position. It can be seen in exhibit 8. The photographs at p 448 of exhibit 18 demonstrate its absence and the presence of the additional tension springs.

98    A photograph at p 234 of exhibit 18 shows the rear of the Morellini device. Mr Sulman was asked why he described the tyres which appear in that photograph as being a mound profiler. He said:

Well, due to the width of the tyres and the width of the bed or the mound that they are compressing, in the rolling action of compressing down onto the bed, they obviously leave an imprint, as any tyre across soil would do. In this case, you have got a series of tyres which create a profile over a wide area, and that profile is dependent on the bottom shape of the assembly of tyres.

99    He was asked if, working properly, this mound profiler would compress the mound. He said that it would. He considers that the photograph at p 238 of exhibit 18 shows the imprints which would be expected from the Morellini device if the profiling device were “activated to push down on the mound”. The photograph at p 239 is to similar effect. Another example is to be found on p 290. I understand these photographs to be of tracks left by the Morellini device, although I am not sure that there is clear evidence of such identification. The evidence indicates that the press wheels do not bear any of the weight of the device other than their own. I also understand Mr Sulman to claim that at the demonstration the discs which cover the planted billets had been adjusted in such a way as to minimize their mound-forming effect.

100    In cross-examination it was suggested that Mr Sulman’s opinion concerning the likely incline of the sides of the mound, had the Morellini mound profiler been adapted in the way that he described, was no more than speculation in that he had no real idea as to what would happen if the suggested adjustments were made. He said that the opinion was based upon his understanding of the use of press wheels in agriculture. It was suggested to him that increased pressure on the tyres would not cause soil to move outwards. He said that it would. It was put to him that the press wheels merely compressed the soil so as to get rid of air pockets. He denied that. He said that they were performing two functions:

Just by the nature of rolling across the surface and compressing the mound, you are leaving an imprint which is – which is very defined into the shape of the device that is rolling – rolling the mound and compressing the soil. It is very – it’s a basic concept. You press down, you leave an imprint. … And in so doing, you enable the surface to be pressed over such a wide area which, in turn, your Honour, provides, just by – by the nature of going wide, you’ve also provided the advantage of providing a profile at the same time.

101    The following passage then appears:

But Mr Sulman, what I’m asking you now is about what I submit is a rather surprising proposition, that a set of press wheels applying pressure downwards and inwards somehow has the effect of increasing the side angle of the mound rather than decreasing it. I just don’t see, with respect, how that could possibly follow? … Okay. If you – if you have an apex, your Honour, and you press down, if you kept pressing and pressing, you’re pushing – you’re actually mounding that soil outwards as well as you push down.

102    I asked if he meant that it bulged. He replied:

It bulges. Exactly. That’s the best analogy, your Honour.

103    The following passage follows at ts 158 l 22 to ts 159 l 2:

So you’re regarding the soil as something like jelly that---?---No. It’s not – it’s not purely elastic but it’s also not – it has – there’s – the soil has to move somewhere. The soil that is being compressed will compress but the soil that’s unrestrained has the opportunity to be displaced apart.

But why does it have to move somewhere?---Why doesn’t it just move into the voids that Mr Mizzi says are there?---No. Because if you press – if you press down, that soil – that soil is not in that zone. But on the edge of that compression zone, the soil is unrestrained, so it bulges.

Notwithstanding that the purpose of the operation is to fill up the apparent voids below so as to provide better set to soil contact?---Which you are doing because the width of the roller is above – it has to be above the billets or the set.

Mr Sulman, aren’t you assuming that one is pressing to a point where the soil can’t continue to follow the direction of the press but rather has to go somewhere else to escape?---On a small level, it does. But what I’m saying … what I’m talking about is an effect that is small. It’s not a large effect. But it is an effect. And we are talking about – I mean, this – the measurements that we took, obviously there’s a lot of argument about angle. Well, my evidence is to state that if you do press down, you do have an effect. It’s not – I’m not stating it’s a major effect. And it would be – it would have a minor change to the angle. That’s it. But it does have an effect.

104    The witness was then taken back to his table of results and asked whether the minor change to which he referred would push any of the angles above 20o. He replied:

In this particular case, it would make little difference because the angle is already a very low angle. If – if those mounds were defined and pushed up to a narrow base width and you had more initial angle and then you pressed again on top of it, then yes, it would. It would have more of an effect than what was witnessed on the mounds that were measured.

Right. So the pressing down effect, which you talk about in 91 wouldn’t be sufficient to push the angle at repetition above 20 degrees to the left and right hand slopes?---Not with the – the mounds formed by the Morellini device on that day, as it was said. No.

105    Mr Sulman stressed that the results which he had calculated were produced by a device which was not appropriately set to create the relevant angle in that the spring had been removed and the covering discs were set in a way which did not favour mound creation. Mr Sulman conceded that in any event, the tyre print left by the press wheel would have an apex created by the space between the two sets of wheels.

106    It was suggested to Mr Sulman that the reference to the top of the mound being “relatively flat” should be read as meaning “substantially horizontal”. The witness did not accept that proposition, suggesting that the words “relatively flat” implied a comparison with another surface, in this case the angles of the sides. Mr Sulman considers that a surface might be relatively flat, as compared to other angled surfaces, if it is flatter than those surfaces and does not diverge from the horizontal by more than 10o. He was then asked about the wording in claim 4, “each side of the mound is inclined at an angle which promotes warming of the soil by the sun”. His understanding was that the side was to be inclined to provide a surface for the sun to impact upon.

107    Mr Robotham considers that in the Morellini device, the role of the press wheels is primarily to enhance billet-to-soil contact, and that shaping or profiling of the top of the mound was a consequence of that function. He says that the design of the press wheels in the Morellini device is such that it will not produce a relatively flat top, but an apex. He considers that it is impossible for the wheels, powered or unpowered, to impose sufficient downward or horizontal force to squeeze outwards the lower sides of the mound to form an increased incline of between 20o to 60o as stated by Mr Sulman. He describes the profiler’s mode of action as collecting and redirecting soil that is in a “fluidized state”. Mr Robotham was taken to a photograph which is behind the second tab in exhibit 10. He says that the track marks shown in that photograph were produced by the press wheels of the Morellini device when it stopped in wettish soil. He was surprised to see that the press wheels were not exerting much force on the ground.

108    In cross-examination Mr Robotham agreed that one would press the soil to ensure that it properly surrounded the billets, and to form a mound which would facilitate harvesting. He seems to have accepted that at the date of the demonstration, the press wheels were not operating in the way in which they should. He suggests that depending upon the moisture content of the soil one might operate the press wheels with more vertical pressure, in the case of drier soil and less pressure in the case of moister soil.

109    Mr Morellini said that the missing spring was removed in March or April, or during the “slack season” in 2010 because it did not seem to make much difference in the operation of the planter. He agreed that the spring was designed to put pressure on the wheels for “a bit of compaction”. However as the mound was different to the conventional mound, he considered that he did not really need it. It seemed to have a bulldozing effect when the soil was dry. This evidence seems to be inconsistent with Mr Robotham’s evidence at ts 283 ll 24-31 to which I have referred. He said that he would use additional pressure in dry conditions. Mr Morellini said that he had now re-installed the spring and removed the tension springs. He said that he did so because Mr Sulman wanted to perform another inspection. This inspection has not occurred.

110    In cross-examination Mr Morellini was taken to his patent application, filed in July 2007. As I understand it, the application more or less relates to the allegedly infringing device. The abstract for the application states:

A method and apparatus … for forming in a single pass operation, a profiled planting mound for growing of a crop from planted seeds or billets by using a pair of spaced tools … to displace soil inwardly towards each other. A central bed is formed between the displaced soil onto which billets or seeds may be deposited through a guide or chute … . Covering discs …. are provided to move soil to cover the billets or seeds and a press wheel assembly … is used for pressing the soil in the mound and form the desired profile in the mound.

111    The factual issues relating to infringement are very narrow. The respondent asserts that the press wheels in the Morellini device do not comprise a mound profiler, but are used to press the top of the mound so that the billets have better soil contact. However the respondent’s patent application indicates that the press wheel assembly is to be used for pressing the soil in the mound, and in order to form the desired profile in the mound. There is good reason for concluding that, at the demonstration, the Morellini device was not operating in the way in which it had operated on other occasions. There is no adequate explanation for the removal of the spring which previously exerted downward pressure on the wheels. Such explanation as was offered was inconsistent with Mr Robotham’s evidence. The photographs on pp 238, 239 and 290 of exhibit 18 demonstrate a quite different performance by the Morellini device. The index to exhibit 18 suggests that those photographs were taken in late 2007 and 2008. The features which they display are consistent with the tracks which one would expect the press wheels to leave. The description “press wheels” says much about their function. As they do not carry the weight of the device, it is difficult to see how they could operate as press wheels unless there were some mechanism exerting downward pressure through them to the ground surface over which they pass. I conclude that the Morellini device has a mound profiler as prescribed in claims 1, 2 and 3. Mr Robotham comes very close to accepting that proposition in para 99 of his report.

112    Although I am willing to infer that the demonstration was not of the machine in its normal operating configuration, it does not follow that the evidence demonstrates the formation of mounds which had sides inclined at angles between 20o and 60o or a relatively flat top. Mr Sulman considers that these features would have appeared had the missing spring been in place, and the tension springs removed. Although it is not entirely clear, he may have considered that it was also necessary that there be an hydraulic means for creating downward force. There is no suggestion that the Morellini device ever had such a feature. Mr Sulman’s claims that with other adjustments, the device would have produced sides angled at between 20o and 60o seem to me to be speculative. In particular, I have difficulty in understanding how wheels, angled as are the press wheels on the Morellini device, could have resulted in any particular inclination of the soil on the outside of each outer wheel.

113    The evidence does not lead me to conclude that the mound produced by the Morellini device is relatively flat. It is ridged longitudinally by the gaps between the tyres. It appears to be curved in section rather than marked by a flat top and inclined sides. I conclude that infringement of claims 1, 2, 3 and 5 is not demonstrated by virtue of the applicant’s failure to prove that the Morellini device produced a mound with sides inclined at an angle of between 20o and 60o. Claim 4 is not infringed because the mound is not shown to have a relatively flat top. In those circumstances it is not necessary for me to consider the question of prior use. As I understand it, Mr Anderson’s evidence goes only to that matter. It is therefore not necessary that I consider such evidence.

Conclusion on infringement

114    Infringement has not been proven.

UNJUSTIFIABLE THREATS

115    At paras 7 to 15 of the amended statement of cross-claim, the respondent pleads unjustifiable threats. However he pursues that claim only with respect to the matters raised in para 11. Both the applicant and Mr Mizzi are respondents to the cross-claim. Paragraph 11 is as follows:

[Mr Mizzi] has alleged that use by Cane Growers of the Morellini Device, constitutes an infringement by the Cane Growers of the [applicant’s] and/or [Mr Mizzi] alleged rights and has threatened each of such persons with proceedings for patent infringement (the Mizzi Threats).

Particulars

(a)    [The applicant and Mr Mizzi] caused to be published in Canegrowers Magazine on 5 April 2010 a notice of a patent application in the name of the [applicant] in respect of the Mizzi Mound Planter and an accompanying article by Terry Hurlock entitled “Infringement Danger”.

(b)    In or about May 2011 Mr Charles Girgenti of Ingham Queensland used a cane billet planter made in accordance with the design and specifications of the Morellini Device;

(c)    In or about June 2011 [Mr Mizzi]:

(i)    stated to Mr Girgenti that the Morellini Device infringes the Innovation Patent; and

(ii)    demanded that Mr Girgenti pay the [applicant] a royalty in respect of the infringement of the Innovation Patent by the use of the Morellini Device;

(d)    Further particulars will be provided upon completion of the interlocutory steps including discovery.

116    By their defence to the cross-claim both the applicant and Mr Mizzi admit para 11. Mr Mizzi was cross-examined at some length about the publications and his role in having them published in close proximity in the same issue of the magazine “Canegrowers”. The advertisement is headed “Mizzi mound invented by Paul Mizzi”. The patent application number follows, together with a description of the “type of planting” and the method of operation. It also states that the equipment is manufactured by Carta & Co. Next to the advertisement is a short article written by Mr Terry Hurlock from “Invention Pathways”, under the heading “Infringement danger”. Mr Hurlock was active in the patents industry and worked in conjunction with the patent attorneys who prepared Mr Mizzi’s patent application. Mr Hurlock also had discussions with Mr Morellini as to the possibility of acting for him although, in the end, Mr Hurlock declined to do so. The article speaks about innovation and the danger of copying patented inventions. There is then a reference to a “new cane planting unit designed in Ingham which was subject to an application for patent”. It is said that, “We know of farmers who are manufacturing their own version of the new invention whilst the patenting process is operating”. It is then said that once the patent is granted the patent owner may pursue his rights, extending back to the original application date. It is suggested that infringement can be a costly exercise, and that small changes will not avoid infringement. It is also said that infringement, if proven, can mean fines “or even loss of the infringing machine plus claims for loss of income”.

117    I doubt whether it is really necessary to go beyond the admission by the applicant and Mr Mizzi that:

[they] caused to be published in Cangegrowers magazine on 5 April 2010 a notice of a patent application in the name of the first cross-respondent in respect of the Mizzi mound planter and an accompanying article by Terry Hurlock entitled “Infringement danger”.

118    However I should record that in his cross-examination. Mr Mizzi demonstrated an evasiveness which strongly suggested close involvement in the circumstances which led up to the appearance of the two items in the publication in question. The relevant cross-examination appears at ts 93-ts 99.

119    There can be no doubt that the advertisement and the article, appearing in the same publication, were designed to threaten infringement proceedings and, viewed objectively, had that effect.

120    Paragraph 11 also contains a separate allegation of threats against a Mr Girgenti. The respondent alleges that Mr Mizzi asserted to Mr Girgenti that the Morellini device infringed the Patent and demanded that Mr Girgenti pay the applicant a royalty in respect of the infringement.

CONCLUSIONS

121    It follows that the claim of unjustifiable threats must succeed. I shall hear further submissions on that subject and as to any appropriate relief. The claim and cross-claim must otherwise be dismissed. I shall hear submissions as to appropriate orders and costs.

Associate:

Dated:    24 December 2013