· In order to be 'available', information said to destroy novelty must 'enable' the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point (Stanway Oyster at 581-582)."
204 With respect to the facts, the Court said (at 49 [151]):
"The public was not denied access, and there was a means for the public to inspect the original. There was nothing to prevent a member of the public from going to its location at the back of the pits, and examining it sufficiently to understand its construction and its component features. There is nothing in the evidence to suggest that examination would not have revealed all the integers of the claimed invention including the mounts and pins as described in the Patent specification. The information gleaned from such an inspection would, for the purposes of practical utility, be equal to that given in the patent (Hill v Evans (1862) 31 LJ CL 456 at [7]; Merck at [111]-[112]). An inspection would enable a person skilled in the art to put the claimed invention into practice (cf Bodkin at [3790] and the cases there cited)."
205 The applicant referred to the decision of Gyles J in Delnorth Pty Ltd (ACN 051 954 977) v Dura-Post (Aust) Pty Ltd (ACN 101 287 512) (2008) 78 IPR 463. One issue in that case was whether information about a roadside post had been made publicly available by the doing of an act. In the course of his reasons, Gyles J said (480-481 [73]):
"The present case is not like Jupiters, where the system was operating in what amounted to a public place and could be observed. In my view, the evidence does not enable any such finding to be made here. Even if it was left around the factory, nobody was invited to look at it and nobody would have had any occasion to take any notice of it. In any event, the matter was not pleaded in that way. Rather, the case turns on the principle that, if a product is made available to a member of the public without restraint at law or in equity as to the use of that product that is regarded as public disclosure. That principle has been applied for a very long time when various formulations of the statutory test have applied. In the present context, that would be the equivalent of making the information publicly available by an act. It is well-recognised that a duty of confidence in the recipient would negate the public nature of the act."
206 In the result in that case, Gyles J held that the person to whom the prototype had been shown was under a duty not to use it or disclose it without the consent of the person who had showed it to him. There was an appeal from the decision of Gyles J but not on this aspect (Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81; (2009) 177 FCR 239).
207 It appears that a contractor can be a member of the public for the purposes of determining if information was made publicly available: Lux Traffic Controls Ltd v Pike Signals Ltd [1993] RPC 107.
208 Disclosure within a company (that is, to other officers or employees of the company) may not involve making information publicly available. Wood v Westaflax (Aust) Pty Ltd (1990) 20 IPR 387 was a case which involved a patent for ducting of the kind used in air-conditioning. The respondent claimed that the invention lacked novelty because the inventor had given a sample of the product to a Mr Williams of Heacon Products Pty Ltd outside Australia and Mr Williams had taken it back to Australia and shown it to, among other people, some of the employees of Heacon Products Pty Ltd including his superior, the managing director, and the sales manager. King J held that the disclosure to the employees was not sufficient to amount to publication (this case was a pre-1990 case and related to publication and not the concept of public availability). His Honour said (at 399):
"As the disclosures of the invention by Mr Wood and others to Mr Williams took place overseas they cannot be relied on as prior publication in Australia. Furthermore Mr Williams was, in receiving the sample, acting as the duly authorised agent of his employer, and in that capacity brought it back to Australia, and also in that capacity showed it to his superiors and some fellow employees. The giving of the sample to him was in law the giving of it to Heacon Products Pty Ltd, and the showing of it to other employees of Heacon was not prior publication in Australia, as all persons who saw it did so in their capacities as agents of Heacon. The situation was equivalent to an individual showing the duct to himself."
209 As far as the alleged prior uses at Billy Guyatts Moonee Ponds, Billy Guyatts Blackburn and Radio Australia are concerned, the respondent's case relies heavily on the evidence of Mr Miles. In addition, some evidence relevant to those uses was given by Mr Petersen.
210 Mr Miles was employed by IEI (Aust) between 1992 and 1995 and by the respondent between 1995 and 2005. At the time he gave evidence, Mr Miles worked for a company in Western Australia which distributed, among other products, the VESDA products. The VESDA products were supplied by Xtralis. Mr Miles' company was Spectrum Technologies International Limited, and it had some association with a company in which Mr Petersen has an interest.
211 Mr Miles commenced an apprenticeship as an electrical fitter with K A Jessup Pty Ltd ("Jessup") on 7 December 1977. He was 17 years old. In 1980 he was in the third year of his apprenticeship.
212 In 1980 Jessup was approached by Billy Guyatts and asked to install a smoke detection system in its retail store at the corner of Sydenham Street and Holmes Road, Moonee Ponds, in the State of Victoria.
213 A short time after the request, the matter was discussed between Mr John Peterson of IEI (Aust) and Mr Alan Jessup, who was the principal of Jessup. It was decided to install a VESDA E700 Mk I smoke detection system in the store. IEI (Aust) was to provide the system and advice about the design and construction of the system on the premises. Mr Miles was to be part of Jessup's installation team.
214 A number of discussions about the proposed installation took place between members of Jessup and, on occasions, Mr Petersen of IEI (Aust) was present. Those from Jessup who were involved in the discussions were Mr Keith Jessup, Mr Bruce Arrowsmith (the foreman at Jessup), Mr Miles and another apprentice.
215 The equipment for the smoke detection system that was chosen by Jessup was a centrifugal blower as a vacuum pump and a sintered bronze filter. IEI (Aust) provided the detector chamber, its mounting system and the control system. Jessup obtained the pipework and fittings. Mr Peterson provided advice on the pipework and fittings and on their design.
216 The system which was installed by Jessup at Billy Guyatts Moonee Ponds, had the following features:
1. Air was drawn from the room or other protected area through 50 mm branch pipes. There was a sintered filter in each of the branch pipes at the point where they first drew air from the room or other protected area.
2. The branch pipes joined a trunk pipe.
3. The air travelled along the trunk pipe to an inlet probe (approximately 25 mm in diameter) for a Mk I detector. The inlet probe extracted a sample of air which was taken to the detector, tested and then returned to the trunk pipe through an outlet probe.
4. The main flow of air continued along the trunk pipe.
5. All the air from the trunk pipe, including the air returned to the pipe through the outlet probe was exhausted to atmosphere by an air pump situated beyond the outlet probe.
217 The system as I have described it does not embody one feature of claims 1 and 3 in the specification, namely, a particles filter disposed in the secondary duct means (being according to the respondent's submission, the inlet probe). This is the topic upon which the conversation deposed to by Mr Miles is significant.
218 Mr Miles said that prior to the decision to place sintered filters at the end of the branch pipes, there was a discussion within Jessup about the possibility of placing a sintered filter in the inlet probe instead of at the ends of each branch pipe. Those involved in the discussion were Mr Keith Jessup, Mr Bruce Arrowsmith and himself, and the perceived advantages and disadvantages of doing so were discussed. Ultimately, Mr Miles said that the idea was rejected because an economically commercial filter of the correct size was not available at the time. However, the respondent's case is that that discussion was a discussion about a bypass arrangement that embodied the features of claims 1 and 3 in the specification.
219 In the period between 1980 and 1983 Billy Guyatts' head office was in Alfred Street, Blackburn.
220 Jessup installed a VESDA E700 Mk I smoke detection system at the premises in about 1981. Mr Miles was one of the employees involved, and he described the features of the system which was installed in the following way:
1. Capillary tubes 8 mm in diameter were attached to a trunk pipe 100 mm in diameter which, by means of a fan at the end of the trunk pipe, drew air from the capillary tubes through the trunk pipe.
2. There was an inlet probe in the trunk pipe which led to a VESDA E700 Mk I detector with a flash tube assembly.
3. There was an outlet probe from the detector unit into the trunk pipe to carry air back into the trunk pipe.
221 About one year later, Jessup upgraded the smoke detection system at Billy Guyatts, Blackburn, by replacing the VESDA E700 Mk I detector with a VESDA E700 Mk II detector. Again, Mr Miles was involved in the work and he described the features of the upgraded system in the following way:
1. A VESDA E700 Mk II detector was used.
2. The PVC inlet and outlet probes which were 20 mm in diameter had attached to them two rubberised flexible conduit pipes which Mr Miles described as being like washing machine hoses. These conduit pipes led to the detector enclosure containing the VESDA E700 Mk II detector.
3. The flexible pipe was "sleeved" over the two 20 mm in diameter probes. I mention at this point that Mr Miles' drawing does not show this sleeved arrangement.
4. Part of the air flowed from the trunk pipe into the inlet probe, along the flexible conduit pipe, through a filter in the VESDA E700 Mk II detector box, further along the conduit pipe, through the detector, and back through the flexible pipe to the outlet probe and back into the trunk pipe.
5. The filter consisted of a paper element housed inside a PVC pipe. It was provided by IEI (Aust).
6. There was a small fan at the outlet end of the detector box.
222 If I accept Mr Miles' evidence (a matter I will come to), the upgraded system embodies the features of, inter alia, claims 1 and 3 in the specification.
223 Some time shortly after July 1993, Mr Miles was asked by IEI (Aust) to replace a VESDA E700 Mk I detector at the premises of Radio Australia in Shepparton, Victoria. He went to the premises and found a VESDA E700 Mk I system in the roof space of the transmitter building. The system had not been serviced for a long time and was partially dismantled. The system used a sampling pipe network and part of that network was dismantled.
224 Mr Miles said that by looking at what was there, he was able to reconstruct how the system would have operated.
225 There was a pipe coming from a protected area. It entered a steel box which had a fan behind a plate which acted as a seal and which divided the box into two. The air entered the second part of the steel box (that is, the part that had the fan in it) and some of the air was exhausted through vents on the back of the box. Part of the air was directed through a pipe adjoining the rear part of the box. This air flowed through the pipe and then through a filter and then to a VESDA E700 Mk I detector. The detector was mounted on a timber board which was attached to the southern wall of the roof space above the transmitter hall.
226 The question of access to the Radio Australia site was the subject of a good deal of evidence. The applicant tendered an affidavit of Mr Bruce Robert Wilson. He was not required for cross-examination. Relevantly for present purposes, Mr Wilson was employed at the Radio Australia site between 1959 and either 1993 or 1994. He performed various technical roles at the site. He said that sampling pipes led from each of the transmitters into the transmitter hall ceiling space where the detector unit was located. Mr Wilson said that the VESDA smoke detection system was installed in the early to mid 1980s, probably between 1982 and 1985. A filter was included at some stage. Mr Wilson referred to the area around the site as a rural area which could generate a great deal of dust.
227 Mr Wilson is the most reliable source of information as to access to the site, access to the transmitter building and access to the ceiling space where the VESDA E700 Mk I unit was located. I make the following findings of fact based on his evidence:
1. The site was potentially dangerous because of the nature of the operations and equipment on the site. There were the risks associated with systems carrying high frequency voltage and radiation risks. Access to the site was restricted.
2. At the relevant time, there was a security fence around the site and large gate at the entrance.
3. Access to the transmitter building was restricted. The doors were kept locked and access was supervised by technical staff. Visitors were provided with security, safety and radiation advice.
4. Prior to the 1980s, small visitor groups were allowed onto the site, but access was confined to a small mezzanine transmitter hall viewing area and in the transmitter hall. After that date, apart from staff, access to the site was restricted to authorised technical personnel and contracting staff such as electricians and plumbers.
5. Visitors were required to give prior notice of their intention to visit the site and obtain permission to do so. They were supervised to a greater or lesser degree while on the site.
6. The VESDA E700 Mk I unit was in the ceiling space and the detector box was located on and near the brick west wall of the ceiling space. Access to the ceiling was obtained by either of two ladders and associated manholes. At some stage in the 1990s restrictive access chains were added to both ladders. Access to the ceiling space was restricted to qualified technical staff who had a maintenance or operation requirement.
7. The general public had no right of access to the site, the transmitter hall and the ceiling space where the VESDA E700 Mk I unit was located.
228 At the time he swore his affidavit, Mr Nigel Holmes was transmission manager at ABC Radio Australia. He had been employed by the ABC since 1981 and he has held the position of transmission manager since 1993. During the 1980s and 1990s he visited the Shepparton site two or three times (and later, more frequently) a year. He gave his evidence by way of affidavit and he was not required for cross-examination. Mr Holmes deposed to the security measures in place at the Shepparton site. Other than the fact that he said that access into the ceiling space was either via a ladder with a trap door or a steep set of stairs with a handrail, his evidence about access to the site, transmitter hall and ceiling space was similar to that given by Mr Wilson.
229 Mr Howard Deer was employed by the ABC for approximately 30 years. In 1990, or thereabouts, Mr Deer worked within Radio Australia as acting controller of resources and distribution. He visited the Shepparton site on two or three occasions between 1990 and 1993. He gave his evidence by affidavit and he was not required for cross-examination. His evidence was not inconsistent with that of Mr Wilson or Mr Holmes. He made the point that the site was frequently upgraded or maintained and that involved, on occasions, external contractors visiting the site. He made the point that access to the site was largely restricted for safety reasons. He was not aware of any requirement that those accessing the site sign any form of confidentiality undertaking.
230 The critical aspects of Mr Miles' evidence are the conversation concerning Billy Guyatts Moonee Ponds and the precise features of the smoke detection systems he saw at Billy Guyatts Blackburn and Radio Australia. Those aspects are not corroborated by any other witness. There are no contemporaneous records of the conversation he deposed to or records or drawings of the smoke detection systems he described.
231 The other parties to the conversation in 1980 or 1981 were Mr Keith Jessup and Mr Bruce Arrowsmith. Neither gave evidence at the trial. The first time Mr Miles prepared plans of the smoke detection system at Billy Guyatts Blackburn, which he saw in 1982 or 1983, was in September 2009. When Mr Miles saw the smoke detection system at Radio Australia shortly after July 1993 it was partially dismantled. The first time Mr Miles prepared plans of that smoke detection system was in March 2008.
232 I have already referred to Mr Petersen. As I have said, Mr Petersen conducts a business in Western Australia and the business includes distribution of the VESDA products supplied by Xtralis. He is in regular contact with Mr Miles. Although the applicant tested Mr Petersen's recollection of events surrounding the smoke detection systems at Billy Guyatts Moonee Ponds and at Billy Guyatts Blackburn it did not challenge Mr Peterson's credibility with respect to those issues. Mr Peterson's evidence corroborates some of the relatively uncontentious aspects of Mr Miles' evidence. It was Mr Petersen who suggested to the respondent's solicitors that they contact Mr Miles.
233 Mr Petersen said that he was involved in the installation of a VESDA E700 Mk I smoke detection system with dedicated sampling pipes at Billy Guyatts, Moonee Ponds. He remembered the involvement of Jessup and Mr Miles and he recalled having conversations about the use and installation of the system. He remembered that it involved a trunk pipe and sampling pipes. He did not give any evidence about a discussion raising the possibility of placing a sintered filter in the inlet probe.
234 Mr Petersen said that he was involved in the installation of the VESDA E700 Mk I smoke detection system at Billy Guyatts, Blackburn and the replacement of that detector with a Mk II. He remembered climbing into the ceiling to inspect the ceiling space. Mr Petersen said that the 8 mm tubes were installed in parallel and all emanated from a manifold made by Festo. The manifold was connected to a trunk pipe. The system was in the ceiling and access was obtained by climbing a ladder and removing a tile in the ceiling.
235 Mr Petersen said that he was involved in arranging the installation of a VESDA E700 Mk I smoke detection system at Radio Australia.
236 I have considered Mr Miles' evidence very carefully. I do not think that he was trying to mislead the Court at any stage. Nevertheless, the matters and events about which he deposed took place many years ago and, as I have said, there are no contemporaneous records or drawings. Although I think that he genuinely believed the matters he gave evidence about, there were aspects of his evidence which lead me to think that his recollection about critical matters was not as clear as he considered. Some matters are more important than others, but it is the overall effect of Mr Miles' evidence which causes me to have doubts about his reliability.
237 There were three topics in particular where I thought Mr Miles' evidence was unclear and to some extent confusing, and where I think an element of reconstruction crept in.
238 The first topic was his evidence about the pipework and its size at Billy Guyatts, Blackburn. In his statutory declaration made on 27 March 2008, Mr Miles referred to 8 mm capillary tubes instead of the 50 mm "trunk" pipe used at the Moonee Ponds premises. In his affidavit affirmed on 22 May 2009 he corrected that statement to 50 mm "branch" pipe. In the same affidavit he referred to 8 mm capillary tubes, 50 mm diameter branch pipes and 100 mm trunk pipe at Billy Guyatts, Blackburn. In his affidavit affirmed on 25 September 2009 Mr Miles stated that at Billy Guyatts, Blackburn there were two types of pipe, namely, 8 mm capillary tubes and a 100 mm trunk pipe. Mr Miles sought to explain these errors and his correction of them in his affidavit of 25 September 2009, by reference to the fact that he had some old scribbled notes provided to him by his ex-wife. Those notes were not produced.
239 The second topic was Mr Miles' evidence about the replacement of the VESDA E700 Mk I smoke detection system with the VESDA E700 Mk II smoke detection system at Billy Guyatts, Blackburn and the location of the various components of the VESDA E700 Mk II system. It was not clear to me at the conclusion of that evidence what part of the system was in the ceiling space and what part was in the room, and what part was visible and what part was not visible.
240 The third topic was Mr Miles' evidence about the smoke detection system at Radio Australia, Shepparton. Part of his written evidence was struck out on the basis that it was hearsay. In giving that evidence Mr Miles appeared to have relied on conversations with employees at Radio Australia. At the end of Mr Miles' evidence, I was not satisfied that I could draw a clear line between what he himself saw and what he was told by employees of Radio Australia.
241 I should mention that the applicant relied on two other matters as suggesting that Mr Miles was not a reliable witness. They were Mr Miles' evidence about the trunk pipe entering the enclosure and the differences between Mr Miles' evidence about the layout of the Radio Australia site and Mr Wilson's evidence on that topic. I would not draw any adverse conclusion about Mr Miles' evidence based on those matters. The former is as likely as not a slip and, as to the latter, there are differences between a number of the witnesses as to the layout of the Radio Australia site and I do not think that those differences are of particular significance.
242 As I have already said, Mr Miles' evidence stands alone on critical matters. He said that he took photographs of the smoke detection system at Radio Australia, but no photographs were produced. He said that Mr Petersen designed the smoke detection system at Billy Guyatts Blackburn, and yet Mr Petersen did not give evidence of the features of that system.
243 In all the circumstances, including the time which has elapsed and the onus on the respondent, I am not prepared to act on the evidence of Mr Miles and find the alleged prior public uses relied on by the respondent.
244 In view of the above conclusions, there is strictly no need for me to consider whether, had I accepted Mr Miles' evidence, the features of the relevant claims were made publicly available. However, I will briefly address that matter on the assumption that I accepted Mr Miles' evidence.
245 As far as the conversation concerning the smoke detection system to be installed at Billy Guyatts Moonee Ponds is concerned, had I been satisfied that the conversation took place, I would nevertheless have found that the information was not made publicly available. I would have reached that conclusion by applying similar reasoning to that of King J in Wood v Westaflax Aust Pty Ltd (1990) 20 IPR 387 (see [208] above).
246 As far as the smoke detection system at Billy Guyatts Blackburn is concerned, had I been satisfied that the system embodied the features deposed to by Mr Miles, I would have nevertheless found that the information was not made publicly available. It seems to me that there is simply too much uncertainty in the evidence as to what part of the system was in the ceiling space and what part was in the cupboard and what could be seen and what could not be seen.
247 As far as the smoke detection system at Radio Australia is concerned, had I been satisfied that the system embodied the features deposed to by Mr Miles, I would, with some hesitation, have concluded that the information was made publicly available. As I have said, contractors can be members of the public and the evidence is that they had access to the site. Furthermore, the evidence of Mr Miles and Mr Deer satisfies me that the occupiers of the site did not expressly or impliedly impose a fetter of confidence on contractors who visited the site.
248 I reject the respondent's challenge to the novelty of the alleged invention by reference to the conversation concerning the smoke detection system to be installed at Billy Guyatts Moonee Ponds, and by reference to the smoke detection system at Billy Guyatts Blackburn and the smoke detection system at Radio Australia.
249 I turn now to consider the respondent's claim that a fire detection system using a VESDA E700 Mk II detector head and installed at CERN defeats the novelty of the alleged invention.
250 The respondent's case is that between 1987 and the priority date of 30 July 1993, Dr Cole made various presentations to industry groups in Australia about smoke detection systems and, in particular, VESDA smoke detection systems. During those presentations Dr Cole showed photographs of a VESDA E700 Mk II detector head installed at CERN. Those photographs showed a smoke detection system which (according to the respondent) embodied a bypass arrangement and all of the features of claims 1, 3, 4, 6, 8, 9, 10 and 11 in the specification. The publication of the photographs in Australia meant that they were part of the prior art base for the purposes of determining novelty. In the alternative, the respondent's case is that, should it be found that the photographs themselves are not sufficiently clear to show all the features of a bypass arrangement, then the photographs and Dr Cole's oral explanation of the features in the photographs was a sufficient disclosure of the features of claims 1, 3, 4, 6, 8, 9, 10 and 11 in the specification.
251 Dr Cole's evidence about the smoke detection system at CERN was challenged by the applicant in a number of respects. I deal with those challenges below. Although Dr Cole may have overstated the position in one or two respects, I find that he was an honest and reliable witness and well qualified within his area of expertise.
252 The first challenge to Dr Cole's evidence relates to the time at which he first disclosed his evidence about the smoke detection system at CERN. Dr Cole made a statutory declaration in the opposition proceedings on 22 December 1998. Since that date and up to 2 October 2009, he made a further five statutory declarations and he swore three affidavits. In none of them did he refer to the smoke detection system at CERN. The first time he dealt with that topic was in an affidavit he swore on 2 October 2009. That was within days of the commencement of the trial. No doubt that was unsatisfactory from a case management point of view, but the applicant asked me to go further and find that it reflected adversely on Dr Cole's credit and reliability in relation to his evidence as to the smoke detection system at CERN.
253 Dr Cole gave an explanation for the late disclosure of his evidence about the smoke detection system at CERN. He said that he ceased to have any involvement in the respondent in about 1999 and he was not part of the team that was involved in the development of the strategy concerning the opposition proceedings. He had not looked at his collection of photographs since 1997. It was probably in 1997 that his collection of photographs and slides were, at the request of an employee of the respondent, placed on two CD-ROMs. Dr Cole said that until shortly prior to trial, he focused his attention on published brochures and manuals and not on the presentations which he had made. He was prompted to look at his collection of photographs and slides by a conversation he had with the respondent's solicitors shortly prior to the trial. I accept Dr Cole's explanation for the late disclosure of his evidence about the smoke detection system at CERN.
254 CERN lies on the border of France and Switzerland. It is a unique facility. It includes a 27 km circular tunnel which is approximately 100 metres underground. Within the facility, there are electronic equipment rooms in the shape of large shipping containers and Dr Cole said that the rooms were called barracks. The barracks were air-conditioned and protected by smoke detection systems.
255 Dr Cole said, and I accept, that in 1987 and 1988 those smoke detection systems, or at least some of them, were VESDA smoke detection systems.
256 Dr Cole visited the CERN facility on 11 June 1987 and again on 8 June 1988. Dr Cole's diary entries support his evidence that he visited CERN on those occasions, as do a number of telex messages which were tendered in evidence. On his second visit, Dr Cole was accompanied by Mr Fox. I find that Mr Fox was mistaken in his written evidence that he visited CERN with Dr Cole in 1987. That was contrary to facts which were clearly established. In fairness to Mr Fox, he was disposed to accept that he was mistaken in the course of his oral evidence. On the occasion of the second visit on 8 June 1988, Dr Cole and Mr Fox discussed the VESDA smoke detection systems with people associated with the facility at CERN. However, they were unable to look inside any of the enclosures or cabinets because they were locked and there was no one present who could open them.
257 On the occasion of his first visit, Dr Cole saw a smoke detection system which included a VESDA E700 Mk II detector head. Dr Cole took photographs of the smoke detection system. That was his evidence and it is consistent with his practice at the time. There is no doubt on the evidence that Dr Cole took photographs of smoke detection systems he saw over the years and it is likely that he would have done so when he saw a VESDA smoke detection system at a facility with the unique features of CERN. Furthermore, Mr Fox said that during the late 1980s and early 1990s, Dr Cole usually carried a 35 mm camera and frequently took photographs of subjects of interest to him, using colour transparency film.
258 The two CD-ROMs previously referred to were tendered in evidence at the trial. Two photographs were produced from the CD-ROMs and they were exhibited to Dr Cole's affidavit sworn on 2 October 2009 as "MTC-57". I find that those photographs were taken by Dr Cole at CERN on 11 June 1987 and that they show a smoke detection system at the facility. Clearer copies of the photographs were tendered by the respondent and became exhibit R22. I should add that I accept Dr Cole's explanation for the fact that a slide showing the steel enclosure described below bears a date in 1988. That slide was tendered in evidence at the trial.
259 I do not think that there is any dispute that the two photographs show a smoke detection system (which was not operating at the time the photographs were taken) which collects a sample of air by the use of dedicated sampling pipes. In addition, there are other features of the system shown in the photographs which are not in dispute. However, there are features of the system which are in dispute. Those features relate to whether there is a main duct means and a secondary duct means or simply one duct and whether a device shown in one of the photographs is a particles filter or some other device such as a water or oil trap.
260 I start by describing the features shown in the photographs which are not in dispute.
261 The first photograph shows two sampling pipes in front of an air-conditioning grille. The pipes have small holes in them facing towards the direction of incoming air. The two sampling pipes join a main or trunk pipe.
262 The second photograph shows a steel enclosure or cabinet mounted on a wall. The cover of the enclosure is open and the contents of the enclosure are visible. A pipe adjoins the enclosure on the right hand side. Inside the enclosure the pipe joins a large impeller or fan. There is then a short vertical pipe which runs out of the top of the impeller. The short vertical pipe appears to have something at or near the top of it. There is a pipe or piece of flexible hose which runs at right angles from a position near the top of the short vertical pipe. This pipe or flexible hose runs in a horizontal direction to a glass or plastic container with a blue top. Adjoining the container on its left hand side is a piece of flexible hose which leads upwards to a detector head. The detector head has provision for an electrical connection, an inlet or outlet for the flexible hose and an inlet or outlet which, in the photograph, appears to have a cap on it.
263 Dr Cole gave evidence of the features of the system he saw on 11 June 1987 and which he said are shown in the photographs. He said that air would be taken in through the sampling pipes and it would pass along the trunk pipe and into the enclosure. After passing through the impeller the air would pass up the short vertical pipe. Dr Cole said that the short vertical pipe was open at the top and that the majority of the air would be expelled into the cabinet and thereafter out of the cabinet through vents in it. A small part of the air would pass through the horizontal pipe and then through the container with the blue top. Dr Cole said that that container was a filter and that, although the filter mechanism was not in the container, it is shown in the photograph resting on the left hand side of the bottom of the enclosure. The air would then pass into the detector. The inlet or outlet with the cap on it was in fact an exhaust outlet and the cap was there to protect the detector while it was being commissioned.
264 From the point of view of the challenge on the ground of lack of novelty, there are two critical aspects of the smoke detection system shown in the second photograph. The first is whether the short vertical pipe was closed at the top or open as Dr Cole claimed. If it was closed at the top the system does not have a main duct means and secondary duct means. In other words, it does not have a bypass arrangement. The second is whether the container with the blue top is a particles filter or some other device such as a water or oil trap. If it is not a filter then there is no particles filter disposed in secondary duct means.
265 The applicant submits that it can be seen from the second photograph that the short vertical pipe is closed at the top. In the alternative, it submits that it is unclear whether it is closed at the top or open. By the time of final submissions the respondent accepted that it is not clear from the second photograph whether the short vertical pipe was closed or open at the top. I think that proposition was accepted by Dr Cole in cross-examination.
266 I am unable to determine from the second photograph whether the short vertical pipe is closed at the top or is open but with a collar on it as was suggested by Dr Cole. The short vertical pipe appears to have something near the top of it but I cannot determine whether it is a cap or a collar. Furthermore, I am unable to determine from the second photograph whether the container with the blue top is a particles filter or some other device. The evidence in this case included diagrams and evidence of various types of filters, but it was not of such a nature that I could, from the general background, reach a conclusion by merely looking at the second photograph that the container with a blue top was or was not a particles filter.
267 The applicant submits that I should reject Dr Cole's evidence that the short vertical pipe was open because the smoke detection system would not work if that were the case.
268 Mr Fox and Mr Barrett gave evidence that if the top of the short vertical pipe was open, a "Venturi" effect would be created and that that would cause, or may cause, air to flow in the opposite direction to that intended. In other words, air would be drawn out of the horizontal pipe rather than pass through it.
269 Mr Fox said that he believed a Venturi effect would be created if the short vertical pipe was open, there was sufficient leakage from the cabinet and the exhaust outlet on the detector head was not capped. He qualified this evidence in cross-examination by saying that whether a Venturi effect would be created would depend on the diameters of the fitting. Mr Barrett also gave evidence of a possible Venturi effect. Mr Barrett, who is an electronics engineer, acknowledged in cross-examination that he was not an expert in the field and he said that he would defer to the opinion of Dr Cole having regard to the latter's expertise in the area.
270 Dr Cole is an expert in fluid dynamics. He explained the Venturi effect and certain principles formulated by Bernoulli. I accept Dr Cole's evidence and I accept that the system was capable of performing in the manner he described.
271 I have considered carefully Dr Cole's evidence of the features of the smoke detection system at CERN. I have borne in mind that the onus is on the respondent to establish the prior use and publication which it claims has the consequence that the applicant's alleged invention is not novel. As I have said, Dr Cole was an honest and reliable witness. I accept his evidence as to the features of the system. Mr Fox and Mr Barrett did not see the system, but they gave evidence of what they considered to be the features of the system. I prefer Dr Cole's evidence to their evidence. I should add that I accept Dr Cole's evidence that the reference in his diary entry for 11 June 1987 to "End closed" is not a reference to the top of the short vertical pipe.
272 I should at this point mention evidence given by Mr Mitchell. He appeared by video link from the United Kingdom. Mr Mitchell was employed by IEI (UK) between 1989 and 1994. His job was (as he put it) to set up smoke detection systems and to test them. He was not involved in designing smoke detection systems. From 1994 Mr Mitchell was employed by companies whose business involves the installation of aspirating smoke detection systems. Those companies have installed smoke detection systems for both Airsense Technology and the respondent.
273 Mr Mitchell was shown Dr Cole's photographs by a patent attorney in the United Kingdom. He described what he saw in the second photograph. The top of the short vertical pipe appeared to him to be "capped-off" and there appeared to be a moisture trap. As to the latter, he said that there was a little drain at the bottom of that item. He said that he had never seen a particles filter which looked like the container with the blue top, whereas he had seen moisture traps which looked very similar to the container with the blue top.
274 In cross-examination, Mr Mitchell agreed that it would be unusual for a system such as the system shown in the photographs not to have a particles filter.
275 Mr Mitchell was an honest witness but his expertise in terms of the design and function of smoke detection systems was quite limited. He has a level of practical experience, but it does not rival the expertise and experience of Dr Cole. I prefer the evidence of Dr Cole.
276 The findings set out above do not of themselves defeat the novelty of the applicant's alleged invention because the use at CERN was outside the patent area. At the relevant time, the prior art base for the purposes of determining novelty did not include an act outside the patent area. In order to succeed on this point the respondent must make out its allegation that between 1987 and 30 July 1993 Dr Cole made presentations to industry groups and that during those presentations Dr Cole showed the photographs and explained the features of the smoke detection system. Having regard to my findings as to what is and what is not shown in the second photograph, it is not sufficient for the respondent to establish that the photographs were shown. It must establish that Dr Cole explained the features of the system and, in particular, the bypass arrangement and the presence of the particles filter.
277 With respect to that issue, a number of matters are clearly established by the evidence.
278 I am satisfied that over the years, including between 1987 and July 1993, Dr Cole was an enthusiastic promoter of products of IEI (Aust) including the VESDA smoke detection system. Dr Cole was a man for detail and he kept detailed records by way of diary entries and a substantial collection of photographs and slides. He made regular presentations to industry groups and potential purchasers of the products of IEI (Aust). During the presentations Dr Cole would show the audience some of his photographs and slides and he would explain the features and no doubt, what he perceived to be the advantages of the products of IEI (Aust) including the VESDA smoke detection system. As I have already said, the two photographs of the smoke detection system at CERN were part of Dr Cole's collection of photographs and slides.
279 Dr Cole gave evidence of his presentations and the fact that he made presentations on a regular basis was supported by a number of his diary entries. Other witnesses gave evidence of the fact that Dr Cole gave regular presentations and these witnesses included Mr Petersen, Mr Miles, Mr Fox (who spoke of presentations in England, Ireland and France), and Mr Julian Whitta.
280 IEI (Aust) had premises at Clayton, Victoria. Dr Cole said, and I accept, that in the auditorium at those premises he gave the following presentations:
1. Presentations on 22 and 23 June 1987 to Telecom employees from around Australia;
2. A presentation on 5 September 1988 to Asian distributors; and
3. A presentation on 7 September 1988 to persons associated with the Commonwealth Fire Board.
Dr Cole also gave presentations at the following venues:
4. A presentation on 23 February 1989 in Adelaide to people associated with the fire industry;
5. A presentation on 16 March 1989 at Sydney University, New South Wales, to persons associated with the hospitality industry; and
6. A presentation on 7 April 1989 in Western Australia with people associated with Telecom.
281 Dr Cole said, and I accept, that there were other presentations and that the audiences included representatives of Wormald (Aust), other distributors, installers, designers of systems, architects and representatives of institutions such as Telecom and fire brigades. All of Dr Cole's presentations were made as part of the promotion of the VESDA products and without any obligations of confidence imposed on members of the audience.
282 Dr Cole said that at his presentations he displayed the two photographs of the smoke detection system at CERN. He said that he discussed the features of the system shown in the two photographs and that he mentioned the fact that a majority of the air passed out of the top of the short vertical pipe. He mentioned the fact that a collar around the top of the T-piece narrowed the pipe at that point to control the proportion of air diverted into the horizontal pipe. One of the features of the system was, according to Dr Cole, the filter and he said that he mentioned the features of the system.
283 Mr Fox said that he attended presentations made by Dr Cole in England, Ireland and France between 1987 and July 1993. He had no recollection of the second photograph being shown, although he recalls other photographs being shown. He believed he would have remembered the photograph and the explanation Dr Cole said he gave when he showed the photograph if this had taken place.
284 Mr Julian Whitta is a graphic designer. He was employed by IEI (Aust) between 1989 and 1992 as a desktop publisher. He was responsible for preparing product and system design illustrations for the VESDA products and the preparation (with another) of the VESDA system manual. Mr Whitta said that although he had seen the first photograph during the course of his employment he had never seen the second photograph. He was aware that Dr Cole made presentations and during the presentations he presented 35 mm slides on a projector and spoke to various photographs. He in fact attended two presentations at IEI (Aust)'s auditorium. He does not recall any explanation about the installation at CERN.
285 Mr Whitta was an honest witness. However, his evidence does not establish that the second photograph was not in existence before the priority date. In fact, the evidence is overwhelming that it was in existence before the priority date. There is Dr Cole's evidence, the date of the slide and the evidence of Mr Petersen and Mr Miles. Mr Petersen recalls discussing VESDA E700 Mk II units at CERN with Dr Cole and seeing the two photographs in the late 1980s. Mr Miles said that shortly after he joined IEI (Aust) in 1991, he attended one of Dr Cole's presentations and Dr Cole showed the two photographs. I accept Mr Miles' evidence on this point.
286 I note Mr Whitta's evidence about what he sees as the features of the systems shown in the second photograph. However, in view of the fact that his area of expertise is not the design of smoke detection systems his evidence does not advance the matter very far. Mr Whitta's evidence supports the conclusion that the photographs taken at CERN would have been shown by Dr Cole (Mr Whitta described the application at CERN as "technically interesting") and that Dr Cole was in the habit of explaining at length the features of the systems he displayed in his slides and photographs.
287 I accept Dr Cole's evidence that between 1987 and 1993 he made presentations in Australia to industry groups and prospective purchasers. I find that at those presentations information was given to the audience without any obligation of confidence being imposed. I find that at a number of these presentations, Dr Cole showed the audience the two photographs of the smoke detection system at CERN. Dr Cole may have overstated the position when he said that he did this at all the presentations and this may explain the evidence of Mr Fox and Mr Whitta referred to above. Nevertheless, I am satisfied that he did display the photographs on a number of occasions. I am also satisfied that Dr Cole explained the essential features of the system when showing the photographs, including the opening at the top of the vertical pipe and the filter. Although Dr Cole did not give evidence of precisely what he said about the filter, he said, and I accept, that he mentioned the features of the system and that the filter was a feature of the system.
288 It follows from these findings the features of claims 1, 3, 4, 6, 8, 9, 10 and 11 in the specification were publicly disclosed in Australia before the priority date when Dr Cole showed the two photographs and explained the features of the smoke detection system at CERN.