Consideration
59 Relevantly, claims 1 and 4 disclose the essential integers of the Patent which are the subject of dispute. The applicants say that these integers encompass the Coretell Equipment; the respondents say that they do not. During the hearing counsel for the applicants, without objection, handed up a document entitled "Expert Conferral - Interpretation of Claims in Patent" which outlined the essential integers of each claim (integers A through S).
Claim 1
A. An orientation device for providing an indication of the orientation of a core sample relative to a body of material from which the core has been extracted
B. the orientation device comprising means for determining and storing orientation of the device
C. at predetermined time intervals relative to a reference time
D. means for inputting a selected time interval,
E. means for relating the selected time interval to one of the predetermined time intervals and
F. providing an indication of the orientation of the device at the selected time interval.
2. Claim 2
G. An orientation device as claimed in claim 1 attached to an inner tube assembly of a core drill and fixed against rotation relative thereto,
H. the orientation device including a means for attachment to the inner tube assembly.
3. Claim 3
I. An orientation device as claimed in claim 1 or 2 including means for comparing the orientation of the device at the selected time interval to the orientation of the device at any subsequent time and
J. providing an indication of the direction in which the device should be rotated in order to bring it into an orientation corresponding to the orientation of the device at the selected time.
4. Claim 4
K. An orientation device for providing an indication of the orientation of a core sample relative to a body of material from which the core sample has been extracted, the orientation device comprising means for generating signals responsive to the orientation of the device,
L. a processor for receiving the generated signals
M. and for processing the signals to orientation data representative of the orientation device,
N. means for storing the orientation data at predetermined time intervals,
O. means for inputting a signal representative of a selected time interval to the processor,
P. the processor operating to relate the selected time interval to the predetermined time intervals,
Q. and output a signal indicative of the orientation of the device at the selected time interval
5. Claim 5
R. An orientation device as claimed in claim 4 wherein data is generated representative of the orientation of the device at any subsequent time,
S. and the processor is operable to output a signal to a display means to provide a visual indication of the direction in which the device should be rotated at said subsequent time in order to bring the device into an orientation corresponding to its orientation at the selected time.
60 The essential integers said to be in dispute were put into four broad categories, or issues, for resolution, namely:
1. The meaning of the word "device" (the device issue).
2. The meaning of the phrase "storing orientation" (the storage issue).
3. The meaning of the phrase "time interval" (the time interval issue)
4. The meaning of the related phrase "predetermined time interval" (the predetermined time interval issue).
61 The applicants submit that when properly construed, each word or phrase and the integers informed by them, clearly encompass the Coretell Equipment. The result, the applicants submit, is that the Coretell Equipment has taken all of the essential integers of the invention as claimed and thereby has infringed the Patent. The respondents submit that the Coretell Equipment has, when the claims are properly construed, not taken any of the essential integers and is consequently outside the scope of the Patent's monopoly.
62 In the end, if the applicants fail to show that the Coretell Equipment has taken each and every essential integer of the invention as claimed, then the applicants' claim for infringement fails. I turn first to discuss the device issue.
63 The device issue: The controversy here is whether the term "device" as used in the claims of the Patent can encompass a core orientation tool in two or more separate and separated parts (as the applicants submit it can) or whether it is limited to a unitary tool comprised of a single piece (as the respondents submit it must).
64 The term "device", as used in the claims, appears in integers A, B and F of claim 1 and integers K, L/M and Q of claim 4. References to "device" in claims 2, 3 and 5 are dependent on these integers in claims 1 and 4. The parties do not dispute that these integers are essential to the Patent. Consequently, if the word "device", as used in the claims, does not comprehend a tool in multiple parts then the Coretell Equipment has not taken all of the essential integers of the claims of the Patent and cannot be said to infringe the Patent. The result would be that the applicants' case would fail.
65 I should emphasise at the outset of this analysis, as I have attempted to make clear earlier in these reasons, that the relevant term must be construed within the context of the claims as a whole and from the perspective of a relevantly skilled addressee of the Patent at the priority date, and not simply with an appreciation as to what that word may mean in common parlance or in various non-relevant fields of industry. I should also note that from the time the hearing before me commenced until the time when it concluded, the "device issue", as I have termed it, was identified by the parties - particularly the respondents - as a key issue relevant to the construction and infringement arguments in this case. It was noted as such in the written opening submissions of the parties and repeatedly highlighted by counsel at trial.
66 The applicants submit that a reading of the word "device", which treats it as a single physical thing should not be accepted. The applicants say that as a matter of ordinary usage it extends to things which have more than one separate physical component. The applicants highlight the evidence of Professor Trevelyan who, in cross-examination, cited various engineering objects comprising multiple separate components commonly referred to by engineers as a "device", including an electric drill and its chuck, and the common car jack with a detachable handle. The respondents say that resort by Professor Trevelyan to broad meanings of the word "device" in contexts unrelated to the Patent claims is irrelevant and cannot assist the Court in interpreting the claims. While I consider Professor Trevelyan's evidence relevant, because I have not accepted him as a non-inventive skilled addressee of this Patent, I necessarily give his evidence less weight than that of Dr Kepic and Dr Myers.
67 The applicants submit that the evidence of Dr Kepic in relation to this issue should be wholly accepted. Dr Kepic, at [16] of his affidavit dated 18 June 2009, considers that the term "device" means "an arrangement of items, not necessarily physically connected, which work together for the purpose of functionality and to produce a useful outcome". Dr Kepic also gave evidence that in his field of geophysics, it is common to find a "device" which comprises a number of physically separate components but which nevertheless work together to produce a result and are referred to those skilled in the field as a single device. The examples he gives are of data harvesting tools which comprise a series of remote sensors and a separate handheld display unit, and differential GPS survey devices which comprise both a base station and a roving station. Dr Kepic says that in both "devices" the components are sold together as one integrated package and are functionally useless without each other. The applicants say that such a scenario is analogous to the patent in this proceeding and so the reasoning is transferable. The applicants say that this reasoning should be adopted and that, consequently, the term "device" in the claims clearly encompasses tools in multiple parts.
68 The respondents in turn say that this evidence is not relevant as it has nothing to do with the words or text of the Patent and cannot therefore aid claim construction. I disagree with this submission. The evidence given by Dr Kepic is clearly relevant to understanding the point of view from which a skilled addressee would approach a reading of the Patent. It supports the conclusion that Dr Kepic has a broad understanding of the term "device" as incorporating tools in two or more parts, outside of his involvement in this litigation. It militates against any assertion that Dr Kepic's evidence is contrived. However, the construction of the claims is a task ultimately for the Court and not for the witnesses; therefore I do not treat Dr Kepic's evidence as determinative of the controversy.
69 The respondents contend that the plain words of the claim, namely a plain reading of the phrases that include the term "device", preclude tools in multiple parts from falling within the monopoly conferred by the Patent. The respondents base this argument on two premises, namely that:
· the claims do not contain any description or contemplation of any orientation device in two separate and separated parts; and
· the claims refer only to "the orientation of the device (emphasis supplied).
These premises have some overlap in that they both read the claims as restricted to a unitary device.
70 In relation to the first contention, that the claims do not contain any description or contemplation of any orientation in two separate and separated parts, the respondents point to the definite article, "the", which precedes the term "orientation device" and the singular word "device" at several points in the claims. The respondents emphasise that the inclusion of the definite article clearly indicates that the claims are only intended to encompass unitary devices, not those with multiple components. The words of the claim should be understood as having been chosen with precision and care. The respondents submit that as a matter of ordinary grammar and syntax it cannot be contemplated that the phrases "the device" and "the orientation device", when the definite article is taken into consideration, encompass two separate and separated components of one tool such as the downhole unit and handset of the Coretell Equipment.
71 Similarly, in relation to the second contention, that the claims refer only to the orientation of the device, the respondents say that it would be incorrect to interpret the claims as including a device in two or more parts as to do so would mean the reference to the orientation of the device in the claims would be a nonsense. Put another way, the respondents say that where the claims refer to "the orientation of the device" it is clearly referable to a device in one part, as if it were referable to a device in two or more parts it would, to be sensible, need to refer to either the orientation of one part or another. That is, the claims only speak to one orientation of one device, not the orientation of, say, a downhole unit and the separate orientation of a controlling handset. Nor do the claims speak only to the orientation of the downhole tube part of a multi-part device.
72 When this point was put to Professor Trevelyan in cross-examination, he accepted that the Coretell Equipment was comprised of two parts (transcript, 169) and that each part has its own orientation independent of the other (transcript, 210). The respondents highlight the fact that Professor Trevelyan accepted that as the two components of the Coretell Equipment can have independent orientations you cannot have one orientation representing the device as two disconnected objects (transcript, 210). The respondents say that once this is understood it is clear that the Patent is limited to tools in one part. To take it further would be to impermissibly stretch the words of the claims of the Patent outside of their clear textual meaning.
73 When the same proposition was put to Dr Kepic he also accepted that both the handset and the downhole unit components of the Coretell Equipment would have orientations quite independent of each other (transcript 391). Dr Kepic was then taken to the words of claim 1, and in particular to the words, "there must be a means for determining and storing the orientation of the device". The transcript, at 392, records the following exchange during cross-examination:
Now, where, in the Coretell Equipment does that occur if, as your evidence says, the Coretell Equipment comprises a separate handset and a separate down hole unit, each
of which has its own orientation?---I don't see - it seems to me a splitting of hairs but you cannot - the orientation of the handset is irrelevant, so the orientation of the device is the bore hole component of it.
Well, is what you're saying to his Honour that you would rewrite the claim to mean read as follows:
Means for determining and storing the orientation of the down hole unit at predetermined time intervals.
?---It might be nicer but, you know, if it's a peripheral there or a minor component I wouldn't necessarily try and refer to them - if a - if it were me writing the claim and I wanted to retain a generality - you would normally refer to the most important component with respect to orientation. So whilst it might an omission for a device that has separate components, it doesn't seem to me something that is completely illogical.
74 The respondents say that the evidence of Professor Trevelyan and Dr Kepic referred to above supports their interpretation of the claims as failing to encompass the Coretell Equipment. Dr Kepic clearly recognised that the claims contain "an omission for a device that has separate components", though on his reading of the Patent this was not completely illogical because it would be obvious to a reader of the claims that the desired orientation would be that of the downhole component. Dr Kepic went on (at transcript, 396) to suggest that the handset component of the Coretell Equipment is "just not that important to things", that it was, in his opinion, a "furphy", and that one would have to be very literal "in the meanest sense" to say that the Coretell Equipment is excluded from claim 1 of the Patent. The respondents point to this evidence to support the argument that when the claims are given a plain, literal interpretation, the Coretell Equipment cannot be within them.
75 The respondents further say that the only way the claims of the Patent could encompass the Coretell Equipment is if they were substantially re-written to expressly refer to devices in multiple components. The respondents contend that, as with any other written document, such an approach is impermissible. The words of the claim must be construed as drafted and not re-written by notional amendments: Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; (2005) 66 IPR 420 per Bennett J at [126].
76 Senior Counsel for the respondents put to both Professor Trevelyan and Dr Kepic during cross examination the contention that for the Coretell Equipment to be within the scope of the monopoly of the Patent the claims would need to be substantially rewritten. Professor Trevelyan refused to be drawn on the topic saying that as he was not a patent attorney nor legally qualified he would not profess an opinion on how the Patent could be drafted (transcript, 213). However, Professor Trevelyan accepted in cross examination that the Coretell Equipment, as a two-part device, was not within the requirements of any of the claims of the Patent on a literal construction (transcript, 209, 211, 212). The respondents say that this evidence is significant and compellingly in favour of the respondents' defence of non-infringement. However, Professor Trevelyan was at pains to make it clear to the Court that he approached his interpretation of the claims of the Patent purposively "as a guidance to somebody skilled in the art as about how to construct something" (transcript, 210).
77 When the same contention was put to Dr Kepic (transcript, 400), he acknowledged that "it would be preferable to rewrite" the claims but that he did not believe it was necessary if you accepted his interpretation of the claims. That is, Dr Kepic accepted that the claims could arguably be drafted to be clearer but that nonetheless the claims as drafted, on his understanding of the Patent, encompass the Coretell Equipment in two separate and separated parts.
78 In contrast to the evidence of Professor Trevelyan and Dr Kepic, the respondents say that Dr Myers' evidence as to the meaning of the term "device" is consistent. The respondents say this evidence was not challenged or changed by his cross-examination. Dr Myers' position was, and remained, that the word "device" as used in the claims refers to something which is physically integrated, as in semi-conductor devices; it means a single unit (transcript, 327). Dr Myers explained (transcript, 324) what, in essence, he understands the word "device" to mean:
My thinking in the definition that I gave in the affidavit was that my natural inclination is device refers to first of all a semi-conductor device, if not, that's something that's physically interconnected. So I looked at the claims as a whole and I didn't see anything in them which challenged the view that this was physically interconnected.
79 The applicants say that Dr Myers simply defined "device" as a single physical thing without regard to the features of the claim. The applicants further submit that Dr Myers, in oral evidence, still did not resort to the text of the claims but said that you need to understand the Patent and the claims as referring to a single physically integrated thing because in computer engineering it is important to only refer to a single device. This submission is correct up to a point. Dr Myers clearly approached the claims with an assumption as to how the word "device" was to be read. However, I do not think it can properly be said that Dr Myers had no regard to the text of the Patent. As Dr Myers explained in the oral evidence set out above, though he approached the claims with an understanding of what the word "device" meant to him, this understanding was checked against the text of the claims to see if there was anything in them which challenged his view that the invention in the Patent was physically interconnected. Having satisfied himself that nothing in the claims challenged this view, Dr Myers proceeded on the basis that the word "device" as used in the claims corresponded with his understanding of the term generally. The applicants say that this approach, and Dr Myers evidence generally, exposes a pedantic and strained approach to the construction of the claims and as such should be rejected.
80 In my view, a literal construction of the claims and identified integers is open such that the "device" referred to is a single, physically interconnected thing, not separated into parts or components. In particular, the indication that it is the device that goes down a hole and is to be oriented suggested that there is only one device, part or component, at all times of its usage.
81 The arguments against such a literal construction appeal to common sense. First, that it is pedantic and artificial. The applicants emphasise that Dr Kepic, when cross-examined on the point, said that to read the relevant claims as containing an omission for a device that has separate components is a "furphy", and to insist on such a construction would constitute literalness "in the meanest sense", and that the separation of the handset from the down hole unit is "just not that important to things".
82 Secondly, to focus on the word "device" without proper regard to the phrases in which the word appears - "an orientation device" and "the orientation device" and "the orientation of the device" - is likely to be conducive of error. That is to say there is nothing particular in the use of the word "device" that suggests it cannot be constituted by a number of components, as Dr Kepic says it can be and in respect of which he provided real examples. In this regard, it is relevant to note that a usual dictionary definition of "device" does not define it as a singular physical thing. For example, the Macquarie Dictionary defines "device" as, amongst other things, when used as a noun, "an invention or contrivance". It remains an open question whether an invention or contrivance may be comprised of more than one part.
83 Thirdly, the approach to the reading of the relevant claims adopted by Dr Kepic does not require any straining of language. By contrast, the construction of Dr Myers, if it is agreed, is artificial. While he, in the field of computer engineering, might be familiar with devices that come with only one part or component, that does not mean that a device must always be in that form.
84 Fourthly, the second strand to the argument put forward on behalf of the respondents that the expression "the orientation of the device" must mean that not only the down hole component but also the handset component must be in the one physical instrument so that all parts of the device are oriented at the same time, is not a view that the skilled addressee would ordinarily take. Dr Kepic (supported also by Professor Trevelyan) said that in dealing with a device designed to give an indication of the orientation of the core sample relative to a body of material from which the core has been extracted, the skilled addressee would immediately understand that it is the orientation of the down hole component that is important in the functioning of the device and that the other component (which constitutes the handheld component in the Coretell Equipment) is peripheral. In other words, the skilled addressee would have no difficulty in appreciating that the word "device" meant only the down hole unit in this integer. Dr Myers' view to the contrary was a very literal view of what appears in the claims, and not sufficiently informed by the practical experience one expects of the skilled addressee in a case such as this.
85 I consider the resolution of this construction issue to be finely balanced. However, in the result, I consider the literal construction contended for by the respondents is neither contrived nor in defiance of common sense. It also, in my view, is the construction that best sits with established construction principles.
86 First, nowhere in the claims is there reference to a device in two or more separate and separated components. The claims are drafted in the singular and use the definite articles "the" and "an" to indicate this. Read contextually there is nothing in the claims to suggest they encompass multi-part tools. Even when recourse is had to the specification as a whole in order to resolve any ambiguity in the meaning of the word "device", the specification does not at any point suggest the invention is to be construed as encompassing tools in more than one part. If anything, the background art disclosed in the specification suggests that the invention disclosed in the Patent was designed to replace other unitary downhole systems of core sample orientation that relied on physically marking the core sample. The Patent, at the priority date, was concerned with improving upon those mechanical systems and replacing them with tools which utilise accelerometers as a means of determining core sample orientation. The claims do nothing to suggest that the invention in the Patent was ever intended to be wider than a unitary device that used accelerometer technology to improve on historical methods of core orientation. Claim 2, in particular, speaks of "an orientation device as claimed in claim 1" which is "attached to an inner tube assembly of a core drill". The clear inference to be drawn is that the device claimed in claim 1 is a unitary device, the whole of which is to be attached to an inner tube assembly of a core drill. Thus, to encompass a tool in two parts the claims would need to be rewritten to make it clear that only the downhole part of a multi-part tool would be attached to the inner tube assembly of a core drill, not the entire device.
87 Secondly, the reference in the claims to "the orientation of the device" suggests a whole device, that is, one in a single part. One should be guided by the principle of claim construction that what is not claimed is disclaimed: EMI at 29. The rationale for such a principle is that the patentee should only receive a monopoly for what is made clear in the patent claims so that relevantly skilled addressees of the patent know what the boundaries of the monopoly are. A patent is, after all, a public document. The claims should be precise and their object - and consequently the Court's approach to their interpretation - should be to limit and not expand the monopoly sought. As Bennett J recently remarked in Lundbeck, at [60], there is no warrant for adopting a method of construction that gives a patentee what it might have wished or intended to claim, rather than what the words of the relevant claim actually say. While the Court should read the claims purposively and not with an eye for pedantry, even an appropriately liberal approach to construction should not permit the words of the claims to be stretched beyond their textual limits.
88 Finally, Dr Kepic's evidence as to the meaning of "device" should not be determinative of the controversy. Ultimately the construction of the claims is a task for the Court and while this task must be undertaken from the perspective of a non-inventive skilled addressee, it must also be referable to the context, and the words, of the claims themselves. When pressed in cross-examination, Dr Kepic conceded that the word "device", read literally in the context of the claims, could not encompass orientation tools in two parts. Dr Myers' evidence on this point disclosed that a relevantly skilled addressee, interpreting the term "device" purposively in the context of the claims as a whole, could read that term as being limited to a tool in one piece.
89 I find therefore that the Coretell Equipment, in two separate and separated parts, is not within the scope of the term "device" as used in the claims. The result is that the Coretell Equipment does not infringe the Patent and the applicants' claim for infringement fails.
90 Material variation: While my construction of the "device" issue means there is no infringement of the Patent by the Coretell Equipment, I should, for the sake of completeness, also deal with the further point agitated by the parties as to whether the Coretell Equipment is a material variation on the invention as disclosed in the Patent and so not within its monopoly.
91 The respondents observe that the Coretell Equipment, in two parts, is self-obviously very different to the unitary device described in the preferred embodiment of the Patent. The respondents submit that the evidence shows a material variation between the Coretell Equipment and invention as disclosed in the Patent that is so significant that there could be no infringement, even if the scope of the words "orientation device" included a form of orientation device or equipment in two or more parts.
92 The applicants say that any alleged improvement by the Coretell Equipment to the invention disclosed in the Patent is based on asserted benefits to the user of a device in two parts. The applicants say this assertion is not made out on the evidence. Rather, the applicants submit that, while a two part tool may be an improvement with benefits, such a tool creates new problems for the designer resulting in, at best, "functional equivalence". The applicants say that, even if the word "device" is read as a reference to a unitary tool, the Coretell Equipment is not a material variation on such a tool and therefore is within the scope of the Patent's monopoly.
93 Asserted benefits of the Coretell Equipment were identified by Mr Barker during viva voce examination, and Dr Myers in [44] of his affidavit of 7 November 2008. The asserted benefits that the respondents rely on to say the Coretell Equipment is a material variation to the invention disclosed in the Patent, include:
· The input mechanisms and display unit on the invention as disclosed in the Patent are the two components of the device most prone to damage in a borehole environment, therefore separating out such components so that they are not required to operate in the borehole environment reduces the risk that the system may be rendered inoperable (Dr Myers' affidavit dated 7 November 2008 at [44], transcript, 239).
· Ergonomic improvements, including that operators of the device would not have to peer down the length of the device to determine orientation but could do so more comfortably from a standing position.
· Reduction in human error as the use of a stopwatch as required by the invention disclosed in the Patent would be eliminated.
94 The respondents submit that the result of these improvements is that overall the position must be that the material variation constituted by the Coretell Equipment relevant to the orientation device as claimed is so significant that no issue of infringement could arise from any construction of the Patent claims.
95 The applicants say that whilst a two part device may be an improvement with benefits, such a decision creates new problems for a designer resulting in, at best, functional equivalents. Professor Trevelyan considered that the handheld unit in fact has the advantage of eliminating possible causes of human error by ensuring that the human operator does not have to write down the time value on the stop watch and then key in the time correctly later (transcript, 170, line 1). However, despite this he considered the Patent leaves it open to the designer to choose a suitable method for indicating the appropriate time interval at which to record orientation signals for comparison later (see Professor Trevelyan's affidavit dated 28 August 2008 at [71]). The applicants say that the use of a handheld unit therefore remains within the monopoly granted by the Patent.
96 In relation to the other improvements suggested by the respondents, the applicants note that Professor Trevelyan addressed the suggestions that the handheld unit offers benefits because it protects at least part of the device from having to work in the down hole environment, and that the handheld unit has ergonomic benefits for the operator in the drilling environment. He rejected the suggestion that these are advantages. He said that any vulnerable operational aspects of the down hole unit that can be protected from the down hole environment if built properly (transcript, 171, line 22). He also said the ergonomic benefits could probably be addressed if one did not have a handset by providing the operator with a stool to sit on (transcript, 172, line 13), but in any event the improvement or difference would be marginal (transcript, 172, line 31). The applicants say this evidence should be accepted particularly since it is accepted that the operator of the Coretell Equipment needs to stand within two metres of the down hole unit and core sample for the bluetooth connection to work.
97 In the applicants' submission Mr Barker's evidence on the suggested advantages goes no further than to say that drillers saw the advantage in having:
· a sealed down hole unit without a display that might be damaged or an input display that might be hard to press; and
· a wireless handpiece with the tool that would be permanently logging down the hole and when you hit the Take Measurement button on the handset, that instance would be logged, reducing the risk of human error.
98 The applicants submit that ultimately, regardless of any perceived "improvements" in the Coretell Equipment, it is the evidence of Professor Trevelyan and Dr Kepic that it falls within the scope of the monopoly granted by the Patent.
99 The question of "material variation" has a very particular context in relation to patent infringement. There is, for example, no statutory provision that provides to the effect that if a variant invention constitutes a "material variation" from the invention described in a patent, then there can be no infringement of the patent. Rather, the question of material variation has arisen in the course of courts setting out the principles by which infringement of an invention as described in a patent will be found. In Sachtler, Bennett J, at [43] - [67] dealt with the principles of infringement. Her Honour was at pains to point out (for example at [55]) that an examination of "non-textual" infringement raises the question of whether the substance of the invention as claimed has been taken. In particular, her Honour rejected the suggestion that there may be infringement by taking what is determined to be "the substantial idea" disclosed by the specification but not the essential integers of the claim.
100 At [50], Bennett J emphasised that to establish infringement to a combination patent, the patentee must show that the defendant has taken each and every one of the essential integers of the claim and that, if on its true construction, the claim is for a particular combination of integers and the alleged infringer omits one of the essential integers, the infringer escapes liability. But her Honour emphasised there that a defendant will not escape liability if an inessential integer is omitted or replaced by an equivalent.
101 Accordingly, Bennett J, at [51], emphasised that the so-called "pith and marrow" test for infringement may be referred to so long as it is understood that it is the substantial idea disclosed by the specification and made the subject of a definite claim, that is the focus of the inquiry. Therefore, one should look to whether the allegedly infringing article is the same in substance and effect or is a substantially new or different combination. This principle applies to immaterial variations where an inessential part or step is omitted or substituted. A modification may be so small as to be insignificant and to have no material effect on the way the invention works. Her Honour noted that this is consistent with the principle in Catnic, as discussed in Kirin-Amgen, that there is no infringement if a variant has a material effect on the way the invention works.
102 Her Honour then emphasised again, at [53], that Catnic is clear authority for the proposition that is the essential integers of the claim that constitute the "pith and marrow" of the claim; as her Honour notes, Catnic does not propound a novel principle of claim construction. In this regard Bennett J's comments have been referred to by the Full Court of this Court in Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220; (2005) 224 ALR 168 at [91]-[92], and by various single judges of this Court (see, for example: Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd [2006] FCA 261; (2006) 68 IPR 254 at [28]-[29] per Stone J; Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (No 2) [2006] FCA 1787; (2006) 71 IPR 46 at [63]-[64] per Young J).
103 When one returns to what Lord Diplock said in Catnic (at 243), he emphasised that a patent specification should be given a purposive construction, rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. His Lordship emphasised that "the question in each case" is whether the skilled addressee would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee "to be an essential requirement of the invention", so that any variant would fall outside the monopoly claimed, even though it could have no material effect on the way the invention worked.
104 Lord Diplock added, at 243, that this question does not arise where the variants would in fact have a material effect upon the way the invention worked. It seems to me that this obviously follows in the sense that if a variant does have a material effect upon the way the invention worked then, almost by definition, it would not take all the essential integers or essential features of the invention as claimed in the invention.
105 In this case, I have already found that an essential integer or essential feature of the invention as claimed in the Patent is that it comprises a single device, not one with more than one component. I have formed that view, taking into account the requirement, emphasised by all relevant authorities, that a purposive construction should be given to a patent specification rather than a purely literal one. In those circumstances, the Coretell Equipment falls outside the monopoly claimed. I suppose another way of looking at the issue is to say that, in such circumstances, the Coretell Equipment constitutes a variant that in fact has a material effect upon the way the invention worked or works as claimed in the Patent. But truly, in such circumstances, it is not particularly useful to talk about whether or not there is a "material variation" in circumstances where, on its proper construction, the monopoly claimed does not include the variant that is constituted by the Coretell Equipment.
106 In those circumstances it seems to me not to be particularly useful to engage in some further analysis of the "benefits" that the Coretell Equipment is said to provide that constitute by themselves a material variation from the essential features. A number of those claimed benefits are, on closer examination, merely illustrations of why a two component device is more convenient to use than a one component device. It may be argued, however, that the benefits provide examples of why a two part device is a material variation on a one part device. But this question rather begs the question whether the invention described in the Patent is constituted of one part or two parts. If the invention so described were not limited to one part, and could be realised in more than one part (such as a two component device, along the lines of that realised in the Coretell Equipment), then to identify the benefits of the two part device that is constituted by the Coretell Equipment would be beside the point. In my view, the identification of those benefits would not, of themselves, in my view, in such circumstances disclose any material variation from any of the essential integers or essential features of the invention as described.
107 In essence, in the circumstances of this case, it seems to me that the question of "material variation" is not a useful means of determining whether or not there has been an infringement of the Patent. Rather, the particular question is the proper construction of the claims. Once it is determined that the invention described in the Patent does not include a two part device, then no question of material variation arises.
108 The ultimate position, then, remains that the variant of the invention represented by the Coretell Equipment is not within the monopoly claimed by the Patent.
109 The storage issue: This issue arises in claims 1 and 4, as well as dependent claims 2, 3 and 5.
110 The respondents contend the feature requires that the claim device of the invention must both determine and store the orientation of the device (at pre-determined time intervals described as 1 minute intervals).
111 The expert witnesses recognise that the specification description draws a distinction between:
(a) raw accelerometer values; and
(b) the generated orientation measurement which is determined and stored at predetermined time intervals by the "processor" of the described device.
112 The respondents say that, as set out in exhibit R11, this feature is a means to effect a continuous dynamic activity occurring throughout the operational drilling sequence such that the orientation of the device can be achieved by a component of the down hole electronic componentry continuously receiving "raw" data from the accelerometers and processing that data to determine the orientation of the device at each predetermined time interval and then storing that orientation data relevant to each such predetermined time interval.
113 The respondents then say that, as set out in exhibit R12, the Coretell Equipment works differently and cannot satisfy the requirements of claim 1 (or of claims 2, 3, 4 and 5) as to this feature. In the operation of the Coretell Equipment, analogue signals representing co-ordinate values from the accelerometers are continuously obtained, digitised and stored by the down hole equipment, along with temperature readings. However, by this activity, there is no orientation value relevant to the down hole orientation of the equipment being either determined or stored in or by the down hole unit. Only after the core tube and down hole equipment are returned to the surface and communication is established with the handset is an initial orientation value computed by the separate handset (not by the down hole equipment) based on the digitised accelerometer values and temperature information received from the down hole equipment.
114 The respondents note that Dr Myers in cross-examination (transcript 305 lines 30-43) agreed that the effect of his evidence is that the orientation values are determined and held in the memory of the handset of the Coretell Equipment. However, he strongly maintained his opinion that the data output from an accelerometer is not a core orientation measurement. He referred to the higher processing workload of the continuously processing electronic componentry of the invention in the Patent.
115 The respondents submit that the Coretell Equipment determines an orientation value in the handset only at the specific time marker set by the operator ceasing drilling and pressing the "Take Measurement" button on it. That instant of time set by the time marker is not a "time interval" as claimed. The respondents say that Dr Myers' evidence on this issue relating to non-infringement of the Patent by the Coretell Equipment was not directly challenged in cross-examination.
116 The respondents also note that although Professor Trevelyan maintained his evidence by way of disagreement with Dr Myers on this point, his evidence is "weak and unconvincing" by reason of the express distinction in the specification between the raw accelerometer values and a determined orientation measurement.
117 The respondents say that Dr Kepic in cross-examination failed to recognise that in his own written evidence he had distinguished between the raw data generated by the accelerometers and the orientation value computed by the handset and then conflated the two different requirements.
118 The respondents also say that the difference in operation between the device of the Patent and the Coretell Equipment is significant. In particular, this results in a much lower processing workload in the Coretell Equipment, in that the Coretell Equipment does not continuously determine and store generated orientation measurements on a dynamic and continuous one minute interval basis. Rather it stores generated accelerometer and temperature values which are accessed, retrieved and then processed relevant to a desired orientation measurement from a single instant of time, namely, at the Clock Time relevant to the pressing of the Take Measurement button on the handset.
119 The respondents say that each of Professor Trevelyan and Dr Kepic recognised that this difference would achieve a "benefit" by a reduced workload for the down hole processor, and processing work overall, by comparison to the patented device.
120 The applicants say the controversy is intimately linked to the question of what is stored - "orientation" and "orientation data". It only becomes important if those expressions in claims 1 and 4 do not include the data in the look up table of the memory in the downhole component of the respondents' devices.
121 The applicants draw attention to what Dr Myers states at [40.2] of his affidavit dated 7 November 2008, where he defines "store" as: "something is to be held for some time and beyond the current activity, whatever that may be. That is to say, store is to write to permanent memory". On this basis, Dr Myers concludes that the Coretell Equipment does not contain "a means for … storing orientation" as that phrase appears in claims 1 and 4 of the Patent because the Coretell Equipment does not permanently store any data.
122 The applicants say their experts counter that the term "store" (and its variants) as appears in the Patent does not require any permanent storage of data. In other words, "store" encompasses both temporary and permanent storage. The Coretell Equipment contains a flash memory chip which stores orientation data. As such it contains a means to store orientation data as claimed in claims 1 and 4 of the Patent.
123 The applicants refer to what Dr Kepic states at [25] of his affidavit dated 18 June 2009:
On my analysis of the Patent, the term "store" in Claim 1 is not given any peculiar or special meaning. From my reading of the words of Claim 1, and of the Patent as a whole, there is nothing which suggests that the information which has been stored must be permanently stored. From the other words of the Claim, it is clear that the information to be stored is only required to be stored until it is needed to be used.
124 Similarly, Professor Trevelyan at [23] of his affidavit, dated 18 June 2009 states:
As I read the Patent specification, the word "store" is employed to define "a holding of data". This meaning accords with the ordinary manner in which I use, and I believe others in my field use, this term. Whether that data is written to permanent memory or temporary memory is not described or defined in the specification. … I can find no reason in the Patent specification to limit the meaning of this term in this particular manner. As I read the Patent specification, there is no unique or peculiar meaning given to the word "store".
125 Accordingly, the applicants point out that Dr Kepic and Professor Trevelyan both conclude that the Coretell Equipment contain a means to store orientation data as claimed in claims 1 and 4 of the Patent.
126 The applicants concede that Professor Trevelyan had generally accepted that the Patent specification itself draws a distinction between raw accelerometer values and a generated orientation measurement. However, they note that Professor Trevelyan did not accept that the storing of raw accelerometer values in a digitised form does not satisfy the requirement that there be a means for determining and storing the orientation of the device. This is because one way of storing the device orientation is precisely those acceleration components (or accelerometer values) and that is a commonly used means of representing orientation which he has used himself on many occasions.
127 The applicants note that Dr Myers in cross-examination accepted that claims 1 and 4 are not concerned with a device that is limited to rotational orientation only. In contrast, claims 3 and 5 are confined to rotational orientation. Dr Myers further argued that claim 1 does not make any provision as to the characteristics of the orientation stored in the device - for example, as orientation "values" or orientation "measurements"; the claim only mentions "orientation".
128 The applicants note Dr Myers accepted that, in contrast, claim 4 refers to "orientation data" and that "data" is apt to describe the information that is commonly stored in look-up tables of the sort referred to by Mr Barker in his evidence.
129 Dr Myers stated that there is a relationship between gravity data and orientation, in that gravity data is the basic information from which orientation values are computed.
130 The applicants say that Dr Myers accepted that in the Coretell Equipment, the data in the look-up tables described by Mr Barker is stored in memory in a relevant sense for the purposes of the Patent. He also accepted that a processor in the handset computed orientation values and held them in the memory component of that processor. However, his view was that in a "computer engineering sense" and in a "programming sense", you do not really consider that the storage within the processor is "storage" because it is only ever used for temporary results and, basically, these are the intermediate results in a computation.
131 The applicants say this is the substance of the basis upon which Dr Myers concludes that the Coretell Equipment does not contain "a means for … storing orientation" as that phrase appears in claims 1 and 4 of the Patent - essentially because the tool does not permanently store any data.
132 As to the expression of orientation and orientation data, the applicants say the respondents' case involves reading them as though they should say "orientation value" or "orientation measurements", terms consistently used by Dr Myers in his evidence. The respondents argument is that the data stored in the memory of the down hole part of the respondents' tool is for every 10 second period, is not such a valuable measurement which must be a product of a particular type of mathematical transformation. The applicants contend the argument should be rejected for these reasons:
(a) To speak of a value or a measurement is to add a gloss to the claims which is not justifiable.
(b) The signal from the accelerometer is an indication of orientation. Dr Kepic was pressed on this and his evidence is compelling (transcript, 404 to 406). Professor Trevelyan's evidence was to the same effect.
(c) The data stored in the look up table is not just a recording of the output of the accelerometers. It is digitised. It is the product of the averaging and calibrating of that output, thus digitised to produce the information stored for each 10 second period. Mr Barker's evidence was to this effect.
(d) Dr Myers accepted that what is stored in the lookup table is data as that term is used in his area of expertise.
133 The applicants point out that Mr Barker in his evidence naturally referred to the accelerometer taking "core orientation readings". The applicants say that this provides valuable guidance to the way the skilled addressee would read "orientation" and "orientation data".
134 In my view, the analysis of the evidence contended for on behalf of the applicants should be accepted. There is nothing in the terms of claims 1 and 4 in relation to the storage issue to suggest that what is stored should be permanently stored. I accept the evidence of Dr Kepic and Professor Trevelyan that there is a relevant storage of raw accelerometer values in the Coretell Equipment that is used as a means for determining and storing the orientation of the device. The arguments to the contrary are, in my view, technical to a point that results in the claims not being fairly construed. I do not consider the skilled addressee would adopt Dr Myer's reading of the terms concerned. I also reject the respondents' submission that the difference in operation between the device of the Patent and the Coretell Equipment on this point is significant. Each of Professor Trevelyan and Dr Kepic recognise that there is a difference that means the Coretell Equipment would achieve a "benefit" by a reduced workload of the down hole processor and processing work overall, but this seems to me, on the evidence, to be a matter of detail and not a significant or material difference in the operation of the equipment concerned. Accordingly, it also does not seem to me that there is any material variation in the Coretell Equipment in relation to this aspect of claims 1 and 4.
135 Time interval and predetermined time interval: I will deal with these related issues together. The terms "predetermined time interval" and "time interval" or "selected time interval" appear in claims 1 and 4 of the Patent, and their dependant claims.
136 Claim 1 makes reference to an orientation device for providing, amongst other things, a:
means for inputting a selected time interval, means for relating the selected time interval to one of the predetermined time intervals and providing an indication of the orientation of the device at the selected time interval.
137 Claim 4 refers to an orientation device for providing a:
means for storing the orientation data at predetermined time intervals, means for inputting a signal representative of a selected time interval to the processor, the processor operating to relate the selected time interval to the predetermined time intervals and output a signal indicative of the orientation of the device at the selected time interval.
138 The respondents says that this feature requires that the claimed device of the invention must have a means for inputting a selected time interval. From the Patent specification the described time interval, which is input into the device, is the time duration as measured by an external stopwatch to the nearest whole minute. Relevantly, the time interval recorded by the stopwatch is the value to be attained by manipulation of the +/- buttons on the keypad of the device as disclosed. Once obtained, the operator selects this time interval by pressing the R button. In this manner, the operator must traverse a series of time intervals, any of which may be selected by the operator, using the above procedure, before arriving at the time interval ultimately desired to be selected.
139 The respondents say that from the description in the Patent, it is clear that the selected time interval arises from the elapsed time shown by the described "stopwatch" interval relative to a reference time at which both the stopwatch and the timing sequence on the orientation device were synchronised and started by the operator. The description further refers to the selected time interval as at one minute intervals at which orientation of the device is determined and stored.
140 The respondents say Dr Myers describes the process of inputting a selected time interval as one which involves consideration of an "interval" - which must have a start and stop time - as determined by the stopwatch, and also must involve the choice of the operator in selecting an appropriate "time interval" to then be inputted into the device.
141 By contrast, the respondents contend it is plain that the Coretell Equipment works differently and cannot satisfy the requirements of claim 1 (or claim 4) as to this feature. At the surface, pressing of the "Take Measurement" button provides a specific time marker as a reference from which the handset calculates the time elapsed from the commencement/synchronisation of the Coretell Equipment. This is an "action" which does not involve any choice from a range of time intervals available to the operator, as the operator's only decision is to press the button at cessation of drilling, there is no "choice" as relevant to the Patent. There is neither consideration nor selection of any "time interval" by the operator, and there is no "time interval" which can be input by the operator into the handset or the down hole equipment.
142 The respondents say the difference in operation between the device of the Patent and the Coretell Equipment on this point is significant. It has the benefit of reducing the likelihood of human error. By such elimination, there is no capacity for the operator to misread or forget the stopwatch reading, round to the appropriate minute interval incorrectly or mistakenly enter or "input" an incorrect stopwatch reading into the equipment. With the Coretell Equipment, no time interval is selected by the operator and no time interval can be input by the operator to either the handset or the down hole equipment.
143 The applicants emphasise that Dr Myers' view is based on his opinion that "predetermined" in the phrase "predetermined time intervals" means "in its ordinary context, that a decision is made as to a time interval at which orientation is to be measured prior to the operator actually performing a survey using the Coretell Equipment". He thereby concludes that the Coretell Equipment is different because it stores orientation measurements at a discrete point in time, not as at time intervals.
144 The applicants refer to Professor Trevelyan and Dr Kepic's expression of opinion that a "time interval" is defined by two specific points in time, and that a "predetermined time interval" is a pre-programmed or hard-wired interval or particular moment in time. They contend that the Coretell Equipment determines and stores orientation at predetermined time intervals through the combined operation of the following electronic components present on the circuit board in the Coretell Equipment: a Real Time Clock, accelerometers, a microprocessor and a flash memory chip. Further, pressing the "Take Measurement" button on the Coretell Equipment is the physical embodiment of the "means for inputting a selected time interval" within the meaning of claim 1. As such, the integers "predetermined time intervals" and "selected time interval" as those terms are used in claims 1, 3 and 4 of the Patent are present in both the Camteq device and the ORIshot device.
145 In this regard, the applicants emphasise that Professor Trevelyan, at [28] of his affidavit sworn 18 June 2009, states:
I understand the phrase 'time interval' as used in the Patent to mean 'time instant'. In this respect, I note that the comparisons performed and defined in the claim are all relative to specific points in time. This interpretation of the claim language appears consistent with the specification at, for example, page 6, line 18 and page 9, lines 8 to 22 where the specification describes measurements being taken at 'a particular moment in time' and the intervals being defined as predetermined and regular intervals. As I read this language in the specification, an interval is defined by two specific points in time and that is what the claim language is seeking to refer to when it uses the phrase 'time intervals'.
146 They point out that, on this basis, Professor Trevelyan concludes that the integers "predetermined time intervals" and "selected time intervals" as used in claims 1, 3 and 4 are present in the Coretell Equipment.
147 Professor Trevelyan was cross-examined on the meaning of the phrase "means for inputting a selected time interval" and whether pressing the Take Measurement button on the Coretell Equipment constituted a "means for inputting a selected time interval". The respondents put to him that the pressing of the button in fact did not constitute any choice at all, that is to say there was no selection. However, he did not resile from his position, arguing that the operator could choose when to press the button (that is, select when the drilling had stopped) in exactly the same manner as the operator could choose what value to enter in the preferred embodiment described in the Patent.
148 It was also put to Professor Trevelyan that with the Coretell Equipment there is no inputting of a selected time interval relevant to any other marker. That is, it is just an action that takes place. He disagreed and explained that pressing the "New Survey" button defines the start of the time interval, the Take Measurement defines the end of the time interval, just as one would have started or stopped the stopwatch. Professor Trevelyan further explained:
So there is no difference between what is conveyed to me in the Patent specifications and the Coretell Equipment. Both are actually doing the same thing. The data is being recorded at regular time instance and then you select which data you are interested in by taking - and I take your point that I have used time instance in a confusing way - the time interval from when the equipment is initialised and sent down the hole to the time when the drilling stops.
149 Dr Kepic, at [29] of his affidavit dated 18 June 2009, deals with the issue as follows:
As I read the Patent, I understand this phrase to mean that orientation is measured and stored at pre-programmed or hard-wired intervals, or particular moments of time. In arriving at this interpretation I rely on the specification at, for example, page 6, line 18, which refers to measuring the orientation of the device 'at a particular moment in time'. Page 9, line 12 provides that 'the relative orientation of the device is determined at regular intervals … In this embodiment the time intervals at which the orientation is determined and stored comprises intervals of 1 minute. In this way there is a stored record of the orientation of the device at minute intervals'. The length of the time intervals is set by the engineers designing the device. In other words, the operator of the core orientation device does not define the length of the time intervals.
150 The applicants say that on this basis, Dr Kepic concludes that the integers "pre-determined time intervals" and "selected time interval" as those terms are used in claims 1, 3 and 4 of the Patent, are present in the Coretell Equipment.
151 The applicants say that Dr Myers was cross-examined on the meaning of the phrase "time interval" and it became clear that Dr Myers took issue with the use of that phrase in the Patent. In his view, the phrase is "wrong in a computer engineering sense" because in that field one does not store at time intervals; one stores at time instants.
152 The applicants say it was put to Dr Myers that, having regard to the fact that what is being stored is the orientation of the device, it must be storage at a time instant, rather than a time interval. He agreed, saying that a computer can only store something at a time instant (transcript, 312, lines 1-8).
153 The applicants say when it was put to Dr Myers that when the claims refer to "time intervals", they are referring to "time instants" or "moments in time", he disagreed, saying that the concept of "time interval" is an important concept in computer engineering, such that if the author of the Patent had used that terminology there must be something significant about "time instant".
154 Dr Myers considered the body of the specification for an understanding of what "time interval" might mean (page 10, line 6): "by using integration means [and] time intervals of one minute, [the] processed data is indicative of the change of orientation [of the device in one minute intervals commencing from a reference time]". Dr Myers agreed that what this is providing, on a fair reading, is that, commencing at the reference time, the device is giving an indication of the change in orientation one minute later and then two minutes later. He had no objection to that proposition, saying that the statement is sensible. Indeed, it is exactly what he would expect of an embedded system. He explained that this gave him an understanding of what is meant by "time interval" that was not otherwise given in the claims (transcript, 315, line 22).
155 The applicants emphasise that when it was put to Dr Myers that it was clear from that element of the description of the preferred embodiment that it is talking about the indications of orientations at moments in time one minute apart, that is, separated by one minute intervals, he agreed, saying that it is using integration means to derive a single value, and that the time interval is significant (transcript, 315, line 22).
156 However, Dr Myers disagreed with the proposition then put to him, that taking into account what is stated on page 10 of the specification it is clear that the expression "time intervals" as used in claim 1 is a reference to a moment in time.
157 He also disagreed with the proposition put to him that this particular construction as placed on the words in claim 3 is the only sensible construction having regard to the fact that what is of concern in relation to each time interval referred to is the orientation of the device in a moment in time.
158 Finally, Dr Myers disagreed with the proposition that that is how any skilled addressee would read the claim, despite any initial difficulty that might be imposed by the use of the expression "time intervals".
159 I accept the reading of the claims concerning these relevant expressions advanced by the experts called by the applicants, in particular Dr Kepic as one of the persons I consider to be a skilled addressee. While I have recognised that Dr Myers is also entitled to be considered a skilled addressee, in relation to his construction of the relevant phrases I accept the submission of the applicants that it appears his approach to interpreting the Patent in this regard is inconsistent. On the one hand he understands that the phrase "time intervals" as it appears in the body of the specification in the context of determining orientation at moments in time separated by minute intervals, but is not prepared to assign any sensible interpretation of the phrase "time intervals" as it appears in the claims.
160 I find that in substance there is no difference between what is conveyed by the Patent and the Coretell Equipment. Both substantially do the same thing. The data is recorded at a regular time instants and then there is a selection of the data that the operator is interested in accessing. As Dr Kepic put it, the Patent properly understood means that orientation is measured and stored at pre-programmed or hard-wired intervals for particular moments in time. I find that the integers "pre-determined time intervals" and "selected time interval" as those terms are used in claims 1, 3 and 4 of the Patent are present in the Coretell device.