Issue 1 - Synchronisation
185 The starting point is that there is no dispute that the method in claim 1 requires two timers, one in the downhole device and the other on the surface. I will identify the evidence a little later in these reasons, but it is important to recognise at the outset that it is not in dispute that two timers are involved and they are involved in a way that ultimately leads to the identification of the orientation recording at or close to the time of core break. Nor is it in dispute that the act of inputting the specific time referred to in step 3 is an act carried out by the operator on the surface.
186 I have earlier referred to Globaltech's Defence which refers to synchronisation and "without synchronisation". The concept of synchronisation is also referred to in Globaltech's Particulars of Invalidity on the cross-claim and, in particular, in association with a plea of a lack of fair basis, Globaltech gave this indication of what it meant by synchronisation:
In the event the Cross-Respondent contends the Contested Claims are not limited to a method or system which includes a timer at the surface which is started contemporaneously with the timer of the orientation device prior to the inner tube assembly being inserted into the drill hole (Synchronised Surface Timer), then the Contested Claims travel beyond the matter described in the specification …
187 The important point in this passage is the reference to a timer on the surface started contemporaneously with the timer of the orientation device. That is the definition adopted by Professor Tapson in responding to Globaltech's arguments with respect to construction. It is the method employed in the Orifinder v3A where Oritool and Oripad RTCs are synchronised within a fraction of a second, the method adopted when a stop watch is used (as per the best method for carrying out the invention) and is the construction of the claims adopted by Mr Ayris.
188 As I have said, Professor Tapson agreed with this definition of "synchronisation". In his opinion, as I understood it, any use of two timers where the two timers are not started at the same time and then counted forward at the same rate, might be what he called "time correlation", but was not synchronisation. For example, there might be time correlation between two timers (A and B) if the time on an already running timer is recorded. Professor Tapson referred to a number of dictionary definitions of the word "synchronise". In Professor Tapson's opinion, the claims included, not only synchronisation as he defined it, but also forms of time correlation and Globaltech's case that the claims are restricted to synchronisation is easily refuted. Some examples given by Professor Tapson in support of his opinion are set out below.
189 Mr Ayris engaged in the debate about the meaning of synchronisation. Professor Tapson said that he disagreed with Mr Ayris' definition of time synchronisation as referring "to correlating the 'downhole' and 'surface' time measurements to match up the downhole measurements with the depth surface measurements". Professor Tapson said that his understanding of synchronisation was when clocks operate simultaneously and coincide in time. The time pieces would start running from zero at the same time, and then both show subsequent times at the same moment. Despite his apparently wider definition of time synchronisation, Mr Ayris, as I understood his evidence, said that the claims in suit require synchronisation in the strict sense, and did not include, for example, the operator noting the time on an already running surface timer when the downhole device timer was started.
190 By contrast, Globaltech's other expert, Mr Edmonds, considered that the claims covered synchronisation and time correlation or matching of times where, as far as the surface timer is concerned, reference is made to the time shown on a wristwatch or a clock, or some other type of timer, which is already running.
191 In the end, the debate about the precise meaning of the word "synchronisation" led nowhere. AMC described the issue as a "red herring" and Globaltech said that it was happy to embrace one of the dictionary definitions advanced by Professor Tapson and that included a situation where "you have an offset". To explain what was meant by an "offset", Globaltech referred to the correlation of Perth/Sydney times. Globaltech submitted that it did not make any difference whether synchronisation was limited to two clocks counting from zero and counting at the same rate, or whether it included as well, a situation where there is an offset and counting is done at the same rate. Globaltech's argument was that whichever view is taken, the Orifinder v3B and Orifinder v5 did not fall within the terms of the claim.
192 In order to identify what is meant by an "offset", I set out an example given by Professor Tapson in the course of his evidence-in-chief. It is as follows:
Suppose that the preferred embodiment described on pages 18 to 20 of the Patent were implemented with a clock indicating Greenwich Mean Time (GMT) in place of the stopwatch referred to in page 19, 1st paragraph. The operator notes the GMT time when he/she starts the orientation device (10) and notes the GMT time when he/she initiates core break (cf. Patent, page 18, 6th paragraph to page 19, 2nd paragraph). The operator determines the difference between the former GMT time and the latter GMT time, in minutes (cf. Patent, page 19, 4th paragraph). The operator inputs the time difference into the orientation device (10) through keypad (72) (cf. Patent page 19, 6th paragraph to page 20, 1st paragraph). This inputted specific time is representative of core break.
The operator has used the difference between two points in time (i.e., the two GMT times) to determine the inputted specific time, instead of using a stopwatch that is started contemporaneously with the orientation device (10). For that reason, the embodiment I have just described is not a "Synchronised Surface Timer" as that term is defined by the Respondents.
193 In other words, Globaltech was prepared to accept that this example falls within claim 1 even though it may not fall within the definition of synchronisation that it pleaded and that Mr Ayris advanced. It matters not, according to Globaltech, because its Orifinder v3B and Orifinder v5 do not correlate time in this sense. As I have said, Mr Edmonds considered that the method in claim 1 included such a case. The important feature bringing it within claim 1 is that there was a matching of times and that both timers, or timing devices, count at the same rate. Globaltech submitted that that could not be said of the Orifinder v3B and Orifinder v5.
194 It may assist if I summarise the rival contentions.
195 First, Globaltech submitted that claim 1 is limited to synchronisation in the sense of two timers starting at the same time: This construction of the claim is denied by AMC and Professor Tapson, although Professor Tapson accepts that this is the correct meaning of synchronisation.
196 Secondly, Globaltech submitted that claim 1 is limited to time synchronisation and time correlation where two timers are counting forwards and the relevant calculation is made from the start to the relevant point which is core break. A good deal of Globaltech's cross-examination on construction was conducted on the basis that this was its main argument. This construction of the claim is denied by AMC and Professor Tapson. Although it is somewhat imprecise, I will refer to this construction as "counting forwards" which is a phrase used in the evidence and the submissions.
197 Thirdly, AMC submitted that although claim 1 is limited to time synchronisation and time correlation, the latter phrase means where two timers are used and the relevant calculation is made either from the start to the relevant point or from the end back to the relevant point. This is AMC's argument and Professor Tapson's evidence. This construction of the claim is denied by Globaltech and Mr Ayris and Mr Edmonds. Again, although it is somewhat imprecise, I will refer to this construction as "counting forwards or backwards".
198 Professor Tapson said that he did not consider that there was any difference between counting forwards or subtracting a time period. He said:
The former method is arriving at the point in chronological order whereas the latter is arriving at the point in inverse chronological order.
199 Professor Tapson made his point by giving an analogy involving a tape measure. He said the following:
Another way to look at the issue is to consider the analogy of a tape measure. The beginning of the tape measure represents the initial reference time (t=0). The end of the tape measure represents the Oritool's RTC time (T). A person could identify a specific point (A) along the tape measure by inputting the distance from the beginning of the tape measure (t=0) to point A. Alternatively, the person could identify point A by inputting the distance from end of the tape measure to point A (T - t).
He gave a further example as follows:
A further analogy is to consider the occurrence of a solar flare on the Sun at an unknown specific time on a particular day. The initial reference time is the start of the day, GMT 0:00. Suppose it is known that it takes 8 minutes for light to travel from the Sun to the Earth. A person on Earth sees the solar flare at GMT 6:08. If the detection time (GMT 6:08) and the elapsed time interval between the solar flare and the detection time (8 minutes) are known, the time of the solar flare can be determined (GMT 6:00).
200 In a later affidavit, he said that he did not see any difference between the example he gave, and which is set out at [192] above, and the following example:
Returning to the example in [53] above, in which the preferred embodiment described on pages 18 to 20 of the Patent was implemented with a clock indicating Greenwich Mean Time (GMT) in place of the stopwatch referred to in page 19, 1st paragraph. In a different arrangement, the operator does not note the time when he/she starts the orientation device, but notes the GMT time when he/she initiates core break, and then notes the GMT time at which the device was returned to the surface (the finish time). The operator determines the difference between the latter GMT time and the former GMT time, in minutes. The operator inputs this time difference into the orientation device through the keypad. This inputted specific time is representative of core break. A simple change in the device program would be required, to subtract this time from the finish time (as reflected in the device clock), rather than add it to the start time, so as to calculate the time of core break in terms of the device clock (and hence identify the core orientation data representative of the core break time). This example satisfies all the Disputed Claims, but the surface clock is not referred to in any way when the orientation device is started, and cannot in any sense be said to be synchronised with it.
201 Finally, Professor Tapson gave a further example in the course of his oral evidence:
PROF TAPSON: It's very straightforward. I think I have given two good examples, but I can give you another example right here in this courtroom. Your Honour, if I wanted to know on my watch at what time we had started this proceeding - today's proceeding and I hadn't noted it, I could ask Mr Brown had he noted the time on the courtroom clock when we started and he might say, "Yes, it was 10.15."
And looking at the courtroom clock and seeing that it reflects 12 minutes to 11 and looking at my watch and seeing that it reflects 13 minutes to 11, I can say, with confidence, that my watch would have reflected 10.14 when we started, and I have figured out the time of an event in the past on another clock without any requirement for synchronisation. It's not necessary to have synchronisation for these two time systems to relate their times. And I would also, with respect, say I think everybody in the courtroom could see where I was going with that example, and it's not an unnatural thing to do. The use of time in this way is not unreasonable.
202 Both parties referred to the body of the Specification and the claims themselves.
203 I start with the body of the Specification. I do not think that it provides a great deal of assistance. The disclosure of the invention follows the words of the claims. The drawings are introduced by a statement to the effect that the invention will be better understood by reference to the following description of one specific embodiment thereof as shown in the drawings. I do not consider that this advances the task of properly construing the claims.
204 In the best method section, there is reference, as I have said, to the creation of a record of the time duration between starting the core orientation device and extracting the core sample. This is said to be typically achieved by starting an external stop watch at the time of the starting of the orientation device. The Specification then provides that other arrangements are, of course, possible. I do not consider this particular statement advances the argument that synchronisation is required. It is either referring to a timer other than an external stop watch, such as a clock or a wristwatch, or it is referring to the fact that other embodiments are possible. If it is the former, then it is referring to a process whereby two timers are correlated at the beginning of the process. If it is the latter, then it is stating what is already known. The Specification goes on to provide that when the core is to be extracted, the core drill operator refers to the timer and notes the time duration involved. The operator either notes the full minute that has previously elapsed or waits until the next full minute elapses and then records that time as it must be recalled later. The Specification provides that in the embodiment involving the best mode for carrying out the invention, the final result of the method is achieved by inputting the time duration as measured by the external stop watch into the orientation device through the keypad. The Specification provides that this is to be done by pressing the "R" key to disclose numbers "00", and then pressing the plus/minus keys to display the relevant time duration in minutes. The Specification provides that the time measurement measured by the operator and entered into the keypad represents the duration of time between starting the orientation device and the point at which the particular drilling process was terminated in order to fracture the core sample from the body of material from which it was attached so that the core sample could be retrieved from the drill hole and brought to surface level. The Specification provides that the orientation device, according to the embodiment, is particularly convenient for an operator to use and all that is required is for the operator to start the orientation device prior to the inner tube assembly being inserted into the drill hole, and contemporaneously start a timer for recording the time duration before the drilling operation ceases to allow the core sample to be retrieved. Globaltech sought to rely on this particular passage in support of an argument that it limited the claims. I do not accept this argument. The statements are clearly made by reference to the particular embodiment. More generally, it may be said that the statements in the best method section contemplate synchronisation or, at least, counting forwards. However, as the principles make clear, one does not introduce into the claims, limitations based on the preferred embodiment. Finally, the body of the Specification provides that modifications and improvements may be made without departing from the scope of the invention. An example is given which is not relevant to the issue presently before the Court. I do not think that this statement assists either party.
205 Mr Ayris' opinion of the proper construction of claim 1 was informed by his understanding of the prior art. He placed a good deal of weight on the fact that the prior art, which in his opinion included borehole survey tools, used a synchronisation system similar to the one which he said was the subject of the claims. He put the matter thus in his second affidavit:
At the priority date of the Patent, the 'inverse chronological order' method (wording as Mr Tapson uses) was not known to me, or used by persons working in the industry in Australia at that time (so far as I was aware). With the advent of electronic down hole core orientation devices replacing mechanical core marking devices, synchronisation by use of a down hole timer and a surface timer was the only method that I knew and used to ascertain down hole events. The patent does not mention using the 'inverse chronological order' method.
206 Furthermore, he said the following in cross examination:
MR DIMITRIADIS: So one of the examples given by Professor Tapson in his fourth affidavit, which I'm sure you will recall, involved not starting a surface timer, but rather the operator noting the time on the already running surface timer when the downhole device timer was started.
MR AYRIS: Yes.
MR DIMITRIADIS: You would say that's outside the claim, would you?
MR AYRIS: The - the claim - when I read the claim, I'm reading it with my knowledge of survey instrumentation and my knowledge of downhole tools. And it was and is common practice to effectively start your watches or - or synchronise. The word "initialise" is used in some - some instruments, yes.
MR DIMITRIADIS: So are you saying that you do read the claim as excluding that example given by Professor Tapson for the reason you've just given?
MR AYRIS: Yes. My understanding that synchronisation or initialisation is required.
MR DIMITRIADIS: And that's based on your understanding of common practice, as you put it, in the field with other tools; is that right?
MR AYRIS: Yes. That's correct.
207 I do not consider that Mr Ayris is correct in construing claim 1 as limited to synchronisation. The word "synchronisation", is not used in the body of the Specification or in the claims. The reference in the best method section to other arrangements being possible (i.e., other than an external stop watch) suggests, at the least, the use of a clock or wristwatch, neither of which would involve synchronisation. Neither Professor Tapson nor Mr Edmonds considered that synchronisation in a strict sense was a necessary feature of the claims. Finally, there does not appear on the whole of the evidence to be any reason why claim 1 would be limited to synchronisation.
208 I turn then to what I consider to be the more substantial argument which is whether Globaltech's second construction argument (i.e., synchronisation and counting forwards) or AMC's construction argument (i.e., synchronisation and counting forwards or backwards) is correct.
209 Before turning to the evidence and the words in claim 1, I need to deal with two particular submissions made in relation to AMC's experts, Mr Brown and Professor Tapson.
210 Mr Brown gave very little evidence-in-chief about the proper construction of the claims. Globaltech submitted that in cross-examination Mr Brown agreed that claim 1 was limited to synchronisation and counting forwards. The evidence is said to be at pages 367-372 of the transcript. I do not think that Mr Brown did agree with the proposition. In the first instance, he disagreed (at p 369, line 27). He was then taken to the "only embodiment". He agreed that that involved a synchronised stop watch at the surface and he agreed that there was no description of any other method in the Patent. He also agreed that he did not know of any method before 2004 that did not involve a communication between the surface timer and the downhole tool. He agreed that step 3 in claim 1 is carried out on the surface. It seems to me that his answers are equivocal. He said:
MS HOWARD: So, basically, that refers to two different timers - the one at the top where you identify the time of core break, and then you've got the time intervals in the downhole tool that gather the date, and that has to be correlated with the time - - -
MR BROWN: Yes. No, I can see what you mean.
MS HOWARD: Yes. Yes.
MR BROWN: I guess you're referring to - there is only one time, but, yes.
In my opinion, if this is support, it is quite equivocal support and I do not place any weight on it.
211 Professor Tapson said that the claims included synchronisation and counting forwards or backwards. Globaltech challenged Professor Tapson's impartiality. In broad terms, it was suggested to him that he had previously expressed the opinion that claim 1 was a method which involved synchronisation and possibly counting forwards, but not counting backwards. The background is that Professor Tapson gave evidence on behalf of AMC in Coretell First Instance and Coretell Western Australia. In the cross-examination of Professor Tapson, a number of passages in evidence he had previously given was put to him.
212 Before considering this cross-examination, it is important to note the following about Professor Tapson's evidence.
213 As I have said, Professor Tapson accepts that there must be a surface timer. Although claim 1 does not specifically refer to a surface timer, it is clear that one is needed because the "inputting" referred to in step 3 is done by the operator on the surface. Furthermore, Professor Tapson agreed that step 5 talks about relating a time on the surface timer to the recorded intervals in the downhole tool. Despite the need for a surface timer, Professor Tapson said that the initial reference time referred to in step 2 included a reference time for one timer. He said that the initial reference time was linked to the predetermined time intervals, not, or not including, the starting of a surface timer. He rejected the notion that the initial reference time had to be the time at which both the downhole timer and the surface timer are started. He said that if the drafters of the Specification had envisaged a synchronised system, they could easily have said so. He agreed that the invention will not work without two timers and he said that the Patent did not require synchronisation because on page 19, the Patent states that "other arrangements are of course possible".
214 Professor Tapson agreed that if the claims are limited to a method or system involving synchronisation (contrary to his view) then the Orifinder v3B and the Orifinder v5 do not fall within the claims and he agreed that this is illustrated by the fact that you can use two Oripads, discarding the first one at any time before core break. He disagreed with the suggestion that arriving at the relevant point in chronological order (as he put it) and arriving at the relevant point in inverse chronological order were entirely opposite methods.
215 Professor Tapson was taken to the example he gave and which is identified in [200] set out above and it was put to him that his "simple change in the device program" was not referred to anywhere in the Patent. He agreed with that proposition, but also made the point that neither was a synchronised system other than in the best method section of the Specification.
216 I was asked to draw an adverse inference from a paragraph in an affidavit Professor Tapson affirmed in Coretell First Instance as follows:
Claim 1 of the Method Patent
M.1.5 inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material
90 I understand this integer to relate to the step of "inputting" the "specific time" (as measured with respect to a reference time) when the core is detached from its parent rock.
217 Claim 1 in the Method Patent was in the following terms:
1. A method of providing an indication of the orientation of a core sample relative to a body of material from which core sample has been extracted, the method comprising:
drilling a core sample from a body of material with a core drill having an inner tube;
recording the orientation of the inner tube at predetermined time intervals during the said drilling, the time intervals being referable to an initial reference time;
inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material;
removing the inner tube, with the core sample held therein in fixed relation to it, from the body of material;
relating the inputted specific time to the recorded time intervals to obtain an indication of the orientation of the inner tube and consequently the core contained therein at the specific time; and
providing the indication.
218 Professor Tapson was cross-examined about a number of paragraphs in his affidavit affirmed in Coretell First Instance, but he was not cross-examined about paragraph 90. In those circumstances, counsel for AMC submitted that I should not draw any adverse inference with respect to the statement in paragraph 90 because Professor Tapson had not been cross-examined about it. On the face of it, there is a good deal of force in that submission. In response to AMC's submission, Globaltech suggested that, until very recently, it had been unaware of what AMC's case was as to the meaning of step 3 in the Patent. I do not accept that submission. AMC tendered a letter from its solicitors to the trade mark and patent attorneys for Globaltech dated 26 February 2016. In that letter, they said the following:
2. Integer 1.5: "inputting the specific time beyond the reference time"
The integer in full is "inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material". This refers to inputting a specific time which is representative of the time of core-break, and which thus identifies that event in time. The specific time must be beyond the reference time, but there is otherwise no requirement that it be expressed in terms of any particular relationship with a reference time, as suggested in your letter.
(Emphasis added.)
I do not accept Globaltech's submission that in this passage AMC is making a different point, that is to say, that there is no requirement that you express the specific time in terms of duration or interval of time from the reference time. Globaltech submitted that the passage in the letter was not saying that there need be no reference to the reference time at all. As I said, I do not accept that submission. I do not propose to place any weight on paragraph 90 adverse to Professor Tapson in circumstances in which it was not the subject of cross-examination and he was not given an opportunity to provide an explanation.
219 Professor Tapson was asked about other statements in the affidavit he affirmed in Coretell First Instance. He was asked about a statement he made in paragraph 91 of his affidavit which dealt with the fifth integer of the Method Patent of inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material. In paragraph 91, he said the following:
I understand "inputting" to refer to the act of entering data for automatic processing. I understand the "specific time" in integer M.1.5 to refer to the time "when the core sample was separated from the body of material". I understand the "reference time" in integer M.1.5 to refer to the commencement of the EMI timer orientation and above ground timer. This is described at pp.11.5-6 and 11.20-22 of the specification of the Method Patent.
220 Professor Tapson was asked whether that is how he understood the integer of the claim when he considered that integer for the purposes of Coretell First Instance. He said that he understood that integer to be referring to that part of the embodiment. He understood the integer as described in the embodiment to be referring to that part of the embodiment that talks about the synchronisation or the starting contemporaneously of the stop watch at the surface and the timer in the downhole tool.
221 Professor Tapson was then taken to claim 4 of the Method Patent which dealt with inputting the selected time interval. Claim 4 was in the following terms:
4. A method 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 method comprising:
determining and storing orientation of the core sample at predetermined time intervals relative to a reference time;
selecting a time interval;
inputting the selected time interval;
relating the selected time interval to one of the predetermined time intervals; and
providing an indication of the orientation of the core sample at the selected time interval.
222 In paragraph 234 of his affidavit in Coretell First Instance, Professor Tapson said:
I understand this integer to be practiced by the act of inputting the selected time interval noted by the operator by reference to the above ground timer into the orientation device when the orientation device is retrieved to the surface.
He agreed that in that part of the affidavit, he was not referring to the embodiment of the patent. He agreed that that was how he understood the invention in the patent to work.
223 Professor Tapson was then taken to oral evidence he gave in Coretell First Instance. In cross-examination by counsel for Coretell, the following exchange took place:
And then you engage with Dr Skopec, but isn't the position this, Dr Tapson, that Dr Skopec has a core log and he also has a stopwatch?---Yes.
All right. Or the operators have a stop watch. And isn't the position doesn't a stop watch, in exactly the same way as described in the system patent, isn't a stop watch a means for measuring a time indicative of the time during drilling when the core sample is detached from the body of material from which it is taken? It's just a stop watch?---But it is not - it has not been used in that fashion. It doesn't have to be a stop watch. It could be any timer as long as it is used in the fashion described in the claim.
224 It was put to Professor Tapson that in that passage, he understood that the stop watch of the embodiment was not limiting. He said that he understood that to be one example of how the patent can work. He agreed that he understood that the timer can be any timer so long as it is used in the fashion described in the claim. He agreed that the process needs a timer at the surface.
225 Professor Tapson was taken to his affidavit in Coretell Western Australia which dealt with the Patent which is the subject of this proceeding. He was taken to paragraph 252 of that affidavit where he said the following:
I understand the "preset time intervals" described in the above passage to be "referable to an initial reference time" that corresponds to the time when the downhole equipment and handset are first synchronised. As explained at paragraph 83 above, all time keeping instruments measure time relative to some arbitrary reference time and have a moment in time in which the instrument is turned on, which is an example of an "initial reference time", or "t=0" time.
226 Professor Tapson agreed that in this passage he was giving evidence in relation to exactly the same patent as is the subject of the present proceeding. He said that in using the term "synchronised" in the above passage, he was describing the Coretell instrument in which those timers are synchronised. He meant by that that in the particular Coretell instrument at that time, both timers were set to zero. He added the qualification that he was sure that both timers did not count at the same rate. He said that he was referring to an engineering concept called synchronous and that synchronous systems are systems which continually communicate with one another in order to keep their times the same. In his opinion, "synchronised" refers to a system which has been made to reflect the same time at one point and it is not unexpected that they drift apart thereafter. He agreed that, in the context of the Patent, one does not need any line of communication between the two timers. It was put to him that the reason that there is synchronisation in the Patent is because otherwise there is no way of there being any communication between the surface timer and the downhole tool. He said that this was not synchronisation referred to in the Patent, and that the Patent does not require synchronisation.
227 Professor Tapson was then taken to paragraphs 167 and 168 of his affidavit in Coretell Western Australia. Those paragraphs are in the following terms:
These integers relate to an initialisation step to commence providing and processing the "signals" referred to integers 2.1 and 2.2 at a "first location". I have set out my understanding of "signals" and "first location" at paragraphs 31(x) and 143 above.
The ORIshot Materials specify that, once the handset is initialised and synchronised with the downhole equipment, the downhole equipment "commenc[es] providing and processing" of the signals associated with the orientation of the inner tube at a "first location";
Step 4: Initialise the tool. The top grey screen section is the black tool. The white bottom screen section is the white tool. Touch initialise Tool. This will take you to the setup screen
(ORIShot Quick Start Guide, p.1)
"The Coretell Multifunction Orientation Tool … can be attached to a core barrel for core orientation. When synchronised with the accompanying handset, the Coretell Multifunction Orientation Tool takes measurements at preset intervals and when returned to the surface, the handset is used to retrieve a specific timestamped measurement of orientation, inclination and temperature".
(ORIshot Web Extract, p. 1) (See also MMW, paras 2(b)-(c))
228 Professor Tapson was asked about the difference between the terms "initialisation" and "synchronisation". He said that initialisation was the turning on of the tools and the setting up of the measurement process and so on. He said that he had not given much thought to this because it was not one of the disputed claims. It was put to him that in the context of the Patent, it was when the operator turned on both timers. He said that he had not studied the claim for the purpose of these proceedings, but that that was probably reasonable. It was put to him that he plainly understood at the time he swore the affidavit in Coretell Western Australia what synchronised meant in the context of the Patent. He said that the Patent does not refer to synchronised and that in paragraph 168 of his affidavit he was saying that the ORIshot material specified that once the handset is initialised and synchronised with the downhole equipment. He said that he was not discussing the Patent at that stage and that it was the ORIshot materials themselves which referred to synchronisation.
229 Professor Tapson was taken to paragraph 83 of his second affidavit in Coretell Western Australia. That paragraph read in part as follows:
I understand the "preset time intervals" referred to in the ORIshot Web Extract to be "referable to an initial reference time" that corresponds to the time when the downhole equipment and handset are first synchronised. …
He agreed that in that passage he was saying that the initial reference time used in that tool is the time when the downhole timer and the surface timer are synchronised. It was put to him that he did not have any problem at all in saying that where you have the synchronised system, the initial reference time is that time of synchronisation. He said that the Patent does not require a synchronised system. He said that in Coretell Western Australia he was referring to the ORIshot system which was synchronised and that in that particular case where there is a synchronised system, it is probable that that is the initial reference time. He said that that did not mean that he considered that the Patent required a synchronised system. He said:
I am simply saying that a synchronised system may fall within the ambit of this patent.
230 It was put to Professor Tapson that in the previous proceedings where he had given evidence, he did not at any stage suggest that the claims could be interpreted so that they included systems that were not synchronised. He said that he was not sure that that was the case. He said that he did not wish to waste the Court's time by reading the affidavits, but he would be happy to do so and see if that might be the case. He was asked to assume that in the evidence he had given previously, he had not at any stage referred to the possibility that the claims included a system that is not synchronised. He said that he was not sure that he was willing to accept that assumption.
231 It was put to Professor Tapson that in all of the previous proceedings where he had given evidence, the product alleged to have infringed has been synchronised. He said that may well be the case. He said that he could not be sure and that it might be the case. In any event, it did not change his view.
232 It was put to Professor Tapson that it simply did not occur to him before he learnt about Globaltech's Orifinder v3B and Orifinder v5 in this case that a method or system according to the Patent, might involve a system which did not involve synchronised timing. Professor Tapson disagreed with that. He said that "we have always had" the possibility that these things were being timed against a wall clock in the drilling rig and that may work equally well or with possibly less reliability. It was put to Professor Tapson that in his previous evidence he plainly understood what was meant by synchronised in the context of the Patent and that he was happy to apply that to the products. He said that the Patent did not use the word "synchronised" and that, in those circumstances, to say that he understood what was meant by "synchronised" in terms of the Patent, was not meaningful. He did agree that he understood what was meant by the word "synchronised". He said that it consists of two clocks set to the same time so that they can run forward from that time. It was put to Professor Tapson that it did not cross his mind that an asynchronous system, such as the Globaltech Orifinder v3B and Orifinder v5, could be captured by the claim in this Patent before he saw those products and was asked to give his opinion. He said that he was not sure that he could answer that either "yea or nay".
233 Professor Tapson disagreed with the suggestion that he had "bent over backwards" to try and help Imdex by stretching the words in the claims to try and capture the Orifinder tools. He said that that proposition was "absolutely incorrect".
234 Professor Tapson agreed that in his evidence in Coretell First Instance, he understood "initial reference time" to refer to the time at which the surface timer and the timer in the downhole tool in the Coretell product were synchronised. He did not agree with the proposition that he had given a much broader interpretation to "initial reference time" in this case.
235 Professor Tapson was then taken to his evidence in this proceeding and, in particular, his evidence to the effect that "initial reference time" refers to the idea that a timer must have started in the downhole tool in order that the predetermined time intervals were timestamped and that the use of the phrase "referable to an initial reference time" confirmed to him that the significance of the initial reference time is to enable timestamping of the orientation data that was captured in the downhole instrument. He further said that the initial reference time is simply the starting of a clock, for example, in the downhole system and that the reference to it did not imply or necessitate time synchronisation. It was put to him that in this proceeding he was saying that initial reference time was simply the start of the timer in the downhole tool, whereas in Coretell First Instance, he said that the initial reference time is the time that the surface timer and the downhole tool were synchronised. He responded that that was the case with the alleged infringing product in that case. He explained that he said that because in that particular embodiment, that was the time.
236 The following exchange occurred in Professor's Tapson's cross-examination:
MS HOWARD: Well, I suggest to you that you said that because you understood that initial reference time referred to the time - in the context of the patent, it referred to the time when the two clock were started at the same time - one at the top, one in the downhole instrument.
PROF TAPSON: Your Honour, I referred to that in respect of an instrument where that was the case, where the two timers started at the same time. But that does not imply that that means that I think that is what the patent requires.
237 Professor Tapson said that the operator at the surface has to have a surface timer and there was no dispute about that. However, it was not necessary that that timer be synchronised with the downhole timer. He said that the Patent requires a timer on the surface and that in terms of the Patent, it must allow the operator to identify the moment when core break occurred in terms of the downhole timer. That is all that the Patent requires. Professor Tapson referred back to paragraph 252 of his affidavit in Coretell Western Australia and said that it was clear by reference to paragraph 250 of that affidavit that he was referring to the Orishot materials (i.e., the alleged infringing product in that case).
238 I have considered Professor Tapson's evidence carefully. I am not persuaded that Professor Tapson has deliberately changed his evidence from the previous proceedings to this proceeding in order to further AMC's cause. It seems to me that in the previous proceedings, Professor Tapson was focused on the alleged infringing product in those proceedings or the preferred embodiment of the claims in suit. A method involving synchronisation clearly falls within the terms of the claims and that was the focus of Professor Tapson's consideration in the previous proceedings. I do not think that it can be said from the passages I have identified that Professor Tapson identified the metes and bounds of the claims and has now changed his mind with a view to giving evidence that the Orifinder v3B and Orifinder v5 fall within the terms of the claims. That is not to say that the boundaries of claim 1, for example, as now stated by Professor Tapson were in his mind at the time of the previous proceedings.
239 The issue is one of construction and that is a matter for the Court to resolve. I have had the benefit of evidence as to the relevant common general knowledge and the opinions of experts as to the meaning of the claims. The issue comes down to the language of the claims in their particular context.
240 To sum up, Globaltech described its system as asynchronous. That followed, so it submitted, from the fact that there is no initial reference time and the handheld device at the surface only starts the core orientation device running. Sometime later, there is a point at which the drilling will stop. At that point, the operator starts a handheld timer, which may be different from the handheld device used at the beginning, to record the time. The core is broken and then retrieved to the surface. At that time, the handheld timer is stopped, as is the device timer. The operator is able to identify the orientation reading just prior to core break by reference to the time which has elapsed from the time when the handheld timer was started just prior to core break, and the time when it was stopped.
241 In my opinion, the construction issue concerning synchronisation and counting forwards or backwards turns primarily on the meaning of certain words and phrases in steps 2, 3 and 5 of claim 1 and, more particularly, "predetermined time intervals" and "initial reference time" in step 2, and "inputting the specific time beyond the reference time" and "representative" in step 3.