secret use - giehl INVENTION
166 It is worth recalling how this point arises. The Particulars of Objection which supported the cross-claim for revocation had alleged, in par 2, eight claims of prior use of the invention by various parties, including the inventor, Mr Giehl. Paragraph 5 (and the heading preceding it) were as follows:
"Secret Use
5. If the uses referred to in paragraph 2 above or any of them were secret uses (which is denied) the respondents will alternatively contend that the invention so far as claimed in the claims of the Giehl Patent was thereby secretly used in Australia before the priority date of the Giehl Patent."
167 In circumstances to be explained, two amendments were made to the particulars of use in par 2 during the course of the hearing, the second of which was as follows:
"(10) Prior Use by Werner Giehl
The invention of the Giehl Patent was used before the priority date of all the claims of the Giehl Patent by Werner Giehl, by
(a) the manufacture of circulation hammers in accordance with the claims of the Giehl patent in Adelaide in about March 1990 for the purpose of sale by Mr Giehl (see Mr Giehl's evidence on 15 July 1999); and/or
(b) the placing of an order to purchase five or six of those hammers placed by Peter Gaden of Gaden Drilling made orally to Mr Giehl in Darwin in about March 1990 (see Mr Giehl's evidence on 15 July 1999)."
168 Paragraph 3A was also added in the following terms:
"3A. Secret Use by Werner Giehl
The invention of the Giehl Patent was secretly used before the priority date of all the claims of the Giehl Patent by or with the authority of the patentee or its predecessor in title being a use by Werner Giehl, by
(a) the manufacture of circulation hammers in accordance with the claims of the Giehl patent in Adelaide in about March 1990 for the purpose of sale by Mr Giehl (see Mr Giehl's evidence on 15 July 1999); and/or
(b) the placing of an order to purchase five or six of those hammers placed by Peter Gaden of Gaden Drilling made orally to Mr Giehl in Darwin in about March 1990 (see Mr Giehl's evidence on 15 July 1999)."
169 Relevant defences to the cross-claim were pleaded as follows:
"A. None of the said events as alleged constituted relevant prior uses such as to make the Giehl patent not novel pursuant to Section 100(1)(g) of the Patents Act 1952 as at its priority date of 19 April 1990 in that:
(a) None of the said events was a prior use as that expression is known to the patent law of Australia.
(b) None of the said events constituted any publication alternatively making available to the public in Australia before 19 April 1990 the invention the subject of the Giehl patent; and/or
(c) None of the said events made available to the public in Australia each and all of the features of the invention claimed in the Giehl patent.
Particulars
…
(d) Werner Giehl (Adelaide) - March 1990
The alleged prior use by Werner Giehl of a prototype reverse circulation percussive hammer owned by Werner Giehl was in confidence and not in public and there was no relevant publication or use of the hammer by Werner Giehl.
(e) Werner Giehl/Gaden Drilling (NT) - March 1990
The alleged prior use arose in circumstances of trials and experiments by Werner Giehl and Gaden Drilling on his behalf of a reverse circulation percussive hammer owned by Werner Giehl in circumstances where the trials and experiments were by Gaden Drilling and the nature of the trials and experiments was such as to impose upon Gaden Drilling an equitable obligation of confidence.
B. None of the said events was such as to make the apparatus relevantly known to the public in Australia so as to make the invention obvious and not involving an inventive step pursuant to Section 100(1)(e) of the Patents Act 1952 as at its priority date of 19 April 1990 in that:
(a) None of the said events was a prior use as that expression is known to the patent law of Australia.
(b) None of the said uses constituted any publication alternatively making available to the public in Australia before 19 April 1990 the invention the subject of the Giehl patent; and/or
(c) None of the said events made available to the public in Australia each and all of the features of the invention claimed in the Giehl patent.
Particulars
The Particulars at paragraph 9A(a) to (e) are referred to and repeated.
10. Further or in the alternative to paragraph 9 hereof, if by reason of Section 234(2) and (5) of the Patents Act 1990 and Regulation 23.26 made pursuant thereto the Patents Act 1990 applies to the Respondents' cross-claim in the proceeding to the extent that the Patents Act 1990 does not contain an equivalent ground of revocation to one found in the Patents Act 1952 then the Applicant says that by reason of the definition of "prior art base" in the Patents Act 1990, the Respondents are precluded from relying upon the alleged prior uses set out in the Particulars of Prior User set out at paragraph 9 hereof so far as the same allege invalidity of the Giehl Patent on the grounds of:
(i) lack of novelty
(ii) lack of inventive step
in that the said events constituting the alleged prior uses relevantly did not constitute the making of information publicly available through doing a relevant act in the patent area.
Particulars
(a) The particulars referred to at sub-paragraphs (a) to (e) at paragraph 9A hereof are referred to and repeated.
(b) In any event if as alleged by the Respondents the alleged prior use by Werner Giehl or Gaden Drilling was a secret use by Werner Giehl who is the predecessor of the patentee of the Giehl Patent then the Applicant relies on Section 18(1)(d) of the Patents Act 1990.
11. Further or in the alternative to paragraph 9 hereof if, by reason of Section 234(2) and (5) of the Patents Act 1990 and Regulation 23.26 made pursuant thereto, the Patents Act 1952 continues to apply to the Respondents' cross-claim in the proceeding then the Applicant says that:
…
11.4 Werner Giehl - Adelaide (March 1990)
(a) If any such alleged prior use was a secret use by Werner Giehl as alleged by the Respondents (which prior use is denied) then by reason of Section 100(2) of the Patents Act 1952 the Respondents are precluded from relying on the provisions of Section 100(1)(e) or (g) of the Patents Act 1952 in respect of any such prior use of the invention the subject of the Giehl patent by Werner Giehl in Adelaide in March 1990 as alleged by the Respondents at paragraph 2(b((10) and 3A of the last amended particulars of objection to the SDS patent of July 1999.
Particulars
The particulars at sub-paragraph 9A(d) are referred to and repeated.
(b) By reason of Section 100(3)(a) of the Patents Act 1952, the Respondents are precluded from relying on the provisions of Section 100(1)(l) of the Patents Act 1952 in respect of the said use in that the said use was for the purpose of reasonable trial and experiment only.
Particulars
The applicant refers to and repeats the particulars at sub-paragraph 11.4(a).
11.5 Werner Giehl and Gaden Drilling (March 1990)
(a) If any such alleged prior use was a secret use as alleged by the Respondents (which prior use is denied) then by reason of Section 100(2) of the Patents Act 1952 the Respondents are precluded from relying on the provisions of Section 100(1)(e) or (g) of the Patents Act 1952 in respect of any such prior use of the invention the subject of the Giehl patent by Werner Giehl and Gaden Drilling (March 1990) as alleged by the Respondents at paragraph 2(b)(10) and 3A of the last amended particulars of objection to the SDS patent of July 1999.
Particulars
The applicant refers to and repeats the Particulars at sub-paragraph 9.5(e).
(b) By reason of Section 100(3)(a) of the Patents Act 1952, the Respondents are precluded from relying on the provisions of Section 100(1)(l) of the Patents Act 1952 in respect of the said use in that the said use was for the purpose of reasonable trial and experiment only.
Particulars
The applicant refers to and repeats the particulars at sub-paragraph 11.5(a).
12. Further and in any event, by reason of Section 158(1)(h) of the Patents Act 1952, the Respondents are precluded from relying on any use by Werner Giehl/Gaden Drilling in March 1990 in that:
(i) the alleged prior use was by Werner Giehl and Gaden Drilling on his behalf for the purposes of reasonable trial only.
(ii) It was reasonably necessary having regard to the nature of the invention that such use should have been in public (which public use in any event is denied).
(iii) The use was in March 1990 and was within one year of the date of application of the Giehl patent on 19 April 1990."
170 A statement by Mr Giehl made in January 1999 dealt extensively, and chronologically, with the development of the invention through three prototypes. The third prototype was dealt with in pars 35 to 46 of the statement, which trace the history of dealings between Mr Giehl and Mr Peter Gaden of Gaden Drilling in the Northern Territory. The background is explained in the following extract:
35. … Once a prototype has been designed it must be tested in the field. In choosing where to test the third prototype it was necessary for me to have access to reverse circulation drill rigs. As the design of the third prototype developed, I was aware of the need to keep my design confidential. I decided to approach a Mr Peter Gaden of Gaden Drilling in the Northern Territory. Mr Gaden had been a friend of mine for 15 to 20 years and I was sure that he would allow me to test the third prototype at drill sites at which his company was working from time to time, such drill sites being situated around the town of Bachelor which is about 80kms south of Darwin. I rang Mr Gaden and he was more than happy to make his drilling rigs available for me to use for confidential testing. Although it meant that I would incur travelling costs of going to Darwin to test the third prototype, it was important to me to do the testing on sites where I knew that the tests could be conducted in private. Unlike at Kambalda in 1985 and Condoblin in 1987, I had no desire to invite third parties to any testing of the third prototype as the testing was required so that I could further develop and refine the design of the third prototype. It is common when testing a prototype for the refinement of the design of the prototype to take place over a long period. I envisaged that further modifications would be required over a period of time once as and when testing took place and performance results had been assessed. In this case because testing was taking place in the Northern Territory, the period over which the third prototype was developed to its final stage took longer than it would have had I been able to perform tests in Adelaide. Between mid to late 1998 and about March 1990, I travelled to the Northern Territory approximately ten times to test the developing third prototype. These trips cost me about $15,000.00 in air fares."
171 The final stages were described as follows:
"44. When in Darwin in or about March 1990 towards the end of the period of testing of the third prototype, I recall that a Drillquip reverse circulation hammer on the market at that time was in use on site. The drillquip hammer did not have a cover. The Drillquip hammer, when operated, produced the normal quantities of dust and dirt and small samples rising to the surface up the side of the hole being drilled. I witnessed from several miles away dust shooting into the air. It was at that time that Mr Gaden suggested to me that I should seek legal protection for the cover I had designed. I agreed with him.
45. On my return to Adelaide in or about March 1990, I manufactured several more hammers in accordance with the design of the final version of the third prototype which included the cover. I maintained the design feature of engaging the cover with the drive-sub by welding. It was not until about 4 or 5 years later that I designed the cover as a separate component which fitted (without welding) over the drive-sub and extended down over the sides of the drill bit.
46. Before attempting to trial in public or sell any of the hammers I had manufactured, I sought legal advice from Adelaide patent attorney Mr Howard Schultz of Collison & Co in relation to seeking patent protection for the cover I had designed. Mr Schultz advised me that he would prepare a provisional application for lodging at the Australian Patents Office. This provisional application was filed on 19 April 1990. … The said application details a drawing of the third prototype. I recall that after lodging the Giehl patent application, Mr Gaden placed an order for about 6 of the third prototype hammers with cover."
172 During the evidence of Mr Giehl on 15 July 1999, the cross examination occurred which is set out in the judgment of the trial judge as follows:
"Yes?---I knew Mr Gaden for 20 years and I would have done business with him for 20 years.
That's right, and when you went up to Darwin in connection with the events that you describe regarding the third prototype in your statement, was that in connection with the supply of equipment to him?---No, that was already to - the hammer, what he had there.
But I suggest to you you had other business reasons for going up to see him as well as testing the hammer?---No, it was at that time for testing. We only went up for testing. The business, what we did, he done with the fax and talk to my people at the office. So didn't - we just brought that up in between driving.
I see, but during this period he did order other equipment from you?---Yes.
Which you supplied?---Yes, lots of it.
And he was in the habit of ordering equipment from you?---Yes.
I suppose you regarded him as a good potential customer for when your hammer was ready for the market?---He was.
He was?---Yes.
When you were up there developing the hammer, as you say in your statement, you discussed with him I suppose supplying the hammer to him?---Yes.
Did he say he wanted to order some?---He did.
Was that while you were up there testing it?---No, the ordering came in afterwards, once we had tested them, and we only had the one hammer there. We had to run it, we had to bring it back, then we made the second one up. I had to bring it back - like, the same identical hammers, one up, one down, one up, one down.
But while this was happening he must have said to you things like, 'Well, if this works I'll want to buy some'?---That's right, yes.
So you knew he was a potential customer if you'd got a product that
worked?---He always was a good customer.
…
And then in [your witness statement] you say, 'On my return to Adelaide in about March 1990 I manufactured several more hammers in accordance with the design of the final version of the third prototype' - - -?---That's right.
'… which included the cover.' Is that right?---That's correct.
Now, that was after you'd done all the testing and the third prototype, so far as you were concerned, was working?---That's right.
The hammers you manufactured there, you manufactured for sale?---Afterwards, yes.
When you returned to Adelaide in about March 1990?---It was still a bit later.
Well, you see, you say there in [your witness statement], 'On my return to Adelaide in about March 1990 I manufactured several more hammers in accordance with the design of the final version of the third prototype'?---That's correct.
Do you see that?---That's correct.
That was immediately on your return to Adelaide?---Can I say something?
Well, was it immediately on your return to Adelaide?---It was immediately, yes.
You manufactured several hammers?---Lots of them.
Yes. And so far as you were concerned, the hammers you manufactured were ready to work?---That's right.
But you didn't sell any of them?---Until later.
Until later. You didn't sell any of them until Mr Schulze had filed the provisional application of 19 April 1990?---That's correct.
How many of the hammers you manufactured did you have in stock on 19 April 1990?---I would have had about 15 or 20.
15 or 20?---Yes.
They were manufactured and it was your intention to sell them?---That's correct.
You knew that Mr Gaden was likely to buy one or more?---He already ordered at that time five or six.
What, he gave you that order then you were up in Darwin?---When we were there, yes. He said, 'Make us some hammers up and let us know afterwards.'"
173 That evidence led to an application by the respondent to amend on the following day, in the course of which counsel for the respondent said that in support of the relevant amendment he did not seek to go beyond Mr Giehl's evidence given the previous day in cross-examination and that in Mr Giehl's statement. It was put that the necessity for the amendment only came about after the evidence which had been given on the previous day. On that basis, there was no objection to the amendment by the applicant.
174 The findings of primary fact by the judge were:
(1) That orders were placed by Mr Gaden and received by Mr Giehl prior to 19 April 1990;
(2) At least some of the fifteen or twenty hammers were manufactured after the order was received and before 19 April 1990;
(3) The order from Mr Gaden was unsolicited;
(4) The order received from Mr Gaden was not accepted by Mr Giehl before the priority date;
(5) Mr Giehl did not place his invention on public display or seek to solicit orders from the public before the priority date.
Although there is no specific finding, there does not seem to be any doubt on the evidence of Mr Giehl that he intended to sell such of the hammers as had been manufactured by 19 April 1990 once patent protection had been obtained and he regarded himself as free to safely do so. There was no finding that the hammers were manufactured to fulfil the unsolicited and unaccepted order. There was, and could be, no finding that Mr Gaden acquired any rights or that Mr Giehl undertook any obligations in relation to the manufactured hammers. The net result is that the factual allegations in pars 2(10) and 3A of the Particulars of Objection are established, with the immaterial difference that the order may not have been placed in Darwin.
175 For relevant purposes the Patents Act 1990 (Cth) ("the 1990 Act") provides that:
(1) public use of an invention by anyone prior to the priority date of a patent destroys novelty and is a ground of revocation;
(2) "secret use" of an invention prior to the priority date of a patent by or on behalf of the patentee is a ground of revocation except for certain uses, including use for the purpose of reasonable trial or experiment only, and use occurring solely in the course of a confidential disclosure of the invention by or on behalf of the patentee.
(This follows from ss 138(3)(b), 18(1)(b) and (d), 9(a) (b) and (c), 7(1) and the definition of "prior art base" in Schedule 1 of the 1990 Act.)
176 The pleadings raise issues of both "use" as anticipation and "secret use". The trial judge sensibly looked at them together. The first issue on the pleadings is whether the acts in question are "use" under either limb: public or secret.
177 In my opinion, the trial judge was plainly right to reject the argument reflected in pars 2(10)(b) and 3A(b) of the particulars of objection, namely, that the receipt of an unsolicited order from the person who had been involved in testing of the prototype was use by Mr Giehl of the invention in any sense. It did not involve Mr Giehl in any relevant activity at all. There is no challenge to this finding.
178 The question left is as to the significance of the facts alleged in pars 2(10)(a) and 3A(a) of the Particulars of Objection which amount to manufacture simpliciter but with a view to eventual sale after application was made for the patent. There was, and could be, no finding that the appellants had proved that what was done was public. The evidence does not disclose any third party being involved in the manufacture. Even if employees were involved, it could be assumed that they would be bound by confidence. It can also be taken that, leaving aside consideration of uses within s 9 of the 1990 Act, what was done was intended to be, and was, secret, in the sense of being confidential. Indeed, it is plain enough that Mr Giehl had received advice as to patent law and practice and was concerned to ensure that there was no public disclosure before the priority date.
179 Counsel for both parties have made comprehensive written and oral submissions as to whether what occurred was "use" of the invention. Having considered these submissions, I have come to the conclusion that making the items in question was not "use" of the invention for relevant purposes. In my opinion, this follows from an understanding of the principle involved.
180 The trial judge drew attention to the relevant historical basis for the secret use ground of revocation, namely, to prevent a patentee from gaining a longer monopoly than the statutory period by enjoying a period of de facto monopoly through the secret use before the priority date, without meeting the corresponding obligation attaching to such a monopoly, namely, the public disclosure of the invention. This can be traced back (at least) to the informative case of Morgan v Seaward (1837) 2 M & W 544, 150 ER 874 ("Seaward"), where Parke B said (at 559):
"… if the inventor could sell his invention, keeping the secret to himself, and, when it was likely to be discovered by another, take out a patent, he might have, practically, a monopoly for a much longer period than fourteen years."
181 In Bristol-Myers Co v Beecham Group Ltd [1974] AC 646 ("Bristol-Myers") Lord Diplock said (at 680-681):
"… For the other mischief against which that statute was directed was that even monopolies of new manufactures should not extend beyond 14 years. If the inventor had already reaped commercial benefit from a de facto monopoly in his discovery owing to his concealment from all other traders of the way in which the new substance could be made, he was not to be permitted to prolong his monopoly for an additional 14 years. So "public use" in the sense of commercial dealing in a product claimed as an invention, by any trader even though it were by the inventor himself, rendered invalid any patent for the product claimed.
In the case of use by traders, at any rate, the expression "public use" was not employed to mark the contrast between public and secret use but to distinguish commercial from experimental use in the course of discovering, perfecting and trying out the invention so as to test its suitability for commercial use. As the expression "manufactures" in the Statute of Monopolies indicates, it was the commercial usefulness of the new inventions that provided the reason for encouraging them by grants of temporary monopolies to their inventors, and this object of the statute would be defeated if mere experimental uses of this kind either by the applicant for the patent or by others who had worked privily on the same discovery were to be a bar to the grant of a patent to him who first publicly disclosed the way in which the invention could be carried out." (emphasis added)
This passage suggests a practical test: has what occurred amounted to a de facto extension of the patent term? The answer to this will usually depend upon whether the patentee reaped commercial benefit from what was done before the priority date. In the present case, in my opinion, there has been no de facto extension of the term of the patent by making the articles in question.
182 This rationale for secret use invalidating a patent should not be confused with another historical basis for invalidity explained by Lord Diplock in Bristol-Myers (at 680):
"So in construing the words "used" and "use" in the context in which they appear in both sections 14 and 32 of the Patents Act 1949, it is legitimate to consider the sense in which they were employed by the judges before the passing of the Act of 1932 in cases dealing with prior use as a ground for revocation of a patent or as a defence to an action for infringement. In those cases they were construing the word "use" in the phrase: "such manufactures which others at the time of making such letters patent and grants shall not use" appearing in section 6 of the Statute of Monopolies itself, and thus in the light of the mischief against which that statute had been directed.
From earliest times it has been taken for granted that by that phrase it was intended to declare unlawful the grant of any patent which would put it into the power of the grantee to prevent any other trader from doing whatever he had done before in the course of his trade. In the earlier cases one often finds the prior use by others which rendered a patent invalid described as "public use"; but where the invention claimed was a new product it was never doubted that any dealing with that product by way of trade, whether by buying it or selling it with a view to profit or making it for the purposes of sale, constituted such "public use"."
The two bases come together when a patentee deals with a product of the invention by way of trade (see, for example, Hudson Scott & Sons Ltd v Barringer Wallis & Manners Ltd (1906) 23 RPC 79 ("Hudson Scott") ). Such use would normally be public, not secret.
183 The test of illegitimate extension of the patent term yields satisfactory results in differing circumstances. If the invention is a process or method, to secretly use the process or method to make goods for sale can readily be seen as a secret commercial use of the invention which would extend the patent if done prior to the priority date. Another example of secret commercial use of that character is if the product which is manufactured according to a product claim is then secretly used as part of a manufacturing process to make other goods before the priority date. Another example would be the use of a device made according to the SDS patent as part of a drill rig engaged in commercial drilling, but in conditions of secrecy, prior to the priority date. To make an article for ultimate sale has, no doubt, a commercial aspect, but it does not amount to use of the product made and does not involve any de facto extension of the term of a patent claiming the product. The manufacturing of goods is not, in my opinion, commercial use of those goods.
184 No decision was cited by the appellants to illustrate any like situation being held to be use by a patentee, secretly or otherwise, destructive of validity. The trial judge correctly distinguished Re Wheatley's Patent Application (1984) 2 IPR 450 and referred to the decision of Kekewich J in Hudson Scott (which might be seen as the high water mark of use). To accept the respondent's submission would be contrary to the tendency of Seaward and Betts v Menzies (1859) 1 El & El 990, 120 ER 1181 (at 1007, 1011, 1013-1014, 1017-1018) (unaffected as to this point by the appeal reported at (1862) 10 HLC 118, 11 ER 970). In one of the seminal patent cases, Bramah v Hardcastle (1789) Holroyd 81 (1602-1842); 1 Carp PC 168, there was evidence that the patentee had made two or three of the machines claimed before he obtained his patent. Counsel for the patentee admitted that that circumstance did not invalidate the patent. No authority since has shown that concession to be wrong. The manner in which Parker J in Robertson v Purdey (1907) 24 RPC 273 ("Purdey") dealt with the Nobbs gun (at 290-291) and the Baker gun (at 302) is inconsistent with the appellants' submission - see, for example, at 302:
"I have now therefore to consider whether, as a matter of law, those three guns were not only made but were used in such a way as to invalidate a Patent for substantially the same invention …"
185 Counsel for the appellants have referred to obiter dicta from the judgment of Jenkins LJ in Fomento Industrial SA v Mentmore Manufacturing Co Ltd (1956) 73 RPC 88 as follows (at 115):
"I think that, where an invention specifies an article of a particular description, a person who makes an article in accordance with that specification is using the invention, whatever he does with the article when made. If making the article does not amount to using it, I do not see why selling it should do so; and it would seem (with respect to Mr Shelley's submission to the contrary) obviously absurd to hold that selling the article when made would not be "use" for this purpose. Of course, a pen in one sense is not used until it is actually written with; but I do not think that "use" in this context can be given that narrow meaning. "Use" here relates, as I think, not to the article but to the invention. Thus, to give a simple illustration, if I obtain from a doctor a prescription for a bottle of medicine and take it to my chemist to be made up, the chemist, in making it up, is "using" the prescription. If I take the medicine home and drink it, I am "using" the medicine; but the chemist was undoubtedly using the prescription in making up the medicine, even though he dropped the bottle on the floor and lost the medicine after he had made it up, or I threw the medicine away instead of drinking it."
Lloyd Jacob J at first instance had found the patent in suit invalid by reason of particular instances of prior public use. His Lordship did not deal with or find the facts in relation to a particular of objection of prior secret use based upon prior manufacture by the patentee. After a hearing on appeal of eleven days, each member of the Court of Appeal (Evershed MR, Jenkins LJ and Birkett LJ) delivered a separate ex tempore judgment on the day after argument had concluded, apparently taking the whole day between them. The appeal was unanimously dismissed based upon particular instances of prior public use and neither Evershed MR nor Birkett LJ dealt with the secret use point. Jenkins LJ did not refer to any authority, including Purdey which had been cited by counsel for the patentee for the proposition that "used" meant "used" and not "manufactured". The actual decision by Jenkins LJ on the point was that there had been large-scale manufacture and sale of the articles in accordance with the invention prior to the priority date rather than simply secret use by manufacture. In my respectful opinion, the reasoning of his Lordship is unconvincing. His reference to the prescription confuses a process claim with a product claim.
186 My conclusion on this issue does not depend upon "use" being exclusive of the other aspects of the monopoly granted to a patentee which are reflected in the definition of "exploit" in the 1990 Act. It may be accepted that the various kinds of exploitation may overlap in different circumstances. I would accept, for example, that to sell goods might be seen as commercial use of the goods. However, reference to the different kinds of exploitation goes back to words in the original form of letters patent "to make, use, exercise and vend the invention" and the distinctions cannot be ignored (cf Heerey J in Welcome Real-Time SA v Catuity Inc [2001] FCA 445 at [101]-[103]).
187 If I were wrong concerning secret use, I would have difficulty with the conclusions of the trial judge as to the application of s 9(a) and (b) of the 1990 Act, substantially for the reasons advanced by the appellants and accepted by Heerey J. However, it is not necessary for me to come to a final view as to that.