Brandi v Mingot

characteristics of that device, viz, a reasonably heavy external float on a mesh cylinder mounted on a concentric axle, before January 1985, he would also have then used a device that also possessed all those integers. It is the respondent who bears the onus of establishing invalidity of the patent. Mr Les Mohr's evidence does not establish that the device put in evidence (or one that did not differ materially from it), which I consider capable of amounting to an anticipation of the applicant's patent, was, in fact, probably used before the priority date of the patent. His evidence does not enable any particular device to be identified as one which was in use before January 1985 and which did possess all the integers of the applicant's invention. In reaching this conclusion, I take into account that Mr Rae Mohr was not called by the respondent to give evidence about when the Mohr device in evidence, or one similar to it, was first used. The rule in Jones v Dunkel was stated in O'Donnell v Reichard [1975] VR 916 at 929, in a passage approved by the High Court in Brandi v Mingot (1976) 12 ALR 551 at 559, in these terms: where a party, without explanation, fails to call as a witness a person whom he might reasonably be expected to call, if that person's evidence would be favourable to him, then, it is open to the tribunal of fact to infer that that person's evidence would not have helped that party's case. Mr Les Mohr's evidence sufficiently shows that Mr Rae Mohr was available and able to give evidence. He was, in my view, a witness that the respondent, rather than the applicant, might reasonably be expected to call: in view of what Mr Les Mohr had to say about Mr Rae Mohr's activities and in view of the respondent's reliance on Mr Les Mohr's evidence to defeat the applicant's patent, Mr Rae Mohr could be expected to prove the respondent's case that the applicant's patent had been anticipated and was invalid, if a device possessing all the integers of the claims was used before January 1985. I have refused to find that, prior to January 1985, Mr Rae Mohr did use one of his devices that possessed all the integers of the patented invention. But I have accepted that he did then use versions of the tumbler in evidence. It therefore remains to be determined whether I should still find that Mr Rae Mohr had, by January 1985, progressed sufficiently far with his experiments to have identified all the essential features of the applicant's invention. If he had got that far, so that all that remained was for him to substitute some mechanical equivalents for elements of his device in order to have a tumbler materially identical to that described in the applicant's patent, it could be said that his work did anticipate the patent. See Nicaro Holding Pty Ltd v Martin Engineering Co, supra, at 517. There are a number of obstacles to arriving at that conclusion. It is not possible to identify from Mr Les Mohr's evidence the highest stage of development of his device which Mr Rae Mohr achieved before January 1985, something that makes it difficult to assess whether that device, whichever one it was, was sufficient to amount to an anticipation of the patent. Given the very limited scale of Mr Rae Mohr's experiments, so far as that emerges from the evidence, there is no ground for finding that even if he had, before January 1985, used a device that incorporated all the essential integers of the applicant's patent, it was one of those which Mr Les Mohr saw or that it was otherwise used in circumstances that made that information publicly available. Finally, the claims in the patent specification, properly construed, identify it as an essential characteristic of the applicant's invention that the device must have the capacity to regularly tumble, under the action of the movement of the water, a sufficient quantity of oysters to enable it to be described as an apparatus for use in the activity of producing a crop of oysters. Although the mechanical principles which are involved may be quite simple, I do not consider that the step of moving from an experimental device, ie, one which will regularly tumble only a few oysters, to one which will tumble enough to enable it to be described as a device for use in raising a crop of oysters, is a step that involves no more than the substitution of one non-essential mechanical equivalent for another non-essential mechanical feature. I do not think that if Mr Rae Mohr had publicly used before January 1985 a device with that limited capacity to tumble its contents, that would be sufficient to deprive the applicant's patented invention of novelty because the disclosure would not, in my opinion, "enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments". Nicaro Holdings Pty Ltd v Martin Engineering Co, supra, at 517. Mr Les Mohr's evidence of the apparent difficulties encountered by his uncle, who, as an experienced oyster grower, is within the category of persons skilled in the art, for present purposes, in developing a tumbler that performed, supports this view. Differences only in common elementary mechanical materials between a device that works in a practical sense and an earlier device that cannot be said to work in that sense, can suffice to confer novelty on the later device. See Murray v Clayton (1872) LR 7 Ch App 570 at 581-582. The differences between the Mohr device in evidence and other versions of that device which, however, on Mr Les Mohr's evidence, lacked its capacity to tumble a load of the size the former device can work with, cannot be said to be mere mechanical equivalents for each other. In view of the effort apparently involved on Mr Rae Mohr's part in identifying the appropriate float to give his tumbler a useful working capacity, I do not think it can be said that he was merely concerned with substituting mechanical equivalents, rather was he engaged in truly experimental activity, in identifying the element of the tumbler which would make a "substantial contribution to the working of the thing": Griffin v Isaacs (1942) 12 AOJP 739 per Dixon J at 740. THE USER BY MR BAILEY Soon after Mr Moxham made his second prototype in March 1985, he said he informed Mr Holliday, of the Fisheries Research Station at Salamander Bay, of his device and then gave Mr Holliday two of the second prototypes to test. Mr Holliday did not, however, try out these devices himself. Instead, he gave them to Mr Bailey, the principal of an oyster growing business conducted by Cove Oysters Pty Ltd at Port Stephens, without first mentioning his intention to do that to Mr Moxham. It is not disputed that Mr Bailey's user of the devices made the invention publicly available so that, provided it was a user prior to 30 January 1985, it would be sufficient to deprive the patent of novelty: there was no suggestion that he was given the devices by Mr Holliday in circumstances in which he was restricted in any way in the use he could make of the information that could be gleaned from an inspection of the device. The only issue between the parties is when Mr Bailey got the devices from Mr Holliday. Mr Bailey confirms receipt of at least one of Mr Moxham's second prototypes from Mr Holliday. However, he says this occurred in 1984 and well before the priority date of the patent. Mr Holliday is unable to fix the date when he received the two prototypes from Mr Moxham, both of which he gave to Mr Bailey for testing. I accept Mr Moxham's evidence, in preference to Mr Bailey's, as to when Mr Bailey obtained the two Moxham devices from Mr Holliday. Mr Moxham's evidence, that he gave the prototypes to Mr Holliday only after lodgment of his provisional patent specification in January 1985, is supported by Mr Holliday's evidence about two photographs he took, each of which shows one of the two Moxham devices installed at Mr Bailey's premises in Port Stephens. Mr Holliday was, in some respects, an unsatisfactory witness. He was surprisingly vague about a number of matters and he appears to have kept no record of matters that he might be thought to have recorded. The explanation may well be that, in those early days, he did not think Mr Moxham's device was of much importance. But Mr Holliday was able, quite convincingly, to date these photographs as having been taken soon after 2 May 1985. One of the photographs clearly shows one of the Moxham devices installed at Mr Bailey's premises in a clean condition and free of marine fouling. There is evidence, which I accept, that this suggests that the photographs were taken soon after they were put into use by Mr Bailey. There is no direct evidence from anyone when this was done. But the probabilities I think are that it would have been soon after he got them from Mr Holliday. Moreover, there is no evidence in the photograph of the presence of any Pacific oyster infestation on the device. If Mr Bailey got it in late 1984 and had put it into use before late January 1985, as he claimed, the presence of that infestation on the device should have been obvious in a photograph taken in May 1985. This suggests the device was only put into use by Mr Bailey after March 1985, when, according to him, the Pacific oyster spat fall ended. I do not think that Mr Holliday's agreement with the suggestion in cross-examination, that it was possible he may have given the devices to Mr Bailey before the priority date of the patent, justifies a finding to that effect or justifies rejecting the inferences open from the other evidence I have referred to, and which I regard as more reliable, that that delivery took place only after the priority date: this was said in the context of the evidence of a witness who made it clear he had no recollection when he handed over the devices. Mr Moxham was less than frank in his initial evidence, which created the impression that he first sought patent protection for his invention when he approached his patent attorney, Mr Anderson, in December 1984. It emerged in cross-examination that he had himself filed a provisional specification for this invention in July 1984. I do not accept, however, the fairly elaborate theory which counsel for the respondent built upon this want of frankness by Mr Moxham to the effect that the fact of the earlier filing demonstrates that Mr Moxham had completed testing of his first prototype to his satisfaction by July 1984, and was thus likely to have delivered the second prototypes to Mr Holliday, which he in turn delivered to Mr Bailey, prior to January 1985. The photographic evidence to which I have referred is in any event inconsistent with such a theory. Mr and Mrs Bailey dated receipt of the device from Mr Holliday to the period when a Mr Castka was in their employ. He ceased to work for Mr Bailey at the end of November 1984. But in oral evidence, Mr Bailey could offer no reason why he connected receipt of the device from Mr Holliday with Mr Castka's being in his employ. Mrs Bailey, who supported her husband's evidence of dating the receipt of the device to a time when Mr Castka was working for them, said in oral evidence that she linked the two events because the lease gang installed the device and Mr Castka was foreman of the lease gang. She did not commit herself, however, to saying Mr Castka was involved in the actual installation. Mr Bailey's evidence conflicted materially with what he told the respondent's patent attorney, who first approached him in April 1994. The patent attorney's detailed note of his initial conversation with Mr Bailey on 8 April 1994 and of the conversation he had when Mr Bailey telephoned him the next day was put in evidence. While Mr Bailey did tell the patent attorney in the first conversation that, to the best of his belief, he got the device from Mr Holliday before January 1985, it was in the second conversation that he told the patent attorney that he and his wife had discussed the matter and had recalled that, when Mr Holliday gave him the device, both he and his wife were sure that a number of their staff, including Mr Castka, were present. I note that Mr Castka, who has no interest of any kind in the outcome of the case, gave evidence, which I accept, that, until he was shown the device by Mr Bailey at the Cove Oyster Company lease in mid 1994, shortly before he swore the affidavit he gave to the applicant's lawyer in August 1994, he had never seen such a device there or anywhere else. Mr Bailey therefore learned, after speaking to the patent attorney in April 1994 but before he gave evidence at the trial, that Mr Castka would say he was not present when Mr Bailey received the tumblers from Mr Holliday. In oral evidence, Mr Bailey denied ever telling the patent attorney that Mr Castka was present when the device was received. If their oral evidence is accepted, neither Mr Bailey nor his wife seem to have any reason for connecting Mr Castka with Mr Bailey's receipt or use of the tumbler. The fact that the Baileys only turned their mind to dating the events in question in April 1994, ie, nearly 10 years afterwards, reinforces me in my view that their evidence that they received and used the device before the priority date is unreliable. I also accept that Mr Bailey made, on a prior occasion to his giving affidavit and oral evidence, a statement on a matter of critical significance to the issue about which he testified, which was inconsistent with his evidence. This is further reason to refuse to accept his dating of his receipt of the two Moxham tumblers. Mr Turner worked for Mr Bailey from 1980 until some time in 1985. His general duties included maintenance of the racks and trays on the Cove Oyster Pty Ltd's leases and tending to the growing oysters. He said that, until shown a photograph of the device which Mr Holliday gave to Mr Bailey shortly before he provided the applicants with his affidavit sworn in September 1994, he had never seen that or any similar device used for growing oysters either on Cove Oysters Pty Ltd's leases or anywhere else. His evidence is inconclusive, given the absence of clarification of when he left Mr Bailey's employ. He was uncertain when in 1985 he left, saying on one occasion, he left in late 1985 and, on another, that he "probably" left about June or July of 1985 and that he was "probably" working for Mr Bailey in May 1985. He may have worked for Mr Bailey when, on any view, the device was in use by Mr Bailey, in which case his failure to notice it would destroy the value for the applicant of his evidence of never having seen such a device prior to being shown the photograph. But it is also possible that he may have left Mr Bailey's employ sometime around the middle part of 1985, but before the device was put into use, in which case his evidence would, of course, support the applicant. I do not think Mr O'Dell's untested and brief affidavit evidence to the effect that he had a clear recollection that the device received by Mr Bailey was in the possession of Mr Bailey's company when Mr Castka was employed there as a foreman is sufficient, having regard to the circumstances in which it was admitted and to the absence of any detail that might lend credence to his bare assertion, to justify a different finding. I am also prepared to accept Mr Castka's evidence, which contradicts what Mr O'Dell says. Mr Bailey also sought to date Mr Holliday's photographs of himself standing on some oyster trays next to one of the applicant's devices as having been taken well prior to May 1985 because he claimed they were trays made by his employees after July 1994 and because of the absence in the photographs of any evidence of the rapidly progressive Pacific oyster infestation on the trays or the Moxham tumbler, which he said commenced with the spat fall in the period November 1984 to March 1985, an infestation that he also said was obvious by early 1985. But, given Mr Bailey's evidence in cross-examination, I think it likely that Mr Holliday's photograph shows sectionalised trays which Mr Bailey used in connection with experiments in which Mr Holliday was involved on his company's leases in the period 9 January to 18 December 1985; the absence of evidence of Pacific oyster infestation can be explained, as Mr Bailey conceded, by the fact that the trays shown in the photograph may have been trays newly put into use, in the course of these experiments, at some time in 1985 after they commenced. THE U.S. PATENT This patent, which constitutes prior art information, is relied on by the respondent as an anticipation of the method claim of the applicant's patent, claim 6 (and claim 7, which is dependent on it). It is an essential element of claim 6 that the claimed method involves producing the regular tumbling of the oysters by the action of the moving water at least partially rotating the container. The American patent is for a method of raising oysters. The claims in this patent do not rely on the action of the moving water to perform the operation of turning the containers in which the oysters are grown, but rather on the containers being turned periodically. Claim 2 includes, as an essential feature, turning the containers over "fairly consistently Ľ at least once within every 120 hours". The abstract of this patent makes what is plainly implicit in the claims themselves, viz, that an essential feature of this patent is that the containers are to be turned manually. Lahore, supra, at para. 1.5.013, suggests the test for determining whether a patent is deprived of novelty by prior use is less stringent than the test applicable in the case of an alleged paper anticipation. The decision in Merrell Dow Pharmaceuticals Inc v NH Norton & Co Ltd, supra, at 14 on statutory provisions analogous to s 7(1)(a) is to the contrary. But even if the less stringent test is applicable in determining whether Walker's patent anticipated the applicant's invention, it is I think clear that there was no anticipation. A suitably skilled reader would not get from a reading of the Walker patent anything to lead him, without the exercise of inventive ingenuity, to a device or method for growing oysters that included a means of regularly tumbling the oysters by the movement of the water on the container in which the oysters were growing. The American patent does not anticipate the applicant's patent. OTHER ISSUES My conclusion that the respondent did not use any of the three devices he relied on in his evidence as prior disclosures of the applicant's invention before the priority date of the applicant's patent disentitles him relying on s 119 of the 1990 Act. The respondent's contention that Mr W.R. Moxham was not the inventor or sole inventor was not pressed, although it was not formally abandoned. This allegation was based primarily on the fact that in the period when Mr W.R. Moxham developed and then patented his invention, he was in his father's employ. But the evidence did not show that there was anything other than a mere coincidence in time between the period of that employment and the period of Mr W.R. Moxham's inventive activities: nothing was pointed to which might suggest that it was Mr W.R. Moxham's employer who was entitled to his invention, rather than Mr W.R. Moxham. Cf. Lahore, supra, para 1.9.012. Nor do I accept that the statement in the "Australian Oyster" for August 1985 that the invention was the brainchild of both Mr W.R. Moxham and his father, a report denied by Mr W.R. Moxham to be an accurate one, is any basis for the conclusion that the two of them jointly invented the device. CONCLUSION I have found that the respondent did not commence to use any oyster tumblers until late 1985, when he, in effect, copied the applicant's device to produce a tumbler of the style of Exhibit CRM-1, which he has used since that time. The claim that the respondent has infringed claims 1, 2, 4, 6 and 7 of the applicant's patent is made out. The applicant is entitled to the declaratory and injunctive relief and the order for delivery up sought and, at its election, to damages (and an appropriate enquiry) or to an account of profits. The cross-claim is dismissed. The applicant must bring a minute of the judgment to which it is entitled into Court. If the respondent wishes to submit that an order for costs in favour of the applicant should not be made, the respondent's submissions should be given promptly to the applicant and those submissions, together with the applicant's response, should be delivered to my associate by 21 June 1996. I certify that this and the preceding 57 pages are a true copy of the reasons for judgment herein of the Honourable Justice Drummond. Associate: Date: 12 June 1996

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