The RolaShades product
117 JAI led evidence from Mr Horner and Ms Payne that, in or about November 1996 (before the priority date), its predecessor, JAI Pty Ltd imported into Australia a handful of RolaShades mechanisms, assembled some of them into blinds and offered them for sale by showing the blinds and the mechanism itself to some customers in its showrooms, at the customers' places and by inclusion in a catalogue. In addition, JAI led evidence from Mr Jackson that he had seen invoices of sales by RolaShades to some persons.
118 In particular, evidence was led from Mr Horner and Ms Payne as follows:
(a) in about November 1996, Mr Horner organised the purchase from RolaShades of around six to ten RolaShades products;
(b) The RolaShades products were delivered to JAI Pty Ltd's showroom in Atarmon, New South Wales;
(c) Mr Horner assembled several RolaShades products into complete blinds, by inserting them into blind tubes. One of these blinds was mounted using brackets and fixed onto a shelving unit. The blind was then weighted with sand bags (to simulate a blind with heavy fabric) and used as a test or demonstration unit. The blind cylinder and the brackets were obtained from RolaShades;
(d) JAI Pty Ltd staff (including Ms Payne) were encouraged to test the durability of the RolaShades product by operating the mounted blind mechanism whenever they went past;
(e) Other mounted blinds including RolaShades products were displayed and available for sale at the showroom;
(f) During late 1996 or early 1997, when demonstrating the RolaShades product to potential customers, Mr Horner showed it both in the form of a mounted blind (in a tube) and separately (referring to exhibit R6). As Mr Horner explained:
... I would take them to my customers' places and show them…
(Q) Show what - what you show the customers is how it works? …
(A) How it works and they like to see the component as well so I would had - I would have a blind on a board in my car and one of these separate again and say, here you are, this is what is in this blind and we would put it on their rack and we would pull it up and down and show them.
(g) The RolaShades Product was included in the 1996 catalogue;
(h) Copies of the 1996 catalogue were mailed to approximately 200 of potential Australian customers, handed to customers who visited the office, sent to agents or given out by sales representatives.
119 Damorgold do not accept the evidence led by JAI on these matters. It also submitted that even if the evidence led be accepted, it did not satisfy the requirement that information sufficient to destroy novelty has been made publicly available.
120 Damorgold submitted that the Court could not confidently find that JAI Pty Ltd did in fact display or offer for sale in Australia the RolaShades product before the priority date, or included any depiction of the product in the 1996 Catalogue.
121 Damorgold reminded the Court that where prior use of this kind is alleged, the courts require strict proof. In Nicaro 91 ALR 513, 524 - 525 Gummow J said:
It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinized with particular care. The court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation.
122 The reasons for this are the well-recognised frailty of memory, especially of events in the distant past and the potential for accurate recollection to be contaminated by subsequent events: see Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 at 165 - 166 (Menzies J).
123 Damorgold pointed, quite correctly, to a number of problems with the quality of the evidence adduced by JAI. The first problem was that there was no contemporaneous documentation to support JAI's claims. Neither Mr Horner nor JAI has produced:
(a) any sales invoice or receipt for the alleged purchase from RolaShades;
(b) any customs or other shipping documentation; or
(c) any copy of the alleged 1996 JAI catalogue in which it is claimed that the spring assist was included.
124 The second problem was that JAI had not brought forward any independent witness who could verify any of these events. No witness had been put forward:
(a) from RolaShades;
(b) from any of the 10 customers to whom Mr Horner said he displayed the assembled blind and the spring assist; or
(c) from any of the 200 or so customers to whom the 1996 catalogue was said to be shown.
125 Neither Mr Kensey nor Mr Wood, two actors in the events Mr Horner claims took place, were called by JAI.
126 Nevertheless, Mr Horner did produce a spring assist mechanism. However, it had no brand on it or any other markings which enable its source to be identified or for it to be dated with any accuracy.
127 In addition to the above failure to produce other evidence, I also accept that a number of valid complaints can be made of the evidence in fact called, and these were outlined by Damorgold.
128 First, it was submitted that Mr Horner had a direct interest in the outcome of this proceeding, as he was one of the two directors of JAI. His family trust company owned 50% of the shares in JAI. The sale of JAI's infringing product was a part in JAI's business of selling roller blinds which he was motivated to protect.
129 Secondly, it was submitted that Mr Horner was attempting to give evidence of events which occurred a very long time ago - approximately 15 years before his affidavit was sworn. His attempts to date the events were submitted to be plainly unreliable, as evidenced by certain inconsistencies:
(a) As at 7 March 2011, the Particulars of Invalidity 1(b) claimed the sale was "about 1994";
(b) As at 8 March 2011, the Amended Defence 7 claimed "late 1996";
(c) As at 23 May 2011, the Amended Particulars of Invalidity 1(b) claimed "purchased about 1994", "promoted late 1994", "published in a catalogue March 1995" and "displayed late 1994";
(d) As at 20 September 2011, Mr Horner's affidavit [10] claimed it was "purchased October 1996"; [12] it was "displayed late 1996 early 1997" and [13] included in a "catalogue 1996";
(e) This changed in oral evidence based on his passport to returning to Australia at the end of November 1996.
130 Damorgold also attacked Mr Horner's evidence regarding introducing a new product into its range. It submitted that the evidence that JAI Pty Ltd would go to the lengths of introducing a new product into its range, including bringing out a new catalogue, only to drop it within a few months, was highly implausible, especially as the proffered explanation based on exchange rate movements seemed to be an insignificant factor.
131 Further, the evidence that Mr Horner imported not only the RolaShades product (exhibit R6), but also that product together with all the component parts necessary to assemble it into a working blind, was introduced at a late stage (only in cross-examination), and was not accepted by his own office manager, Ms Payne.
132 I have carefully considered Mr Horner's evidence keeping in mind the cautionary considerations raised by previous authorities. My first impression of his giving of evidence, and my subsequent review of his evidence, remain constant.
133 I accept that Mr Horner did not have a clear recollection of exactly when events occurred. To a certain extent, he reconstructed what could or might have happened from an article in a magazine about an Austrade trip, his expired passport and extrapolation from a trip to Stuttgart. All this was done to assist him to put a date upon the events he described.
134 I have had the advantage of seeing Mr Horner give his evidence at the trial. He appreciated readily that he could not remember the exact dates. He was obviously using documentation to assist, perhaps even reconstruct, the timing of the events. However, as to the events themselves, he independently recalled these happening. Mindful not to readily accept oral evidence (unsupported by documentation) as to prior public use, there is no principle of law to deny acceptance of such evidence if the court, upon hearing the witness, is convinced of its essential accuracy as to the decisive factual matters in contention.
135 Mr Horner seemed to me to be a reliable witness. He was unsure of exact dates, but was 'aided' by certain matters referred to above to assist his recollection. This is not unusual and was to be expected. The one thing he was certain about was the identity of the spring assist mechanism he produced, and that it was purchased and displayed prior to 1999.
136 As to the other criticisms made of Mr Horner, I make these comments.
137 The reason for dropping off the new product from the range within a few months of its introduction, was not because of the exchange rate as alluded to by Mr Horner. The real reason seemed to arise from disputation between the partners as to the introduction of the range in the first place. However, I do not consider this detracts from the other evidence Mr Horner gave as to the identity of the spring assist mechanism and the date of it display.
138 Secondly, the fact that Mr Horner introduced late into evidence that all the component parts were also imported does not detract from my view that Mr Horner was clear and definite about the two important matters - the identity of the spring assist mechanism he displayed and offered for sale in Australia, and that this occurred well before 1999.
139 Thirdly, because the relevant events occurred many years ago, I would not expect 'independent' witnesses in the category mentioned by Damorgold, would be either available or able to provide any useful evidence in this proceeding.
140 Therefore, despite the criticisms of Mr Horner, I accept his evidence on the two important matters of the identifying of the spring assist mechanism and the date of its display and offering for sale in Australia.
141 That is not the end of the evidence supporting these important matters. I turn to Ms Payne's evidence. She was adamant throughout her cross-examination about the accuracy of her recollection of the spring assist mechanism and the relevant date of importation, supporting the essential facts deposed to by Mr Horner. In my view, she was a credible witness and as it transpired during cross-examination, had no desire or motive to help out her long term former employer. Again, my view of her credibility has remained constant from my first impression of her whilst giving evidence, and my subsequent review of her evidence.
142 Damorgold also made some criticisms of the evidence of Ms Payne.
143 Damorgold submitted that Ms Payne was attempting to give evidence about events 17 years in her past. She had been retired since 2000. She had not had any occasion to recall those events until asked to provide an affidavit in this proceeding in late 2012. In order to identify the product she was simply given the product and asked whether or not it was the one she had seen 17 years previously. She conceded that the product had no markings on it, as to source or date. Even if she is accepted as identifying it accurately, it was submitted that she could not prove that exhibit R6 was the actual sample she saw in 1996. Although, Ms Payne was adamant about the accuracy of her recollection, it was submitted that:
(a) Ms Payne was wrong about the date of Mr Horner's visit to Singapore in 1994.
(b) She was more vague about Mr Horner's 1996 visit to Singapore.
(c) Ms Payne had no clear recollection of how the alleged 1996 catalogue was prepared or withdrawn, and her evidence is a reconstruction about what would or might have happened.
144 However, like Mr Horner, Ms Payne was adamant about the identity of the spring assist mechanism (which she recognised as exhibit R6 for plausible reasons she advanced as to her particular recollection at the time) and the date being well before the year 1999. I would not expect Ms Payne to know the exact date, even in a range of six or so months. However, she was adamant, with cause in my view, as to the approximate time of the relevant importation and events upon which she was cross-examined.
145 Then there is further supporting evidence. Despite some of the vagueness and lack of detail, Mr Jackson's evidence, and to a lesser extent Mr Ang's evidence, partly corroborates Mr Horner's evidence that he purchased the RolaShades product in 1996 in the manner he described. Mr Jackson's evidence in particular at least establishes that a product like the RolaShades product was available for purchase overseas, in or around 1996 or 1997, as Mr Horner contended in his evidence.
146 Therefore, I accept the evidence of Mr Horner and Ms Payne, as detailed above.
147 I find that JAI Pty Ltd did have possession of a few RolaShades products brought into Australia before the priority date as detailed in the evidence of Mr Horner, which included the sample described by Mr Horner and Ms Payne, which is exhibit R6. I am satisfied, whilst no 1996 Catalogue is in evidence, that RolaShades product was shown in the 1996 Catalogue as it was depicted in the 1998 Catalogue (which is in evidence).
148 This is a situation, distinguished from other cases, where the original product in the form of exhibit R6, is available at the time of the hearing, and the evidence is not limited to photos of the product or witnesses' recollection of the product. Further, the product, as Mr Hunter said, involves simple and straight forward technology.
149 Nevertheless, there is no evidence that any RolaShades product was actually sold by JAI Pty Ltd, nor that any samples were actually provided to anyone to retain. Mr Horner had samples which he showed to particular customers with a view to an eventual sale of the RolaShades product. However, at the time the RolaShades product was demonstrated to customers, it was available for sale, albeit for a short period of time.
150 The real issue in this proceeding is whether based upon the circumstances in which it occurred, the showing of the RolaShades product in Australia to some potential customers with a view to making such available to sale, amounted to making publicly available the RolaShades product.
151 The RolaShades product was mounted in blinds on display at the showroom in Atarmon, but was also shown at customers' places of business. As Mr Horner said, the part he showed customers to explain how the product worked was similar to (if not) exhibit R6. Whilst it is not possible to ascertain all the internal componentry of the JAI spring assist without pulling it apart to understand its internal workings, this could be readily done without any damage to any part of the mechanisms. Re-assembly was easy. Whilst undoubtedly Mr Horner did not want any potential customer to "reverse engineer" the mechanism, he was offering or making available for sale the RolaShades product. I accept that he did not want any of the samples to be taken by the customers. In fact, all the samples were retained by Mr Horner and none was left with the customers. This was not to be unexpected, as Mr Horner needed the samples to show other potential customers. Nevertheless, a customer would have a general idea of the mechanism employed in the RolaShades product from observing the RolaShades product itself, specifically exhibit R6.
152 Further, and significantly, in view of Mr Horner's commercial interest in selling the blinds, if asked by a potential customer, I find that he would have readily pulled apart the RolaShades product to demonstrate exactly how it worked. This could have been readily achieved, and re-assembly was simple. Mr Hunter dismantled Exhibit R6 with no difficulty.
153 It is important to appreciate that the potential customers of Mr Horner were entities who made blinds, and who had an interest in the working of the new product, described by Mr Horner as "a very unique product back in the day". The RolaShades product was offered for sale in the 1996 catalogue, and if sold, would not have been subject to any restrictions on its use. Mr Horner, when showing his potential customers the samples, would appreciate that upon sale the product was capable of reverse engineering.
154 In my view, the potential customers of Mr Horner would have been free to dis-assemble exhibit R6, and would have been interested in looking at its mechanical workings. The acts of Mr Horner in displaying the RolaShades product to various customers, with a view to sale, was making the RolaShades product publicly available. There was a means for any customer to inspect the RolaShades product. The customers had an incentive to inspect and Mr Horner had an incentive to allow the customers to do so. Each customer had the opportunity to handle, view, and test the RolaShades product. An examination of the component features would have been easy, and would have revealed all the relevant integers of the claimed invention. Such an examination would have readily enabled a person skilled in the art to put the claimed invention into practice.
155 It is clear from the expert evidence of both Mr Hunter and Dr Field that the workings of the RolaShades product (including its use in a blind control mechanism) can be discerned from an inspection once dis-assembled. The person skilled in the art so inspecting the RolaShades product would observe sufficient to enable them to comprehend the complete invention. No further experimentation was required.
156 Further, the person skilled in the art would readily comprehend that the RolaShades product would be combined with the other well known roller blind components, including a chain winder mechanism and a blind cylinder.
157 It does not matter that only a few, or perhaps only one, potential customer was approached and had the opportunity to examine the RolaShades product. It does not matter that the RolaShades product was not actually dis-assembled. Each potential customer, in my view, had the opportunity of a complete examination of the internal componentry of the RolaShades product. There was no restriction placed upon any potential customer as to what he or she would do in making use of the information so obtained from an examination of the internal componentry.
158 It is of no importance that no actual sale took place. The circumstances described above constitute sufficient conduct of making the RolaShades product publicly available in Australia. That conduct of displaying and offering for sale the RolaShades product (in the circumstances described) made available the necessary information to find anticipation.
159 Mr Hunter's evidence was that he could identify in the RolaShades product all the integers of claims 1-22, 24-26, 29 and 30.
160 Dr Field's evidence was that the RolaShades Product had each of the integers of each of claims 1-17, 19-22, 24-26, 29 and 30.
161 Thus, on the reverse infringement test, conduct of showing the RolaShades product in the circumstances I have found to have occurred would constitute an infringement of at least claims 1-17, 19-22, 24-26, 29 and 30 of the Patent.