Fina Research SA v Halliburton Energy Services Inc

REASONS FOR RULING ON EVIDENCE The following is a ruling on evidence made during the hearing on 7 February 2003: 1 The applicant in these proceedings maintains an objection to the grant of a patent relating to the composition of drilling mud. Senior counsel for the applicant has opened at length about many issues, including what functions a drilling mud performs. I have been shown a video of some length concerning the use of drilling muds when drilling for oil and gas. It is common ground that for the applicant to succeed it must make good a ground specified in s 59 of the Patents Act 1952 (Cth) ("the 1952 Act"), notwithstanding the repeal of that act by the Patents Act 1990 (Cth) ("the 1990 Act"). In issue in these proceedings is, amongst other things, what is meant by the patent application, whether the invention was obvious and did not involve an inventive step (the ground specified in s 59(1)(g)) and whether the invention was not novel (a ground specified in s 59(1)(h)). Both those grounds raise for consideration, under the 1952 Act, what was known or used in, or circumstances in, Australia. The latter ground is based on a US patent published in Australia before the priority date (19 December 1988) known in these proceedings as Barthel. 2 The applicant now seeks to call evidence from Professor Kagi. I earlier expressed the view that leave was necessary to call the evidence having regard to the terms of s 160 of the 1990 Act in a judgment I gave on 3 December 2002. However the issue raised concerning the evidence of Professor Kagi would arise, in any event, even if leave was not necessary. It is said by the applicant that Professor Kagi's evidence is relevant in three respects. He is said to be a skilled addressee (or at least a person whose evidence will, together with the evidence of another witness, create the construct of the notional skilled addressee) who can give evidence about the meaning of both the patent application and Barthel. Secondly, he can give evidence about what Barthel would have disclosed in 1988 to a person skilled in the art, in support of the lack of novelty ground. Lastly, he can give evidence about what he would have done immediately before the priority date to formulate a drilling mud of a type comprehended by the patent application in support of a ground that the invention was obvious and did not involve an inventive step. 3 Objection is taken by the respondents to evidence being given by Professor Kagi. A fundamental objection concerns his expertise. I have given consideration to the objection overnight. It is an objection determinative, in my opinion, of the question of whether Professor Kagi can give evidence at all (for the purposes just stated). Is he a skilled addressee and in a position to give expert evidence of assistance to the court, or a person whose evidence, together with other evidence, creates the construct of a skilled addressee? If he is, then relevant evidence can probably be given as to the first matter (the meaning of the two documents): see El Dupont de Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304, though subsidiary issues raised in the objections of the respondents would need to be resolved concerning whether he can give relevant evidence concerning the other two matters. They included that as to the question of obviousness, his evidence was tainted by having been shown the patent application (and the evidence should be excluded under s 135 of the Evidence Act 1995 (Cth)) and that the evidence generally is not directed only to his state of knowledge in 1988. 4 It is tolerably clear from the patent application that it concerns the formulation of a drilling mud in a manner identified in the application with certain chemical characteristics designed to create both physical and chemical properties in the mud that, amongst other things, deal with known and anticipated problems associated with the use of the mud, including minimising its impact on the environment and creating a mud which is flowable and pumpable and not corrosive. In my opinion, the appropriate characterisation of the attributes of a notional addressee is a person with a requisite specialised knowledge in formulating drilling mud. The question that immediately arises is whether Professor Kagi is such a person or can give evidence which, together with other evidence, creates the construct of such a person. 5 I should note that at one point in his opening, Senior Counsel for the applicants submitted that the notional addressee was an industrial chemist in a drilling mud laboratory or mud company laboratory formulating muds. This is consistent with my view of the notional addressee and the notional addressee propounded by the respondents. However, the applicant had earlier relied on and later reverted to a characterisation of the notional addressee set out in written submissions prepared for the opening. That characterisation in my opinion, is fairly plainly tailored to meet the evidence the applicant is able to lead and to accommodate the limitations of that evidence. 6 In his affidavit of 1 February 2001 Professor Kagi describes his qualifications and experience in the following way (paragraphs [5] - [12]): "Academic I obtained a Bachelor of Science with First Class Honours in Chemistry from the University of Western Australia ("UWA") in 1967. I subsequently completed by PHD on nuclear magnetic resonance spectrometry and organic chemistry in 1971, through the Chemistry Department of the UWA. I completed my Masters of Business Administration in 1977 through the UWA. Experience Upon completion of my PhD I became an academic. In or about 1971, I commenced employment in the Chemistry Department of the Western Australian Institute of Technology, which became Curtin University of Technology in 1987. In or about 1985 I was promoted to Associate Professor of Chemistry. I was awarded a personal Chair, as Professor of Applied Chemistry, in 1995. I became the Head of School, Applied Chemistry, in 1997 and as of January 2001 I became the Dean of Science, Curtin University. I was appointed a director of the Centre for Petroleum and Environmental Organic Geochemistry (PEOG) in 1988. I established Geotech in 1990. Professional Association Memberships I am a Fellow of the Royal Australian Chemical Institute and currently a member of the following professional associations: