5.3 Mining and oil and gas exploration
307 I infer from the whole of the evidence that drilling for minerals is a different field (or patent area) from drilling for oil and gas.
308 This is most apparent from the evidence of Kelvin Brown, Reflex's Global Lead (Directional Drilling). All of Mr Brown's experience relates to subterranean rock drilling for minerals (in the sense of crystalline structures or rocks of some kind, consistent with the Online Macquarie Dictionary definition of a "mineral"). He described his roles for Reflex in terms disclosing that all of Reflex's instruments for which he is responsible concern mining. He described the "mining market", "mining events", "mine sites", "mineral exploration drilling" and the "Minerals division" of Imdex. He described his knowledge concerning "data transmission in downhole equipment used in the mining and resources industry" in terms disclosing that the only relevant resources are minerals. He referred to core sample orientation as the "the process of obtaining and marking the orientation of a core sample from a drilling operation, which is typically an approximately 3 metre length of solid cylindrical core" (that is, a rock or rock-like structure). He referred to the object of the process as being to allow geologists to "correlate recovered samples with one another to reveal trends in rock strata and predict whether resource mining is worthwhile", the relevant resource being "mineral bearing ore deposits". He annexed a copy of Imdex's 2011 Annual Report which disclosed that Imdex has a minerals division and an entirely separate oil and gas industry division. Reflex is part of the minerals division. Reflex provides instruments and equipment to the "global mining and mineral exploration industries". The oil and gas division provides instruments and equipment to the niche onshore oil and gas industry and the offshore oil and gas industry. Mr Brown described the field of the patent as downhole equipment "used in the mining and resources industry".
309 Professor Dupuis also explained that the purpose of a borehole in mining was different from a well in the oil and gas industry. In mining, a borehole is used for exploration only. The resource is not obtained through the borehole. In the oil and gas industry, the well is used to obtain the oil and gas and is an ongoing productive asset. As such, the two drilling processes use different equipment, have different dimensions and depths, perform different functions, and involve different capital expenditure (wells being far more capital intensive). Professor Dupuis also indicated that while all wells are a form of borehole, not all boreholes are wells. By this I understood him to mean that wells are a kind of borehole specific to the oil and gas industry.
310 Professor Tapson was instructed that the patent "relates to downhole instrumentation used in the mining industry". Professor Tapson's early experience related to "measuring the constituents and flow rates of materials in drill pipes and slurry pipelines". All of his earlier experience appears to relate to the mining industry, even if part of that experience concerned marine drilling. His later experience included the oil and gas industry when he worked for a company based in Florida in the United States which had an oil and gas industry component to its downhole tool sensing business. It is also apparent that Professor Tapson's academic, research and development focus has been measurement and sensing instruments.
311 Having regard to this evidence, I consider that a person skilled in the art of drilling for mineral exploration should not be hypothesised to be a person skilled in the art in the field of drilling for oil and gas exploration and production. In this regard, while Professor Tapson is a person skilled in the art in both fields and more (in that I infer from his academic, research and development expertise and experience that he possesses far more than the common general knowledge of the person skilled in the art) and Professor Dupuis has knowledge of the oil and gas industry by reason of his work in the minerals industry, I consider that this range of experience would not be typical of a person skilled in the art of the drilling of boreholes for mineral exploration, such as Mr Brown.
312 In particular, Professor Tapson has extraordinarily wide expertise ranging from instrumentation and measurement to "Machine Learning, Biomedical Engineering, Bio-Inspired Systems, Neuromorphic Engineering". He is a prolific author in peer-reviewed journals over numerous fields, including neuroscience and biomedical instruments, tomography and spectroscopy, underwater transducers, machine learning, animal pregnancy detection, and more. He has supervised over 40 Research Masters and Doctoral students supervised to graduation. He has been involved in:
(1) a start-up company designing and producing a new type of silicon chip for AI hardware;
(2) multidisciplinary research into the human brain, with an emphasis on cognitive, neuromorphic and biomedical engineering, and human-machine interfaces;
(3) leadership of a large software development team;
(4) founding a technology company which builds processing machinery for the platinum and precious metals industry;
(5) founding a university spin-off that does web-based condition monitoring of industrial machinery and infrastructure; and
(6) co-founding a not-for-profit organisation that builds cellphone-based support infrastructure for the HIV/Aids epidemic in developing societies.
313 It is apparent from his curriculum vitae that Professor Tapson is a scientific polymath. He is obviously imaginative and inventive across numerous fields of scientific endeavour. Whatever the field of the invention, Professor Tapson is not representative of the person skilled in the art armed with the common general knowledge. He is far more knowledgeable, imaginative and inventive than the hypothetical person skilled in the art of drilling in either the mining or the oil and gas industries. For a person with Professor Tapson's kind of expertise, imagination and inventiveness across numerous fields it is particularly important that the common general knowledge in the field (or fields) be identified and that the expert is able to and does distinguish the expert's expertise over and above the common general knowledge.
314 The question then arises - who is the person skilled in the art who is likely to have a practical interest in this patent? This is to be derived from the terms of the patent as a whole. It must be accepted that there is apparent circularity involved in this exercise. The patent is to be construed through the eyes of the skilled addressee in the field, but the field is to be identified from the terms of the patent. This is why it is important to identify whether the evidence discloses a single field or two separate fields. For the reasons given above, I consider that there are two separate fields and that the hypothetical person skilled in the art should not be attributed with the common general knowledge in both fields (apart from as required by s 7(2) of the Patents Act, when dealing with the issue of inventive step).
315 If the patent is construed though the eyes of a person skilled in the art in either field I do not accept that the two references to "telemetry" in the patent (at [0001] and [0016]) would be taken to be an indicator that the person skilled in the art who is likely to have a practical interest in the patent would be concerned with drilling for oil and gas exploration and production. This is because those references have to be read in the context of the patent as a whole. While the field of the invention in [0001] is expressed in general terms, the background to the invention discloses that the primary field is exploration for mining as that term is conventionally understood (that is, mining for minerals). This is apparent from patent [0006]:
Through core orientation, it is possible to understand the geology of a subsurface region and from that make strategic decisions on future mining or drilling operations, such as economic feasibility, predicted ore body volume, and layout planning.
316 While this passage refers to "future mining or drilling operations", the context is drilling for mining to predict (not extract via the drilling process) ore. An "ore" is "a metal-bearing mineral or rock, or a native metal, especially when valuable enough to be mined" (Online Macquarie Dictionary, 2022). Oils and gases are not within the ordinary meaning of "ore".
317 The patent at [0003] and [0007] also says:
The orientation of the sample is determined with regard to its original position in a body of material, such as rock or ore deposits underground.
…
Core samples are cylindrical in shape, typically around 3 metres long, and are obtained by drilling with an annular hollow core drill into subsurface material, such as sediment and rock, and recoverying [sic] the core sample.
318 While the references are to "material, such as rock or ore deposits" and to "subsurface material, such as sediment and rock", it is relevant that the examples given are apt to describe drilling to explore mineral deposits or hard rock qualities. At [0007] the patent contains the reference to "sediments and rock" in the context of the use of core orientation in the construction industry to site buildings (a secondary field of the patent). The examples do not relate to drilling to explore and recover gas and oil deposits through the drilled hole.
319 Further, Professor Dupuis confirmed that the technology described in the patent (ie, annular hollow core drill, diamond tipped drill bit, core barrel, greaser) are all associated with drilling for mineral exploration, not drilling for gas and oil exploration and production. Professor Tapson did not disagree in this regard. Rather, Professor Tapson's point was that the references in the patent to borehole telemetry, which is common in the oil and gas industry (and not so common in the mining industry), indicated that the fields of the invention also included the oil and gas industry. Further, this was supported by the reference to "sediment" which Professor Tapson took to imply a reference to the oil and gas industry. Professor Tapson said that while the references to rock and ore in the patent suggest it is concerned with hard rock mining, these other references disclosed that the patentee wanted to "leave the door open" to the patent concerning the use of telemetry as in the oil and gas industry, and an "imaginative engineer" would be able to run a communication link down with the drilling equipment in the more difficult context of mineral exploration.
320 I consider this exposes that Professor Tapson's approach to the characterisation of the field of the patent reflects his own expertise in the two separate fields, which would not be attributed to the person skilled in either field. Rather, I consider that a person skilled in the art of oil and gas drilling would recognise from the terms of the patent as a whole that the field of the patent is not oil and gas drilling, but drilling for mineral exploration. Similarly, the person skilled in the art of drilling for mineral exploration would not read the references to "telemetry" or "sediment" as indicating that the field of the invention extends to oil and gas drilling.
321 Telemetry (meaning wired communication) is not unknown in the mining industry, even if it is uncommon. It is uncommon because the boreholes in mining are for exploration purposes only. The qualities of the borehole are not as important as the qualities of a well which will be the ongoing means of the production of oil and gases. In mining, however, the borehole is merely exploratory and the minerals will not be recovered through the borehole. As such, the borehole will be much narrower than a well for oil and gas extraction and its qualities are less important. Accordingly, a mere reference to "telemetry" does not necessarily mean that the oil and gas industry must have been in contemplation.
322 Further, "sediment" is used in [0007] of the patent in the specific context of the construction industry and the use of core orientation to assist in the siting of buildings. The fact there is an express reference to the construction industry confirms that the invention is concerned with the exploration of hard rock environments (which may also include sedimentary layers) and not the exploration and subsequent extraction through the drilled hole of oil or gas. It is clear that [0007] of the patent has nothing to do with the oil and gas industries, so the reference there to "sediment" also cannot be taken as an indicator that the field of the patent extends to drilling for oil and gas exploration and extraction. This is reinforced by the fact that the context of the patent as a whole discloses: (a) no references to oils and gases, (b) no references to the kind of equipment typically seen in oil and gas drilling, (c) references to rocks and ores, and (d) references to equipment typically used in drilling boreholes for mineral exploration.
323 In this context, I do not consider it would have occurred to a person skilled in either field at the priority date that the patent involved drilling for oil and gas exploration and production. I do not accept Reflex's submission that the wording of the patent supports a characterisation of the relevant field as including drilling for oil and gas exploration and production. As explained, the fact that telemetry is common in oil and gas drilling and uncommon and difficult in mineral drilling does not mean that the field includes drilling for oil and gas exploration and production.
324 Rather, the fact that telemetry may be physically impossible in the mining context under consideration by the patent (as Professor Dupuis said) or require imaginative engineering to be workable in that context (as Professor Tapson said) tends to suggest that Professor Dupuis is right and the patent is using "telemetry" not to describe a wireline communications link between the surface and the equipment down the hole to allow data transmission from the equipment down the hole, but sensing down the hole for subsequent acquisition at the surface. This is also supported by the following:
(1) the Online Macquarie Dictionary 2022 defines "telemetry" as "the science and technology of the automatic transmission and measurement of data conveyed by wire, radio, or other means, from remote sources". Accordingly, the concept of measurement is part of the ordinary meaning of "telemetry";
(2) the patent does not refer to wireline telemetry as commonly used in oil and gas drilling. It refers to "borehole telemetry probes" and "downhole probes that are used to obtain borehole telemetry data to determine drilling progress". A "probe", in the context of an instrument or tool, is an instrument or tool permitting an examination (derived from the Online Macquarie Dictionary 2022). This does not necessarily involve data transmission to the surface;
(3) [0016] says "[s]imilar issues arise with downhole probes that are used to obtain borehole telemetry data to determine drilling progress…". The "similar issues" are those identified in [0015]. These issues all concern the problems associated with manual manipulation of the device at the surface to obtain data. This indicates that by "borehole telemetry data to determine drilling progress" the patent does not mean that data is communicated from downhole to the surface by telemetry link. If that were so, the "similar problems" arising at the surface with manual manipulation of the device to obtain data would not arise. In turn, and in association with the word "probes", this suggests that the patent uses "borehole telemetry" to mean use of a probe to obtain data about the borehole by sensing/measuring, which is part of the data brought to the surface in the device rather than communicated to the surface by wireline telemetry; and
(4) immediately after the reference in [0016] to "downhole probes that are used to obtain borehole telemetry data to determine drilling progress", [0017] in the patent, in the context of the prior art, says that "[t]ypically the downhole equipment is brought to the surface once sufficient data is gathered". All other relevant references in the patent also disclose that the equipment is brought to the surface to obtain the data. Specifically:
(a) in the background to the invention at [0010], the specification says that "[o]nce a core sample is cut, the inner tube assembly is recovered by winching to the surface…the core sample is recovered and catalogued for analysis";
(b) in the background to the invention at [0014], the specification refers to the prior art as including a device where "[a]t the surface before removing the core sample from the inner tube assembly, the operator views the display fitted on the system… The core sample is marked (usually by pencil) before being removed from the core for future analysis";
(c) the specification at [0015] says that this same device requires "manual manipulation before any reading can be viewed on the display", which is a disadvantage. This manual manipulation must be occurring at the surface;
(d) the specification at [0053] describes the preferred embodiment as involving the obtaining of a core sample which is "recovered back to the surface" and [0057] says that the "required orientation of the core sample is then marked and the core sample can be stored and used for future analysis. The received data can be transferred to a computer for analysis";
(e) the specification at [0066] says that "advantageously, when the unit is recovered from down the hole, the unit need not be separated from the rest of the downhole equipment in order to determine required information"; and
(f) the specification at [0070] says that "[w]ithout having to separate the unit from the inner tube and/or backend, the orientation of the core sample can be determined and the gathered information retrieved with less drilling delay and risk of equipment damage/failure". It is apparent that this separation must occur at the surface to obtain the information.
325 I do not find Reflex's submissions to the contrary persuasive. Reflex's submissions assume that in a choice between: (a) treating the reference to borehole telemetry probes at [0001] and "borehole telemetry data" at [0016] as meaning either measurement of some kind down the hole or communication, and (b) treating the field of the patent as including oil and gas drilling, the latter choice should be made in each case given Professor Tapson's evidence. The cogency of this submission is undermined by a consideration of the patent as a whole. The fact that the patent refers to telemetry probes and telemetry data, which are not common in the mining industry for numerous reasons, indicates not that the field includes oil and gas drilling, but rather, that the patent uses the concept of telemetry probes and telemetry data in a manner different from how it would ordinarily be understood by an expert such as Professor Tapson (and, for that matter, Professor Dupuis who has expertise in oil and gas drilling based on study and not experience).
326 Reflex also submitted:
In his affidavit evidence, Professor Dupuis asserted that the word "borehole" referred to mineral mining and did not include holes drilled for oil and gas extraction. In cross-examination, however, Professor Dupuis accepted that the ordinary meaning of 'borehole' includes 'well', 'wellbore' and a hole drilled in the course of oil and gas activities. He accepted that his affidavit evidence to the contrary was wrong.
327 The position is not that simple. Professor Dupuis explained in his affidavit that while "borehole" was defined in the Macquarie Dictionary 2020 to mean "a hole bored into the surface of the earth, as for obtaining geological information, releasing oil, water, etc", in practice the word was not used to refer to the extraction of oil. In practice, a hole for the extraction of oil and gas is referred to as a well, which the Macquarie Dictionary 2020 defines as "a hole drilled into the earth, generally by boring, for the production of water, petroleum, natural gas, brine, or sulphur". Professor Dupuis explained that:
The intended use of these two hole types is very different. The borehole aims to obtain geological information while a well is meant to tap a supply of, for example, water. Oil, or gas. A successful well is a production asset that can be used for resource extraction. A borehole, even if it intersects valuable resources, is an exploration expense. Resource extraction will be done through other means of excavation.
Boreholes are therefore generally smaller in diameter than wells and are drilled using different equipment. In my experience, the tools and methods used to characterize wells are not all applicable to boreholes.
328 The oral evidence he gave was:
… a well is something that is used in oil and gas, yes, and that a borehole most commonly refers to things that are drilled in minerals…
…
…a well is usually something that you're going to extract something from. And so I don't think that anybody could argue that you drill wells in mining because you don't extract material from them. But I do concede that sometimes the terms can be used interchangeably.
…
… if we use "wellbore" as synonymous with "borehole" then it is the same thing, yes…
…
[a drill hole] can be a - a similar name, yes, a synonym [for a borehole].
…
I accept that a well can be a borehole… [and that a borehole "can be" a hole drilled in the course of oil and gas activities].
…
…it's true that boreholes can be used in different ways. Many words can be used synonymously, not always the same way. As I was saying, a well can be a borehole, but a borehole is not necessarily a well.
…
So for me, a well - when I speak of a well, it's because we have groundwater in it or we have other products that are liquid that we intend to actually produce. When I talk about a borehole, it's usually because we're using it in a - in a mining environment or for geotechnical applications.
…
In the light of the document I've seen, I accept that we can use the term "borehole" in the oil and gas industry to extract oil.
329 Professor Dupuis' acceptance that "we can use the term "borehole" in the oil and gas industry to extract oil" does correct his evidence that in practice holes to extract oil (and gas) are not referred to as boreholes. But the effect of his evidence as a whole on this issue remains this: (a) while all wells are boreholes, not all boreholes are wells, (b) the term borehole can be used to describe a well (I infer because it is the broader class of which a well is a specific example) but, in his experience, boreholes describe exploratory mining holes and wells describe holes to extract oil and gas, and (c) the holes used for mining exploration are different from the holes used for oil and gas extraction in the numerous respects he described (dimensions, depth, equipment used, purpose, and capital investment required).
330 On this basis, and contrary to Reflex's submissions, the "explicit reference to "borehole telemetry probes"" does not clearly establish "that the field of invention includes oil and gas". For the reasons already given, the fact that telemetry is more important and common in the oil and gas industry does not lead to the conclusion that the field of the invention is the oil and gas industry.
331 For the same reasons, I do not accept that the patent's focus on "core orientation" leads to the conclusion that the field of the invention is drilling in the oil and gas industry. Professor Dupuis explained that while core cutting started in the oil and gas industry, it was now much more common in mining. Further, while "core cutting now still exists in oil and gas, …it's much different compared to what we do in mining" and uses different equipment such as the equipment referred to in the prior art documents (drill rigs, kelly bushing, rotary tables, tricone bits - "those are all indicators that they're actually for a particular type of drilling activity, which is not mineral drilling"). Professor Dupuis also said "the fact that there is a core barrel in the invention that we're discussing actually allows us to believe that it's for mineral drilling".
332 Professor Tapson said:
I disagree somewhat with my colleague that core orientation is purely carried out in mineral exploration because it's carried out in a great many fields of underground exploration. It's very important in oil and gas in terms of understanding the structure from which oil is going to be extracted, and it has been used, for example, in Antarctica to drill through ice and take cores of ice. So it's absolutely not a mineral extraction exclusive process. And, in fact, the patent also describes its use in the construction industry. It suggests that this patent could be of use in - if I can give you the - paragraph 7, it says that this tool could be used in the construction industry.
So it seems clear to me that the drafters of the patent had think [sic] very broad view of the field of the invention. And they also refer - field of the invention - to borehole telemetry, which is the business of sending a system down a borehole and sending back the information to the surface concerning some feature of the hole, using something to do with the physics or the geological features of the hole. So … to me, the reference to core orientation doesn't restrict this invention to the mineral industries.
333 As noted, the patent at [0007] does refer to the construction industry on the basis that "core orientation can reveal geological features that may affect siting or structural foundations for buildings". The kind of core orientation activity that would be used in construction would be obtaining a rock core to determine the stability and other qualities of the ground for the placement of a building. While this is different from mineral exploration, the patent recognises expressly that the invention is capable of being used in that hard rock environment, not to identify ore for subsequent extraction by another method, but to identify the suitability of the ground for a building. The important point, however, is that they both involve extraction of a core of rock for exploratory (not resource productive) purposes. The evidence establishes, however, that the context of drilling holes in the oil and gas industry is different in many fundamental respects including the dimensions, depth and function of the hole as the means of extraction of the resource (that is, the hole is itself a long-term, capital intensive, productive asset). As such, the equipment used for drilling holes in the oil and gas industry is also different.
334 As a result, I do not accept that the patent involves a "very broad view of the field of the invention", as Professor Tapson would have it. The specific reference to the construction industry in [0007] of the patent, if anything, reinforces that the field of the invention is a device to improve an aspect of borehole drilling for mineral exploration, which is also capable of use in the construction industry to assist in the siting of buildings by performing the same function. Further, nothing in the patent suggests that this invention has anything to do with other forms of core orientation such as obtaining ice cores in Antarctica. Accordingly, while core orientation may be used in a range of industries (and Professor Dupuis did not say otherwise), the context of the patent as a whole indicates that the field of this invention is an aspect of drilling boreholes for mineral exploration - albeit that the patent recognises that this invention can also be used to assist in siting buildings in the construction industry which involves the same hard rock environments as the minerals industry.
335 Professor Dupuis did not incorrectly rely on a mere embodiment of the invention to support his view of the field of the invention. As discussed, the background to the invention is also important in establishing the field of the invention. The background refers to numerous features indicating that the field is hard rock drilling for mineral exploration including "rock or ore deposits underground", "strategic decisions on future mining or drilling operations, such as economic feasibility, predicted ore body volume, and layout planning", "such as sediment and rock, and recoverying [sic] the core sample", "diamond tipped dril [sic] bit", "[o]nce a core sample is cut, the inner tube assembly is recovered by winching to the surface", and"[t]ypically the downhole equipment is brought to the surface once sufficient data is gathered or task completed" (given the evidence that the oil and gas industry uses downhole to surface communication commonly). Reflex's submission that the background to the invention reveals "nothing as to the scope of the field" is contrary to the principle that the patent must be read as a whole and wrong in fact.
336 The meaning of terms in the patent should be approached in this context, that the field of the invention is drilling for mineral exploration, that the person skilled in the art (like Mr Brown) is a person with a practical interest in that field, and that this person possesses the common general knowledge in the field, but not the high level academic, research and development expertise and inventiveness of a person like Professor Tapson or Professor Dupuis.