Grove Hill Pty Ltd v Great Western Corporation Pty Ltd

HISTORY OF THE PATENTS 137 A provisional application was filed on 22 December 1993 (Provisional Application No PM3104). The respondent asserted that such date is the priority date for both patents. The petty patent for an invention entitled "Improvements in or in relation to a Row Cultivator" was granted on 15 May 1997 and expired on 15 May 1998. Its claims were as follows: "1. A row cultivator having a transverse tool bar and a plurality of tool carrying shanks mounted on and projecting downwardly from the tool bar, each shank having a pair of plates mounted to the shank on opposite sides of the shank and forming a lower shank section, the lower shank section having a forwardly projecting portion fitted with a leading blade and a pair of rearward cutting blade attachment means having respective cutting blades attached thereto so as to be spaced rearwardly from and separate of the leading blade, the leading blade being followed by the pair of cutting blades, the cutting blades being adapted to travel just below soil level to sever weeds on either side of the leading blade, the cutting blades having respective leading edges diverging rearwardly and outwardly on opposite sides of the leading blade. 2. A row cultivator according to claim 1 wherein the pair of plates are pivotally mounted on the shank so that the inclination of the cutting blades can be adjusted. 3. A row cultivator according to claim 1 including means for changing the inclination of the blades." 138 The standard patent was granted on 26 August 1999. It is entitled "A Tool for a Row Cultivator" and includes the three claims of the petty patent and ten further claims as follows: "4. A tool for a row cultivator, the tool comprising: an elongated shank having an upper shank section and a bifurcated lower shank section pivotally coupled to the upper shank section, the lower shank section comprising leading blade attachment means projecting in a forward direction from the shank, and a plurality of cutting blade attachment means physically separated from the leading blade attachment means in a rearward direction from the leading blade attachment means; a leading blade for cultivating a furrow, said leading blade being mounted to the leading blade attachment means of said shank, and having a rear end; and a pair of cutting blades, adaptable to travel just below a soil level to sever weeds on either side of the leading blade, the pair of cutting blades having respective forward ends and leading edges diverging rearwardly and outwardly on opposite sides of a line passing through the leading blade, and being secured to the respective cutting blade attachment means such that the rear end of the leading blade is physically separated from respective front ends of the cutting blades. 5. A tool according to Claim 4, wherein the lower shank section comprises a blade carrier unit secured to the upper shank section, the carrier unit having a forward leading blade attachment means and a rearward cutting blade attachment means, the rearward cutting blade attachment means comprising a pair of spaced vertical plates receiving a cutting blade carrier unit in the form of an inverted generally T-shaped plate. 6. A tool according to Claim 5, wherein each cutting blade is tapered, having a broad forward cutting edge portion located behind and inside a periphery of the leading blade. 7. A tool according to Claim 5, wherein each cutting blade has a forward portion located within a shadow of the leading blade. 8. A tool according to Claim 5, including means for changing an inclination of the blades. 9. A tool according to Claim 4, wherein each cutting blade is tapered, having a broad forward cutting edge portion located behind and inside a periphery of the leading blade. 10. A tool according to Claim 4, wherein each cutting blade has a forward portion located within a shadow of the leading blade. 11. A tool according to Claim 4, including means for changing an inclination of the blades. 12. A tool according to Claim 4 wherein the lower shank section comprised interfitting plates, said cutting blade attachment means comprising a pair of lobes for separate attachment of the respective cutting blades to the lower shank section. 13. A row cultivator employing a tool according to any one of claims 4 to 12." The invention is marketed under the name Cleansweep.

THE PROCEEDINGS 139 The respondent alleged that since June 1997, the appellant had infringed both patents by manufacturing, offering for sale and selling products called Terminator and Versasweep. Such conduct allegedly infringed claims 1 to 3 of the petty patent and claims 1 to 3, 4, and 9 to 13 of the standard patent. The appellant denied infringement and cross-claimed for revocation of both patents. There was also an allegation of estoppel. Conclusions at First Instance 140 Kiefel J held that the appellant had infringed both the petty patent during its term, and the standard patent since it came into force. Her Honour enjoined the appellant from infringing the standard patent, awarded costs to the respondent and is yet to rule on damages and other relief. Her Honour's findings can be summarised as follows: · Witnesses Kiefel J generally preferred the evidence of the witnesses for the respondent to that of the witnesses for the appellant, considering some of the latter witnesses to be partisan or combative in manner. Some witnesses appeared to have been "guided" on particular issues. · Infringing Conduct The appellant marketed the Versasweep which, it alleged, consisted of two plates on which cutting blades could be mounted. It also marketed a blade, mounted on plates, which plates fitted within those used in the Versasweep so that the blade "led" the cutting blades. The Terminator was a row cultivator which could be fitted with the Versasweep and leading blade units. The appellant sought to distinguish between supply of a tool in a form which might infringe the patents and sale of the constituent parts. Her Honour found that the "Versasweep" had, on occasions, been supplied to customers in assembled form with the leading blade and that in any event, even when the components were supplied separately and on separate pallets, such supply would constitute an inducement to use the components in a way which would infringe the patents. There was also evidence of supply of the Terminator with such fittings. Her Honour found such behaviour to be infringing conduct. · Guidance System There is reference in the patent specifications (but not in the claims) to a "guidance" system. Broadly speaking, a cultivator is a tool bar dragged by a tractor, the bar being transverse to the direction of travel of the tractor. A guidance system is designed to keep the cultivator travelling in the same direction as the tractor. The appellant submitted that the claims should be construed as relating only to use of the invention in conjunction with a guidance system. Kiefel J held that such references were merely to a preferred embodiment and did not so limit the claims. · Section 40 The appellant alleged failure to comply with the provisions of s 40 of the Act. Her Honour concluded that the appellant had not demonstrated non-compliance. · Priority Kiefel J found that the patents took priority from the date of filing of the provisional application. · Want of Novelty Her Honour concluded that none of the prior art amounted to an anticipation of claims 1, 2 or 3 in either patent. · No Inventive Step Kiefel J held (at [114] - [115]): "The combination is new, as is the interaction achieved. I refer in particular to the detailed evidence upon the juxtaposition of the rear and forward blades and their adjustability. The effect achieved is a tool which can be used widely in row cultivation; where the number of tools are reduced; they are attached on a single shank with consequent reduction in both set-up and adjustment time; and where greater weed eradication can be achieved. Difficulties are overcome and efficiencies achieved… . The assertion that the combination of forward and rear blades was well-known is half accurate and does not properly address what is here employed. If it is accepted, in relation to this issue, that the T-shaped section is one obvious solution to the requirement of adjustability, the other features of the combination are not." · Prior Use At the trial, the appellant did not pursue an allegation of public demonstration for commercial purposes but instead relied upon Mr Mansur's prior secret use of the equipment on his farm from late 1992. This was said to go beyond reasonable trial and experiment. Her Honour concluded that Mr Mansur's actions from late 1992 constituted necessary testing and performance assessment and therefore did not go beyond reasonable trial and experiment. · False Suggestion The appellant sought revocation pursuant to s 138 on the basis that the patents had been obtained by fraud, false suggestion or misrepresentation. Kiefel J concluded that these allegations were without foundation.

Grounds of appeal 141 The notice of appeal is lengthy and discursive in style. As a result it is difficult to summarize the points of criticism. It asserts that her Honour: · erred in rejecting or discounting the reliability of several of the appellant's witnesses and favouring the respondent's main witness (Mr Woodward); · made incorrect findings regarding the composition of the appellant's product (the Versasweep) and the circumstances and configurations in which it was sold; · made numerous errors of interpretation in relation to the construction of the patent claims, including as to the guidance system; · made a finding of infringement when no instances of infringement had been proven; · erred in finding that the offering for sale and selling of the appellant's product as components on pallets, in unassembled form constituted an infringement and that the components could be put to only one use; · erred in finding compliance by the respondent with section 40 and that the patent claims were fairly based on the provisional specification; · incorrectly decided the priority dates of both patents; · made incorrect findings concerning secret use, novelty, prior art, and obviousness; · made no findings concerning the appellant's "manner of manufacture" submissions; · denied the appellant's counsel the opportunity of cross-examination on certain aspects; and · erred in formulating the terms of the injunction. 142 It seems that her Honour dealt only with claims 1 to 3 of both patents, inadvertently failing to deal with the respondent's allegations of infringement of claims 4 and 9 to 13 of the standard patent and with the appellant's assertion that claims 4 to 13 of the patent are invalid. The appellant asked us to deal with those matters on appeal. The respondent does not now press for a finding that the appellant infringed claim 9 of the standard patent and was somewhat reluctant to agree to our dealing with claims 4 to 13 other than in connection with infringement. For the reasons given by Gyles J, I am of the view that we should deal with the alleged infringement of clauses 4 to 13 but refer back to Kiefel J all other matters concerning those claims. 143 In the course of oral argument the appellant abandoned its challenge to her Honour's findings as to credibility and reliability. Counsel said (Appeal TS 103): "The notice of appeal, your Honours will see, takes issue with her Honour's treatment of witnesses both rejecting some evidence which was given for the respondent and accepting the evidence which was given for the applicant. In a real sense, it hardly matters. The way we put the case really is that it is not a case upon which one would think that any evidence matters; in the sense that we are not talking about rocket science. It is easy to understand the concept. As soon as one is introduced to the subject, as one was, for example, by Mr Wiley, or Mr McFarlane, it is then just a matter of giving words their ordinary meaning." 144 At a later stage counsel said (Appeal TS 201): "If your Honours go to the notice of appeal, I hope I explained this morning how it is that we seek to put the point about witnesses. To the extent that part 1 travels beyond that explanation, we don't press it." 145 This seems to mean that although no challenge is made to her Honour's findings as to the credibility or reliability of witnesses, the evidence in question was, in any event, irrelevant as the issues in the case were capable of resolution without reference to it. 146 Other abandoned grounds of appeal are: • the assertion that the claims in the petty patent should be limited to use of the invention in conjunction with a guidance system; the guidance system remaining relevant only to the question of compliance with s 40; • reliance upon the common law (rather than s 117) in connection with contributory infringement; • reliance upon pars 2(a), 2(b), 2(g) and 2(i) on pages 30 and 31 of the notice of appeal; • Part IX of the notice of appeal (dealing with "manner of manufacture") to the extent that the matter goes beyond issues of obviousness; and • Part X on p 38 of the notice of appeal. 147 As I read the reasons for judgment, Kiefel J relied upon expert evidence both in construing the patents and in examining items of prior art. Such reliance is by no means unusual in patent cases. I say this despite the observation by counsel for the appellant, cited above, that the concepts in question are easy to understand. The appellant challenged many of the conclusions drawn by her Honour from the evidence. Unfortunately, it did not offer any foundation for many such challenges. They were, however, accompanied by invitations to the Court to form its own views of the evidence. As was pointed out by Gummow J in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at 556, that is not necessarily an appropriate course. Save where there has been a specific challenge to the correctness of her Honour's views of the evidence, I will assume that they are correct. In the absence of a specific submission that her Honour's use of any aspect of the evidence was inappropriate, I will assume that it was not.

Disposition of the appeal 148 I will deal with the appeal under the following headings: · Infringement; · Matters arising under s 40; · Priority; · Secret use; · Novelty; · Inventive step - obviousness; · Manner of manufacture; and · Orders (at first instance and on appeal).

Infringement 149 As I am in substantial agreement with what Gyles J has written concerning this aspect, I need only deal with it briefly. Broadly speaking, the allegedly infringing conduct is the appellant's sale of the "Terminator" row cultivator with the Versasweep attachment and the separate sale of the Versasweep. The respondent's case was that the Versasweep comprises two component parts. The first is the forward or leading blade attached to a pair of plates, bolted to the shank of a row cultivator, using both a pivotal bolt and a bolt passing through an arcuate slot. The second component is a similar pair of plates, more widely spaced than those used in connection with the leading blade, to which is attached a pair of rearward blade attachment means. The appellant's promotional material contemplates the two components being, in some circumstances at least, fitted to one shank, with the plates associated with the leading blade sitting between those bearing the rearward blade attachment means. The appellant asserted that the two components are discrete, and that the Versasweep is comprised only of the plates bearing the rearward blade attachment means. The respondent also sought to rely upon s 117 of the Act as rendering any supply of that component a breach of claims 1 to 3, but not of the other claims. Before her Honour, the appellant submitted that it was possible to fit the rearward blade attachment means to a shank without using the leading blade component. However Kiefel J found that shanks in use in the industry are not readily suitable for that arrangement and, implicitly at least, inferred that the spacing of the plates was designed so that the plates associated with the leading blade could be fitted within those associated with the rearward blade attachment means. There was also evidence that such rearward blades would not be effective unless preceded in their path of travel by a leading blade. I see no reason to deal with the matter on any basis different from that adopted by her Honour.

Claims 1, 2 and 3 150 Claims 2 and 3 are dependent upon claim 1. That claim relates to a row cultivator having shanks, "projecting downwardly". Each shank has a pair of plates mounted so that one plate is on either side of it. The pair of plates forms a "lower shank section" which has the following characteristics: • a forwardly projecting portion fitted with a leading blade; and • a pair of rearward cutting blade attachment means. 151 In other words, there must be a pair of plates demonstrating those characteristics. The Versasweep, when assembled with a leading blade, has no such pair of plates. One pair of plates bears the leading blade, and the other bears the rearward blade attachment means. Further, the lower shank section is comprised of two pairs of plates, not one. The Versasweep (fitted with a leading blade) could only be described as having a pair of plates as contemplated by claim 1 if the two plates on either side of the shank could be accurately described as one plate. They cannot be so described. As Gyles J has observed, this is not a case for application of the ideas described as "mechanical equivalence". The sale of a row cultivator incorporating a Versasweep (with leading blade) would not infringe any of claims 1 to 3. It is not necessary to consider the application of s 117 of the Act.

Claim 4 152 Claims 10 to 13 are dependent upon claim 4. I should outline the meaning which I attribute to certain aspects of that claim. For convenience, I will deal with it in parts as follows: "A tool for a row cultivator, the tool comprising: an elongated shank having an upper shank section and a bifurcated lower shank section pivotally coupled to the upper shank section," 153 According to the Shorter Oxford Dictionary the word "elongated" means: "(1) That has been elongated; made longer. (2) Long in relation to its width." 154 The word "bifurcate" as an adjective is defined in the Shorter Oxford Dictionary as: "Having two forks, branches, or peaks." 155 The word "bifurcate" as a verb is defined as: "Divide into two forks, branches, or peaks." 156 The participial adjective "bifurcated" presumably has an equivalent meaning. In this context, the "elongation" of the shank refers to the extension of the shank by addition of a lower section which is in two parts. This view is consistent with that expressed by Mr Woodward at TS 1089 et seq. It may have been more accurate to describe the upper and lower shank sections together as creating a "bifurcated" shank, but it is relatively clear that the claim describes a "forked" assembly to which the lower shank section contributes the tines, and the upper shank contributes the stock or handle. The use of the word "bifurcated" yields a more generalized description of the shank assembly in claim 1 as described in the words "each shank having a pair of plates mounted to the shank on opposite sides of the shank and forming a lower shank section". These words fairly describe an elongated and bifurcated tool. The requirement for "bifurcation" is potentially wider than the requirement for "a pair of plates". The former expression will include bifurcation produced by use of a pair of plates or otherwise. The extent of the distinction depends upon the meaning attributable to the word "plate". The primary definition of the term in the Shorter Oxford Dictionary is: "A flat, comparatively thin, usually rigid sheet, slice, leaf or lamina of metal or other substance, of more or less uniform thickness and even surface, frequently adapted to form part of a mechanism." 157 The use of the term "bifurcated" in place of the reference to "a pair of plates" recognizes that the bifurcation achieved by the use of a pair of plates is a significant aspect of the invention. 158 The next term requiring explanation is "pivotally coupled". The Shorter Oxford Dictionary describes a "pivot" as: "A short shaft or pin on which something turns …". 159 It is accurate to describe the two parts of the shank as "pivotally coupled". 160 The Versasweep reflects all aspects of claim 4 with the possible exception of a "bifurcated" lower shank section. The plates are bolted together and in two parts in the sense that one of each pair of plates is on one side of the upper shank section and the other of each pair is on the other side. In other words, on either side of the upper shank section is a "member" of the lower shank section, which member comprises two plates which are bolted together. As I have observed, the word "bifurcated" is obviously used in the patent to describe a lower shank section having two members which combine with the upper shank section to create a "forked" effect. In my view the Versasweep has the necessary feature of bifurcation. It reflects all other aspects of claim 4 and therefore infringes.

Claims 10 and 11 161 For the reasons given by Gyles J infringement is established.

Claim 12 162 Claim 12 is as follows: "A tool according to claim 4 wherein the lower shank section comprised interfitting plates, said cutting blade attachment means comprising a pair of lobes for separate attachment of the respective cutting blades to the lower shank section." 163 I agree with Gyles J as to the question of "interfitting" plates. The only question is whether or not the rearward blade attachment means used in the Versasweep may accurately be described as "lobes". The Versasweep has a complicated means of affixing the rearward blades to the plates. On the outer side of each of the plates there is a tab (a "plate tab") projecting from, and at right angles to that plate. The outer edge of each plate tab is more or less curved, and each is pierced with a hole to take a bolt. To these plate tabs are bolted two matching tabs ("fixing plate tabs"), also pierced to take bolts. Attached to the fixing plate tabs, and at right angles to them, are two further members (the fixing plates) which are much bigger in size. Each of these plates is tapered, with rounded ends. The cutting blades are bolted to them. It is conceivable that either set of tabs or the fixing plates might be described as lobes in that they have curved surfaces, but the word "lobe" more appropriately describes part of a greater entity than something which is attached to another entity of which it is not an integral part. For that reason I agree with Gyles J that infringement is not demonstrated.

Claim 13 164 I agree with Gyles J that infringement is demonstrated. 165 The balance of the judgment deals only with claims 1 - 3 save where I otherwise specify.

Matters arising under s 40 166 Although since amended, s 40 of the Act provided at the relevant time: "1. A provisional specification must describe the invention. 2. A complete specification must: (a) describe the invention fully, including the best method known to the applicant of performing the invention; and (b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and (c) where it relates to an application for a petty patent - end with a single claim, or a single independent claim and not more than two dependent claims, defining the invention. 3. The claim or claims must be clear and succinct and fairly based on the matter described in the specification. 4. The claim or claims must relate to one invention only." 167 The appellant submitted that the patent specifications did not comply with this section in several respects.

Description of the invention - Sami Svendsen 168 The first criticism relied upon the decision of Kitto J in Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156. The appellant argued, in its written submissions: "Put shortly, the section 40 issue raised by Sami Svendsen and as pleaded is not whether apparatus can be made by a person skilled in the art in the form described and illustrated (which was not in contest) but, rather, having regard to the prior art in the form of the apparatus as described and claimed in what, or where, precisely does any invention reside?" 169 I take this to imply that in order to satisfy the requirement of subs 40(2) that the invention be fully described, the applicant must demonstrate the way in which the claimed invention goes beyond prior art. In Sami Svendsen, Kitto J was concerned with an exceptional situation in which it was clear from an affidavit filed by one of the inventors that the invention as claimed went far beyond the alleged inventive step. At p 165 of the report his Honour said: "Assuming that there was an inventive step in this improvement, I am of opinion, first, that the specification as a whole offends against s 40(1) by not describing the invention, since it does not enable the reader to discern what was the invention in the total thing that it describes; and, secondly, that the claims themselves offend against s 40(1) by defining as the invention something that was much more extensive than the invention … . This is a ground upon which, in the public interest even if not for any other reason, the Deputy Commissioner could, and in my opinion should, have upheld the objections and refused to grant a patent upon the specification in its present form, even if no ground of opposition were established except that provided for by s 59(1)(i); … . I do not mean that in every case of opposition it is a function of the Commissioner to investigate for himself the question how the actual invention compares with the invention as claimed. What I have said is based upon the circumstance that the evidence of Mr Flomen, one of the actual inventors, contains clear admissions, indeed positive assertions, of facts which leave no room for doubt that the specification both in its description and in its claims disobeys s 40(1). The nature of the disobedience is such that the specification is likely to mislead, and for that reason the application ought to be refused in the exercise of those general and inherent powers of the Commissioner and the Court which Lord Morton explained … ." 170 In other words the patent claimed substantially more than the true subject matter of the invention so that the invention was not identified. This offended against s 40 (in its then current form) in that both the description of the invention and the claims were inaccurate. The appellant also relied upon the recent decision of the High Court in Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 75 ALJR 518 at [22] and [23], where Sami Svendsen was cited. Kimberley-Clark takes the matter no further for present purposes. The appellant submitted that in the present case, the invention was similarly not identified. 171 Counsel for the respondent pointed out that in Winner v Ammar Holdings Pty Ltd (1993) 41 FCR 205 at 217 (per Davies J, Morling J concurring), it was established that: "… it is not necessary for a patent specification to identify the inventive step, but is sufficient that the specification describe in a claim or a series of claims what is or are claimed to be the patentable subject matter." 172 Similarly, in Abbott Laboratories v Corbridge Group Pty Ltd (No 2) [2001] FCA 810 at [62], Gyles J said: "It may be that the complaint is that the specification does not clearly identify precisely how the 'invention' differs from, and improves upon, what went before: what is unique about it. In one sense that is correct. The specification refers to the prior art (some of it by incorporation), states objectives and describes the various embodiments of the invention. If there is, in fact, no advance, then the patent will be invalid on the grounds of lack of novelty or obviousness. The fact that the 'advance' is not expressly identified does not lead to invalidity." 173 Although full description of the invention may necessitate some explanation of prior art, these cases demonstrate that it is the invention, not the prior art, which is the focus of the requirement for full explanation. I consider that the state of prior art is appropriately identified on p 2 of both the petty patent and the standard patent. Thereafter, the identified invention is reasonably clearly described and claimed. It does not appear from the patents or from any other undisputed material that the invention is demonstrably wanting in novelty or inventiveness. There is nothing in this point. 174 Under this heading the appellant also submitted that there could be no patent for a combination which merely improved upon one aspect of an earlier combination, referring to Sami Svendsen (supra), May v Higgins (1916) 21 CLR 119 and Fallshaw Holdings Pty Ltd v Flexello Castors and Wheels PLC (1993) 26 IPR 565. As in Abbott Laboratories, that question may be relevant in considering novelty and/or obviousness, but does not, in this case, arise pursuant to s 40.

Independent Adjustability - Front and Rear Blades 175 Kiefel J found that the claims contemplated independent adjustability of the front and rear blades. The appellant asserted that this feature was not described or illustrated in the figures in the patents or in any priority documents. It was also asserted that the feature "has no basis at all in the words 'adapted', 'adaptable', or 'the blades and sweep can be tilted as desired'." It was said to follow that the claims were not fairly based upon the disclosures in the specifications. I do not understand this argument. Her Honour's conclusion, to some extent, relied upon her construction of the patents with the assistance of expert evidence. There is no doubt that the words "adapted" etc were relevant to that construction, but they are by no means the only aspects of the specification which address the question of "adjustability". In the petty patent (p 3), there is reference to the T-shaped plate which appears to have been an aspect of the adjustment mechanism for the rear blades; on p 5 ll 15 - 19, there is reference to a pivotal mounting of the plates so that "the inclination of the blades can be adjusted …"; the last line of p 5 reads, "The blades and sweep can be tilted as desired." Similar passages appear in the standard patent. This argument was not pressed in written submissions. It is without merit. 176 The appellant also challenged the correctness of her Honour's construction of the claims as contemplating adjustability. Although it is not immediately relevant, it is convenient to deal with the matter at this stage. Claim 1 speaks of the cutting blades "being adapted to travel just below soil level to sever weeds …". Her Honour dealt with the meaning of the expression "adapted to" in [58] and [63], accepting Mr Woodward's evidence that "adapted to" meant "adaptable to". He said at various points in his evidence that claim 1 would inform the relevant notional addressee that the cutting blades were to be adaptable to suit the contour of the relevant furrow in which the row cultivator was operating. This appears at TS 1146-7, especially at ll 13 - 17 on the latter page, where he said: "… this is a tool for a row cultivator, and row cultivators are used in both those types of inter-row spaces, so to have one that only meets one requirement seems to me to limit the usefulness of the tool and therefore defeat the objection (sic) of the invention." 177 I see no cogent reason for upsetting her Honour's acceptance of this evidence. In any event, I cannot see that the word "adapted" could, in this context, have any meaning other than "adaptable". If it were taken as describing some fixed configuration which could be used only with furrows having a particular shape, it would invite the question "adapted from what?" The word "adapted" certainly implies change to suit particular conditions. The claim does not suggest adaptation of existing cutting blades of any particular shape, size or other description. It is much more likely that it was intended to reflect the need for adaptability to suit the circumstances of a particular furrow. Any possible ambiguity in the claim might be resolved by reference to the balance of the specification. See Interlego AG v Toltoys Pty Ltd (1972 - 1973) 130 CLR 461 at 479, cited by the High Court (Gleeson CJ, McHugh, Gummow, Hayne and Callinan JJ) in Kimberly-Clark at [15]. Both the patents make it clear that one of the difficulties experienced with the prior art was difficulty in adjusting shank assemblies. There is no suggestion that the invention obviates the need for such adjustment. It is rather suggested that the invention makes adjustment easier by reducing the number of points of adjustment. Both patents refer to a preferred embodiment of a blade carrier unit in the form of an inverted "T" as an example of the way in which such adjustability might be achieved. There are other references to adjustability of the blades, but it is not necessary to go any further. The conclusion that the word "adapted" implies "adaptability" is, in my view, correct, although the claim did not describe any particular method of achieving this outcome.

Guidance system 178 It will be recalled that the provisional application described three aspects of the invention there disclosed, the first of which was a guidance system for use on a row cultivator. This aspect is not mentioned in the claims. For some reason, perhaps inadvertence, parts of the description of the guidance system were incorporated into the complete specification for the petty patent. Her Honour held that the petty patent did not claim the guidance system. The appellant submitted that claims 1 to 3 in the petty patent were not fairly based upon the complete specification because the claims are wider than the information there disclosed. In other words the specification discloses only use of the relevant tool with a row cultivator equipped with a guidance system, whereas the claims relate to use with any row cultivator which has a transverse tool bar and a plurality of tool carrying shanks. 179 Subsection 40(3) requires only that each claim be clear and succinct and fairly based upon the matter described in the specification. This specification identifies problems experienced with row cultivators generally (at p 2). It is true that the diagrams used and explained in the body of the specification include a guidance system which is also explained in some detail. Nonetheless, it is clear that the guidance system is not itself claimed as subject matter of the invention. The material on p 2 of the petty patent discloses that the invention is for use with all row cultivators, not simply with row cultivators bearing guidance systems. There is nothing in this criticism. The same material appears in the standard patent, but no point was taken in that regard. Such an argument would have failed for the same reason.

Uncertainty of terms 180 It was argued that certain terms in the patents are not sufficiently defined. Included in this criticism were the expressions "elongated shank", "upper shank section", "bifurcated lower shank section" and the requirement that the "bifurcated lower shank section" be pivotally coupled to the "upper shank". The written submissions on this issue were primarily concerned with the ways in which the various witnesses dealt with some or all of these terms. I see no reason why, to the extent that it may be necessary, a court could not construe these terms in the usual way, having appropriate reference to a dictionary and to expert evidence where appropriate. There is nothing in this point. I should add that I have sought to define some of these terms in other parts of the judgment.

Other grounds arising under s 40 181 The appellant also raised a number of issues concerning either priority or infringement. I do not consider that they are relevant to the question of compliance with s 40. They are dealt with elsewhere in these reasons.

Priority 182 The respondent asserts priority for the claims in both the patent and the petty patent from 22 December 1993, the date of filing of the provisional application, conceding that such priority depends upon the operation of s 43. That section provides: "(1) Each claim of a specification must have a priority date. (2) The priority date of a claim is: (a) the date of filing of the specification; or (b) where the regulations provide for the determination of a different date as the priority date - the date determined under the regulations. (3) Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined. (4) The priority date of a claim of a specification may be different from the priority date of any other claim of a specification." 183 Regulation 3.12 of the Patents Regulations 1991 ("the Regulations") provides: "(1) Subject to regulation 3.13 ("priority dates: certain persons and applications") and 3.14 ("priority dates: certain amended claims") and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates: (a) … (b) if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority document in which the matter was first disclosed; (c) … (2) For the purposes of paragraph (1)(b): (a) if the application that relates to the specification containing the claim is a complete application - a provisional application that is associated with that complete application in accordance with section 38 of the Act ("time for making complete application") is a priority document; …" 184 It is accepted that the provisional application is associated with the complete applications. (See s 38 and s 5.) However the appellant submitted that the claims in the patents are not fairly based upon matters disclosed in the provisional application. The appellant submitted that priority should be determined pursuant to s 114 and reg 3.14. Although since amended, s 114 provided at the relevant time: "(1) Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations. (2) Objection cannot be taken to a patent request or complete specification, and a patent is not invalid, on the ground that the invention, so far as claimed in a claim mentioned in subsection (1), does not involve an inventive step having regard to any publication or use of the invention after its disclosure in the complete specification as filed." 185 Regulation 3.14 provides: "If subsection 114(1) of the Act ("priority date of certain amended claims") applies to a claim of a specification, the priority date of the claim is: (a) in the case of an amendment to which subsection 89(4) or (5) of the Act ("modified application of Act") applies - the date on which the amendment is taken to have been made under that subsection; and (b) in any other case - the date of filing of the statement of proposed amendments that resulted in the disclosure referred to in subsection 114(1) of the Act." 186 Both the petty patent and the standard patent applications were amended following lodgment. It is for this reason that the appellant submitted that priority for some or all of the claims in each patent should be the relevant dates of amendment pursuant to s 114 and reg 3.14. The operation of s 43 and reg 3.12 should be considered separately from that of s 114 and reg 3.14. I will deal firstly with the question of fair basing upon the provisional application and then with such operation as s 114 and reg 3.14 may have for present purposes. Before doing so I will deal with one other preliminary matter. The appellant alleged in its submissions as to fair basing that the claims in the petty patent are "not limited by the guidance system described in the body of the specification as forming part of the invention". This criticism concerns correspondence between the claims and the body of the specification rather than fair basing upon the provisional application. I have dealt with the point in considering the various criticisms said to arise pursuant to s 40.

Section 43 187 Section 43 and reg 3.12 invite a comparison between each claim in both patents and the content of the provisional application, the purpose being to determine whether or not each claim can be said to be fairly based on matter there disclosed. In F Hoffman-La Roche & Co AG v Commissioner of Patents (1970-71) 123 CLR 529 at 538 - 539, Gibbs J (as his Honour then was) considered the application of earlier English decisions to the analogous Australian provision then in force and observed: "Lloyd-Jacob J did not attempt to define all that is meant by the phrase 'fairly based' but he gave a guide to the approach that should be made in deciding a question of this kind. In his opinion it is necessary to investigate three questions which, if one substitutes a reference to the basic application for a reference to the provisional specification, he finally formulated as follows: (1) Is the alleged invention as claimed broadly (ie in a general sense) described in the basic application? (2) Is there anything in the basic application which is inconsistent with the alleged invention as claimed? (3) Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent? It is needless to say that these questions are intended to assist the Court in applying the test laid down by the Act itself, viz whether the claim in the complete specification is fairly based on matter disclosed in the basic application, but are not a substitute for that test." 188 His Honour then referred to the decision of Fullaghar J in Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 at 11 as establishing that fair basing involved "… a real and reasonably clear disclosure." 189 In CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 275 - 282, the Full Court considered the history of fair basing and stressed the need to avoid departure from the terms of the Act, pointing to certain deficiencies, from an Australian point of view, in the language used by Lloyd-Jacob J to which Gibbs J had referred in Hoffman-La Roche. Nonetheless I do not understand their Honours to have disapproved the approach adopted by Gibbs J in that case. It is also worthwhile to draw attention to certain specific observations made by the Court in CCOM which highlight the pitfalls into which one may fall in applying the "fair basing" test. They include: • The test does not involve any assessment of the appropriateness of a monopoly as a reward for the relevant disclosure. The question is solely whether or not "the claim as expressed, travels beyond the matter disclosed in the specification." (See Olin Corporation v Super Cartridge Co Pty Ltd (1977) 51 ALJR 525 at 527 per Barwick CJ. His Honour was there considering correspondence between claims and the body of the specification in a complete application, but the principle is applicable for present purposes.) • It is not appropriate to adopt "an over-meticulous verbal analysis". In this context the Full Court quoted with apparent approval the observations of Buckley LJ in Stauffer Chemical Co's Application [1977] RPC 33 at 54: "If a new feature were a development along the same line of thought which constitutes or underlies the invention described in the earlier document, it might be that that development could properly be regarded as fairly based on the matter disclosed in the earlier document, and that the new process described in the later document which incorporates that development could as a whole be regarded as fairly based upon the matter disclosed in the earlier document. If, on the other hand, the additional feature involves a new inventive step or brings something new into the combination which represents a departure from the idea of the invention described in the earlier document, it could not, I think, be properly described as fairly based upon the earlier document." • Similarly, the Full Court approved earlier observations by Fox and Spender JJ in Cooper's Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 at 389 as follows: "Where the holder of a provisional specification proceeds with a complete specification with a view to the grant of a patent, it is recognised that greater definition, as a result of further experimentation or otherwise, may be achieved before the later step is taken and the result expressed therein. Some generality in expression of the provisional specification is accepted." • The Full Court considered that: "…it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the complete specification, or in the provisional specification, "essential integers" or "essential features" of an invention disclosed therein and to ask whether they correspond with the essential integers in the claim in question … . Nor would it be applying the statute to ask whether the earlier specifications fairly described the essential features of the invention disclosed in the later specification. … Fullaghar J (in Rhône-Poulenc) also pointed out that the requirement of "fair basing" on a matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification; rather, there must be "a real and reasonably clear disclosure"." (at 281-2) • The comparison is between what is claimed and the matter disclosed in the provisional application, keeping in mind that: "… it could be unsafe to assess the disclosure in the earlier specification, or the body of the complete specification, by decisive reference to the preferred embodiment. A claim may be fairly based on matter disclosed in a portion of the specification which does not include the description of the preferred embodiment." (at 283) 190 I understand this to mean that the preferred embodiment ought not be taken as a definitive statement of "what is essential to the claimed invention", and that material relevant for the purpose of assessing fair basing may appear elsewhere in the provisional application. 191 It is somewhat difficult to identify with precision the various grounds upon which the appellant attacked the respondent's claim to fair basing upon the provisional application. The relevant grounds of appeal are as follows: As to the petty patent (par 7) "The learned primary Judge should have found that the priority date of claims 1 to 3 of the petty patent was not earlier than 21 January 1997 because the final combination of alleged essential features found by the learned primary Judge to be the true constructions of the claims: (a) did not exist at all as a combination of essential features in the Priority Documents for the Petty Patent being: (i) provisional application PM 3104; (ii) complete specification 81703/94; (iii) complete specification 70615/96; (b) was first proposed as a combination of essential features in the combination claimed in the Petty Patent by amendments first proposed to the Patent Office (IP Australia) by letter from the then applicant's patent attorney dated 21 January 1997 which amendments created the claimed new combination by selecting some optional (preferred) features from the specification description and converting them into essential features by claims to a new combination incorporating those features; (c) by reason of ss 43 and 114 of the Act and Regs 3.12 and 3.14, the priority date of claims in the form as so amended takes the date of the amendments; namely 21 January 1997." As to the standard patent (par 8): "The learned primary Judge should have found that the priority date of claims 1 to 13 of the Standard Patent was not earlier than 9 March 1999 because the combination of alleged essential features in those claims: (a) did not exist at all as a combination of essential features in the Priority Documents for the Standard Patent being: (i) provisional application PM 3104; (ii) complete specification 81703/94; (iii) complete specification 70614/96; (b) was first proposed as a combination of essential features in the combination claimed in the Standard Patent in the form as granted only after amendments proposed to the Patent Office (IP Australia) by letter from the then applicant's patent attorney dated 9 March 1999 which amendments created the claimed new combination by selecting some optional (preferred) features from the specification description and converting them into essential features by claims to a new combination incorporating those features; (c) by reason of ss 43 and 114 of the Act and Regs 3.12 and 3.14, the priority date of claims in the form as so amended takes the date of the amendments, namely 9 March 1999." 192 I am presently concerned only with these criticisms to the extent that they concern fair basing of claims 1 to 3 upon the provisional application. The respondent conceded that priority based upon the filing dates of the complete applications will not be sufficient for relevant purposes. It seems that the respondent's own activities after the filing of the provisional application would invalidate any claim having such priority. 193 In the course of oral argument counsel submitted that: "… the disclosure, pursuant to the requirement in the Patents Act, to describe the invention in the provisional (application) is of a very broadly described tool that has nothing to do with pairs of plates, nothing to do with lower shank sections, nothing to do with forward ends of lower shank sections or the like." (Appeal TS 179 ll 26 - 29) 194 At Appeal TS 180 ll 16-30 counsel for the appellant said: "Now, the short point about this is that there is plainly not described, we would say, in the provisional, an invention which, in any sense, matches the invention which is claimed now in the petty patent specification or the standard patent specification. One is told in this provisional specification nothing about the inclusion as part of the invention in the form of the tool of having, for example, a pair of plates forming a lower shank section with a forward projecting portion, rearward projecting portion and the other quite specific mechanical embodiments which came in due course to be adopted by way of characterization of the invention. But to stick with the most obvious deficiency for the moment, leaving aside the question, even, of preferences, the blade carrier units and the like, there is simply not disclosed in substance or at all, in the description of the invention which is required by the Act, of the lower shank section being formed by a pair of plates which pair of plates carry the leading blade attachment means and the rearward blade attachment means." 195 The submission appears to be that there is no precise description of the ultimately claimed invention in any drawing or description in the provisional application. In other words, the appellant asserted that the provisional application does not identify the combination of integers in such a way as to demonstrate the inventive step involved in their choice and that if any such inventive step is demonstrated in the patent claims, then they go beyond the provisional application and are therefore not fairly based upon it. 196 The provisional application and the patents purport to describe improvements in row cultivators. I have previously set out her Honour's conclusions as to the meaning of the terms "row cultivator" and "row cultivation". The appellant challenged those conclusions, asserting that a "cultivator" is an agricultural implement for breaking up or loosening soil and for uprooting weeds, and that "row" implies that the crops in question are grown in rows. The difference between the two approaches focuses upon the difficulties experienced in weeding a furrow after a crop has been planted. Machines which may be appropriate "weeders" in the absence of a planted crop may be quite inappropriate where a crop has been planted. The respondent's case, accepted by Kiefel J, was that inter-row cultivation necessarily includes cultivation after planting of a crop. 197 The provisional application identifies three main problems with then-existing row cultivators, namely: • Existing guidance systems did not prevent their drifting laterally rather than proceeding in straight lines; • Where the tools used on a cultivator included cutting blades employed behind other tools, fixed to a vertical shank, difficulties were experienced in adjusting the shank assembly and also with weeds bending around the leading tool and out of the area where the cutting blades could effectively cut them; and • Existing methods for dealing with the consequences of a tool striking a rock or root were inadequate. 198 In the provisional application, the respondent claimed to have developed improvements in all three areas which, although independent of one another, could and should be used in combination. It is not presently necessary to say anything about the proposed guidance system. In so far as concerns the second problem, the invention is said to consist of a tool having a shank fitted with a soil-working blade for spreading soil either side of it, that blade being followed by a pair of cutting blades adapted to travel just below soil level and to sever weeds on either side of the leading blade. The "shear release" invention for dealing with the third problem is also described in some detail. It is necessary to say only that it involves the tool-carrying shank being "pivotally connected" to the tool bar. Figures 3 and 4 in the provisional application are reproduced in the patents with only minor changes in layout. The provisional application refers to the three developments as the first, second and third "aspects" respectively, which usage I hereafter adopt. 199 The appellant challenged the claim to fair basing upon the ground that the provisional application does not disclose the combination of integers comprising the inventive step. I am conscious of the view expressed in CCOM that the assessment of fair basing does not involve a search in the provisional application for the integers of the claim in question. Nonetheless, where the claim is for a combination, such an exercise may assist. I am presently concerned only with the second "aspect" of the invention. It is described in two places in the provisional application - at pages 4 and 5 and at pages 7 and 8. These passages explain diagrams 3 and 4 and should be read with them. The various "integers" of claims 1 to 3 as identified by counsel for the respondent in his written submissions are: Claim No 1 (a) A row cultivator having a transverse tool bar (b) and a plurality of tool carrying shanks (c) mounted on (d) and projecting downwardly from the tool bar (e) each shank having a pair of plates (f) mounted to the shank on opposite sides of the shank (g) and forming a lower shank section (h) the lower shank section having a forwardly projecting portion (i) fitted with a leading blade (j) and a pair of rearward cutting blade attachment means (k) having respective cutting blades attached thereto (l) so as to be spaced rearwardly from (m) and separate of the leading blade (n) the leading blade being followed by the pair of cutting blades (o) the cutting blades being adapted to travel just below soil level to sever weeds on either side of the leading blade (p) the cutting blades having respective leading edges diverging rearwardly and outwardly on opposite sides of the leading blade 2 (q) a row cultivator according to claim 1 wherein the pair of plates are pivotally mounted on the shank so that the inclination of the cutting blades can be adjusted 3 (r) a row cultivator according to claim 1 including means for changing the inclination of the blades

200 These are the same integers as those identified by Kiefel J, but I have adopted lower case letters for identification purposes. Below, I seek to demonstrate the relationship between the disclosures in the provisional application and the various claims.

Claim 1 - Integers (a) to (d) "A row cultivator having a transverse tool bar and a plurality of tool carrying shanks mounted on and projecting downwardly from the tool bar" 201 I do not understand there to be any dispute that the provisional application, at least in part, contemplates a row cultivator of this kind. In any event the individual integers can be found in it as follows: • Use of a row cultivator employing a transverse tool bar is mentioned at p 3 ll 16 in the discussion of the first aspect of the invention (ie the guidance system). It is made clear that all three aspects may and should be used together (p 3 ll 6 - 9). On any view, it is a row cultivator as there described which is under consideration throughout the provisional application. • That there could be a plurality of tool carrying shanks appears from p 2 l 4 and ll 13 - 15. At p 3 ll 16 - 17 there is a reference to the tool bar "carrying cultivating tools". A similar reference appears at p 6 ll 14 and 15. • As to the use of shanks projecting downwards from the tool bar, as much is implicit in the passage which appears at p 4 ll 16 - 17 and in fig 4 as explained at pp 7 and 8. The tool bar can be seen in fig 2 as explained at p 6.

Claim 1 - Integers (e) to (g) "each shank having a pair of plates mounted to the shank on opposite sides of the shank and forming a lower shank section" 202 The relevant material appears at p 7 ll 15 - 17 and figures 3 and 4 in the provisional application. The plates are to be mounted on the shank, which I take to be a single vertical member. The patents contemplate their being mounted on opposite sides of the shank. This is demonstrated in figs 3 and 4. The pair of plates (components 42 and 43) are clearly shown on either side of the shank (component 41). Although the expression "a lower shank section" is not used in the provisional application, it is clearly a fair description of the relationship between the shank and the plates.

Claim 1 - Integers (h) to (j) "the lower shank section having a forwardly projecting portion fitted with a leading blade and a pair of rearward cutting blade attachment means" 203 The "forwardly projecting portion" appears as components 45 and 46 in figs 3 and 4 in the provisional application. Each is part of one of the two plates. The leading blade in the claim is component 44 in fig 3. The "pair of rearward cutting blade attachment means" in the claim are the "rearwardly extending ear sections" being components 51 and 52 in figs 3 and 4.

Claim 1 - Integers (k) to (n) "having respective cutting blades attached thereto so as to be spaced rearwardly from and separate of the leading blade, the leading blade being followed by the pair of cutting blades" 204 The cutting blades are components 47 and 48 in the provisional application. That they are cutting blades is demonstrated by the fact that they have cutting edges (components 49 and 50). They are obviously spaced rearwardly from the leading blade and are separate from it. Although the leading blade is said to be a "sweep", it is also said that any type of conventional tool may be used (p 4 l 20). Clearly, the cutting blades will follow the leading blade (p 7 ll 20 - 21).

Claim 1 - Integer (o) "the cutting blades being adapted to travel just below soil level to sever weeds on either side of the leading blade" 205 This is contemplated at p 7 ll 22 and 23 of the provisional application.

Claim 1 - Integer (p) "the cutting blades having respective leading edges diverging rearwardly and outwardly on opposite sides of the leading blade". 206 That the cutting blades in the provisional application have leading edges diverging rearwardly and outwardly on either side of the leading blade appears from p 7 ll 21 and fig 3.

Claim 2 - Integer (q) "A row cultivator according to claim 1 wherein the pair of plates are pivotally mounted on the shank so that the inclination of the cutting blades can be adjusted." 207 "Tilting" of the blades is disclosed at p 8 l 5 of the provisional application. Pivotal mounting is a way of achieving this outcome and is merely "greater definition" as contemplated by Fox J in Cooper's Animal Health (at 389), approved in CCOM at 281. Such mounting is clearly disclosed in fig 4.

Claim 3 - Integer (r) "A row cultivator according to claim 1 including means for changing the inclination of the blades." 208 This is also clearly within the concept of "tilting".

Operation of s 114 and reg 3.14 209 Section 114 operates where a claim is based upon matter which was disclosed as the result of amending the specification. Where, as here, all of the matter upon which the claims are based was disclosed in the provisional application, it cannot be asserted that any matter upon which a claim depends was disclosed as a result of amendment to the specification in the complete application in question. Section 114 has no relevance for present purposes. 210 Claims 1 to 3 are fairly based upon the provisional specification.

Secret use 211 By virtue of par 18(1)(d) of the Act, an invention will not be patentable if it was secretly used in the patent area before the priority date of the claim by, on behalf of or with the authority of the patentee. However par 9(a) provides that to use the invention for the purpose of reasonable trial or experiment only is not secret use. Her Honour apparently accepted the evidence given by Mr Mansur (the inventor) as to the relevant use and concluded that the appellant had failed to establish that the trial "was unreasonable in duration". The appellant criticized this decision upon two bases, namely: • that her Honour proceeded upon the basis that the onus of proving secret use was upon the appellant; and • that on a proper assessment of the evidence, the alleged trial period was too long to be reasonable for the purposes of s 18. 212 Before addressing these issues, it may be helpful to refer to the discussion of secret use by Gyles J (Beaumont J concurring) in Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079. His Honour observed that the rationale behind the prohibition upon issue of a patent following secret use is that the inventor should not, by using the invention for a periodof time prior to disclosing it, derive greater advantage from it than is contemplated by the Act. The terms "secretly used" in par 18(1)(d) and "secret use" in par 9(a) are not defined, but it is likely that secret use and public use are mutually exclusive. The word "use" is found in the definition of "exploit". In relation to an invention which is a product that definition includes: "Make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; …" 213 As Gyles J pointed out in Azuko, "use" is only one aspect of the definition of "exploit" and so presumably has a narrower meaning than that term. 214 The appellant submitted that the learned trial Judge erred in finding that the appellant was obliged to prove secret use and to exclude the operation of par 9(a). Her Honour relied upon the decision of Gibbs J (as his Honour then was) in Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593 at 595 - 596 and the decision at first instance in Azuko ([2000] FCA 676) in which von Doussa J followed the decision in Montecatini. Gibbs J was concerned with an appeal from a decision of the Deputy Commissioner granting an application for letters patent. At 595 - 596 his Honour said: "Both parties before me agreed that I ought not to find in favour of the appellant on the issue of want of novelty, or that of obviousness, unless I were satisfied that the appellant's case had been clearly made out; it was said that I should adopt a similar approach to that which must be followed in considering whether to accept an application and specification, namely, that the application should only be rejected in a clear case where it is obvious that a patent cannot be granted: see Commissioner of Patents v Microcell Ltd (1958-59) 102 CLR 232 at 236, 244-245. I was not referred to any Australian authority that establishes a similar rule in opposition proceedings, but it has been held under the different provisions of the statute in force in England that in such proceedings the jurisdiction to refuse a patent, at least on the ground of obviousness, should be exercised only in clear cases … ." 215 Whether this approach should also be taken in revocation proceedings is a different question. In Azuko, Heerey J (in the Full Court) observed in his dissenting judgment: "Section 9 postulates particular circumstances, necessarily within the knowledge of the patentee, which on ordinary principles are matters for the patentee to aver and prove. But in the circumstances of the present case the onus of proof is not in my view determinative." 216 The other members of the Court did not find it necessary to address the question. The appellant submitted that her Honour's reliance upon Montecatini was inappropriate because it was "a decision on the benefit of the doubt in a patent opposition and not relevant to a patent revocation action." It conceded that it bore the overall burden on the issue of validity (whatever that may mean) but nonetheless argued that the burden of proof shifted in the course of the trial because "… the facts giving rise to any reasonable trial or experiment only are peculiarly within the knowledge of the patentee on whom the burden of proof on the issue should rest …". In written submissions, counsel referred to International Paint Co Ltd's Application [1982] RPC 247 at 275 as supporting this proposition. Curiously enough, that case also concerned opposition proceedings. If Montecatini should be disregarded because it dealt with such proceedings, then it is a little difficult to see why International Paint should be of assistance. There is another reason for doubting the helpfulness of that decision. Anthony Walton QC was there sitting as an additional Judge in the Patents Court. At 275 he observed: "The onus of establishing that an established user was experimental must rest on the applicant for a patent, because the facts are peculiarly within his own knowledge and his disclosure thereof must be uberrimae fidei. Nevertheless, this jurisdiction is a preliminary jurisdiction in which the benefit of any doubt must be given to the applicant." 217 There was an application for leave to appeal. This is reported under the same citation at 278 - 280. Concerning the burden of proof, Buckley LJ (Eveleigh & Brightman LJJ concurring) said at 280: "In opposition proceedings it is well established that the standards of proof and the burden of proof differ from the standards of proof and the burden of proof which is required in infringement and revocation proceedings. Consequently it appears to me that considerations arising under section 51 or section 52 [concerning prior use] in opposition proceedings should be dealt with in just the same way as other considerations arising in opposition proceedings, and to the extent that the Court protects the applicant against being prevented from going on to obtain a grant of his patent and then to attempt to protect it against revocation proceedings, the same approach should be applied to questions of proving any relevant facts in relation to sections 51 and 52. In revocation proceedings those two sections will come into play as qualifications upon the grounds for revocation which are set out in section 32 of the Act, and in such proceedings, which are tried with the full panoply of pleadings, discovery, oral examination and cross-examination of witnesses and so forth, those issues will be dealt with in the same way as any other issues arising in revocation proceedings; that is to say, that any matters which have to be proved will have to be proved in accordance with the ordinary civil standard of proof." 218 It is difficult to avoid the conclusion that his Lordship was seeking to eradicate any perceived heresy in the observations made at first instance. The Court of Appeal had only recently addressed the question of burden of proof in Dunlop Holdings Ltd's Application [1979] RPC 523 (in the Court of Appeal, at 537). Those proceedings also involved opposition to the grant of a patent. Buckley LJ said at 542 - 543: "There appears, however, to be no positive authority on the question of where the legal burden of proof lies. It seems to me that in principle that burden should lie on the opponents to prove all the necessary elements of a valid ground of opposition and that accordingly, in the case of an opposition under section 14(1)(d) the opponent must establish that there has been previous use which was not secret. It should be appreciated that that use may have been use by the opponents themselves, or use by the applicants themselves, or use by some third party or indeed some co-operative use by more than one user. Knowledge of the relevant facts may lie mainly, or exclusively, with either the opponents or the applicants, or be to a greater or lesser degree available to either of them. Notwithstanding that the legal burden may lie upon the opponents, the evidential burden may shift according to the state of the evidence from time to time. The ease with which it may do so may depend upon the circumstances of the case and the likelihood of the facts being within the knowledge of, or more readily available to, one side or the other. Thus, if the relevant facts are likely to be within the exclusive knowledge of the applicants - if, for instance, the alleged prior use is a use by the applicants themselves - very little evidence on the opponent's side might be sufficient to shift the evidential burden on the issue of secrecy to the applicant. Failure to produce convincing evidence of secret or non-secret use at any stage at which the evidential burden rests on the party who fails to do so, may prove fatal to that party's case; but when all the evidence has been adduced the question must be whether it has been established that the prior use was non-secret. Although in my view the legal burden of proof of non-secret prior use rests on the opponents, if the secrecy of the prior use is not put in issue either on the pleadings (if I may so call the opponent's statement and the applicant's counter-statement in opposition proceedings) or in the written evidence placed before the Court, it is not in my judgment incumbent upon the opponents to come armed with evidence directed to establish an aspect of the case which has not been put in issue; in other words, if prior use is established, but secrecy of that prior use is not raised as an issue, the opponents should be taken to have discharged the burden resting upon them without having to prove that the prior use was non-secret." 219 Bridge LJ said at 546: "As a matter of principle it seems to right that in opposition proceedings … the legal burden of proving every element necessary to make good his ground of opposition must rest upon the opponent. But situations may nevertheless arise, in my judgment, in the course of evidence relating to a section 14 opposition where the evidential burden in relation to some subordinate issue arising as relevant to the particular ground relied upon, shifts in the course of the proceeding." 220 At 547, Waller LJ said: "But in my view, once the issue of secrecy is raised, it will be for the opponent to prove the absence of secrecy. The overall burden remains on him, just as it would in a criminal case. For example, if self-defence were raised, or if there were an alibi defence, the burden would remain on the prosecution to prove the case and to disprove whichever of those defences was being put forward." 221 Clearly, the structure of the relevant English legislation differed from that of the current Australian legislation. As a result, this decision cannot definitively resolve the present issue. Nonetheless, the general approach taken by the Court of Appeal is, with respect, entirely consistent with principle. Further, it is consistent with the approach taken by the High Court in Watts v Rake (1960) 108 CLR 158 and Purkess v Crittenden (1965) 114 CLR 164. I see no reason why the same approach should not be applied for present purposes. Whilst there may have been an evidential onus upon the present respondent to raise the issue of reasonable trial or experiment, and perhaps even to address that issue in so far as it lay within its knowledge, it did so by calling Mr Mansur to give relevant evidence. In the end, however, the onus remained upon the appellant to satisfy the Court that there had been a disqualifying secret use, having regard to the combined operation of ss 9 and 18. Proof of use which may have been for the purpose of trial or experiment only would not have discharged that onus. It is worth observing that in virtually all cases, the invention in question will have been secretly used for necessary experimental and/or trial purposes. It cannot have been intended that in proceedings for revocation, the inventor should be put to proof of the reasonableness of such use simply because the applicant for revocation alleges disqualifying secret use. Such an outcome, if intended, would surely have been directly addressed. 222 Before considering the evidence, I should deal with one other matter arising from the appellant's submissions. It asserted that at the trial, counsel for the respondent conceded secret use. This is said to have occurred at TS 1595 and 1610. It is quite clear that counsel was conceding only that there had been a use which was said (by the appellant) not to be a secret use for the purposes of s 18 by virtue of the operation of par 9(a). I do not consider that this so-called concession has any relevance for present purposes, save to clarify the precise limits of the issue with which the Court is concerned. 223 Her Honour concluded that the appellant had not established that the trials were "unreasonable in duration", and that therefore the ground of revocation was not made out. She considered that: "Mr Mansur's evidence explained the need for testing (the invention) over almost one year which is to say two seasons. He needed to assess its performance over that period and in the changing conditions which occur throughout the seasons." 224 This observation was apparently open on the evidence, and if I am correct in upholding her Honour's view as to the burden of proof, then I would have thought the above conclusion to be beyond challenge. However the appellant disputed the correctness of her Honour's assessment of the evidence. In par 4 of the notice of appeal it asserted that: "The learned primary Judge should have found on the evidence, in any event, that both the Petty and Standard Patents each were invalid by reason of the admitted prior (secret) user by Mr Mansur as inventor … ." 225 This ground appears after discussion of the question of burden of proof. The words "in any event" suggest that the intention was to challenge the finding regardless of where that burden lay. The difficulty faced by the appellant in so doing lies in the absence of any evidence concerning this issue, other than that of Mr Mansur. That evidence may not have been conclusive of the issue, but it was certainly relevant. In the absence of evidence to the contrary, there was no reason to reject it. The approach taken by the appellant in argument was to rehearse the evidence (or parts of it) and to invite us to assess it by reference to undefined standards as to reasonable trial or experiment. This resulted in little more than an assertion that such use as there had been must have been beyond the bounds of par 9(a). 226 Mr Mansur used the invention on his farm from about September 1992 until December 1993. This period of a little over a year included two growing seasons. Her Honour appears to have treated Mr Mansur as a generally reliable witness. At TS 1609 (in re-examination) he was asked about the purpose of the relevant use and said: "Well the purpose was to prove the concept or prove the - yes, whether it would work or not and be a successful implement and I think the - the significance in the length of time that it takes to do something like that is that the conditions when we start at the beginning of the seasons, the things that we're trying to achieve with that first cultivation - it may be more delicate and the weeds get bigger later and it has to be stronger and the ground - we go from conditions that are very wet that we need to cultivate in to conditions that are very dry and so we need to see if they perform in all those instances. I suppose the other thing that comes to mind is we - in the country that's out there there still is timber in some of the country that's buried in the ground, and the first trial in the field you may not hit any but that doesn't prove that its strong enough, that the blades will respond properly when you do hit it so it does take a fair amount of time to - to prove the product and see if any changes are needed in it." 227 Counsel for the appellant challenged this explanation, asserting that it was inconsistent with other evidence given by Mr Mansur, in particular a statement in cross-examination that once he had developed the third prototype (which is the relevant piece of equipment for present purposes) he knew that he had something which was going to work (TS 1579). The appellant pointed out that this was at some time prior to September 1992 and that Mr Mansur then manufactured eighteen to twenty tools which he installed on two row cultivators, retaining some as spares. The equipment was then used throughout the two following seasons. Mr Mansur said that during the period of the trial: "I varied the weights, heights and angles of the blades (which were swept back and up) to best adapt them to travel just below the soil in the furrow and to maintain adequate trash clearance. For trialling purposes I set up two cultivators with detachable blades. These were used on the farm for a full year." (AB 792) 228 I see no inconsistency in these various statements. A statement that an inventor "knows" that something will work may reflect his or her belief but does not lead to the conclusion that trials are unnecessary. 229 The appellant also pointed out that the use was in connection with the cultivation of commercial crops. This was no doubt true, but it is difficult to conceive of any field trial of the invention which would not involve such use. If the true purpose of the use is for trial, and the trial is reasonable, any collateral commercial advantage to the inventor is irrelevant. As to the question of reasonableness, Mr Mansur's explanation of his objectives must be a relevant consideration. It was said that there was no evidence that his trials addressed the problems identified in the patent and that there were no experimental notebooks or other records. While all of this may be true, it does not necessarily follow that the trials were unreasonable. The appellant pointed out that in Longworth v Emerton (1950 - 1951) 83 CLR 539 at 550, the High Court said: "The use was not experimental except in the possible but vague sense that the appellant might not have been quite satisfied that the qualities of the machine had been fully tested and might have remained uncertain whether some further improvements might not be effected to make it more efficient." 230 However the Court had previously observed: "On the facts of the present case it appears to be reasonably plain that the appellant used his invention freely in the district in which he and his brother and brother-in-law lived, taking no precautions to keep its character secret or to confine its use to those who were in confidential relations with him, and that he did so without any view to definite improvement or experiment of a specific character and not for the purpose of developing the actual invention applied for." 231 It is also relevant for present purposes that in Longworth the Court was considering only the question of experiment whereas par 9(a) speaks of both trial and experiment. The structured and specific research processes often adopted in experimentation will not necessarily be relevant in trials. The latter process may simply involve "seeing how it goes", when the invention is employed in the field. In such a situation adjustment and fine tuning may not be recorded as would be the results of laboratory experiments. 232 In assessing what might be reasonable for present purposes, it is necessary to keep in mind the nature of the equipment in question, the tasks for which it was designed, and the conditions under which it is to be used. Clearly, a row cultivator or a tool for a row cultivator will have to be very robust to enable it to resist the rough nature of its likely employment. It will be expected to perform in a wide variety of conditions, both of weather and terrain. It is easy to accept that such a piece of equipment could not be subjected to reasonable trials in anything less than a year, particularly given the seasonal nature of its employment. 233 If, as I have concluded, the onus of excluding reasonable trial and experiment was upon the appellant, then there can be no basis for challenging the inference drawn by her Honour that such burden was not discharged. However, even if the burden lay upon the respondent to prove the reasonableness of the trials and that the use was only for the purpose of such trials, I see no reason to reject Mr Mansur's evidence. Clearly, her Honour did not do so. That being the only evidence directly bearing upon the matter, and there being nothing improbable about it, any such onus was discharged. The appellant must fail on this ground.

NOVELTY 234 As I understand it novelty for present purposes depends upon whether or not each claim can be said to be novel having regard to prior art information made publicly available in a single document or through doing a single act before the priority date of the claim. Curiously, in the notice of appeal there is some reference to common general knowledge in this connection. However, in its written submissions and in oral argument it relied rather upon individual items of prior art, both physical embodiments and documentary disclosures. In some cases it is not clear whether witnesses at the trial were speaking of one or the other. As Gummow J remarked in Nicaro at 557, that approach can pose difficulties. 235 The relevant items of prior art relied upon on appeal in connection with claims 1, 2 and 3 were: • the Pioneer Supersweep (claims 1, 2 and 3); • the Martin Multi-Till (claims 1 and 3); • the Skinner Patent (US Patent No 2487737) (claims 1 and 3); • the Orthman Row Crop Cultivator/Supersweep (claims 1, 2 and 3); and • the Buffalo 6200 Cultivator and Sweep (claims 1, 2 and 3). 236 In the notice of appeal, the appellant also relied upon the Lane Patent (US Patent No 1851190) as anticipating claims 1, 2 and 3. Such reliance was abandoned at the hearing.

The Pioneer Supersweep 237 This implement was said to have anticipated claims 1, 2 and 3. The appellant relied upon both the physical embodiment and also a brochure which was circulated with a trade magazine before the priority date. The implement consists of two parallel and vertical plates (the "body plates") designed to be mounted together on either side of an upper shank. The front edges of the body plates are curved concavely, apparently so as to carry a leading blade. In the physical embodiment which is in evidence, a chisel-pointed blade has been affixed to the body plates with bolts which pass through plates welded between the body plates. The blade is curved (also concavely), with a chisel-shaped end. Its curve follows the curve of the leading edges of the body plates but extends beyond them. 238 A large, chevron-shaped plate is welded to the bottoms of the body plates, so that one arm of the chevron is on either side of them. The point of the chevron is to the front, pointing in the same direction as the leading blade, and lying some short distance behind it. The chevron may be comprised of two separate pieces which have been "butt-welded" together. The weld which holds them to the body plates is rectangular in shape, following the section of the body plates as they sit on the chevron. Because the chevron is welded to the body plates, and the forward blade is bolted to them, it is not possible to vary the angle between the leading blade and the chevron. However the whole of the lower shank section is designed to be pivotally attached to the upper shank. The forward edge of the chevron is chamfered, but in the central area behind the leading blade, the chamfer has been obliterated by the weld. 239 Kiefel J concluded that this implement had no cutting blade attachment means as contemplated by integer (j) of claim 1. Mr Woodward's evidence supported this finding. The appellant suggested in its written argument that Mr Woodward had resiled from this view, but a fair reading of his affidavit, his cross-examination and his re-examination (particularly at TS 1528-9) indicates that this was not so. The thrust of his evidence was that the welds did not, themselves, constitute cutting blade attachment means, distinguishing between the means to which the blades are attached and the means by which they are attached, the former being contemplated by the claim and the latter describing the welds on the Pioneer implement. Even apart from Mr Woodward's evidence I am inclined to the same view. The claim requires "a pair of rearward cutting blade attachment means" as a feature of the lower shank section. There is nothing in the Pioneer Supersweep which could be so described. The weld may take the place of such means, but cannot, itself be so described. There is good reason for the blades being detachable. Mr Woodward touched upon these matters in his evidence. However it is not necessary to consider them for present purposes. I will return to them when considering obviousness. 240 A further problem may arise with respect to integers (l) and (m) which I set out below in context: "… the lower shank section having a forwardly projecting portion fitted with a leading blade and a pair of rearward cutting blade attachment means having respective cutting blades attached thereto so as to be spaced rearwardly from (l) and separate of the leading blade (m) … ." 241 Integers (l) and (m) may describe the cutting blade attachment means or the blades attached thereto. Her Honour preferred the latter view. The words "the blades attached thereto" are closer to the expression "so as to be spaced …", suggesting that interpretation. However, the other view is open and has the advantage of giving meaning to the expression "the leading blade being followed by the pair of cutting blades", which is integer (n). That requirement is arguably otiose if the phrase "so as to be spaced rearwardly from …the leading blade" also refers to those blades. It is difficult to see how they could be spaced rearwardly from the leading blade and not also follow it. It is of some interest that the analogous parts of claim 4 clearly refer to the relative locations of the leading blade attachment means and the cutting blade attachment means. Having regard to the view which I have formed as to integer (j), it is not presently necessary to decide this question. As I understand it, my view as to integer (j) also disposes of the challenge to the novelty of claims 2 and 3 based on the Pioneer implement.

The Martin Multi-Till 242 The appellant submitted that this implement anticipated claims 1 and 3. It was distributed between 1972 and 1978. The appellant relied upon such disclosure although no physical embodiment was available at the trial. The appellant also relied upon a photograph which was circulated between 1973 and 1978 (AB 1747) and an article published in the "Queensland Country Life" newspaper of 11 October 1973 entitled "Adaptable Seed Boot Revolutionizes Tillage" (AB 1752-3). The designer of this implement, William John Ernst Martin (who gave evidence) had sought to design an implement which would "satisfy the need to plant crops through high quantities of trash, ie through the plant material remaining on the surface after harvesting an earlier crop …". (See his affidavit filed on 18 May 1998, par 15.) There are also photographs of agricultural equipment fitted with the Multi-Till, which is said to comprise "a point (leading blade), a seed and fertilizer delivery system (planter boot) and a set of hoe blades placed rearwardly of the leading blade." (See Mr Martin's affidavit at par 18.) Mr Martin asserted that "the tool assembly combined the functions of the point to open the earth, the boot to deliver the seed close behind the point and the hoe blades to control weeds" (par 18). 243 At par 19, Mr Martin claimed: "The tool assemblies of the Multi-Till Machine allowed for a variety of functions to be performed dependent on the particular tooling fitted to the attachment point … ." 244 He asserted that by replacing the point or leading blade with a sweep, it was possible to use it for "conventional row cultivation when planting function was not required". At par 20 he claimed: "The Multi-Till Machine tool assembly was the combination of the earth opening and seeding functions of the Conner-Shea Chisel or Scari-seeder and the cultivating functions of the John Shearer field or chisel tiller which included a chisel point and rearward hoe blades." 245 Kiefel J observed that "This tool is not for use in inter-row cultivation. It is used for lightly ripping the soil and … planting in standing stubble. It is in that sense only a cultivating machine. Integer (a) is missing. Additionally, it does not have a pair of rearward cutting blade attachment means. There is no pair of plates pivotally mounted on the shank and no means for changing the indication of the blades." 246 In forming these views her Honour acted substantially upon the evidence of Mr Woodward. The appellant offered no cogent attack upon her Honour's findings. The preference for the evidence of Mr Woodward was clearly based upon impressions of him as a witness. Her Honour's view of the Martin Multi-Till reflected her conclusions as to the meanings of the terms "row cultivation" and "row cultivator" set out above. In reading those conclusions, Kiefel J rejected evidence to the contrary led by the appellant upon which it based its submissions. 247 The appellant's criticisms of her Honour's approach to the evidence, particularly as it concerns Martin Multi-Till, must be seen in this context. Counsel said at Appeal TS 5 - 6: "The court will see that the invention is said to relate to improvements in or in relation to row cultivators. One doesn't have to look past a dictionary to find out what a cultivator is, if one didn't in any event know. A cultivator is an agricultural implement for breaking up or loosening the soil and for uprooting weeds. It's defined in the Oxford English Dictionary as being, in that latter respect, "for uprooting weeds between the drills of crops", "drills" in that sense signifying a small furrow for sowing seeds on the top of a ridge. One could imagine that the ground is mounded for the purpose of sowing the plants or the seeds. Its important at the outset, however - needless to say perhaps - to understand the breadth of connotation of a cultivator, involving as it does any agricultural implement for breaking up the soil and uprooting weeds because it seems that her Honour may have been led to accept that (what) was really in issue in this case was a special kind of row cultivator adapted in particular to use in relation to cotton crops, or adopted in particular to use in relation to particular shapes of furrows, or adapted in particular to an operation which involved a particular kind of adjustability. The field of invention is simply agricultural implements for breaking up or loosening the ground and uprooting weeds between the plants. The word "row" probably doesn't add anything, we would say, but what is required in the field is an implement suitable for cultivation activities associated with crops grown in rows." 248 Similar passages, directed specifically at her Honour's view of the Martin Multi-Till, appear at Appeal TS 141 - 145. I understand the relevant aspects of the appellant's criticism to be that her Honour: • in construing integer (a), wrongly distinguished between a row harvester and equipment used for planting; and • wrongly assumed that in row cultivation, the furrow was always of a particular shape. 249 I see no justification for these criticisms in light of her Honour's other findings. As to the first matter, Kiefel J determined that the Martin Multi-Till was not designed for use in inter-row cultivation. Therefore it would not be fitted to a row cultivator and did not anticipate claims 1 and 3. The evidence, taken at its best for the appellant, was that it was designed primarily for seed-planting but was capable of other uses, including cultivation. That does not mean that it was so used or identified as suitable for such use. Mr Woodward considered that the Multi-Till was not suitable for row cultivation because it was equipped for planting. He also considered that its rear blades would destroy furrows if used in row cultivation. Mr Martin asserted that with a different leading blade, it could be used for cultivation. It must be kept in mind that all of this evidence involved expert opinions based on recollections of the equipment in question. Her Honour preferred Mr Woodward's evidence as to the effects of the disclosure. I see no basis for departing from that preference. 250 As to the second matter, evidence from Mr Mansur (AB 5/780-783) and Mr Woodward (AB 5/923) established that contoured furrows were a common aspect of row cultivation and that they required ongoing maintenance. Clearly, the contour of a furrow will affect the ease with which mechanical weeding can be conducted, and such weeding will have the potential to change the furrow shape. The difference between the parties on this aspect appears to be little more than a subtle difference in emphasis. In any event it is a factual matter. Her Honour appears to have accepted the respondent's evidence on that score. I see no reason for concluding that Kiefel J mistook the evidence in this regard. In any event, I see nothing in the judgment which suggests that a furrow can have only one shape. 251 As I have said, the appellant also sought to rely upon a photograph and a newspaper article concerning this equipment. That her Honour did not deal with these publications suggests that they were not matters focussed upon at the trial. It is not difficult to understand why that should have been so. The photograph which appears at AB 8/1747 could hardly be said, by itself, to demonstrate the various integers of claims 1 and 3. I did not understand it to be pressed in argument. As to the newspaper disclosure, it is of some importance because it asserted that the implement in question was for use in inter-row cultivation. There is also reference to the use of sweeps or hoe blades attached to the rear of the implement for "sub-surface weed skimming". It therefore went further than did the disclosure by marketing of the physical embodiment, according to the evidence accepted by the learned trial Judge. Mr Woodward's evidence as to the inadequacy of the Multi-Till for use in inter-row cultivation would be no answer to this disclosure if the article otherwise disclosed the relevant combination of integers. However it did not do so. For example there was no reference to "a pair of plates". 252 The respondent also submitted that the Multi-Till did not include integer (j) "a pair of rearward cutting blade attachment means". The photograph demonstrates that the body of the implement was made up of what appears to be a vertical pair of plates with a forward section to which was fitted some form of leading blade. To the rear of the pair of plates was fixed a single vertical plate pierced by pairs of holes. Blades with matching pairs of holes were bolted to the single plate. It was suggested in argument that this arrangement might satisfy the requirement for a pair of rearward cutting blade attachment means. Obviously, the first difficulty is to identify a pair of such means. The appellant suggested that either side of the single plate might constitute an attachment means, the two sides being a pair. It was also submitted that the bolts might be such a pair. I cannot accept that the expression "a pair of … means" includes the two sides of a single plate. This does violence to language. The two bolts might be described as a "pair". However it is clear that both are used in conjunction to affix the plates. Together, they comprise one attachment means, not a pair. The claim contemplates two separate attachment means. This is inherent in the reference in integer (k) to such attachment means "having respective cutting blades attached thereto". This can only mean that each cutting blade attachment means is to have a blade attached to it. The attachment of the two blades by the two bolts involves one attachment means to which two blades are fitted. The Multi-Till does not disclose a pair of rearward cutting blade attachment means. 253 I should say that the appellant's argument came close to suggesting that the single plate should be treated as the "mechanical equivalent" of a pair of attachment means. However I did not understand it to go quite so far. In particular, I did not understand the appellant to argue that any integer of any of the claims was inessential. See Nicaro (supra)at 559 - 560 and Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 44 IPR 481 at 492. The Martin Multi-Till did not anticipate claim 1 or claim 3.

The Skinner Patent (US Patent No 2487737) 254 In its notice of appeal, the appellant relied upon this patent as anticipating claims 1 and 3. In its written submissions, it relied upon it only as to claim 1. US Patent No 2487737 was granted on 8 November 1949. The invention is said to relate to "agricultural implements" with particular reference to "detachable and adjustable wings for a cultivating sweep". Its principal object is said to reside in: "… the provision of an arrangement of parts whereby the wings of a sweep may be made adjustable so as to properly deflect the soil in any desired manner in the cultivation of different types of plants." 255 Another object is said to be: "… the provision of a cultivating instrument which may be employed either as a shovel without the conventional wings of a sweep or for such operations as harvesting peanuts, potatoes or the like, wherein the use of substantially widespread wings are desirable." 256 It is said that: "… the invention seeks to comprehend the provision of an implement which can be readily adapted for various uses by simply adjusting the wings and thus provide for changes in the operations to be performed without changing to different size sweeps." 257 The invention comprises a casting capable of attachment to the shank of a cultivator or other similar implement, to which a conventional shovel or wingless sweep is attached, with adjustable mountings for wings extending outwardly and rearwardly from the sweep, having a capacity to change the angles of the wings with respect to the sweep. 258 The patent contains frequent references to "wings" although at one point, it refers to "wings or blades". It is observed that: "The wings (…) can be positioned at different angles with respect to the sweep (…) on a horizontal plane and also have their incidence of inclination varied and fixed as desired. In this manner the implement can be utilized for any desired handling of the soil in cultivation depending upon the particular plant involved or the operation required." 259 The claims include: "A sweep attached to said shank, a casting providing a frog for said sweep on said shank and formed with integral, horizontally arranged ears, clamps arranged on said ears for horizontal pivotal adjustment thereon, wing members, each having a spindle, pivotally supported in said clamp members whereby said wing members are capable of both pivotal and horizontal adjustment with respect to said shank. In combination with a cultivating implement having a shank and sweep attached to said shank, a frog for said sweep capable of detachable securement to the said shank and formed with a pair of integral horizontally disposed ears, a clamp secured to each of said ears for adjustable horizontal rotation thereon, wing members having spindles secured in said clamps for pivotal and horizontal adjustment … ." 260 The patent diagrams disclose a leading blade of triangular shape with rearward wings, all apparently attached to a vertical shank. Of the items of prior art this item appears to have received most attention at first instance. Kiefel J considered that it did not disclose that the rearward members should bear cutting blades. Again, her Honour relied upon the evidence of Mr Woodward. In written submissions the appellant attacked this finding, urging us to form our own views as to the evidence of the various experts. It is trite to observe that an appellate court is not well-designed for such a function and that it is rarely desirable to overlook the advantage enjoyed by the trial Judge who has seen the various witnesses and had an opportunity to assess their evidence. I see no reason to interfere with her Honour's acceptance of Mr Woodward as a reliable witness, nor in the conclusion which her Honour drew from that evidence with respect to this matter. In any event, I agree with her Honour's conclusions for reasons which follow. 261 As I have previously demonstrated, cultivation encompasses the eradication of weeds. In the case of row cultivation this involves the eradication of weeds in furrows between rows. Weed eradication appears to have been Mr Mansur's pre-eminent purpose. In the patents he identified the tendency of weeds to "bend around the tooling if the weed is not struck 'dead centre'". The evidence suggests that weeds can be uprooted, possibly in conjunction with loosening of the soil, or cut. Claim 1 contemplates, as an integer, a pair of cutting blades adapted to travel just below soil level to sever weeds on either side of the leading blade. The cutting blades are to be located to the rear of the leading blade. The expression "cutting blade", used in conjunction with the word "sever" suggests that at least part of the function of the invention is to cut weeds. The appellant, however, focused upon the word "sever" and argued that it describes any removal of weeds from the soil, whether by cutting or by, in effect, pulling them. The appellant then submitted that because the blades in the Skinner Patent may arguably be designed to eradicate weeds, they must also be cutting blades. This rather convoluted argument, in my view, overlooks the true question, namely whether the cutting blades referred to in claim 1 were foreshadowed in the Skinner patent. 262 The Skinner patent makes no express reference to the eradication of weeds. Nonetheless, it was accepted by the respondent, as I understand it, that the reference to cultivation is itself sufficient to identify the invention as one which was designed for use in weed eradication. However it does not follow that the wings are necessarily to be involved in that process. The specific functions referred to as being performed by the "wings" are: • deflecting the soil in any desired manner; • unspecified use in operations such as harvesting peanuts, potatoes or the like; and • handling the soil. 263 A careful reading of the first two paragraphs in column 1 of the Skinner patent suggests that the inventor had in mind an existing sweep which had "conventional wings" which were not adjustable. The invention provides wings capable of adjustment. In other words, Skinner contemplated a device which would replace wings fixed to the leading blade or sweep. They are nowhere described as having a cutting function. Of course the word "blade" may carry such a connotation but not necessarily. In common usage it also carries the following meaning as prescribed by the Shorter Oxford Dictionary: "The broad, flattened part of any instrument or utensil, as an oar, spade, bat, paddle wheel, turbine, propeller etc." 264 In the present context, the word appears to have been used as a synonym for "wing", suggesting a meaning akin to those described in the dictionary. Whilst it seems that the invention in the Skinner patent was designed for use in cultivation, including the removal of weeds, whether by the leading blade or the wings, I find nothing in the patent to suggest that the wings were to operate as cutting blades. The Skinner patent does not prescribe that the wings have cutting blades. 265 Since the hearing of the appeal counsel for the respondent has pointed out to us that the reference in Skinner to "harvesting" was explained by Mr Mansur and Mr Woodward in their affidavits. Mr Mansur, at par 123 of his affidavit (AB 5/815 - 816) said: "The wings of the Skinner product are not designed to cultivate. They are set above the front blades cutting plane and are because of that, deflector shields as described … . The reference to harvesting underground crops further indicates the deflecting purpose as they would bring the crop harvested by the front sweep to the surface … ." 266 Similarly Mr Woodward, in his affidavit at par 124 (AB 5/1028), said: "The depth below the soil surface of the rear wings cannot be adjusted vis a vis that of the leading blade. They are positioned in that way above the cutting edge of the leading blade to deflect root crops, eg potatoes, up to the surface." 267 As I understand it, this evidence means that in harvesting, the leading blade would pass through the soil at a lower level than the wing members, severing connections between plants and vegetable products. The wings would raise the vegetables so severed. In any event it appears that her Honour's view as to the Skinner Patent was correct, namely that it did not identify the use of rearward cutting blades. That patent did not anticipate claim 1 or claim 3.

The Orthman Row Crop Cultivator/Supersweep 268 According to the notice of appeal, the appellant relied upon this implement as anticipating claims 1, 2, 3, 4, 9, 10, 11 and 13. In its written submissions, it asserted that it anticipated all claims in both patents. In oral argument, counsel seemed to abandon reliance upon it in connection with claims 5, 6,7, 8 and 9 (Appeal TS 167 ll 17 - 20). In any event, I will deal with it only in connection with claims 1 to 3. 269 The physical embodiment which was in evidence was produced after the priority date, but I do not understand any point to be taken concerning the allegation of earlier disclosure. As I understand it, the Supersweep is a tool for use on the Orthman Row Crop Cultivator. Although the appellant also formally relied upon catalogues as relevant anticipation, in arguing the appeal it focussed upon the physical embodiment. 270 This implement comprises two parallel and vertical plates, fixed together and apparently designed for fixing to a shank. The plates extend forward and then converge to a point at which they "merge" into a single plate. The latter is, in reality, a third plate, welded to the converging forward edges of the other two. It lies in the same plane as that in which the first two lie prior to their converging and projects forward of them. The third plate's forward edge tapers forward and downward. To this plate is affixed a "blade" which, in elevation, is triangular in shape and in plan, very narrow. It fits over the single forward plate. A more or less flat plate is fixed horizontally beneath the other features to which I have referred. It has two segments extending rearwardly, one on each side. Its forward edge lies at some point behind the leading blade. A flat wing or blade with a chamfered edge is bolted to each of the segments. The forward edges of the blades meet just behind the point of the leading blade and well in front of its rear end. 271 Her Honour found that this implement did not anticipate claims 1 to 3 because of the absence of integers (l), (m) and (o). The relevant integers in context are: "a pair of rearward cutting blade attachment means having respective cutting blades attached thereto so as to be spaced rearwardly from (l) and separate of the leading blade (m) the leading blade being followed by the pair of cutting blades (n) the cutting blades being adapted to travel just below soil level to sever weeds on either side of the leading blade (o)." 272 The appellant submitted that the leading blade of the Orthman implement consists only of the foremost tip of the removable forward fitting, implying that only the point performs any function. This seems most unlikely. Assuming that the point initially penetrates the surface, the rest of the leading edge of the implement would open the earth as it was dragged along, the point remaining below the surface. The whole of that fitting is accurately described as a "leading blade". Although the cutting blade attachment means may be to the rear of, and separate from it, the blades themselves do not follow it. Substantial portions of their forward edges travel ahead of its rear end. As the respondent submitted, the expressions "rearwardly from" and "separate of" are adverbial modifications of the word "spaced". This implies separation in location, not merely that they are separate components, capable of being physically separated. Clearly, the blades are not, in this sense, spaced rearwardly from, nor separate of the leading blade. There is no anticipation of integer (l) or integer (m). 273 As to integer (o), Mr Woodward apparently considered that because the inclination of the cutting blades cannot be varied, other than to a very limited extent, they cannot be adjusted so as to travel "just below soil level" in other than flat ground. As row cultivation frequently involves some contouring of the soil, it follows that the implement is not suitable for use in row cultivation. Her Honour appears to have accepted this view, holding that "… it is not clear that the cutting blades are adapted to travel below the soil so as to sever weeds." This conclusion was open to her. In those circumstances the Orthman did not anticipate claims 1 to 3. 274 A criticism which was made of the next piece of prior art, the Buffalo 6200 Cultivator and Sweep, might also be made of the Orthman, namely that the forwardly projecting portion to which the leading blade is fitted is not part of the "pair of plates" which comprises the lower shank section. The leading blade is rather mounted on a single plate which has been welded to the point at which the plates converge. However this point appears not to have been taken, either at the trial or before us in dealing with claims 1 to 3.

Buffalo 6200 Cultivator and Sweep 275 This was relied upon as anticipating all claims. As I understand it, no physical embodiment of this implement was in evidence, although it had allegedly been supplied in Australia. The appellant relied upon two documentary disclosures. One is at AB 8/1767. One side of the front page is a document headed "Buffalo 6100 Minimum Till/No Till or Conventional Row Crop Cultivator". On the other side is a document headed "Buffalo 6200 High Residue Cultivator". The second disclosure is at AB 8/1777 et seq. It is headed "Instruction Sheet For Point & Share Sweep For 6100 to 6200 Series Cultivators". The first document was relied upon with respect to all claims in both patents. The second document was published only in the United States of America and so was relevant only to the standard patent. The Buffalo and the "Goertzen Quicksweep", another item of prior art relied upon at first instance, are relevantly identical. 276 Kiefel J dismissed the Buffalo as an anticipation of the patent claims primarily because, in her Honour's view, it did not comprise a pair of plates forming a lower shank section carrying the prescribed features. Because of the need to distinguish between the prior art in the United States and in Australia, I will consider the two patents separately.

The petty patent 277 I cannot discern from the material located at AB 8/1767 - 1774 whether the lower shank section of the Buffalo is comprised of a pair of plates. Neither the photographic material nor the text demonstrates this aspect. The following description depends to some extent upon impermissible use of the document which appears at AB 8/1777, which was not circulated in Australia. I assume that such information as I have derived from it was known to the expert witnesses as a result of their familiarity with the physical embodiment of the invention which was available in Australia. It is not necessary to comment upon the correctness or otherwise of such an approach. 278 The lower shank section consists of two vertical and parallel plates. A separate plate is interleaved between that pair of plates and affixed there by some means. This third plate has a forward projection, to which the leading blade is fitted, and wings diverging to the sides and to the rear, constituting the attachment means for two share blades. These blades are to be bolted to the wings. 279 Kiefel J held that claim 1 contemplates a lower shank section comprised of two plates, which plates project forward and so provide a mounting point for the leading blade. Similarly, her Honour concluded that the claim contemplates a pair of rearward cutting blade attachment means located on the same plates. Given the precision of the language of the claim, I agree. Where it is contemplated that there be an attachment or a fitting of any kind, it is expressly stated. For example, the pair of plates is said to be mounted to the shank; the forward projecting portion of the lower shank section is said to be fitted with a leading blade; the cutting blades are said to be attached to the blade attachment means. Thus, when the claim speaks of the lower shank section having a forwardly projecting portion, it is describing a part of the lower shank section rather than something attached to it as appears to be the case with the Buffalo. The use of the word portion re-inforces that view. I should say that I do not understand the appellant to have relied on any question of "mechanical equivalence". A perusal of the Buffalo disclosures relevant to the petty patent suggests that the share blades are not intended to have a weed-cutting purpose. They are designed to shape the soil. Weed-cutting is to be performed by the leading blade and by discs. It is not necessary to take that matter further. For the reasons given by Kiefel J the Buffalo did not anticipate claims 1, 2 and 3 in the petty patent.

The standard patent 280 My views concerning claims 1 to 3 in the petty patent are unaffected by the inclusion in the available prior art of the document which appears at AB 8/1777. This disclosure seems to contemplate the share blades having a weed-cutting purpose. Again, it is unnecessary to consider that matter. For the reasons given by Kiefel J, there was no anticipation of claims 1 to 3. 281 None of claims 1, 2 and 3 fails for want of novelty.

INVENTIVE STEP - OBVIOUSNESS 282 In considering obviousness, Kiefel J first directed herself as to the appropriate law, referring particularly to Minnesota Mining & Manufacturing Co Ltd v Beiersdorf (1980) 144 CLR 253 at 293-4 and Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 at 75. At [113] - [115], her Honour observed: "[113] Simple ideas may be sufficient for the requisite inventive step not to be obvious, so long as it provides a solution, overcomes some difficulty or crosses some barrier: Leonardis v Sartas (1996) 67 FCR 126, 147. It is this aspect of the question upon which the applicant places reliance. [114] I have discussed the wide-ranging prior information above. The alleged invention stands as different from previous tools and tool assemblies, as Mr Murray acknowledged. The combination is new, as is the interaction achieved. I refer in particular to the detailed evidence upon the juxtaposition of the rear and forward blades and their adjustability. The effect achieved is a tool which can be used widely in row cultivation; where the number of tools are reduced; they are attached on a single shank with consequent reduction in both set-up and adjustment time; and where greater weed eradication can be achieved. Difficulties are overcome and efficiencies achieved. [115] The respondent's case focussed largely upon the various elements of the alleged invention as old. Even considered individually this was not entirely accurate. The rear blades do not equate with knives and the friction-trip assembly is substantially modified. Further, such an approach does not address the combination. The evidence of witnesses such as Mr Weston showed that they were looking for something which was significantly new for it to be described as an invention. This misunderstands the requirement. Some of the witnesses, such as Mr Yeomans and Mr Martin, might be regarded as over-qualified given their experience as inventors. In any event no witness was able to explain how an [un]imaginative but skilled person might draw together aspects of known tools and usage; put them together in a new way and modify them to achieve efficiency and adaptability. I refer to the formation of a lower shank section by plates having additional functions; the use of a friction-trip substantially modified to carry blades; and the position of the blades with respect to each other. The combination amounts to more than the respondent's description of it - an adapted friction-trip assembly. The assertion that the combination of forward and rear blades was well known is half accurate and does not properly address what is here employed. If it is accepted, in relation to this issue, that the T-shaped section is one obvious solution to the requirement of adjustability, the other features of the combination are not." 283 The appellant criticized her Honour's approach, saying that it failed to identify common general knowledge and that her decision as to obviousness was based upon the commercial embodiment of the claimed invention rather than upon the claims in the patents. The latter criticism seems to arise from her Honour's references, in par [115], to the friction-trip assembly and the T shaped section, neither of which feature is specifically mentioned in claims 1 to 3. The appellant further submitted that Kiefel J ought to have found obviousness because: "Each of Yeomans, Keech, Gessner and Martin if placed on a friction-trip assembly would provide all the elements of the claims." (Appeal TS 86 ll 27-29); and (Referring to the Pioneer Supersweep) If there is a point of distinction in that a weld is said not to constitute attachment means for the rear blades, the placement or use of brackets to which the blade can be attached instead of a weld cannot involve invention." (Appeal TS 87 ll 11-14) 284 The submission that Kiefel J based her decision as to obviousness upon the commercial embodiment of the invention rather than upon the claims is difficult to accept in light of her Honour's clear focus upon the integers of the claims in pars [110] - [114]. It seems most unlikely that her Honour lost that focus in par [115]. In any event, the submission must be considered in light of the way in which the trial was conducted. On appeal, the appellant submitted that the alleged invention involved use of a modified friction-trip assembly. This submission was presumably also made at the trial. If so, it was common ground. In subpars 9(e) and (f) of Mr Woodward's affidavit filed on 31 July 1998 (AB 5 p 924), he said, with reference to claim 1: "(e) the lower shank section which has a forwardly projecting portion suggests that what is described is not dissimilar to the traditional friction trip; (f) however the same object differs from a standard friction-trip in that each plate of the pair of plates also has a rearwardly projecting portion. The rearwardly projecting portions form a means of attachment for an inverted 'T' shaped fitting which has a pair of blade holders (cutting blade attachment means) which are in the shadow of the leading blade; …" 285 The reference to a "rearwardly projecting portion" may not be precisely accurate in so far as it concerns the wording of the claim, but that is not relevant for present purposes. Her Honour's references in [115] to a friction-trip assembly merely reflected the parties' approach to the case and did not disclose an impermissible reference to the commercial embodiment. 286 The T shaped section referred to in [115] is mentioned in both patents, apparently as a preferred means of attachment of the cutting blades. However claims 1 to 3 do not specify such a mechanism so that other attachment means are also included in the claims. Of course there is no claim to a monopoly in any particular attachment means. Nonetheless, her Honour's reference to it suggests that the appellant must have submitted that it was an obvious solution to the "requirement of adjustability". The exact purpose of the observation is not clear, but it does not lead me to assume that her Honour so misunderstood her function in addressing obviousness as to consider the commercial embodiment of the invention rather than the claims. 287 The appellant also submitted that Kiefel J had not identified the relevant common general knowledge for the purposes of assessing inventiveness. I assume that the argument as to obviousness put to her Honour was substantially the same as that put to us, namely that four identified pieces of prior art (Yeomans, Keetch, Gessner and Martin) contained all relevant integers save for the friction-trip assembly, and that another, the Pioneer Supersweep differed from the invention only in that the cutting blades were welded to the body plates rather than attached to discrete attachments. If so, then it is not clear to me that the content of common general knowledge was in issue at the trial. Before us, the appellant asserted that it was common ground that the five items of prior art to which I have referred were included within common general knowledge. The Court asked that the matter be clarified. This was not done during the hearing, but subsequently we were told that the respondent agreed that the five items of prior art were within common general knowledge but that none of them, other than the Pioneer Supersweep, was a row cultivator or a tool for row cultivators. That qualification might in some circumstances cause problems but because of the conclusions to which I have come concerning this matter, it is not necessary to take it further. For reasons which appear below, even assuming that each of the five items of prior art was within common general knowledge for present purposes, the appellant's arguments as to obviousness must fail. I suspect that her Honour was of that view and so did not expressly address the content of common general knowledge. 288 The appellant submitted that claims 1 to 3 involve nothing more than the mounting of any one of the Yeomans, Keetch, Gessner or Martin implements upon a friction-trip assembly and that this involved no inventive step. Such an assembly is designed to protect a digging tool from damage when it strikes a submerged root or rock, which matter is addressed in the standard patent, but not in the petty patent. In the former it is suggested that the invention offers some advantage in this area, but the nature of the advantage is not clear. The friction-trip assembly is not part of any of the claims, although pivotal mounting is specifically referred to in claim 2. Pivotal mounting may provide the relevant effect, but claim 2 suggests that it is there adopted for the purpose of facilitating adjustment of the inclination of the cutting blades. In any event, as I have previously indicated, it appears to be common ground that claim 1 describes a modified friction-trip assembly. 289 In [113] - [115], Kiefel J clearly explained why she had reached the conclusion that the relevant combinations of integers were not obvious. Her Honour considered that the claimed inventive step did not lie in the addition of a friction-trip assembly to an existing collection of integers, but in the re-design of a friction-trip assembly to carry those integers with the advantages referred to in the paragraphs mentioned above. Those advantages were canvassed in more detail in Mr Woodward's evidence. I consider that her Honour's conclusion was correct for the reasons which she gave. 290 Kiefel J did not deal expressly with the appellant's other argument, that the claimed invention involved only the substitution of other attachment means for the weld which holds the blades to the base of the Pioneer Supersweep. Perhaps the point was not as clearly raised at first instance as it was on appeal. However her Honour's conclusion that the claims require that the cutting blades be adaptable to suit the furrow shape inevitably meant that such adaptability should be effected through the attachment means. It is impossible to see any other way in which such adaptability of the cutting blades (as opposed to the invention as a whole) could be achieved. The blades of the Pioneer Supersweep cannot be adjusted. This appears to be the point dealt with by Kiefel J in pars [114] and [115], where her Honour refers to the question of adjustability. I would uphold her Honour's finding that claims 1, 2 and 3 are not bad for obviousness.

MANNER OF MANUFACTURE 291 I agree with the conclusion reached by Gyles J as to this aspect and with his Honour's reasons.

ORDERS (at first instance and on appeal) 292 I agree with the orders proposed by Gyles J. I certify that the preceding one hundred and sixty-two (162) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett.

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

REASONS FOR JUDGMENT GYLES J: 293 I have had the advantage of reading the judgment of Dowsett J in draft. This relieves me from setting out the history of the matter and how the issues arise, and enables me to express my conclusions more succinctly than would otherwise have been the case. I shall deal firstly with the issue of infringement.

Claims 1 to 3 294 Claim 1 is in the following terms: "A row cultivator having a transverse tool bar and a plurality of tool carrying shanks mounted on and projecting downwardly from the tool bar, each shank having a pair of plates mounted to the shank on opposite sides of the shank and forming a lower shank section, the lower shank section having a forwardly projecting portion fitted with a leading blade and a pair of rearward cutting blade attachment means having respective cutting blades attached thereto so as to be spaced rearwardly from and separate of the leading blade, the leading blade being followed by the pair of cutting blades, the cutting blades being adapted to travel just below soil level to sever weeds on either side of the leading blade, the cutting blades having respective leading edges diverging rearwardly and outwardly on opposite sides of the leading blade." 295 Claims 2 and 3 are dependent upon claim 1 and are as follows: 2. A row cultivator according to claim 1 wherein the pair of plates are pivotally mounted on the shank so that the inclination of the cutting blades can be adjusted. 3. A row cultivator according to claim 1 including means for changing the inclination of the blades." 296 The primary judge said: "17 Save for an issue as to whether a guidance system should be added as an essential integer, the respondent accepted the essential features of claims 1 to 3, listed by Mr Carew, as follows: "Claim 1 has the essential integers set out below and numbered A1 to A16. Claim 2 has the additional essential integer numbered A17. Claim 3 has the additional integer numbered A18:- A1 "A row cultivator having a transverse tool bar" A2 "and a plurality of tool carrying shanks" A3 "mounted on" A4 "and projecting downwardly from the tool bar" A5 "each shank having a pair of plates" A6 "mounted to the shank on opposite sides of the shank" A7 "and forming a lower shank section" A8 "the lower shank section having a forwardly projecting portion" A9 "fitted with a leading blade" A10 "and a pair of rearward cutting blade attachment means" A11 "having respective cutting blades attached thereto" A12 "so as to be spaced rearwardly from" A13 "and separate of the leading blade" A14 "the leading blade being followed by the pair of cutting blades" A15 "the cutting blades being adapted to travel just below soil level to sever weeds on either side of the leading blade" A16 "the cutting blades having respective leading edges diverging rearwardly and outwardly on opposite sides of the leading blade" A17 "A row cultivator according to claim 1 wherein the pair of plates are pivotally mounted on the shank so that the inclination of the cutting blades can be adjusted" A18 "A row cultivator according to claim 1 including means for changing the inclination of the blades" 297 I shall regard a row cultivator comprising that which is described as the Terminator together with a complete Versasweep assembly (combining the forward and rear components), as the appellant's assembly to be considered and will return to discuss issues connected with that assumption later, if necessary. 298 The substance of the argument on the appeal has concentrated upon the composition of the lower shank section. The appellant's assembly employs two pairs of plates, one sitting over and attached to the other in the lower shank section. One, which on some of the evidence is called the Versasweep assembly, is a pair of plates to which the rearward cutting blade attachment means are attached. The other is described as a friction trip to which the leading blade attachment means is attached. In combined operation the series of plates are joined by means of bolts, one at a midpoint and the other in conjunction with arcuate slots towards the top of each pair of plates. They are each attached to the shank by the same bolts. In relation to this, the primary judge, after referring to a passage from Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242-243 (which she said indicated that expert evidence might be of assistance), and to some of the evidence (to which I shall return) said: "45. It seems to me that whilst it is clearly essential that the lower shank section be formed by plates, and that as a minimum there must be a pair, it is not essential that there only be one pair performing this function, two pairs overlapping can also make up the section. The section itself however is to be singular." 299 Counsel for the appellant submits that claim 1 is inconsistent with the notion that the lower shank section could be formed by more than one pair of plates and draws particular attention to the words "a pair of plates … forming a lower shank section". It is put that the construction preferred by the primary judge rewrites the claim to read "at least a pair of plates" or "one or more pair of plates". Counsel also calls in aid the reference to "the pair of plates" in claim 2. He submits that to have two pairs of plates, one of which carries leading blade attachment means and the other of which carries rearward blade attachment means, is not within these claims. It is submitted that if each pair of plates is capable of independent adjustment, and, indeed, is capable of being independently fixed to the shank and so operating, there is not a pair of plates forming the lower shank section containing the required mode of attachment means both forward and rear. It is submitted that where an essential integer is missing, there is no scope for operation of any notion of functional or mechanical equivalence. Even if there were, it is submitted that there is no such equivalence in this case. 300 Counsel for the respondent submitted that there is nothing in the words of the claim which prohibits more than one pair of plates being used and that the appellant is seeking to rewrite the claim by interpreting the words "a pair of plates" as "only one pair of plates". He submits that the appellant's assembly incorporates each of the essential features of the claim and one additional feature. The pairs of plates are attached together with the upper shank in operation and effectively operate as one. It is submitted on behalf of the respondent that the appellant has taken the T-shaped plate, which is the attachment means for the rear blades in the preferred embodiment in the Petty Patent and the complete specification of the Standard Patent, and has effectively separated it and extended the separated pieces up the exterior surfaces of the pair of plates, incidentally forming another pair of plates. It is submitted that this pair of plates can be seen as the rearward blade attachment means. Counsel referred to passages from Dixon J in Radiation Ltd v Galliers & Klaerr Pty Ltd (1938) 60 CLR 36 at 51 and Aickin J in Minnesota Mining & Manufacturing Company v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 286. He referred to the expressive statement cited in TA Blanco White, Patents for Inventions, 5th ed, par 3004: "If what the defendant has done does fall within the claim, it will infringe no matter what additional features it contains. Infringement cannot be avoided by the 'superadding of ingenuity to robbery'." He suggested that any other approach gives licence to the ingenious copier to avoid infringement by the subterfuge of adding a feature. 301 It was submitted on behalf of the respondent that conscious imitation could be the more readily inferred because the appellant called no evidence as to how and why the rear assembly was designed as it was. It was designed by a Mr Ken Wells, under contract to the appellant. Mr Wells had previously manufactured rear blades for the assembly of the inventor of the patent in suit. Those arrangements had been terminated by the inventor, which was not to the liking of Mr Wells, who then approached the appellant with respect to developing the tool identified by the appellant as the Versasweep. Mr Wells was not called to give evidence. 302 The principles as to so-called purposive construction to which reference is made by counsel for the respondent may be granted and were recently applied by Beaumont J and myself in Azuko Pty Ltd v Old Digger [2001] FCA 1079 at [31]-[36], [66]-[67], [160]-[161] and [163]-[165]. In general, they apply to this claim, which does not purport to specify all the components of the row cultivator. The claim is introduced by "having" not "having only" or "comprising only". It is obvious that many components of a complete row cultivator are not specified. Thus, the fact that something not specified is found in the alleged infringing article is not destructive of a finding of infringement. However, it seems to me that the claim does specify the components of the lower shank section and, in my opinion, it was necessary for the respondent to establish that the appellant's assembly included a lower shank section as described. That is an essential integer of the claim. 303 Claim 1 specifies that the lower shank section will include a pair of rearward cutting blade attachment means, having respective cutting blades attached thereto. Those cutting blade attachment means do not necessarily have to be part of the plates. It is also envisaged, of course, that there is a leading blade fitted over the forwardly projecting portion of the lower shank section. It follows that the lower shank section is not composed entirely of the pair of plates identified in claim 1. No particular design of the pair of rearward cutting blade attachment means is specified. Put another way, the primary judge was correct in holding that claim 1 does not preclude the use of a second pair of plates in the assembly. 304 However, I do not read the primary judge as finding that the second pair of plates was the rearward cutting blade attachment means. The finding was that the two overlapping pairs of plates together formed the singular lower shank section, and that this was in accordance with the claim. The fact that (as submitted by the respondent) the primary judge wrongly described which pair of plates overlapped the other is of no consequence on this point. 305 Consideration of the physical exhibits, the brochures and the diagrams relating to the appellant's assembly, in the light of the evidence and the submissions for the appellant, has, after some initial hesitation, convinced me that this finding was made in error. In my opinion, the two overlapping pairs of plates cannot properly be described as a pair of plates forming the lower shank assembly. 306 My initial hesitation was, to an extent, because of the advantage which a primary judge has, even in relation to infringement. I refer to, without repeating, what I said in that connection in Azuko at [152]. I was also conscious that the primary judge appeared to rely upon certain of the evidence in reaching her conclusion. This has caused me to consider carefully the remarks of the primary judge as to that evidence and the evidence itself. In so doing, I bear in mind that it is well established that the purpose and use of evidence on construction of the claims is limited in the manner outlined by the primary judge in [37] and [38] of the judgment below, to which might be added references to Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 476 and Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 per Lindgren J at 81. In essence, it is to place the Court in the same position as the skilled addressee (Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 75 ALJR 518 at [24]). The use of evidence upon the issue of infringement, at least in the case of a mechanical device, does not go very much further, as it is primarily admitted to explain the features of the alleged infringing article and how it works. 307 The findings as to the evidence were: "44. There was surprisingly little evidence on this point given the reliance placed upon it by the respondent. Mr McFarlane's evidence was unhelpful. It was confused and at points inconsistent and in any event I have doubts about the objectivity with which he is able to give evidence, given his close connection with the respondent at relevant times, as I have earlier mentioned. Mr Carew, who was called by the applicant, simply pointed out that there was nothing in the description which indicated it was essential to the working of the invention. Much was made of Mr Carew's approach to the construction of the claims. The point he makes is however consistent with Mr Mansur's explanation. It was alleged by the respondent in submissions that Mr Mansur agreed that the claims spoke of a single pair of plates but this is not a proper description of his evidence. Mr Mansur said that the formation of the lower shank section by two plates is an essential feature for without them the tools attached to the plates could not be located in the centre of the furrow." 308 Evidence tendered as to infringement was given by Mr Carew for the respondent and Mr Gessner for the appellant. Some of the evidence of witnesses called on invalidity had some relevance to infringement, including that of Messrs McFarlane, Mansur and Woodward, particularly when it related to novelty and fair basis. Mr Carew is a patent attorney, and, although he originally qualified as an engineer, he disclaimed that as a basis upon which he gave evidence and he made clear that he had no engineering experience in the field of mechanical devices for cultivation. 309 In my opinion, there was little of probative value that Mr Carew could say on the critical issue. Indeed, at [15] the primary judge said: "… Mr Carew, also called as a witness by the applicant but not to fulfil any role of a relevantly skilled witness, so far as I could determine, was of assistance only with respect to listing the essential integers." Mr Mansur was the inventor but, as I have said, was not called on infringement. That part of his evidence referred to by the primary judge is, at best, neutral, and none of his cross-examination was relied upon in argument by the respondent. Having read it, I can understand why. 310 The witness called by the appellant on infringement was Mr Gessner, who was qualified to give evidence relevant to that topic and did so. This evidence is not referred to by the primary judge. Earlier, she had said: "I did not consider Mr Gessner to be a wholly reliable witness, for the reasons I later give. This follows especially from my findings on his evidence on infringement." The infringement evidence to which reference is made related to the manner of sale of the appellant's products. Suffice, for present purposes, to say that Mr Gessner's evidence did not assist the appellant on the points at issue. 311 In Azuko I said (at [153]): "…the framing of a claim or claims by a patentee is a delicate task. The wider the claim, the greater the risk of invalidity. This is particularly so in the present case where mechanical devices are claimed in a field in which the engineering concepts are well known, where the particular problems to be solved are well known and where there have been various methods of overcoming them already proposed. The recital of prior art in the … specification itself … , the discussion of the prior art in the Giehl patent specification … and the claims of that patent, together with the other items of prior art tendered in evidence, show this to be a closely engineered field. A properly limited set of claims is required to avoid invalidity." (See also Gummow J in Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 497.) Much the same can be said here. A patentee cannot eat the cake and have it too by persuading a court to construe a claim more widely than the patentee was prepared to risk when framing the claims under the guise of purposive construction. If an essential integer of the claimed monopoly is not present, it is not to the point that the absence of it can be explained as a conscious attempt to engineer around the claim. There is no doctrine of functional or mechanical equivalence applicable in such a case. It is for this reason that the submission as to the absence of evidence from Mr Wells is of little weight. 312 In my view, even when bolted together for operation, the lower shank section is formed by two pairs of plates, not one, one being fitted with a leading blade and the other with a pair of rearward cutting blade attachment means. This arrangement is quite different from a lower shank section formed by one set of plates as claimed. If there were any doubt or ambiguity in the claim as to this, and it were legitimate to resort to the body of the specification for clarification, I find nothing there which would detract from the conclusion to which I have come.

Claims 4 and 10 to 13 313 The primary judge did not deal with infringement or validity in relation to these claims, or with the validity of claims 6 to 9. The appellant invites this Court to deal with all outstanding issues. After some equivocation, the respondent submitted that all questions of novelty at least should be remitted to the primary judge. Claim 4 for a tool for a row cultivator is central to these issues. There are significant differences between that claim and the tool portion of the row cultivator described in claims 1 to 3. It is certainly arguable that it is wider in scope than the tool portion of claim 1. It was added by amendment after the grant of the Petty Patent. The finding as to infringement in relation to claims 1 to 3 will not necessarily apply to claim 4. However, if the issue were restricted to infringement, I would have little difficulty in acceding to the invitation of the parties to deal with it as it would be in the interests of economy, but the issue is not so restricted. As I remarked to counsel during the hearing, it is most unfortunate that the omission to deal with these claims was not immediately drawn to the attention of the primary judge so that the omission could have been repaired, at least prior to the appeal coming on for hearing. In my opinion, where a judge omits to deal with a necessary issue, whether of claim or defence, it should be the duty of the parties to bring that to the attention of the judge as soon as possible. Failure to do so either wastes time and costs or puts the appellate court in a most unsatisfactory situation, or both. I do not, of course, mean to suggest that the parties should (or could) go back to the judge as to an omission to deal with pieces of evidence or particular arguments of fact or law. 314 In general, the questions of infringement and validity are best decided together because the issues, particularly relating to construction, overlap. Further, it is not normally satisfactory or appropriate that the question of validity should be decided by a Full Court without a reasoned decision from the primary judge which deals with the relevant evidence and the competing arguments of the parties. If, as is likely, claim 4 is wider than the tool portion of claim 1, the arguments as to the validity of these claims will overlap but, in some respects at least, will be different. The issues of fair basing and novelty come to mind immediately. With some reluctance, I have come to the view that it is appropriate to deal with the issue of infringement of claims 4 and 10 to 13 on appeal, even if all or some of the issues as to validity are not to be dealt with. That course is sought by the parties. Evidence has a limited role to play in the task, and such evidence as there is overlaps considerably with that which is relevant to claims 1 to 3.

Claim 4 315 The claim is as follows: "A tool for a row cultivator, the tool comprising: an elongated shank having an upper shank section and a bifurcated lower shank section pivotally coupled to the upper shank section, the lower shank section comprising leading blade attachment means projecting in a forward direction from the shank, and a plurality of cutting blade attachment means physically separated from the leading blade attachment means in a rearward direction from the leading blade attachment means; a leading blade for cultivating a furrow, said leading blade being mounted to the leading blade attachment means of said shank, and having a rear end; and a pair of cutting blades, adaptable to travel just below a soil level to sever weeds on either side of the leading blade, the pair of cutting blades having respective forward ends and leading edges diverging rearwardly and outwardly on opposite sides of a line passing through the leading blade, and being secured to the respective cutting blade attachment means such that the rear end of the leading blade is physically separated from respective front ends of the cutting blades." 316 I shall approach the question of infringement on the basis that what can be described as the complete assembled tool of the appellant, with the forward and rear components bolted together, is in issue, and return to consider that assumption later if necessary. 317 The submissions of the respondent as to infringement of this claim were brief, relying upon the evidence of Mr Woodward who (it was said) gave evidence of the presence in the infringing article of the integers which he identified as follows: "(a) a tool for a row cultivator comprising: (b) an elongated shank having:- (i) an upper shank section; (ii) and a bifurcated lower shank section; (iii) pivotally coupled to the upper shank section; (iv) the lower shank section comprising leading blade attachment means; (v) projecting in a forward direction from the shank; (vi) and a plurality of cutting blade attachment means physically separated from the leading blade attachment means in a rearward direction from the leading blade attachment means; (c) a leading blade for cultivating a furrow said leading blade: (i) being mounted to the leading blade attachment means of said shank; (ii) and having a rear end; (d) a pair of cutting blades: (i) adaptable to travel just below a soil level to sever weeds on either side of the leading blade; (ii) the pair of cutting blades having respective forward ends and leading edges diverging rearwardly and outwardly on opposite sides of a line passing through the leading blade; (iii) and being secured to the respective cutting blade attachment means such that the rear end of the leading blade is physically separated from respective front ends of the cutting blades." It is submitted that at par [66] of the reasons for judgment the primary judge accepted Mr Woodward, and that, in relation to the integer "bifurcated lower shank section", the judge made a finding in favour of the respondent. 318 The argument of counsel for the appellant on this issue was also brief. It is fair to say that a major burden of his address was to stress that if the claim were construed so widely as to lead to a finding of infringement, then it would be invalid on various bases. He relied upon the principle that the claims can only be in relation to the one invention, and submitted that claim 4 could not depart so radically from claim 1, as suggested. He submitted that there are particular difficulties of construction arising out of the integer concerning bifurcation if the claim extends beyond the pair of plates described and illustrated in the complete specification and which, it is said, are fundamental to the invention. It was submitted that the bifurcation related, or could relate, to the attachment means. 319 The evidence led by the respondent on the issue of infringement of claim 4 of the Standard Patent was actually from Mr Carew, to whom I have already referred. Such evidence as Mr Woodward gave in relation to the construction of claim 4 was related to validity. 320 The evidence for the appellant on this issue was given by Mr Gessner. The relevant portions of his affidavit were as follows: "7. In regard to the additional claims of the standard patent, new expressions have been introduced and I mention "bifurcated lower shank section", "leading blade attachment means", "a plurality of cutting blade attachment means", "physical separation", "a leading blade for cultivating a furrow", "a pair of cutting blades adaptable to travel", "on opposite sides of a line passing through the leading blade", "a broad forward cutting edge portion located behind and inside a periphery of the leading blade", "a forward portion located within a shadow of the leading blade". 8. I have had considerable difficulty determining the features of a tool to which the new expressions in claims 4 to 12 refer. The features are not adequately described or explained in the specification or by reference to the Figures, and in particular Figures 3 and 4. However, as there are no indications to the contrary, I have proceeded upon the basis that the tool to which the new expressions refer must be the same tool depicted in Figures 3 and 4. I have attempted to give a meaning to the new expressions by referring to the features depicted in the Figures. 9. In particular, I have had great difficulty understanding the feature of the claimed invention, which is described as a "bifurcated lower shank section". The word "bifurcated" is not a word which is familiar to me. I have been told by my solicitors that its dictionary definition is something that is "branched or forked" or formed by two parts. 10. Having carefully examined the standard patent I do not readily see what part of the lower shank section is "bifurcated". The relationship between the pair of plates (42 and 43) and the wing sections (54 and 55) as seen in the plan view of Figure 3, or the relationship between the described "sweep attachment portion comprising plate sections 45 and 46" and the "rearwardly extending ear sections 51 and 52" as seen in the side elevation of Figure 4, may be described as "bifurcated". However, I am unable to determine which of these possibilities is that referred to by the standard patent." He also referred back to part of his affidavit as to infringement of the Petty Patent (identical with claims 1 to 3 of the Standard Patent), but these do not advance any argument of substance applicable to claim 4. 321 The alleged finding as to bifurcation in par [66] of the judgment below, upon which the respondent relies, was made in relation to an argument concerning invalidity by reason of insufficient description and is rather cryptic. I do not think that it can be relied upon as deciding the issue of infringement which now arises. 322 There are differences between the description of the tool portion of claim 1 and the description of the tool in claim 4. Claim 4 is not expressed to have any relationship with, or to be limited by, claim 1. Claim 4 cannot be read down by reason of claim 1. The critical difference for the purposes of this case is that claim 1 refers to a shank having a pair of plates mounted to the shank on opposite sides of the shank and forming a lower shank section, whereas claim 4 refers to a bifurcated lower shank section. "Bifurcated" is an ordinary word, having a primary meaning of "divided in two branches". This is a perfectly appropriate description of the lower shank described in claim 1, of the illustrated preferred embodiment and, indeed, of the respondent's commercial embodiment. It is, however, plainly more general than the specific means of bifurcation specified in claim 1, namely, one pair of plates on opposite sides of the shank. In my opinion, it is clear that when the appellant's assembly is complete, and bolted together for operation, the overlapping pairs of plates so joined constitute a bifurcated lower shank section. I do not regard either the evidence of Mr Gessner or the submissions of counsel for the appellant as providing any answer to that conclusion. There is no basis for the assumption by Mr Gessner that the tool described in claim 4 is the same tool depicted in figures 3 and 4 of the Standard Patent. 323 I cannot ascertain any other argument of substance against infringement of claim 4. All of the other integers are present. Infringement is established.

Claims 10 and 11 324 These claims are as follows: "10. A tool according to Claim 4, wherein each cutting blade has a forward portion located within a shadow of the leading blade. 11. A tool according to Claim 4, including means for changing an inclination of the blades." 325 There was no separate consideration of these claims in the evidence, apart from the assertions of infringement by Mr Carew, although there was some reference in argument to the term "shadow" in relation to validity. In my opinion, the assertions of Mr Carew are correct, although they do no more than state the obvious. Infringement is established.

Claim 12 326 The claim is: "A tool according to Claim 4 wherein the lower shank section comprises interfitting plates, said cutting blade attachment means comprising a pair of lobes for separate attachment of the respective cutting blades to the lower shank section." 327 Whilst I have no difficulty in accepting that the two pairs of plates, when assembled, are "interfitting" within the ordinary meaning of that word, I cannot identify any cutting blade attachment means which could be described as "a pair of lobes". There is no suggestion that "lobe" is a technical term of art. It means a roundish projection or division. I see no pair of cutting blade attachment means with that shape in the appellant's assembly which is alleged to infringe. Although either side of one part of the plate to which the rear blades are attached is roundish, the plate as a whole could not bear that description. In my opinion, claim 12 is not infringed.

Claim 13 328 The claim is as follows: "A row cultivator employing a tool according to any one of claims 4 to 12." 329 As little, if any, separate argument was directed to this claim, it follows that there would be infringement, when such a cultivator is sold complete with a tool as in any of claims 4, 10 and 11.

General 330 These conclusions mean that attention must be given to the detail of the infringement alleged arising out of the methods of sale of implements by the appellant, as no one implement (or component), by itself, would infringe any of claims 4, 10, 11 or 13. The first point is that although the claims do not expressly refer to a two piece lower shank assembly, in my opinion, when bolted together, the components effectively form a one piece lower shank assembly. The principles of construction to which I have referred above are applicable to that situation. So far as claim 13 is concerned, it is clear enough that the tools would have to be attached to or assembled with the row cultivator. It is conceded that there have been sales of some row cultivators assembled with a complete tool assembly, and it follows that this would directly infringe claim 13. However, sale of the whole cultivator in that way is said not to be the normal mode of sale. The evidence of Mr Gessner, the principal witness for the appellant on this issue, was that the row cultivator (known as "the Terminator") was sold separately from the tools, that the Versasweep assembly, which was comprised of only one of the pair of plates and the plate attached to them to which the rear blades could be attached, was sold separately, as was the other pair of plates to which the forward blade could be attached. It was argued that as each component was manufactured, sold and delivered separately, and no one component had all the integers of the claims, there was no infringement. In short, the contention was that only an assembled implement could infringe. The primary judge dealt with this issue at [18] to [35] of the judgment below. Although her focus was upon the Petty Patent and claims 1 to 3 of the Standard Patent, the findings of fact are directly applicable to claim 13 and apply by necessary implication to claims 4, 10 and 11. 331 The primary judge found that the Versasweep product marketed and sold by the appellant is constituted by both the forward and rear components combined. It was found that the rear component with cutting blades attached had no utility on its own if attached to a shank. The judge went on: "29. Mr Gessner also gave evidence that when a Terminator is ordered with tooling, it leaves the factory with the tooling attached and this has been the respondent's practice since August 1996. The reference in invoices to the supply of a Terminator "complete with" Versasweep is likely to fall into this category. In some cases the Versasweep might not be fitted, in which case it would be supplied in kit form. In this event Mr Gessner says that the Versasweep is supplied in parts on separate pallets. It was then suggested for the respondent that it could have no idea what farmers might do with the parts. As a question of fact that would seem to be fanciful. 30. The common law position is that the mere prospect that purchasers will use items so as to infringe is insufficient for liability: Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 46 IPR 481. There the manner of use was in the hands of a building contractor or crane operator. It is otherwise where there is no other use to which the components, or kit, as supplied, can be used or where the supplier provides comprehensive assembly instructions; see Windsurfing International Inc & Anor v Petit & Anor [1984] 2 NSWLR 196; Rotocrop International Ltd v Genbourne Ltd [1982] FSR 241. 31. In the present case the evidence is clear: the assembly can only be put to one use, as Mr Mansur said. It has not been suggested that the parts cannot be put together by purchasers. A farmer, even without the respondent's diagrams or illustrations, would readily understand how the tools were to be fitted together." 332 After referring to s 117 of the Patents Act 1990 (Cth) ("the Act"), the primary judge said: "33. I have found that the relevant Versasweep product sold is constituted by both the forward and rear parts. The respondent submitted that the section could only refer to a product assembled, that which is supplied is that which is used. 34. Section 117 is not to be read narrowly and in a way which gives it little more operation than to reiterate the monopoly rights defined by s 13: Bristol-Myers Squibb Company v F H Faulding & Co Limited (2000) 97 FLR 524, 557-8. Whilst Black CJ and Lehane J were there dealing with infringement of an invention which is a method or process, by supply of a product, their Honours' observations as to the purpose of s 117, to give effect to the recommendations of the Industrial Property Advisory Committee with respect to contributory infringement, apply here. Its report had pointed out the difficulty faced by patentees in having to sue direct infringers when it was more reasonable to permit action to be taken against the supplier or "middleman" who facilitates the commission of the infringing act by the ultimate consumer. It went on: "The most common example of indirect, secondary or contributory infringement is where goods, materials or parts are supplied to a consumer with the intention that they be used, consumed or assembled in a way which constitutes an infringement of a patent. The intention might be evident, for example, from the provision of brochures containing instructions on how to make a product or use a process which would infringe a patent, or by advertisements soliciting the commission of an act which would infringe." 35. The section enables an inference to be drawn that infringement will occur following supply. Applying the section to the present case, if one regards the Versasweep assembly as "the product", it is capable of only one reasonable use and s 117(2)(a) permits the application of s 117(1). The respondent's submissions seek to narrow the reference to "the product" to a singular or assembled product, but there is nothing in the section which suggests that such a limitation is necessary and that part of the Committee report set out above tells to the contrary. So long as all the necessary parts were provided, so that they could be put together for that use, it could not have been intended that a supplier escape liability by leaving a part or parts unattached. In any event, on the facts of this case it would seem to me that the supply of the two component parts of the assembly would constitute an inducement to use the product, within the meaning of s 117(2)(c)." 333 There is, as submitted by counsel for the appellant, some doubt as to the basis upon which the relevant findings are based, as reference is made to both the common law and to s 117. This is an important issue in the present context, as there is no pleading relying upon s 117 in relation to claims 4, 10, 11 and 13, by contrast with the pleading in relation to claims 1 to 3. Furthermore, it is submitted for the appellant that recourse to s 117 was misconceived. The difficulty is not made any the easier because the submissions for the respondent concentrated very largely upon s 117 rather than infringement per se, albeit, as I have said, the focus of the argument was upon claims 1 to 3. Indeed, neither counsel gave more than passing reference to the ordinary position apart from s 117, sometimes loosely described as the position at common law. 334 In any event, there is no reason to doubt the correctness of the conclusion of the primary judge at pars [30] and [31] of the judgment below, based upon the authorities to which she refers or the application of those findings to infringement of claims 4, 10, 11 and 13. Indeed, the discussion by the Full Court in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 at [27]-[30] supports the decision of Waddell J in Windsurfing International Inc v Petit [1984] 2 NSWLR 196, at least in circumstances where the whole of the relevant assembly is sold at the one time, albeit in parts. As Gummow J pointed out in his interlocutory decision in Martin Engineering Co v Trison Holdings Pty Ltd (1988) 81 ALR 543 at 551, infringement by the sale of one integer of a combination (in that case, as a spare part) would require an extension of the principles applied in the cases to which the primary judge referred. No submission was made on this appeal that the ordinary position went so far. It should be clear that no case of participation by the appellant in infringement by others was pleaded or argued. 335 The substance of the finding by the primary judge, understood in the light of the evidence, was that the normal method of sale of the Versasweep assembly was as a kit containing separately both the forward and rear components. That was a finding well open to her on the evidence, and, although there was some criticism of it in the written and oral submissions of counsel for the appellant, I do not think that there is any substantial basis upon which that finding should be disturbed. The fact that the appellant, by and large, supplies dealers rather than end users is of no relevance in relation to this kind of infringement. It follows that there was direct infringement of claims 4, 10 and 11. Although there is no express finding about it, the case for the appellant was that the row cultivator and attachments was usually provided in kit or disassembled form, rather than as a complete assembly, even when ordered as a whole. Nonetheless, it would follow that, applying the principle to which I have referred, this would constitute an infringement of claim 13. 336 It follows that, on the pleadings and the argument presented, there is no occasion to consider whether sale of a single component of the assemblies described in claims 4, 10, 11 and 13 (as the appellant claims occurred from time to time) would constitute an infringement of those claims. There is also no need to consider the vexed question as to the proper field of operation of s 117 of the Act. I may be permitted to say, however, that I find it difficult to understand how it has anything to do with infringement of a product claim by commercial supply of an article. 337 It follows that the judgment below should be set aside insofar as it deals with infringement of claims 1 to 3. I shall return to the question as to what other orders should be made, having considered what should be done concerning validity.

Validity of claims 1 to 3 338 As I agree with Dowsett J that the judgment of the primary judge as to the validity of claims 1 to 3 should not be disturbed, I can express my reasons relatively briefly.

Sufficiency 339 In my opinion, the decision in Kimberly-Clark is contrary to the substance of the argument for the appellant on what has been called the Sami Svendsen point. At [19]-[21] of Kimberly-Clark it is held that "the invention" referred to in s 40(2)(a) is not the inventive step but is, rather, the embodiment which is described and around which the claims are drawn. I have construed claims 1 to 3 in a manner which is consistent with the preferred embodiment described and depicted at all times from the provisional application onwards.

Fair basis 340 This question is raised in relation to both s 40 and s 43. The first question is whether the claims of the Petty Patent and claims 1 to 3 of the Standard Patent are fairly based upon the provisional application. 341 The relevant portion of the provisional specification is: "In another aspect, the present application is directed to a tool for a row cultivator, the tool having a shank fitted with a soil working blade for spreading soil either side of the leading blade, the leading blade being followed by a pair of cutting blades adapted to travel just below soil level to sever weeds on either side of the leading blade, the cutting blades having respective leading edges diverging rearwardly and outwardly on opposite sides of the leading blade. The leading blade can be any type of conventional tool. The tool preferably includes a blade carrier unit secured to the shank, the carrier unit having a forward leading blade attachment means and a rearward cutting blade attachment means, the rearward cutting blade attachment means preferably comprising a pair of spaced vertical plates receiving a cutting blade carrier unit in the form of an inverted generally T-shaped plate. Each cutting blade is preferably tapered, having a broad forward cutting edge portion located behind and inside the periphery of the leading blade. Each cutting blade preferably has a forward portion located within the shadow of the leading blade. … Figures 2[3] and 3[4] are respective plan and side views of a preferred tool employing a leading blade and cutting blades according to the present improvements; … Referring now to Figures 3 and 4, there is illustrated a tool 40 for a row cultivator, the tool being secured to a shank 41 (similar to the shank 14 illustrated in Figure 1) by a pair of plates 42 and 43 with the tool having a leading blade. In this case, the leading blade is a conventional sweep 44 which is mounted on a sweep attachment portion comprising plate section 45 and 46 of the plates 42 and 43. The sweep 44 is followed by respective blades 47 and 48 which have cutting edges 49 and 50 extending rearwardly and outwardly behind the sweep 44. The blades 47 are adapted to travel just below soil level in order to sever roots outside the sweep 44. The plates 42 and 43 include rearwardly extending ear sections 51 and 52 receiving an upright portion 53 of a T-shaped plate which include wing sections 54 and 55 which hold the blades 47 and 48. Blades 47 and 48 include leading edge portions 56 and 57 disposed within the periphery of the sweep 44. The blades and sweep can be tilted as desired." The specification concludes: "Whilst the above has been given by way of illustrative example of the present invention, many variations and modifications thereto will be apparent to those skilled in the art without departing from the broad ambit and scope of the invention as herein set forth." 342 The complete specification for the Petty Patent describes the invention in the following way: "It is an object of the present invention to alleviate the aforementioned disadvantages by providing a row cultivator having a transverse tool bar and a plurality of tool carrying shanks mounted on and projecting downwardly from the tool bar, each shank having a pair of plates mounted to the shank on opposite sides of the shank and forming a lower shank section, the lower shank section having a forwardly projecting portion fitted with a leading blade and a pair of rearward cutting blade attachment means having respective cutting blades attached thereto so as to be spaced rearwardly from and separate of the leading blade, the leading blade being followed by the pair of cutting blades, the cutting blades being adapted to travel just below soil level to sever weeds on either side of the leading blade, the cutting blades having respective leading edges diverging rearwardly and outwardly on opposite sides of the leading blade. The tool preferably includes a lower shank section in the form of a blade carrier unit secured to the shank, the carrier unit having a forward leading blade attachment means and a rearward cutting blade attachment means, the rearward cutting blade attachment means preferably comprising a pair of spaced vertical plates receiving a cutting blade carrier unit in the form of an inverted generally T-shaped plate. Each cutting blade is preferably tapered, having a broad forward cutting edge portion located behind and inside the periphery of the leading blade." The same figures 3 and 4 are illustrated with the same explanation. The claims accord with the body of the complete specification so far as the tool is concerned. The complete specification for the Standard Patent, including figures 3 and 4 and claims 1 to 3, is consistent with the Petty Patent. 343 It is submitted by the appellant that there is a substantive change in the description of the invention between the provisional application and the complete specification for (and claims of) the Petty Patent, such that neither of the patents in suit is fairly based upon the provisional application. If that is so, it is common ground that the later priority date which would follow is fatal to validity of the patents in suit. 344 There is undoubtedly a change in description. The question is as to nature and effect of that change. In my opinion, the description in the complete specification for the Petty Patent, and reflected in the claims, is consistent with, but narrower than, the description in the provisional application, and is consistent in all respects with figures 3 and 4 and the explanation thereof in the provisional application. The same can be said of the complete specification for claims 1 to 3 of the Standard Patent. In my opinion, the conclusion of the primary judge that the provisional specification, including the drawings (and the description of the preferred embodiment) provide a reasonably clear disclosure of what is later claimed should not be disturbed (Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240; Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382, particularly per Fox J at 390-391 and Beaumont J at 398; Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 92-95); CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 275-285; Kimberly-Clark at [15]; ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc (2000) 181 ALR 635 at [95]-[111]. 345 Another point made is that the claims do not limit the rearward cutting blade attachment means to an inverted, generally T-shaped, plate which is described in the provisional application and shown on figures 3 and 4. The fact that the claims extend beyond the preferred embodiment in this respect is not remarkable. The effect is that the particular means of attachment of the rear blades is not of the essence of the invention. The example given is sufficient to show a practical means of achieving that aspect of the invention (Kimberly-Clark at [25]). 346 It is also contended that, as it was held there is no reference to a guidance system in the claim and nothing to indicate that it must have been intended as part of the claim, the claims so construed are too wide and do not contain all of the features of a row cultivator described and illustrated as being the invention in the Petty Patent. The way it was put in the particular grounds of invalidity was based upon s 40 and was as follows: "the Complete Specification is unclear in its references to the guidance system of Figures 1 and 2 as being in accordance with the invention. This aspect of the description has carried through from the Provisional Specification PM3104 and to the Complete Specification as filed (AU-A-70615/96). As described, the guidance system appears as an essential feature of the invention. However, the same is not clearly incorporated into the claims. If the applicant contends that the guidance system of Figures 1 and 2 is not an essential feature of the invention then the Complete Specification is unclear and ambiguous as to the precise "invention" which is the subject matter of the Letters Patent 678130." The most that can be said is that one feature of a cultivator which is said to have advantages is disclosed but not claimed. This is no basis for invalidity, for the reasons discussed by the Full Court in ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc, particularly at [104]-[112]. See also per Gummow J in Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd at 497, affirmed on appeal, Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 143. 347 An argument is sought to be made concerning independent adjustability. This point is somewhat unusual. It was not a particular of invalidity. The argument for the appellant is that the primary judge erred in finding that the complete specifications of the Petty and Standard Patents complied with s 40(2) or s 40(3) of the Act because the feature of independent adjustibility of the front and rear blades, on the construction found by the primary judge to be a feature of the claims of the Petty and Standard Patents: (a) is neither described nor illustrated by the drawings figures 3 and 4 relevant to the preferred embodiments in the final (as accepted and as granted) forms of the complete specifications of the Petty and Standard Patents; (b) is neither described nor illustrated by the drawings figures 3 and 4 of any of the Priority Documents; (c) has no basis at all in the words "adapted", "adaptable" or "the blades and sweep can be tilted as desired". The primary judge's findings appear at [57]-[65] of the reasons. Paragraph [58] is as follows: "In evidence an issue was raised as to the meaning to be given to "adapted to travel". It is not entirely clear whether it was intended to be further pursued and if so whether it is said that the invention description is insufficient, or whether the claim itself was not clear or lacked definition. The applicant has however addressed argument to an issue of ambiguity and I will attempt to deal with it and the further issue raised concerning independent adjustment of the front and rear blades." I have difficulty in seeing the relevance of these issues as such. I can see that there may be a question as to the correctness of the findings on this point. I can see that these questions of construction may have had relevance to other issues such as novelty or obviousness, and that they may have had an impact upon the assessment of the evidence of various witnesses, in particular Mr Woodward. However, the issues were not raised in the particulars of invalidity. They were not relied upon by the respondent as giving rise to essential integers of the claims or in any other way directly relevant to validity. 348 The foregoing discussion as a whole disposes of any argument that the claims of each patent in suit are not fairly based upon the complete specification of each.

Secret Use 349 I agree with Dowsett J that, regardless of where the onus lay, the use by the respondent was for reasonable trial or experiment.

Novelty 350 I will apply the reverse infringement test which is now the established test for anticipation. I will only deal with the prior art pressed in submissions.

Pioneer Supersweep 351 This does not have a pair of rearward cutting blade attachment means having respective cutting blades attached thereto so as to be spaced rearwardly from and separate of the leading blade, the leading blade being followed by a pair of cutting blades. The rearward blades are simply welded to the leading blade attachment means.

Martin Multi-till 352 I agree with the primary judge that this assembly does not disclose a pair of rearward cutting blade attachment means. It discloses a single plate with a pair of blades bolted to it.

Skinner Patent 353 The gist of the submission for the appellant was that the primary judge was mistaken as to the description "cutting blades" in the patent in suit. It was contended that, in context, the reference is to cutting through the soil below the surface, which would have the effect of severing (in the sense of uprooting or detaching) weeds from the soil and that "cutting" does not refer to cutting or severing the individual weeds. If this were so, it is submitted that the point of distinction drawn by the primary judge between Skinner and the patent in suit disappears. It is submitted that the circumstance that Skinner does not expressly refer to the cutting of weeds is of no significance, as the device is clearly depicted and one of the purposes of cultivation by movement of soil is the disturbance of and severing of weeds from the soil. 354 It is not clear to me that the primary judge took the restricted view of "cutting" that is suggested by counsel for the appellant. In any event, the gravamen of the reasoning of the judge is captured at [89]: "The effect of the evidence of Mr Murray and Mr Woodward was that it is possible that the wings on the Skinner apparatus might perform as cutting blades, if they were raked at a particular angle. There was extensive cross-examination of Mr Woodward as to the depth at which the lead blade operated and how the rear wings or blades were positioned. The effect of it seemed to be that either the tool depicted would be working at too shallow a depth to be effective or, if it were configured differently, it would cut a slot with the leading blade which would be deeper than the level of the rear blades. That is to say, it was not shown that the reader could imagine some way in which weeds could be severed by its efficient use. It is not really suited to the task." In other words, the rear wings or blades in the particular configuration depicted in Skinner were not suitable for the cutting of weeds and so the integer of rearward cutting blades is not present. This finding of fact was open to the primary judge, and no proper basis has been laid for it to be disturbed. This illustrates the significance of the difference between the tests for novelty or anticipation, on the one hand, and obviousness or inventive step, on the other. If Skinner were part of common general knowledge, there would be a powerful argument for invalidity.

Orthman 355 Neither the rearward cutting blade attachment means nor the cutting blades attached thereto are spaced rearwardly from and separate from` the leading blade in the sense used in the patent in suit. "Spaced" indicates a spatial gap of the kind contained in the embodiment described and depicted in the body of the specification. I should indicate that, in my opinion, the words in claim 1 "so as to be spaced rearwardly from and separate of the leading blade" refer to the cutting blades rather than the rearward cutting blade attachment means. It is the relationship between the leading and trailing blades which has practical significance in operation. I regard the words "the leading blade being followed by the pair of cutting blades" as stating the consequence of what has gone before and so included for further clarification. 356 I also agree with the primary judge that the exhibit does not disclose that the blades on the side of the tool are adapted to travel below the soil so as to sever weeds.

Buffalo/Goertzen 357 Even assuming that the information conveyed by the Buffalo instruction sheet was available at all material times, I would not disturb the finding of the primary judge that this tool does not disclose a lower shank section formed by a pair of plates mounted on the shank on opposite sides of the shank. The pair of plates depicted form only part of the lower shank assembly (or point and share sweep, as it is described), with the balance formed by a separate single boot-shaped plate. The plates do not have a forwardly projecting portion fitted with a leading blade, and the rearward blade attachment means is part of the boot-shaped plate rather than the pair of plates. In dealing with infringement of claims 1 to 3, I held, in effect, that a one-piece lower shank assembly constituted by the pair of plates was claimed. That is not disclosed in this tool. If a wider view of claims 1 to 3 were to prevail, the issue of anticipation would also need to be differently considered.

Row cultivator 358 Certain of the examples of prior art relied upon below were not complete cultivators, but tools for use with cultivators. These could not be anticipations of claims 1 to 3 for that reason if the complete assembly is not shown or sufficiently described. However, in relation, for example, to the Martin Multi-till, the primary judge found that the tool was not for use in inter-row cultivation but, rather, for lightly ripping the soil and for planting in standing stubble and so only a cultivating machine. This depended upon a clear distinction between kinds of cultivation asserted by witnesses for the respondent, and was picked up, to an extent, earlier in the judgment at, for example, [3] to [6]. 359 However, the primary (relevant) meaning of "cultivator" in the Macquarie Dictionary is: "an implement for loosening the earth and destroying weeds when drawn between rows of growing plants." In my opinion, if the prior art did include a cultivator with the appropriate tools, which could loosen the earth and destroy weeds when drawn between rows of growing plants, it would not matter what it was called or what it was advertised to do - it would be an anticipation. The point has particular force in relation to the Martin device, as in a newspaper article it was claimed to give the farmer a basic unit capable of chisel ploughing (with ripper points), scarifying (duck feet points) and inter-row cultivation. Furthermore, the machine which is illustrated is a cultivator. This issue is not critical to my decision in relation to the novelty of claims 1 to 3 of the Standard Patent. However, I mention it as similar issues might arise in relation to claim 13.

Inventive step - Obviousness 360 Sections 7(2) and (3) provide: "(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately. (3) For the purposes of subsection (2), the kinds of information are: (a) prior art information made publicly available in a single document or through doing a single act; and (b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area." Section 18 relevantly provides: "(1) Subject to subsection (2), a patentable invention is an invention that, so far as claimed in any claim: … (b) when compared with the prior art base as it existed before the priority day of that claim: … (ii) involves an inventive step …" By Schedule 1, which is a dictionary for the Act, "prior art base" is defined to mean: "(a) In relation to deciding whether an invention does or does not involve an inventive step: (i) information in a document, being a document publicly available anywhere in the patent area; and (ii) information made publicly available through doing an act anywhere in the patent area; and (iii) where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area; …" 361 The primary judge, after referring to authority, said the following: "114.I have discussed the wide-ranging prior art information above. The alleged invention stands as different from previous tools and tool assemblies, as Mr Murray acknowledged. The combination is new, as is the interaction achieved. I refer in particular to the detailed evidence upon the juxtaposition of the rear and forward blades and their adjustability. The effect achieved is a tool which can be used widely in row cultivation; where the number of tools are reduced; they are attached on a single shank with consequent reduction in both set-up and adjustment time; and where greater weed eradication can be achieved. Difficulties are overcome and efficiencies achieved. 115. The respondent's case focussed largely upon the various elements of the alleged invention as old. Even considered individually this was not entirely accurate. The rear blades do not equate with knives and the friction trip assembly is substantially modified. Further, such an approach does not address the combination. The evidence of witnesses such as Mr Weston showed that they were looking for something which was significantly new for it to be described as an invention. This misunderstands the requirement. Some of the witnesses, such as Mr Yeomans and Mr Martin, might be regarded as over-qualified given their experience as inventors. In any event no witness was able to explain how an imaginative but skilled person might draw together aspects of known tools and usage; put them together in a new way and modify them to achieve efficiency and adaptability. I refer to the formation of a lower shank section by plates having additional functions; the use of a friction trip substantially modified to carry blades; and the positioning of the blades with respect to each other. The combination amounts to more than the respondent's description of it - an adapted friction trip assembly. The assertion that the combination of forward and rear blades was well-known is half accurate and does not properly address what is here employed. If it is accepted, in relation to this issue, that the T-shaped section is one obvious solution to the requirement of adjustability, the other features of the combination are not." 362 Whilst counsel for the appellant had some detailed complaints in relation to the manner in which this issue was dealt with, the submissions of substance were: (1) That the primary judge did not approach the issue by taking (and defining) common general knowledge, comparing the claimed invention with that common general knowledge, and then deciding whether that invention would have been obvious to a person skilled in the art in the light of the common general knowledge. (2) That, rather than taking the invention claim by claim, as ought to have been done, the primary judge seems to have conflated the respondent's commercial embodiment with the claims in the patent, and the various claims with each other. 363 In addition to defending the approach of the primary judge, counsel for the respondent submitted that the finding on this issue was amply supported by the evidence of Mr Woodward, who was qualified to express an opinion on the issue and who had been assessed favourably by the primary judge. 364 The submissions for the appellant as to how the issue should be approached are sound. The parties are now agreed that a limited number of identified pieces of prior art are to be taken as part of common general knowledge. Of course, if the invention as claimed is anticipated by a piece of prior art which formed part of common general knowledge, then there will be no inventive step within the meaning of s 7(2). In those circumstances, the claim will also be bad for lack of novelty. Assuming, however, that that is not the case, then the invention claimed will be different from anything revealed by common general knowledge and will be taken to involve an inventive step unless the invention would have been obvious to a person skilled in the relevant art in the light of common general knowledge. This means that an onus to establish the absence of an invention rested upon the appellant (Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 at [31]). The proviso is an objective test. It requires ascertainment, identification and an understanding of common general knowledge and a comparison with the invention. This, in my opinion, requires a claim by claim examination of the issue, as it is the claim which is valid or invalid and a patentable invention is an invention so far as claimed in any claim(s 18(1)). 365 Although there are always dangers in paraphrases, the following passage from Allsop Inc v Bintang Pty Ltd (1989) 15 IPR 686 at 702 is helpful in capturing the relevant concept: "… The question must be asked whether that solution did cross the boundary between a routine application of existing knowledge and practice to a new problem and a simple, yet truly inventive idea." Although there are differences in the current Act compared with that which went before in ascertaining what existing knowledge and practice is, the underlying principle has not changed. In a sense, this is a mirror of the issue of skilled addressee discussed by the High Court in Kimberly-Clark at [22]-[25], where it is said (inter alia): "The question is, will the disclosure enable the (skilled) addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty." There can be misunderstanding as to what is meant by a "truly inventive idea". As a majority of the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd said at [25]: "25. Further, "an invention which comes to a man by a happy flash of inspiration or without any prolonged experiment or thought may be as good a subject matter of a patent as one which has only been arrived at after long and difficult experiments", and a valid patent might be obtained under the Act "for something stumbled upon by accident [or] remembered from a dream" if it otherwise satisfied the requirements of the legislation." The question is whether what was arrived at was obvious, not how it was arrived at. 366 It is correct that the primary judge did not expressly define or describe what was included in the common general knowledge which would be brought to bear by the skilled addressee. She did, however, say: "I have discussed the wide ranging prior art information above." This was no doubt a reference to the prior art considered in relation to novelty. That prior art goes beyond that which the appellant contends to be part of common general knowledge and beyond that which, on a reasonable view of the evidence, would have been regarded as part of common general knowledge. Thus, if there were an error, it was favourable to the appellant, as including material in common general knowledge increases the chances of a finding of obviousness. 367 The appellant makes some detailed criticisms of the primary judgment which have some substance. The reference in the reasons of the primary judge to the combination being new adds nothing to the finding that the claims had the requisite novelty. The balance of [114] of the reasons refers to the utility of the tool, rather than the features of the invention as claimed. It is submitted by the appellant that this passage refers to the respondent's commercial embodiment of the invention. Whilst the successful solution to a recognised commercial need can often be powerful evidence in answer to a claim of obviousness, the mere fact of utility over and above that which had existed is not enough to bring that principle into play. An obvious workshop variation to what had gone before might work significant practical improvement in performance (Firebelt Pty Ltd v Brambles Australia Ltd at [49]-[50]). It is submitted that the latter part of [115] of the reasons below, in which reference is made to particular aspects of the tool, is framed so as to suggest that the judge was not considering the invention as claimed in the respective claims, but, rather, more general notions, perhaps including the commercial embodiment. For example, there is no mention of a friction trip or friction trip assembly in any of the claims. Pivotal mounting is an integer of claims 2 and 4 and those dependent upon 4 but not otherwise. The specification for the Standard Patent refers to a shear release assembly in what is described as "a further preferred form". The specification for the Petty Patent refers to pivotal mounting in its description of figures 3 and 4. The reference to the T-shaped section being a solution to the requirement of adjustibility is somewhat puzzling. As I have pointed out, although the T-section is a feature of the preferred embodiment described in the specifications, it does not feature in any of the claims in either the Petty Patent or the Standard Patent. 368 On the other hand, the primary judge does address the right issues. The comment as to Mr Weston can properly be sourced in the earlier reference by the judge to Leonardis v Sartas No 1 Pty Ltd at 147 and the comment about Mr Yeomans and Mr Martin is in accordance with the similar view that I expressed in Abbott Laboratories v Corbridge Group Pty Ltd (No 2) [2001] FCA 810 at [45], [56] and [59]. (See also Leonardis v Sartas No 1 Pty Ltd at 146.) The sentence in the reasons: "In any event, no witness was able to explain how an [un]imaginative but skilled person might draw together aspects of known tools and usage; and put them together in a new way and modify them to achieve efficiency and adaptability" is a reasonable statement of what is required to establish obviousness. It must also be borne in mind that some looseness of expression, particularly at the end of a long judgment, should not be taken as indicative of error. Furthermore, even though the reference to the friction trip assembly is not applicable to the claims, the formation of a lower shank section by plates and the positioning of the blades with respect of each other are features of claims 1 to 3. It should also be noted that the respondent's commercial embodiment is within each of claims 1 to 3 and is a fair representation of the preferred embodiment disclosed in the complete specification of each of the Petty Patent and the Standard Patent. 369 There is ample evidence, particularly from Mr Woodward, which, if accepted, would justify the finding that the tool portion of the cultivator as claimed in claims 1 to 3 was not obvious. However, the primary judge did not refer to the evidence of Mr Woodward in dealing with this issue. It is submitted by the respondent that this was not necessary in view of what the judge had said earlier about Mr Woodward, which was as follows: "15. … Mr Woodward, a person fulfilling the role of a skilled person to whom the patent might be addressed and called by the applicant, was an impressive witness. A lengthy cross-examination in my view confirmed him as objective and well-versed in his field. The respondent sought to impugn his credit-worthiness because he had not disclosed that a business largely operated by his son was supplied from time to time with some products or parts by the applicant. No financial benefit was said to accrue to Mr Woodward. In the area in which he and his family reside and work the applicant is amongst other suppliers. It was not suggested that he had any other connection with the applicant such that his evidence was likely to be affected. I do not consider the independent nature of his evidence to be in question. …" I am inclined to think that his evidence was taken into account by the judge on the issue of obviousness. It was very much directed to that issue. The judge gave express weight to his evidence in relation to the issue of novelty, which is tied up with (although different from) the issue of obviousness. 370 In any event, the critical finding was that which I have set out above, in which her Honour found that no witness had been able to explain why the solution to the problem was obvious. That conclusion involved assessment of the evidence of a number of witnesses called for both sides, a task par excellence for the judge at trial, and should not be disturbed. A finding on obviousness should not be set aside simply because a judge on appeal would take a different view. It is a kind of jury question (Biogen Inc v Medeva plc [1997] RPC 1 at 45; Aktiebologet Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375 at [61]). The onus of establishing the proviso to s 7(2) was not discharged. That means that the statutory presumption that an inventive step was involved is undisturbed.

manner of manufacture 371 A particularised ground of invalidity was that the alleged invention, so far as claimed in any claim, is not a patentable invention as it is not a manner of manufacture within the meaning of s 6 of the Statute of Monopolies. It was said that there was not a combination in the patent law sense, but a mere collocation which was no more than a common tool assembly wherein two well-known tools were placed in a known relationship on a shank in order to perform their known function as to achieve the same result, and, as such, had no inventive merit or sufficient quality of invention to be a manner of new manufacture. The primary judge did not deal with this ground of invalidity. That was more than likely because that ground could not survive the finding that there was no lack of novelty or inventive step. The same is true on appeal. In any event, the following words from the decision of the majority in Advanced Building v Ramset at [40] are directly applicable in the present case: "The present case is not in that category of cases, considered in Phillips (v Mirabella International Pty Ltd (1995) 183 CLR 655), where the lack of an inventive step appears on the face of the specification. It concerns the validity of combination claims in the light of prior publications."

Claims 4 to 13 372 I do not propose to enter upon the issue of validity of claims 4 to 13 of the Standard Patent. I have referred earlier in these reasons to the undesirability of issues such as these being decided de novo by a Full Court. The respondent opposes the issue of novelty being considered. It is not satisfactory to deal with validity in a piecemeal fashion, as there is too much overlap (Kimberly-Clark at [34]). The issues as to the validity of claims 4 to 13 are not the same as those in relation to claims 1 to 3 and there is a different history of prosecution. To the extent that there is any overlap, the primary judge will be able to take account of any relevant conclusions of this Court. Claims 5 to 9 inclusive were barely touched upon in argument. A detailed consideration of the evidence is required to resolve the issues. The significance of evidence appears from Kimberly-Clark at [26]-[29]. It is not appropriate that evidence of this character be assessed by a Full Court without the benefit of analysis by the primary judge. As the Full Court said in CCOM Pty Ltd v Jiejing Pty Ltd at 284, a court, particularly an appellate court, should be careful to avoid assuming a technical expertise which it does not have.

conclusion 373 I would set aside the declaration made as to infringement of the Petty Patent. The declaration made as to infringement of the Standard Patent should be limited to claims 4, 10, 11 and 13. I can see no reason why declarations and orders should not identify the claims which are infringed, and every reason for doing so in the interests of clarity. No relief should stand or be granted until the validity of claims 4 to 13 (inclusive) is decided. If valid, appropriate relief for infringement can then be granted. If invalid, in whole or part, then appropriate orders can be made on the application and the cross-claim. There is no need now to make any formal orders or declarations as to the validity of the Petty Patent and claims 1 to 3 of the Standard Patent. All questions as to the general costs of the proceeding should await a final resolution of the issues. The appellant has succeeded in overturning the decision below as to infringement of the Petty Patent and claims 1 to 3 of the Standard Patent, but has failed in its attack upon the validity of those claims. The respondent has succeeded in establishing infringement of claims 4, 10, 11 and 13 of the Standard Patent. The validity of those claims remains to be decided. In those circumstances, I would order the appellant to pay fifty per cent (50%) of the costs of the respondent of the appeal. Consideration of what should happen about any existing interlocutory orders is best left to the primary judge. 374 The appeal should be allowed, the declaration and orders made on 17 April 2001 below set aside, save for declaration 2, which should be amended by adding the words "each of claims 4, 10, 11 and 13" after the word "infringing", and the matter be remitted to the primary judge to be dealt with in accordance with these reasons. The matter should stand over so that minutes of order can be brought in and in order that the parties can draw the attention of the Court to any necessary issue which has not been dealt with, or dealt with in a manner contrary to agreement at the hearing. I certify that the preceding eighty-two (82) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles.

Associate: Dated: 13 June 2002 Counsel for the Appellant: Mr R McCaw QC Mr B J Hess

Solicitor for the Respondent: Lees Marshall Warnick

Dates of Hearing: 20, 21 & 22 August 2001