Did Mr McKinnon make the Original publicly available?
127 We summarised her Honour's findings relevant to disclosure at the race meetings at [41]-[42].
128 Her Honour did not explain why the Original had not been made publicly available, either by reference to the ability of members of the public to access and inspect the canopy or by reference to the authorities relevant to the meaning of "publicly available". Moreover, she did not explain why Mr McKinnon's "retreat" from his earlier evidence eliminated the effect of his evidence not retreated from, which her Honour appears to have accepted, as evidence that the Original was made available to the public. By changing his course, Mr McKinnon might have hoped and intended that his invention could not be stolen from him and, indeed, as events transpired might have realised that hope and intention. However, his subjective hopes and intentions could not prevent the circumstances from constituting disclosure to the public if, as a matter of objective fact, they did so.
129 Mr McKinnon's evidence in relation to making the Original available to the public can be seen to fall into three classes: his affidavit evidence, his earlier cross-examination and his later cross-examination (his earlier cross-examination occurred on 10 February 2006 and his later cross-examination on 10 April 2006).
130 In para 15 of his first affidavit (made on 23 February 2005), Mr McKinnon said that he completed making the Original in 1984 after several months' work. He said he took it to various motocross and jet-ski races that were held annually. This may be thought to suggest that he attended annually, but in para 17 he said that in 1987 and "possibly" before that year he took the Original to the races. Accordingly, from the outset his evidence was that he took the Original to the race meetings in 1987 and "possibly" earlier.
131 Mr McKinnon said that the Original was used by himself and his friends and that the pits were accessible to other competitors, race organisers and officials, and members of the public, all of whom would have seen his canopy. He stated (paras 18, 19):
18. During this time [in 1987 and possibly before 1987] I made no attempt to hide the canopy or how it was made. I was asked by a number of people to make canopies for them but I declined as I had other work commitments and did not have the time to make canopies. During this time my friends also told me that I should make the canopies commercially and sell them. I thought that the canopies would be too expensive, given the cost of materials and labor [sic], and therefore thought it would not be a viable commercial enterprise.
19. In about 1987 one of my friends visited the United States. During that visit they purchased a couple of motorbike magazines. In one of those magazines was an advertisement for a canopy made by E-Z Up Inc. The canopy being advertised was very similar to mine, although I could not tell a lot of the detail from the photograph in the magazine. ...
132 In a later affidavit made on 8 September 2005, Mr McKinnon rejected a suggestion that he had used his canopy only for "personal use". He stated (paras 21, 22):
21. ... I took the canopy I had designed to motorbike and Jetski races in the period from 1984 to 1987, including to the races named in that paragraph [paragraph 15 of his first affidavit]. The motocross race at Tucki Tucki was a local event and was attended by approximately 40 people. The Jetski race at Carbrook was also a local event and was attended by approximately 40 people. Some of the other races I attended, the names of which I no longer recall, were attended by up to 100 people.
22. I did not attend every motocross or Jetski race held in the Northern Rivers region in the period from 1984 to 1987. If I was not going to a race I occasionally lent my canopy to friends who were going. I can no longer recall the names of every person who borrowed my canopy between 1984 and 1987. I do recall lending it to Mr Bill and Mrs Becky McPherson of Lismore who were attending a motocross race with their children. As they used the canopy at the race they would have erected and collapsed the canopy and would therefore have become aware of the way in which it worked.
Obviously, the affidavit evidence of public availability was very strong.
133 In a further affidavit made on 31 January 2006, Mr McKinnon introduced a minor qualification. He said that Mrs McPherson had shown him a photograph of the canopy she and her husband had borrowed from him, and it was in fact not the Original, but the Quikshade product that had been manufactured by his company from 1988 onwards. He said that he therefore may have been mistaken when he had said previously that it was the Original that he had lent to the McPhersons.
134 The above account of the state of Mr McKinnon's affidavit evidence enables us to turn now to the first session of his cross-examination. It was put to Mr McKinnon that when he erected the canopy over his area in the pits, the public would have seen it from a distance and would have noted only the roof, four posts and an apex in the roof. He resisted this suggestion. He said that when he went to the pits and pulled out the unassembled canopy and erected it, "everyone would come over and have a look because they hadn't seen anything like it before". The following cross-examination ensued:
And when they would come and have a look, they would just, I suppose, sort of note that you had a canopy. Are you saying they looked in detail at the way it was structured and put together?---Yes, they did; they were intrigued.
Having regard to the principles set out above, we think that this was evidence that the Original was made "publicly available". It should also be noted that in his cross-examination Mr McKinnon identified photographs of the Original erected on his father's property. In the photographs it has virtually no side walls, and Mr McKinnon said that at the races it would have looked much the same. Accordingly, there would have been no difficulty in persons close enough seeing the framework, even if they were not actually under the canopy.
135 Mr McKinnon agreed that it was mainly in 1987 that he took his "prototype" (ie the Original) to the race meetings. He said that it was the Quikshade product that he had lent to people (including the McPhersons), not the Original, adding that he was guarded about lending the Original because he wanted to apply for a patent in respect of it, but said "I had people wanting to borrow it". This was a further qualification to Mr McKinnon's affidavit evidence: all lending was now of the Quikshade canopy, not the Original.
136 It follows from the above, that at the end of the first session of cross-examination, Mr McKinnon's evidence was that in 1987 and possibly earlier he took the Original to all three race meetings where he erected it in the pits to which other competitors, race organisers and officials and members of the public had access, that he did nothing to hide it, that there was much interest in it, that people urged him to manufacture it and that people wanted to borrow it.
137 We turn now to the second session of Mr McKinnon's cross-examination. In this session, after it was pointed out to Mr McKinnon that if he had made the Original publicly available, his invention would have ceased to be novel and he would have undermined the application he made for a patent in respect of it, he plainly wished to avoid admitting that he had made it "publicly available".
138 Mr McKinnon now said that the Original was made in 1987 (not 1984) and that he took it to a patent attorney in that year. He agreed that he understood at that time that if he was to get a patent in respect of it, it must be new or novel and not publicly shown. It was then suggested to him that it was not the Original but the Quikshade that he had taken to the races. He disagreed. He said: "I did [take] this one [the Original] to the races. I was racing motor bikes myself and I used it". Asked whether he might be mistaken about taking the Original to the races just as he had been mistaken about lending it to the McPhersons, Mr McKinnon said that he lent the Quikshade product to the McPhersons about a year later and that although he did not use the Original a lot, he did use and test it at the races "probably only once or twice". Later Mr McKinnon asserted that the Original had not been made "publicly available" but immediately explained that what he meant was that a member of the public "couldn't buy one of them". Asked to confirm that he had shown the Original "publicly", Mr McKinnon said that he "used it". We think it plain that at this point, Mr McKinnon did not wish to be fixed with accepting or rejecting the "publicly available" concept and preferred to describe his use of it, leaving to others whether that use constituted public availability.
139 Mr McKinnon denied that he was changing his evidence as to the Original being available for everyone to see and as to people coming and looking at it. Then he said that in the 1980s the pits were "sort of in a bush paddock" and he would have "kept to [himself] somewhat". He said he would have been "right up the back of the pits by [himself]" and agreed with counsel's statement that he "showed it but it was out of the public view", "before taking it to be patented".
140 The respondents submit that the primary Judge's conclusion that Mr McKinnon did not make the Original publicly available is supported by the evidence. They say that the Original was only a prototype, made in 1987 and that Mr McKinnon's evidence, taken in total, was that it was used during a brief period only and that Mr McKinnon took it to the races only once or twice to test it. The respondents say that Mr McKinnon did not consider the experimental prototype to be publicly available since it was never offered for sale and emphasise that he attempted to keep it from the public by erecting it at the back of the pits and out of the public eye and that he was guarded about lending it.
141 It should be noted at once that Mr McKinnon did not say that he chose to erect the Original at the back of the pits in order to keep it out of public view, although it would not have made any difference if that statement of his subjective intention had been his evidence. His statements of his location "right up the back of the pits by [himself]" and his agreement that it was "out of the public view" were intended to be accounts of facts that would serve his purpose of avoiding a conclusion of public availability. Even at this point, however, Mr McKinnon added that he "showed" his canopy.
142 Two things are plain. First, Mr McKinnon's subjective intention when he was at the race meetings is irrelevant. Second, certain other evidence that he gave could not preclude a finding of public availability. We place in this category his evidence that the Original was not available for purchase by the public and that in view of his location at the back of the pits the Original was "out of the public view". In the context of all of his evidence, he meant only that his canopy was not prominently displayed where "the public" (according to his understanding of that term) was.
143 There remained intact Mr McKinnon's evidence that:
· he erected the Original in the pits at one or two race meetings in 1987;
· other competitors, race organisers and officials and members of the public had access to the pits;
· people would come over and look at his canopy;
· people would look in detail at the way in which it was structured and put together;
· people were "intrigued" by it;
· people asked to borrow it;
· people urged him to manufacture and sell it; and
· he "showed" it to people.
144 In our respectful opinion, the only correct conclusion on this evidence is that information disclosing the nature of the invention was publicly available before the priority date so as to deprive the invention of novelty.
145 The respondents rely on another reason why, they say, the Original was not "publicly available" for the purposes of s 7(1)(a) of the Act. They submit that Mr McKinnon's guarded use would not have been sufficient to enable the public to inspect the canopy sufficiently and was no more than de minimis use, which, they submit, does not deprive an invention of novelty.
146 Importantly, the present submission is not that simple visual inspection was not an adequate means of giving the person skilled in the art an understanding of the invention. The case was not one in which the invention was below a surface or enclosed, for example. Rather, the submission seems to be that the disclosure was insufficient in duration and circumstance to constitute "availability" for the purposes of s 18(1) of the Act.
147 The appellants, on the other hand, contend that the fact that Mr McKinnon's friends suggested that he commercialise his canopy is sufficient to contradict any suggestion of non-enabling disclosure and de minimis use.
148 The evidence that we have already referred to at [143] above amply answers the respondents' "de minimis" submission. The primary Judge's findings with respect to Mr McKinnon's evidence and his "retreat" as to public use at the races did not expressly or implicitly reject that evidence and, in particular, the evidence that people saw the Original, sought to borrow it and urged him to manufacture it. Her Honour found that Mr McKinnon was conscious of people taking his ideas, in the context of a general public exposure (at [71]) but that does not alter his evidence. As the appellants point out, it has not been suggested that the people in question were bound by any obligation of confidentiality, or were other than members of the public. There is no basis for a finding that the public use was non-enabling or as to why it should be held to be relevantly de minimis.
149 In Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43 von Doussa J referred to de minimis use at [171], stating that "it is clear that accidental, experimental or de minimis use will not deprive an invention of novelty". His Honour gave an example where experimental use produces a product which is rejected as useless before its potential is revealed, and concluded that such experimental use may not constitute prior use, referring to Boyce v Morris Motors Ltd (1927) 44 RPC 105 (Boyce). In Boyce, Sargant LJ noted that "…mere casual incidental and accidental involuntary use of the bulb in the air" was not prior use, where the use occurred "in the course of a completely different investigation" (at 148).
150 The use made of the Original, however, was not incidental use in the process of an experiment or an unrelated action. It was not use that was hidden from the public and it was not use that was accidental, unintended or secret. The respondents did not expand on why the exposure should be described as "de minimis".
151 The public was not denied access, and there was a means for the public to inspect the Original. There was nothing to prevent a member of the public from going to its location at the back of the pits, and examining it sufficiently to understand its construction and its component features. There is nothing in the evidence to suggest that examination would not have revealed all the integers of the claimed invention including the mounts and pins as described in the Patent specification. The information gleaned from such an inspection would, for the purposes of practical utility, be equal to that given in the Patent (Hill v Evans (1962) 31 LJ CL 456 at [7]; Merck at [111]-[112]). An inspection would enable a person skilled in the art to put the claimed invention into practice (cf Bodkin at [3790] and the cases there cited).
152 We turn finally to the question of disclosure to Mr Forster and Mr Soward. We referred to the relevant evidence at [34]-[35] and to her Honour's conclusion at [43] above.
153 The primary Judge recorded that Mr McKinnon showed the Original to Mr Forster and Mr Soward for the purposes of their assisting in the design and manufacture of the structure (at [65]). Mr Soward was the "owner" of Tom Soward Steel Fabrication Pty Ltd which was to undertake the manufacture of the brackets. Mr Forster was an employee. The primary Judge concluded that the circumstances of the collaboration were such that it could not be inferred that they were at liberty to make use of the Original. The circumstances, she said, strongly suggested that the information available from an inspection of the Original was confidential and could not be imparted to others or utilised by Mr Soward or Mr Forster (at [72]).
154 The appellants maintain that they did not rely on Mr Soward and Mr Forster seeing the structure in the course of design and manufacture as an instance of public use. They rely upon evidence not adverted to by the primary Judge concerning the showing of the Original to Mr Soward after his company had fabricated the brackets and Mr McKinnon had taken them away to assemble his canopy. This, the appellants submit, constituted an open disclosure, unaffected by any confidentiality, and a demonstration to Mr Soward of the way in which the canopy worked.
155 We are not satisfied that the evidence establishes that the confidential relationship between Mr McKinnon and Mr Soward, as found by her Honour, did not still exist when Mr McKinnon showed Mr Soward the finished product. We are not satisfied that her Honour was in error in finding that the showing of the canopy to Mr Soward did not constitute a prior use for novelty purposes within the meaning of the Act, whether the demonstration was of the finished product before or after parts were manufactured by Mr Soward.
156 Her Honour specifically concluded that the circumstances of the relationship with Mr McKinnon "suggest strongly that the information ... was confidential and could not be imparted to others" (at [72]). No error is shown in this conclusion or in her Honour's resolution of the issue of disclosure to Mr Soward and Mr Forster.