Evidence of Dr Troutbeck on novelty
84 Dr Troutbeck, in his affidavit filed 17 August 2006, gave his opinion concerning the Wasserstrom Patent, at paras 50-73:
The Wasserstrom Patent
50 I was provided by Freehills with a copy of United States patent number 5,531,540, which I will refer to as the Wasserstrom Patent.
51 The mechanical principles involved in the design and manufacture of a product such as a safety barrier form part of the core technical training for both mechanical and civil engineers. In my experience, however, more civil engineers are involved in the design of safety barriers around the world, which I think is because of the relationship between safety barriers and the design of roads, bridges and structures, which are areas in which civil engineers specialise.
52 In my opinion, the patentee's idea in the Wasserstrom Patent is to use a horizontal interconnected frame structure upon a relocatable plastic safety barrier system to provide what the patentee describes as "a continuous system". In my opinion it is intended by the patentee that by use of the system described in the Patent, the forces from the impact of a vehicle will be resisted by many barrier cells through the horizontal interconnected frame structure.
53 The first description of this idea is in the Abstract to the Patent, which says that the barrier system includes:
'force distributing members that are adapted to distribute forces along a horizontal direction upon impact of a vehicle into the associated highway barrier so as to lessen the degree of force applied to the highway barrier and to thus provide additional strength to the associated highway barrier.'
54 This purpose is repeated at the start of the 'Summary' of the invention (at column 1 lines 60 to 63).
55 The patent explains, at the top of Column 3 (lines 1 to 3) that:
'In a preferred embodiment, the force distributing means may comprise at least one hollow pipe attached to at least one of the side assemblies. In another preferred embodiment, the at least one hollow pipe may comprise a plurality of hollow pipes which extend substantially parallel to each other.'
56 The Patent then explains that a "particularly preferred embodiment' comprises a pair of pipes attached on each side of the barrier (column 3 lines 24 to 33). This is the embodiment that is illustrated in the drawings in the Patent.
57 The Patent also describes how the hollow pipes, as used in the preferred embodiment, are joined together (column 3 lines 6 to 23):
'Each of the hollow pipes may include a first end which defines a female receptacle and a second having a male member extending therefrom. The male member and the female receptacle may have means for forming a releasable connection to a corresponding female receptacle and male member on adjacent pipe sections. In a preferred embodiment, the male member is arranged partially within the second end of the corresponding pipe and extends partially beyond the second end. In this embodiment the male member is adapted to be connected to a respective one of the female pipe sections.
In another preferred embodiment, the male member includes a slot which defines a passageway through the portion which extends beyond the second end. Each of the female receptacles may include a pair of apertures whereby the apertures are aligned with the slot for placement of a bolt therethrough when the male member is connected to the female member.'
58 The use of male-female joints with bolts through them is the embodiment that is illustrated in the drawings to the Patent, and is shown in some detail (in Figure 10). Further detail and explanation is set out in column 4 (lines 14 to 30):
'In a preferred embodiment wherein the side assemblies of the frame structure include horizontally arranged pipes secured to vertically arranged support members, it is preferable to connect the horizontally arranged pipes to adjacent horizontal pipes of reinforcement systems arranged on adjacent highway barriers to form a continuous system. In this embodiment, a preferred method of assembling the reinforcement system may comprise the steps of placing substantially flat elongated members which extend from the second end of a first set of pipes within corresponding aligned female receptacles arranged at a second end of a second set of pipes so that the slotted passage way of the flat elongated member is in alignment with transversely arranged aligned apertures. Threaded bolts may then be placed through the aligned apertures on the slots and corresponding threaded nuts may be placed on the threaded bolt to complete assembly of the system.' (emphases added)
59 Further details are provided in the Patent in passages from column 7 line 36 to column 8 line 9.
60 The Patent explains that the reinforcement system should preferably be made of a 'sturdy rigid material' (column 5 line 58), and preferably steel (column 5 line 62), but could be made of various metals, metal alloys, or materials such as polyethylene or rubber (column 5 lines 63 to 66).
61 At column 9 lines 23 to 39 the Patent further explains that the final assembled barrier system will distribute and transfer vehicle impact forces horizontally along the pipes, and it says (in lines 35 to 39):
'Further, the particular structure and arrangement of the reinforcement system [24] permits forces to be spread out among adjacent highway barriers, instead of being concentrated on the particular highway barrier that a vehicle may strike.'
In this passage the patentee is using the word 'barrier' to refer to what I have described elsewhere in this affidavit as a 'barrier cell'.
62 At column 11 the Patent explains that testing by Texas A&M University of an embodiment has shown that the described system performed well when tested under established testing conditions.
63 In the preferred embodiment in the Wasserstrom Patent which is illustrated in the diagrams in the Patent (for example Figures 9 and 10), the patentee sets out to achieve a lateral distribution of forces by attaching four parallel steel pipes (two on each side) to the plastic barrier cells via metal stirrups, with the metal pipes of adjacent barrier cells connected to each other using bolted male-female joints. It is the fact that the metal pipes are connected that makes this barrier continuous in structure (which I discussed above at paragraph 35) and allows a number of barrier cells to attenuate the impact energy.
64 A structural joint, such as the one between two pipes of the Wasserstrom Patent, will generally need to be able to resist tensile and bending forces. That is, the joints between the pipes must be able to resist being pulled apart, and rotated (about a vertical axis). The Wasserstrom Patent shows that the inventor has designed the joint to resist being pulled apart (by bolting the joints together) and being rotated (by inserting the steel plate at the end of one pipe, into a receptacle at the end of the connecting pipe and by having a pipe on each side of the barrier, for example as described in column 4 at lines 15 to 30).
65 The bolted male-female joint in the Wasserstrom Patent is not the only way to achieve a satisfactory connection between the separate pipes. A simple overlap joint would also be capable of doing this, provided that the two overlapping portions were tightly bolted together. The bolts would both resist the pipes from being pulled apart, and would resist rotation of that joint.
66 I found nothing surprising in the description set out in the Wasserstrom Patent, and it seems to me that the patentee has taken routine steps to improve the performance of a plastic barrier system. I also think that the steps taken would also have been routine in 1996, when I am told by Freehills that the Patent was published.
67 What appears to me to be the same system is described in section 4.7.3 of the June 1997 version of the Federal Highway Administration's 'Design Construction and Maintenance of Highway Safety Features and Appurtenances - Users Handbook', where it is described as the 'Guardian Barrier System'. The Wasserstrom Patent also refers to a Guardian trade marked system (at column 11 line 44). The Handbook says that this system has been approved for test level 3, and says:
'The function of the 350 HIGHWAY KIT is to: 1. provide a strong and resilient outer surface to resist the wheel and bumper of a striking vehicle, and 2. link the barriers to each other and create a linear system such that the force of a striking vehicle will be distributed over many barriers, minimizing the lateral movement at the point of impact.'
Now produced and shown to me and marked RT-7 is a true copy of a pages 4.7.1 to 4.7.6 of the Handbook.
68 Pages 4.7.4 to 4.7.6 of the Handbook provide me with the same general information that I obtain from reading the Wasserstrom Patent. While the photographs show that there are bolts through the pipe joints, the description in the Handbook also makes it clear to me that the pipes are to allow the forces developed on impact to be resisted by many barrier cells rather than one or two and therefore the joints between the pipes would need to be designed, in a routine manner, to achieve this.
69 The Handbook was prepared by the National Highway Institute, which is part of the Federal Highway Administration in the United States. The National Highway Institute is, and has been since well prior to 1999, been a premier education and training facility for transport engineers and planners. I consider that anyone in Australia conducting any research into road safety engineering would be aware of the Federal Highway Administration and the National Highway Institute and its publications which it makes available for purchase.
70 I owned a copy of the Handbook prior to 1999, and while I do not recall having seen a physical Guardian Safety Barrier system, I do recall that I carefully read and reviewed the Handbook prior to 1999. The National Highway Institute also operated a stand at the Transportation Research Board Annual Meeting at which its materials were offered for sale. This is a major conference, now attracting about 10,000 delegates, which I have attended since about 1990. The conference has been growing, and probably attracted around 7,000 delegates in 1998. I have generally attended this conference with a number of Australian colleagues of mine, and recall other Australians also attending this conference before 1999. The conference covered all aspects of transportation, and was not restricted to safety barriers.
71 Section 6 of the Road Design Guide published by the Roads and Traffic Authority of New South Wales is entitled 'Safety Barriers for Roads and Bridges' and was published in May 1996. Page 6.5.5-2 of that Guide describes the 'Guardian with 350 Highway kit' system. The Guide contains a cross-sectional picture of the system, and explains that it is a patented, commercially available product which must be installed in accordance with the manufacturer's drawings and specifications. It also says that, with the 350 Highway Kit fitted, it met NCHRP test level 2.
…
73 The Road Design Guide is and was, including prior to 1999, a well known document in Australia, and I believe that it was owned by most people working in this area, including anyone who was interested in supplying any products to the RTA. I considered prior to 1999, and still consider, that it was a comprehensive and well-respected publication and I believe that this view was generally held by people working in the area of relocatable barriers.
85 The question is whether the Wasserstrom Patent is valid, or whether it is nothing more than routine improvement in the performance of a plastic barrier system, as Dr Troutbeck's observation at para 66 of his affidavit might suggest. The question is whether the Wasserstrom Patent teaches what is to be found in the applicant's Patent.