General
36 Claim 1 can be analysed as being for an electrical connector which includes the following integers:
(a) a plurality of input terminals;
(b) a plurality of output terminals;
(c) an interconnection apparatus for electrically interconnecting the input and output terminals;
(d) the interconnection apparatus comprising at least four non-insulated conductors that are spaced apart from each other and mounted on a dielectric block;
(e) the conductors being generally parallel to each other along a portion of the interconnection path between input and output terminals;
(f) the interconnection apparatus being arranged so that the path of one of the non-insulated conductors crosses over the path of another one of those conductors without making electrical contact with it; and
(g) whereby cross-talk of electrical signals between conductors in the electrical connector is reduced.
37 At the priority date there was in common use an electrical connector known as the "RJ-45 connector" (the letters "RJ" stand for "remote jack"). The expert evidence before me was that the electrical connector described and illustrated in the drawings of the specification (the preferred embodiment) is an RJ-45 connector. Integers (a)-(e) set out above were elements of the RJ connector at the priority date. In the result, any inventive step must be found in integers (f) and (g), in substance, in the crossing (within the connector) of non-insulated conductors without their making electrical contact so that cross-talk of electrical signals between conductors in the connector is reduced.
38 In Wellcome Foundation Ltd v V R Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, Aickin J (with whom all four other members of the Court agreed) said (at 270):
"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge. The question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field: Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd [(1980) 144 CLR 253, and pp 293-295]"
In the same case, his Honour said (at 286):
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
39 It will be recalled that under the Act, the invention is to be taken to involve an inventive step when compared with the prior art base (as defined) unless it 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. I accept Krone's submission that the "relevant art" is the field of electrical, electronic and telecommunications engineering. I accept Lucent's submission that the "person skilled in the relevant art" is a non-inventive graduate engineer in one of those fields with experience in the designing of communications and electronic equipment.
40 Krone submits that the following matters were part of the common general knowledge of the non-inventive but skilled engineer of the kind described as at the priority date:
(1) the nature of RJ-45 electrical connectors, and, in particular, the fact that they possessed features (a)-(e) above;
(2) that when electrical signals were sent along circuits consisting of two or more parallel or close by wire pairs, cross-talk was induced between the conductor wire pairs;
(3) that RJ-45 connectors contained four closely parallel pairs of wire conductors and that the cabling with which they were used also involved close together conductor wire pairs;
(4) that RJ-45 type connectors had fixed standard wire pair assignments which had been fixed long before RJ-45 connectors came to be used for high speed data transmissions and which could not be changed;
(5) that the cross-talk known to be present in RJ-45 connectors was not a problem at the data speeds or signal frequencies in the circumstances in which they were used until shortly before the priority date, so that until that time it was not thought worthwhile to do anything about the cross-talk problem addressed by the present invention;
(6) that the most obvious method and the method of first choice to use or try in order to correct a cross-talk problem in parallel conductor wire pairs is a crossing or twisting of the conductors, whether once or many times, depending on the nature of the circuit;
(7) that some time before the priority date, the use of unshielded twisted pair ("UTP") cabling (instead of older shielded cables) had become standard in the data transmission networks in which RJ-45 and other similar connectors were used;
(8) that the UTP cables had many conductor wire pairs close together giving rise to cross-talk and that in those cables the cross-talk was "balanced out" by twisting, that is, continuous crossing, of the conductor wire pairs;
(9) that shortly before the priority date, higher data speeds and signal frequencies from about 1-16 MHz came in and even higher ones of up to 100 MHz were about to come in, which gave rise to a problem of cross-talk in RJ-45 connectors that could not be ignored;
(10) that it was therefore obvious, and the method of first choice, to use or to try crossing of the wires in conductor pairs to eliminate or reduce cross-talk originating within a connector.
41 In my opinion the evidence supports Krone's submission.
42 I do not think it necessary to refer to the extensive body of expert evidence which was led by both parties. Krone's expert witnesses were as follows:
· George Georgevits is, and has been since 1974, an electronics and communications engineer, and is the principal and founding director of Power and Digital Instruments Pty Ltd, electronics and communications consulting engineers, which specialises in engineering consultancy and project management in the field of communications engineering. Mr Georgevits holds the degree of Bachelor of Electrical Engineering (Communications) (Hons) of The University of New South Wales. Following his graduation in 1974 until 1982 Mr Georgevits worked as an engineer in the then Postmaster-General's Department. His role included responsibility for the technical direction of the State Design Laboratory and for projects associated with data, telegraph and PABX systems. From 1982 to 1984 Mr Georgevits was employed by Laurie Systems Engineers Pty Ltd as senior consulting engineer. From 1985 to date he has worked as an independent consulting engineer in the following fields:
· Communications Cabling Systems and Technologies for Voice and Data Networks;
· Electronics Systems and Circuit Design;
· 100MHz Testing and Certification of UTP Data Cabling Components and Installations to the relevant Standards, as applicable;
· Data Communications, including Optical Fibre;
· Local and Wide Area Networks;
· Radio Communications, HF, VHF, UHF and microwave;
· Voice Communications and Telephony Technology;
· PABX Systems and Suppliers;
· Communications Project Management;
· Regulatory aspects of Communications;
· Communications Service Suppliers and Authorities.
· James Rodney Scott is a Senior Lecturer in the Department of Communication and Electronic Engineering at Royal Melbourne Institute of Technology ("RMIT") University, Melbourne. He has lectured in transmission line theory and circuits and microwave and radio frequency circuits since early 1987, has worked in the microwave and RF communications field for the past nineteen years, and has undertaken consultancy work for Australian industry because of his specialist skills in transmission line theory and circuits, electromagnetic coupling and cross-talk, electrical connector characterisation and modelling, antennas and microwave circuits (which extensively employ transmission lines).
· Noel Alexander McDonald, principal engineer, Technology Development Group, Radio Frequency Systems Pty Ltd of Kilsyth, Victoria, was from July 1991 to January 1996 Professor of Communication Engineering at RMIT. He holds the degree of Doctor of Philosophy in Electrical Engineering of the University of Toronto. He had about thirty-seven years' experience in communication engineering including employment in that field in the public and private sectors as well as in universities. He is the author or co-author of numerous technical articles. He has had significant experience in the theory and application of high frequency electronic components and systems including the theory and application of transmission lines and connectors.
· Kenneth Graham Freestone graduated from the Congela College of TAFE, South Africa in 1973 and was self-employed from 1977 to 1986 in South Africa in developing and constructing electrical building services including power reticulation systems, factory services, switch gear and high voltage lighting. He has been employed in Australia since 1987 in connection with the distribution in Australia of products manufactured by The United States corporation, "MOD-TAP System", at first through Shuttle Datacom Pty Ltd and since 1990 through MOD-TAP (Australia) Pty Ltd, a subsidiary of The United States corporation. In 1993, Mr Freestone obtained a Bachelor of Science degree specialising in communications systems technology from the Pacific Western University of California. In April 1998, he retired from MOD-TAP and set up BusTech Consulting Pty Ltd of which he is the managing director. His company provides independent consultancy services to information technology businesses. Prior to February 1992, Mr Freestone was well acquainted with data communications, data networks and data transmission circuitry and components including electrical connectors, conductors and other hardware. He has designed connectors including the "MOD Clip" which is "one of [the] (if not the) highest selling connector[s] in Australia". He was also involved in the manufacture of this product in Australia and in the performance testing of it. He is also familiar with other connectors such as those used in synchronous and asynchronous serial communication systems.
43 Lucent led expert evidence from Rodney Stuart Tucker, Professor in the Department of Electrical and Electronic Engineering at the University of Melbourne. Professor Tucker has been a Professor in that Department since 1990, is the Director of the Photonics Research Laboratory at that University and a Director of the Australian Photonics Co-operative Research Centre. He holds the Degree of Doctor of Philosophy (Electrical Engineering) conferred by that University in 1976. Professor Tucker is, and has been since 1998, a Fellow of the Australian Academy of Science, since 1993 a Fellow of the Australian Academy of Technological Sciences and Engineering, since 1991 a Fellow of the Institution of Engineers, Australia, and since 1990 a Fellow of the Institute of Electrical and Electronics Engineers. In 1995 Professor Tucker was awarded the MA Sargent Medal by the Institution of Engineers, Australia, for outstanding contributions to electrical engineering. In 1997 he was awarded the Australia Prize by the Prime Minister on behalf of the Australian Government for outstanding contributions in the field of telecommunications. Professor Tucker has held numerous prestigious academic posts over the years and owns, with respect, a most impressive list of publications extending over the period from 1971 to date.
44 The general effect of the substantial body of expert evidence called by Krone was to the effect that before the priority date the crossing of conductors was a technique well known in engineering circles as a means of overcoming cross-talk in transmission lines and that an uninventive but reasonably skilled engineer, asked to solve a problem of cross-talk originating in connectors and resulting from the advent of the new higher frequencies, would have tried that transmission line technique. For example, Mr Scott gave affidavit evidence as follows:
"21. Given the nature of the problem to which the alleged invention is stated in the AT&T Specification to be addressed, namely to reduce crosstalk in signals passing through a connector having closely spaced parallel conductors, with signals to be applied in the way described with reference to Figure 2 of the Specification, both the cause of the problem and its solution are (and would have been in February 1992) immediately apparent to me from my basic elementary professional knowledge. The connector comprises a set of transmission lines of the kind having closely spaced parallel conductors and the principal known method of crosstalk reduction in that situation, namely by crossing relevant conductors, is the first option I would consider and would have adopted before the priority date. In particular, it is immediately apparent to me from inspection of Figure 2 of the AT&T Specification, and as mentioned at page 4 line 22 to page 5 line 3 of the specification, that the principal crosstalk problem arises because of the interposition of the pair of conductors G and W-G between the central pair BL and W-BL and two outer pairs O and W-O, BR and W-BR. Accordingly, it is (and would have been before February 1992) immediately apparent to me to cross the inner pair and two outer pairs to bring separate portions of each of these into adjacent relationship with the conductors designated W-G and G (pair 3) in Figure 2, to reduce crosstalk, and I would have expected that crossing to result in an overall reduction of crosstalk.
22. In cases involving simple layouts of parallel conductors, as in the connector described in the AT&T Specification (an RJ45 connector), the simplest expedient to reduce crosstalk is to introduce crossovers. It is the first method I would have considered, in and before February 1992, had I been asked to modify RJ-type connectors to reduce the effects of crosstalk when signals were applied in the way shown in Figure 2 of the AT&T Specification."
Dr McDonald stated in his affidavit:
"In my opinion, it would have been obvious to me before February 1992 to try crossing of the conductors in an RJ45 connector to reduce crosstalk if and when that became a problem. That solution would have been my first choice."
and:
"Although I agree that there were in 1992 a number of approaches to crosstalk reduction, I do not agree that those which did not make use of crossed conductors were 'standard approaches' or 'in common use'. Of the approaches which might have been used, crossing the conductors was by far the first and most common approach."
and:
"Professor Tucker asserts the RJ45 connectors are more complicated than transmission lines, by which he evidently means long line transmission lines like telephone lines. This may be correct in some (presently irrelevant) respects. Notwithstanding this, the approach adopted in the AT&T specification to crosstalk reduction was, in my opinion, not only the obvious solution for long line transmission lines but also was the equally obvious solution to crosstalk reduction in the conductors of an electrical connector such as an RJ45 connector.
Indeed, in my opinion, the crossing of otherwise parallel conductors in a transmission line of any kind, including in an electrical connector, for the purpose of reducing crosstalk was, before February 1992 in Australia, simply an obvious and routine application of well known principles."
Mr Freestone stated in his affidavit:
"I, and I believe, any skilled engineer working in Australia in the Communications industry immediately before 24 February 1992 and confronted with a problem of reducing cross-talk within an electrical connector would, as a matter of course, first consider solving the problem by crossing the conductors in the connector."
45 Mr Georgevits gave evidence generally to a similar effect as that of Mr Scott, Dr McDonald and Mr Freestone set out above.
I find it convenient, without referring to the expert evidence led by Krone in further detail, to turn immediately to the opposing evidence of Professor Tucker. Professor Tucker accepted:
· that the connector illustrated in the drawings attached to the specification was an RJ-45 connector;
· that RJ-45 connectors were in wide use and very well known in Australia before the priority date;
· that RJ-45 connectors had standard wire pair assignments, that is, assignments fixed by a standard to which they conformed;
· that RJ-45 connectors in use in Australia before the priority date had every feature of claim 1 except the crossing of one conductor over another;
· that according to the specification, the purpose of the crossing of the conductors was to deal not only with "transmission line effect" cross-talk but also with all stray capacitance in the bent back section;
· that cross-talk in an RJ-45 connector would not have been a problem at "low frequencies" that is, below around 1 MHz;
· that if there arose a need to use RJ-45 connectors at frequencies in the range of 1-16 MHz (or above), cross-talk would become a problem;
· that standards came into force in 1990 and 1991 which had the effect of requiring RJ-45 connectors to operate at 1-16 MHz so that at that point of time there arose for the first time a need to find a remedy for cross-talk in the RJ-45 connectors;
· that in 1991, standards came in regarding the operation of cables of 100 MHz and higher and that the connectors used in connection with such cables would also have to cope with 100 MHz;
· that some time before the priority date, UTP cabling came into general use in data transmission circuits;
· that a cross-talk problem in those cables was solved by "twisting", which, in principle, is the same as "crossing";
· that twisting or crossing were well known mechanisms before the priority date in Australia for dealing with cross-talk in parallel transmission line circuits;
· that the conductors inside an RJ-45 connector are at least partly parallel transmission lines;
· that if one applies transmission line theory to the problem of cross-talk originating in an RJ-45 connector one will arrive at the single crossing of conductors as a solution to that problem, although only after trying multiple crossing first;
· that it is possible to regard the RJ-45 connector as containing a very short transmission line;
· that before the priority date, UTP cabling was practically universal in data transmission circuits.
46 Where Professor Tucker parted company with the other expert witnesses was that he did not accept their view that before the priority date, a skilled but non-inventive engineer would have tried to solve a problem of cross-talk in electrical connectors by the crossing of conductors. He insisted that the conductors would be seen by such an engineer as "electrically short"; that a significant (he calculated 33 per cent to 40 per cent) contributor to the cross-talk problem was the bent back section as distinct from the "transmission line" section of the conductor; and that in these circumstances the hypothetical engineer would have tried the only other choice available, namely, the installation of lumped capacitors, to solve the problem.
47 Professor Tucker agreed that solutions other than the two mentioned (crossing and the use of lumped capacitors) were not viable or feasible. He also agreed that he did not know whether "lumped capacitors" would turn out to be feasible or less expensive than cross-overs. The cross-examination of Professor Tucker included the following passage:
"Another professional engineer, electrical engineer in Australia before 1992 would, … would he not, at least think it was worth trying crossing because it would be probably less expensive; isn't that right? --- If that engineer had that crossing in front of him or her, yes.
What do you mean in front of him? Had he thought of it? --- Yes.
It was the only other one left, wasn't it? --- You have already agreed that crossing in transmission lines was very well known before February 1992 in Australia? --- Yes, I've agreed to that."
48 Senior counsel for Krone cross-examined Professor Tucker with a view to obtaining his acceptance of the proposition that there would be difficulties in the use of lumped capacitors. The cross-examination included the following passage:
"You wouldn't be able to use capacitors unless you used something like pigtail leads, would you? --- I don't believe that's correct.
How else would you do it? --- Some capacitors come with little leads that can be connected directly onto printed circuit boards and there are approaches that you can make capacitors raise on a printed circuit board that can be dropped on top of the connector.
You would have to use a printed circuit board, wouldn't you? --- Or you might use an insulator of some kind.
But not in an RJ-45. That doesn't have any of those things? --- My point was that the capacitors would go onto some frame that would be mounted on the RJ-45.
A whole new part involved there? --- That's correct." (emphasis supplied)
49 Professor Tucker came close to agreeing that as at the priority date a skilled but non-inventive engineer of the kind described earlier would have tried crossing as a solution to cross-talk in the RJ-45 connector, even if as a second choice after capacitors. The other expert witnesses were clear: crossing would have been the obvious and first solution which they and other non-inventive engineers skilled in the art would have tried.
50 The four expert witnesses called by Krone had considerable experience in finding commercially viable solutions to problems of the kind contemplated, that is, the elimination or reduction of cross-talk originating in connectors. Professor Tucker's academic credentials and, indeed, eminence, cannot be questioned. They exceed those of the experts called by Krone. But he does not have the same degree of experience in finding solutions of the description mentioned to problems of the present kind as Krone's expert witnesses, in general, had. The cross-examination of Professor Tucker included the following passage:
"It is also fairly unusual, isn't it, to use lumped capacitors in the connectors which have been used in data transmission networks?---That's true.
That would greatly increase the cost of manufacture of these things, likeRJ-45s, if you were to add inductors or capacitors, wouldn't it?---If'greatly' means multiplying the cost of the connector by some largefactor, then I would disagree.
It would make it cost more?---It would make it cost more, I agree.
Had you ever made a connector before 1992?---Yes.
What sort?---I made a connector as part of my research on microwavecircuits in the 1970s.
Did you ever have any part in the commercial manufacture of aconnector?---No, I have not.
Have you ever designed a connector for commercial purposes?---No, I havenot.
Have you ever costed the production of a commercial connector?---No.
Do you know how RJ-45s were made before 1992?---I know the broad approachto construction of the RJ-45 as specified in the Specifications.
Do you know how they were actually made in the factory before1992?---I have a broad knowledge of the techniques, but I have not been ina factory and seen them being made.
Would you be able to cost the production of RJ-45s before 1992 at thattime?---No.
Sorry?---No.
How do you know how a professional engineer in the industry would go aboutsolving the crosstalk problem in the RJ-45?---I believe that I have a verygood understanding of the techniques that engineers would use in theanalysis of an unfamiliar circuit situation analysing a componentdetermining the importance of the parts of the component converting thatinto a circuit model and doing an analysis and a design. I believe thatI'm familiar in detail with the techniques and processes that engineerswould use in that design process.
You are talking about working professional engineers in the industry that are making things like RJ-45s?---Yes.
Have you done any research on RJ-45 connectors yourself?---No, I have not.
You worked for about 8 years, didn't you, for an AT&T subsidiary; is that right?---That's correct.
That was Bell, wasn't it?---I worked with AT&T Bell Laboratories.
What did you do there? Research work?---I did research work in data communications and light wave telecommunications.
Have you done any test of any kind for the purposes of the evidence that you give in this case?---Sorry, I missed the question.
Have you done any tests of any kind for the purposes of the evidence that you give in this case?---No, I have not.
Have you made any actual tests on crosstalk in RJ-45 connectors?---I have not done experimental measurements, no."
51 While I would be careful before preferring the evidence of the other expert witnesses to that of a person of the eminence of Professor Tucker, if the present issue fell to be decided solely by a choice between experts, I would prefer that of Krone's experts by reason of their greater experience of the kind mentioned. But, in my view, other considerations support their position. In particular, twisting, or continuous crossing of conductors, was a cross-talk reducing feature of the UTP cable that led right up to the connector and it is difficult to think that it would not have occurred to an engineer skilled in the art also to try crossing within the connector, with such modifications as the exigencies of the different environment might require. To use the words of Professor Tucker set out earlier, in the form of the UTP cabling an "engineer had … crossing in front of him or her."
52 I am in fact persuaded that a reasonably skilled though non-inventive engineer looking for a practical and commercially attractive solution would have tried the crossing of conductors rather than lumped capacitors, as the first and obvious choice to the problem of cross-talk originating in the RJ-45 connector arising from the advent of higher frequencies and of UTP cabling apt to accommodate them. But even if I am wrong, and such an engineer would have first thought of lumped capacitors, he or she would have appreciated that that solution involved the manufacture and installation of a new part with at least some cost disadvantage, and would then have considered the "crossing of conductors" solution.
53 An engineer who wanted to overcome a cross-talk problem originating within a connector would have before his or her eyes the use of twisting to overcome cross-talk originating in the UTP cabling. That engineer would think of trying crossing within the connector unless there was some obvious reason not to do so. Moreover, it is common ground that the crossing of conductors was in common use in transmission lines and more than fifty per cent of the conductors in the connector could be viewed as a transmission line arrangement.