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[2000] FCA 100
Federal Court of Australia
2000-02-15
Lindgren J
Original judgment source is linked above.
REASONS FOR JUDGMENT (No 3) INTRODUCTION 1 The applicant ("Lucent") appeals under s 60(4) of the Patents Act 1990 (Cth) ("the Act") from a decision of a delegate of the Commissioner of Patents given on 26 June 1997. The delegate upheld the opposition of the respondent ("Krone") to an application for a patent by Lucent's predecessor in title, American Telephone and Telegraph Company ("AT&T"). 2 AT&T had filed patent application 651028 on 10 February 1993 in respect of a claimed invention relating to electrical connectors. According to the specification, the claimed invention enabled "cross-talk" between pairs of conductors to be reduced and had particular application in high frequency networks. 3 The delegate found that the invention claimed did not involve an inventive step, that is, that the invention was obvious, having regard to what was known before the priority date, which the delegate treated as being 24 February 1992. 4 The notice of appeal commencing this proceeding was filed on 17 July 1997 in the name of AT&T. But on 29 March 1996 AT&T had assigned its then pending application for the patent to Lucent. On 12 October 1998 I ordered that Lucent be added as applicant and that AT&T cease to be a party.
THE SPECIFICATION 5 The following account of the specification is in fact of an amended specification dated 29 September 1995 which Lucent was allowed to file in the Patent Office. (References to "the specification" are to the amended specification unless the context indicates otherwise). I will have occasion to deal later with a submission by Krone that the effect of the amendments was to postpone the priority date from 24 February 1992 to 29 September 1995, and, in doing so, to create further "anticipations" of the claimed invention, including the publication on 2 September 1993 of the original specification itself. 6 The specification describes the "Background of the Invention" as follows: "Information flow has increased substantially in recent years, and networks have evolved to accommodate not only a greater number of users but also higher data rates. An example of a relatively high speed network is the subject of ANSI/IEEE Standard 802.5 which provides a description of the peer-to-peer protocol procedures that are defined for the transfer of information and control between any pair of Data Link Layer service access points on a 4 Mbit/s Local Area Network with token ring access. At such data rates, however, wiring paths themselves become antennae that both broadcast and receive electromagnetic radiation. This is a problem that is aggravated when station hardware requires multiple wire-pairs. Signal coupling (crosstalk) between different pairs of wires is a source of interference that degrades the ability to process incoming signals. This is manifested quantitatively as decreased signal-to-noise ratio and, ultimately, as increased error rate. Accordingly, crosstalk becomes an increasingly significant concern in electrical equipment design as the frequency of interfering signals is increased. Crosstalk occurs not only in the cables that carry the data signals over long distances, but also in the connectors that are used to connect station hardware to the cables. ANSI/IEEE Standard 802.5 discloses a Medium Interface Connector having acceptable crosstalk rejection at the frequencies of interest. This Connector features four signal contacts with a ground contact, and is hermaphroditic in design so that two identical units will mate when oriented 180 degrees with respect to each other. This Connector is available as IBM Part No. 8310574 or as Anixter Part No. 075849. Crosstalk rejection appears to result from short connector paths, ground shields, and the selection of particular terminals for each wire-pair. As might be expected, such connector arrangements are relatively expensive and represent a departure from communication plugs and jacks such as specified in Subpart F of the FCC Part 68.500 Registration Rules and used in telecommunication applications. For reasons of economy, convenience and standardization, it is desirable to extend the utility of the above-mentioned telecommunication plugs and jacks by using them at higher and higher data rates. Unfortunately, such plugs and jacks include up to eight wires that are close together and parallel - a condition that leads to excessive crosstalk, even over relatively short distances. Attempts to improve this condition are complicated by the fact that an assignment of particular wire-pairs to particular terminals already exists which is both standard and non-optimum. Indeed, in ANSI/EIA/TIA-568 standard, the terminal assignment for wire-pair 1 is straddled by the terminal assignment for wire-pair 2 or 3. If the electrical conductors that interconnect with these terminals are close together for any distance, as is the case in present designs, then crosstalk between these wire-pairs is particularly troublesome. Accordingly, it is desirable to reduce crosstalk in electrical connectors such as the plugs and jacks commonly used in telecommunication equipment." 7 After giving a "Summary of the Invention", a "Brief Description of the Drawing [which comprised 10 Figures]" and a "Detailed Description" of the invention, the specification sets out the claims defining the invention. It is common ground that I need concern myself only with claims 1 and 9. Claims 2 to 8 are dependent on claim 1 and virtually the whole of the argument has concentrated on that claim. Claims 1 and 9 are as follows: "1. An electrical connector including a plurality of input terminals, a plurality of output terminals, and interconnection apparatus for electrically interconnecting the input and output terminals, the interconnection apparatus comprising at least four non-insulated conductors that are spaced apart from each other and mounted on a dielectric block, said conductors being generally parallel to each other along a portion of the interconnection path between input and output terminals, the interconnection apparatus being arranged so that the path of one of the non-insulated conductors crosses over the path of another one of said conductors without making electrical contact therewith; whereby crosstalk of electrical signals between conductors in the electrical connector is reduced. …………………………………………………………………………………………… 9. An electrical connector substantially as hereinbefore described with reference to Figures 1 to 7 and 10 of the accompanying drawings."
The statement of the claims is followed by an "Abstract" and 10 numbered Figures.
STATUTORY PROVISIONS AND ISSUES 8 Section 59 of the Act provides that a person may oppose the grant of a standard patent on one or more of the following grounds only: "(a) that the nominated person is not entitled to a grant of a patent for the invention; (b) that the invention is not a patentable invention because it does not comply with para 18(1)(a) or (b); (c) that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3)." Krone relies on paras (b) and (c). 9 Subsection 18(1) of the Act provides, relevantly, as follows: "(1) … a patentable invention is an invention that, so far as claimed in any claim: (a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and (b) when compared with the prior art base as it existed before the priority date of that claim; (i) is novel; and (ii) involves an inventive step; … " Krone submitted that the claimed invention was not a manner of manufacture within the meaning of s 6 of the Statute of Monopolies, was not novel and did not involve an inventive step when compared with the prior art base as it existed before 24 February 1992. The notion of novelty is explicated in s 7(1), and that of lack of inventive step in ss 7(2) and (3), of the Act. Section 7 is, relevantly, as follows: "(1) …………………………………………………………………………………… (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." (emphasis supplied) The expressions "prior art base" and "prior art information" are defined in the Act (s 3 and Schedule 1) relevantly as follows: "prior art base means: (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; and (b) …………………………………………………………………………………… prior art information means: (a) …………………………………………………………………………………… (b) for the purposes of subsection 7(3) - information that is part of the prior art base in relation to deciding whether an invention does or does not involve an inventive step." 10 In addition to submitting that the claimed invention is not a patentable invention on the three grounds mentioned above, Krone submits that the specification does not comply with s 40(3) of the Act. That provision is as follows: "40(3)The claim or claims must be clear and succinct and fairly based on the matter described in the specification." Krone submits that claim 1 fails to satisfy this requirement in two respects: first, the claim is not fairly based on the only invention described in the specification; second, the words at the end of the claim, "whereby crosstalk of electrical signals between conductors in the electrical connector is reduced", are uncertain or ambiguous or both, and so cause the claim not to be "clear", as required by s 40(3). 11 Finally, there is the priority date issue to which I referred earlier. Section 102 of the Act provides, relevantly, that an amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment, the claims of the specification would not in substance fall within the scope of the claims of the specification before the amendment. 12 Section 114(1) of the Act provides as follows: "114(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." Patents Regulation 3.14 provides, relevantly, that if subs 114(1) of the Act applies to a claim, its priority date is the date of filing of the statement of proposed amendments that resulted in the disclosure referred to in subs 114(1). Accordingly, the priority date of claim 1 will be 29 September 1995 if the matter claimed was in substance disclosed as a result of the amendments; otherwise it is 24 February 1992. 13 I will address the issues indicated above, but in a sequence different from that above.
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.
Certain submissions of Lucent as to applicable legal principles
Level of inventiveness 54 Lucent seeks to emphasise, and I accept, that a "small" element of inventiveness is sufficient to sustain a patent and that simplicity is not to be equated with obviousness: cf Graham Hart (1971) Pty Ltd v S W Hart & Co Pty Ltd (1978) 141 CLR 305 at 333-334 (Aickin J); Allsop Inc v Bintang Ltd (1989) 15 IPR 686 (FCA/FC) at 701 (Bowen CJ, Beaumont and Burchett JJ). Similarly, an "invention" may be arrived at in different ways, as well by a "flash of genius" that involves no concentrated thought, as by a prolonged investigation and exercise of the inventive faculty; cf Crane v Price (1842) 1 Web Pat Cas 393 at 411; I G Farbenindustrie AG's Patent Application (1930) 47 RPC 289 at 322; Dow Corning Corp's Application [1969]RPC 544 at 560. Similarly the inventor may or may not be conscious of the inventiveness of the step taken; cf Wellcome Foundation Ltd v V R Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286 (Aickin J) .
Danger of hindsight 55 Lucent further seeks to emphasise, and I recognise, the danger of hindsight. It submits that the expert evidence led by Krone has reflected the benefit of hindsight. It refers to the warnings against the benefit of hindsight sounded in such cases as Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd (1972) RPC 346 at 362; Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 at 60-62 (Latham CJ); Graham Hart (1971) Pty Ltd v S W Hart & Co Pty Ltd, above at 332; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 293-4 (Aickin J); Wellcome at 286; Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 351 (Burchett J); and Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173 (FCA/FC) at 193-194 (Sheppard J).
Commercial success 56 Finally, Lucent submits that commercial success points in the direction of inventiveness, referring to General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 503. There is evidence showing that a commercial embodiment of the invention known as the M100 connector is a highly successful product and represented 90 per cent of sales of Lucent's M-type connectors in mid-1995. 57 I attach little weight to this consideration. Commercial success may be attributable to causes other than inventiveness inherent in a product. It may, for example, be due to skilful or intense promotion of the product. Commercial success might be probative of inventiveness if there had been a long felt need in the market for a solution to the problem of cross-talk in electrical connectors and previous unsuccessful attempts by others to solve the problem. These, however, are not the facts of the present case.
Position as at the priority date 58 Lucent made detailed submissions addressed to the state of the art as at the priority date of 24 February 1992. At that date the relevant standard was that represented by The United States Standard ANSI/EIA/TIA-568 of 1991. Mr Georgevits said that in practice, if The United States telecommunications industry decides that a particular form of connector is to be one of its standards or de facto standards for communications equipment, usually that form becomes a standard throughout the world because of United States dominance in the communications and information technology industries. 59 Lucent relies on the fact that a Siemon publication, while making much of the need for UTP cabling, did not suggest anywhere that existing modular plugs and jacks were unsatisfactory. The booklet boasted of the "Siemon 66" Block and the "MultiFlex" Block as being satisfactory. It emphasised that "[w]ithout a doubt, the single most important factor is the cable" and that the reader (of the booklet) should "maintain the twist of the wire pair right up to the point of termination". 60 A booklet called "Wiring for the Future" published by The Siemon Company in The United States in "Spring 1991" referred to the then, soon-to-be-released-in-The United States, "EIA/TIA-568 Commercial Building Wiring Standard" as "a new standard created by the telecommunications industry for the industry". 61 The United States '568 Standard of 1991 was adopted in Australia on 1 April 1992 (that is, a little after the priority date) as AS 3080:1992. Although AS 3080:1992 itself is not in evidence, the draft of the '568 Standard is, and there is uncontroverted evidence that in terms of its technical content, AS 3080:1992 simply reiterated the '568 Standard which, in turn, simply reiterated the draft '568 Standard. The draft '568 Standard was dated 11 October 1990 and allowed a "comment period" up to 11 December 1990. Paragraphs 12.2.6.2 and 12.2.6.2.1 of the document required the connector to operate satisfactorily at 1-16MHz. There was no requirement that it operate satisfactorily at 100MHz. Accordingly, it seems correct to say that as at the priority date the relevant Australian Standard was about to require connectors to operate satisfactorily at 1-16 MHz. 62 Lucent submits that the documents of the time show that it was regarded as satisfactory to use existing connecting hardware at up to 16 MHz and that any cross-talk difficulties were regarded as satisfactorily addressed by the use of UTP cabling. It submits as follows: "In short, immediately before the priority date, there was no identified problem of crosstalk in modular plugs and jacks that was not addressed by proper wiring management. The solution to any problem was not to modify the jacks and plugs, but to use existing plugs and jacks with unshielded twisted pair wiring." 63 Lucent refers, in particular, to the affidavit testimony of Mr Freestone that by 1991 his employer, MOD-TAP Australia, was selling in Australia LAN ("Local Area Network") tested connector products for high performance data communication channels and using standard RJ-45 equipment for the purpose. Nowhere is it said that this gave rise to a problem or that the RJ-45 equipment might need to be modified. A generally similar observation is applicable to "Suttle" and "Allnet" products that were on the market at the time. 64 Mr Georgevits testified that as at February 1992 a lot of the connectors available for purchase were printed circuit board based; that it was only around that time that the "structured cabling" system (that is, the RJ-style connector) really began to come into its own; and that it was not until about 1993-1996 that most connectors became lead frame based. 65 Lucent submits that I should not accept on the evidence, particularly that of Mr Freestone, that at the priority date engineers already appreciated that cable performance at up to 100 MHz was about to be required and it submits that in any event I should accept that engineers understood that at frequencies of that order, and of course also at 16 MHz, the existing connecting hardware worked quite satisfactorily with UTP cabling. Lucent submits that I should accept that the common general knowledge of engineers skilled in the art was that at the new higher frequencies, the only alternatives to an expensive IEEE802.5 Medium Interface Connector available at the time were "twisted conductor pairs (employing insulated wire)" and "printed circuit boards with capacitance compensation techniques". That is, the problem of cross-talk posed by the new higher frequencies was before those skilled in the area yet they did not think of modifying the connector plugs and jacks as AT&T did. 66 Mr Georgevits referred to a discussion draft standard, EIA PN-284l, dated 9 September 1991, in support of his testimony that it was well known in the Australian industry that cable performance up to 100 MHz would soon be required. In cross-examination he said that he could not say when he received the draft standard EIA PN-2841 which originated in The United States, and that he may have received it after the priority date, 24 February 1992. The document PN-2841 is headed "Technical Systems Bulletin - Additional Cable Specifications for Unshielded Twisted Pair Cables" and was prepared by a "Task Group on High Performance UTP Cables" and was distributed to "EIA/TIA TR-41.8.1 members" for discussion. It suffices that I set out the document's statement of its "SCOPE AND PURPOSE": "The purpose of this document is to provide information on the transmission characteristics of a new generation of high performance unshielded twisted pair cables. These cables are currently not specified in EIA/TIA-568 (July 1991) standard since they were still under development and their performance levels were not firmly established when the standard was published. As LAN ["Local Area Network"] speeds increase and users migrate to higher performance UTP cables, it is important for the industry to provide guidance on the categories of cables available for data applications higher than 10 Mbps. The cables currently specified in EIA/TIA-568 standard are designated as category 3 cables and are intended to support voice and data applications up to 10 Mbps. In order to provide cables for data applications above 10 Mbps, two new cable categories are defined as follows. a) Category 4: The characteristics for these cables are specified up to 20 MHz and are intended to support data applications operating up to 16 Mbps. b) Category 5: The characteristics for these cables are specified up to 100 MHz and are intended to support certain data applications operating up to or higher than 16 Mbps." (emphasis supplied) 67 I accept that by the priority date it was known in Australia that cables, and therefore connectors, were about to have to accommodate frequencies of up to 100 MHz. 68 Professor Tucker was cross-examined about the state of knowledge in the telecommunications industry as at the priority date as to the advent of higher frequencies. His cross-examination included the following: "The RJ-45s in use in Australia before 1992 had four wire pairs of conductors; is that right?---Yes. And those four wire pairs were parallel?---Yes. And close together?---Yes, that's correct, yes. That arrangement would give rise to some degree of crosstalk when signals were put through the connector?---Yes, that's correct. Skilled electrical engineers in Australia before 1992 using these things would have known that too, wouldn't they?---They would recognise, because of the structure that you described, there would be crosstalk, yes. The crosstalk, you agree, that would arise in an RJ-45, would not have been a problem at low frequencies, would it, as a practical matter?---Given that low frequencies means something below around a megahertz, the crosstalk would not be a problem. If there came to be a need to use these RJ-45s at frequencies the range of 1 to 16 MHz, crosstalk became a problem then, didn't it?---That's correct. And skilled engineers in Australia before 1992 using these things would have known that?---That's correct. Do you know that the standards came into force in 1990 and 1991 which required these connectors, RJ-45s, to operate at 1 to 16 MHz?---The standard specified connectors that satisfied the Specification, yes. To operate at up to 16 MHz?---Yes. So at that point in time when those standards came in, there would have been a need to find a remedy for the crosstalk?---Yes, that's correct. You also know, don't you, around about late 1991, there were standard or proposed standards that would require operation of these connectors at up to 100 MHz frequency; is that right?---I am not aware of standards that required these connectors to operate. You are not aware of a cabling or connector standard of 1991?---There were standards in 1991 regarding operation of cables, I understand, of 100 MHz and higher. If you had cables required to operate at above 100 MHz, the connectors used with the cables would also have to cope with 100 MHz?---Correct." 69 I can state now my findings and conclusions relevant to the above submissions. 70 Shortly before the priority date, standards came to require cables and therefore connectors to operate at higher frequencies than previously, in fact at frequencies of up to 16 MHz, and this gave rise to the problem of cross-talk at unacceptably high levels in connectors. Moreover, by the priority date it was known in Australia as well as in The United States that connectors would soon have to accommodate frequencies of up to 100 MHz. There was a connector (the Medium Interface Connector) which overcame cross-talk at frequencies of up to 16 MHz, but it was relatively expensive and represented a departure from the standard plugs and jacks used in telecommunications applications. Clearly, it would be advantageous to achieve acceptable reduction of cross-talk within the standard plugs and jacks in use. For the reasons mentioned, this could have been appreciated within only a year or two before the priority date. 71 I think that Lucent's submissions attempt to extract a significance that is not justified from certain circumstances at about the priority date. The advent of "higher data rates" was referred to as a recent development in the specification. It is not to be expected that a problem of cross-talk within connectors in the context of the higher data rates would dawn at the same time on all those skilled in the area as a problem calling for a solution. Nor do I think that the mention of 16 MHz in paras 12.2.6.2 and 12.2.6.2.1 of EIA '568 signifies that those skilled in the area had accepted that at the higher frequencies of up to 16 MHz, let alone of up to 100 MHz, there was or would be no problem of cross-talk within connectors not satisfactorily met by UTP cabling. In sum, the circumstances on which Lucent relies do not persuade me that others skilled in the area had already had a reasonable time and opportunity to perceive, but had failed to perceive, the availability of crossing of conductors within connectors as the solution to a problem. That is, those circumstances do not persuade me that others skilled in the area would not very soon have found it an obvious course to try crossing within the connector to overcome cross-talk originating there. 72 Mr Freestone said that the preferred system in wide use before February 1992 was what was called a Structured Cabling System ("SCS") which used UTP cables and connectors. He said that before February 1992 either (a) conductors were crossed inside the connector, or (b) printed circuit boards with capacitance compensation techniques were used to reduce cross-talk. Lucent submits that Mr Freestone could not have been referring to the crossing of non-insulated wires inside the RJ-45 jack itself but to UTPs. I agree. Mr Freestone also said that there were other connectors which lacked any means at all of reducing cross-talk. According to him, the UTP SCS system was preferred because of its low cost, good performance, reliability and open system architecture (ability to be used with the equipment of many vendors). 73 In my opinion, however, Mr Freestone's evidence does not establish that at the new higher data signal rates, the problem of cross-talk originating inside an RJ-45 connector was generally accepted as being satisfactorily handled. 74 The circumstances that prevailed at the priority date are to be distinguished from hypothetical ones in which for a considerable period there had been a pressing problem of cross-talk originating within RJ-45 connectors which those skilled in the area had been able to counter only by the less than ideal means identified earlier. Accordingly, the fact that no-one else had suggested crossing of conductors within the connector before AT&T did is not inconsistent with that solution's being obvious. Did "twisting" as a transmission line solution make "crossing" an obvious solution to adopt within the connector? 75 Lucent accepts that the device of "crossing" as known as at the priority date was well known "in the context of telephone systems where what is taught is the constant transposing (interchanging) of wires in accordance with systematic or coordinated patterns of line transposition and the use of compensating units therewith." 76 But Lucent submits that the technical literature in evidence was not concerned with conductors in general but specifically with telephone lines and cables. An important part of its response to Krone's case of obviousness is that transmission line theory as understood in that context did not teach the use of a single cross-over to reduce cross-talk within a connector. Lucent submits that "[e]lectrical connectors provide a much more complicated arrangement of conductors and stray capacitances [than telephone lines and cables]". Further, it submits that the published literature of the time shows that as at the priority date, other solutions, such as "physical separation" and "shielding" rather than a single cross-over within the connector, were being employed. Lucent submits: "At the priority date … the art had advanced to crosstalk being reduced by unshielded twisted pair cabling using unmodified RJ45 jacks. It was only after the invention in suit that others entered the field with a solution that employed the concept of a simple single cross-over in a conductor pair." 77 Krone argues that as at the priority date cross-talk reduction had been accomplished at low frequencies by means of "unshielded twisted pair cabling" and that twisting or crossing of conductors was a well established technique in the field for reducing cross-talk, so that with the advent of higher frequencies an engineer would have tried "crossing" of conductors within the connectors. 78 Krone's expert witnesses treat the notions of "twisting" and "crossing" interchangeably in their affidavit evidence. For example, Mr Freestone refers to certain MOD-TAP connectors which were in the market at the priority date as instances of the crossing of conductors within connectors when what is referred to is in fact unshielded twisted pair cabling. Mr Georgevits and Mr Scott use both words in contexts that show that they treat twisting as simply "continuous crossing". Mr Georgevits states expressly that pair twisting is "in effect, multiple crossing of the conductors". On the other hand, Professor Tucker, states: "I believe that it is important to draw a distinction between twisting and crossing over of conductors. In my view, 'twisting' of conductors refers to a continuous and repetitive spiralling of the two conductors. A common example is UTP cable. Another example is the twisted wires connecting the RJ45 jack nuts to the IDC's in Exhibit KGF-5. On the other hand, 'crossing over' refers to single transitions [sic - "transpositions" ?] of one conductor with respect to the other. In the context of these proceedings, a typical crossover is of the kind described in the Specification. I can see no evidence of crossovers in Exhibits KGF-4 and KGF-5." (Exhibits KGF4 and KGF5 were MOD-TAP connectors which were exhibited to Mr Freestone's affidavit). 79 Mr Freestone does not accept the distinction drawn by Professor Tucker and maintains that: "To achieve a twist, the conductors must be so arranged that the path of one conductor crosses over the path of another of the conductors. It is at this cross over point that cross-talk is reduced. The fact that in the Mod-TAP connector the conductor continues to cross over the other conductor a number of times is irrelevant. What is important is that cross-talk reduction commences at the point of cross over." 80 It is not in dispute that the purpose of both a single crossing and twisting ("repetitive" or "continuous" crossing) is to reduce cross-talk and that both operate on the principle that by transposing conductors cross-talk is reduced. Professor Tucker conceded in cross-examination that "the basic principle [of twisting and crossing] is the same". However, he maintained that there was a "functional difference" or a difference of "details" as between the two methods. In cross-examination Mr Georgevits qualified his affidavit evidence that "crossing (or twisting) of conductors [was] one form of transposition of [conductors]" and that: "[a]ll forms of transposition (and therefore, crossing) may be considered to be electrically equivalent since the purpose and, if done successfully, the effect is to reduce anti-phase signals to cancel out crosstalk". 81 He conceded in cross-examination that twisting "implie[d] a continuous rotation" akin to a "helical" structure with conductors "winding around each other", whereas the specification referred to one conductor crossing over another, not to twisting. 82 Professor Tucker's evidence is that twisting or multiple cross-overs and single cross-overs are applied in different contexts. According to Professor Tucker, the device of twisting or multiple crossings is used in the context of transmission line theory where the circuits are distributed due to the physical length of the transmission line being "not short" comparable to the wavelength ("distributed-element circuits"), whereas a single cross-over is employed where the transmission line is short compared to the wavelength, and can therefore be considered as giving rise to a localised or lumped problem. 83 Professor Tucker thought that if, contrary to his view, the skilled engineer would have thought it appropriate to apply transmission line theory to the RJ-45 connector, he or she would have first used multiple crossings, as in the case of unshielded twisted pairs, and not the single cross-over of the specification. 84 Any distinction between twisting and crossing is relevant to an assessment of Krone's argument that transmission line theory is applicable to RJ-45 connectors and would result in a single cross-over within them. That is, the question is whether the common use of multiple cross-overs in transmission lines would translate into a single cross-over in the context of the RJ-45 connector. 85 The specification does not state or, in my view, imply, that multiple cross-overs would not give rise to an infringement. The essence of claim 1 is that within the connector the path of one non-insulated conductor crosses over the path of another without making electrical contact with the latter, and in my view this happens whether cross-over occurs once or more than once and is in either case suggested by the twisting within the UTP cabling leading to the connector. The specification states expressly that "although a particular embodiment of the invention has been disclosed, various modifications are possible within the spirit and scope of the invention". In my view, Lucent seeks to draw too much from the distinction between single and multiple cross-overs or twisting. 86 I do not think that for purposes at hand there is a significant difference between twisting and crossing. As noted above, Professor Tucker agreed that the "principle" of both is the same and that before 1992 twisting or crossing was well known in Australia for dealing with cross-talk in parallel transmission line circuits. This, coupled with his statement that the conductors inside the RJ-45 connector are "partly parallel transmission lines", suggests the conclusion that as at the priority date it would have been at least an (if not, the) obvious solution to apply crossing, whether single or multiple, within RJ-45 connectors. 87 This leads to the question of the applicability of transmission line theory to the RJ-45 connector.
Was transmission line theory obviously applicable within the RJ-45 connector? 88 Although the analysis of Professor Tucker differs from that of Mr Scott, the evidence of both was that the conductors within the connector are short at 1 MHz, 16 MHz and 100 MHz. Standard EIA/TIA-568 also states that the RJ-45 connector was considered to be "electrically short relative to the wave-length of the 16 MHz signal". 89 However, Professor Tucker and Mr Scott draw different conclusions from the fact that the conductors in the RJ-45 connector are electrically short. Professor Tucker maintains that lumped circuit theory would be the solution tried first by a skilled engineer, while Mr Scott asserts that transmission line theory would be. 90 Professor Tucker conceded that the conductors in the RJ-45 connector are "partly parallel transmission lines". For him that part was the parallel conductors running along the surface of the dielectric block. The part that was not of that nature was the bent back section. In his opinion, since the former part was electrically short and was only one of two sources of the cross-talk originating in the connector, a skilled engineer would not have thought to apply transmission line theory and would have applied a lumped solution. Professor Tucker conceded that transmission line theory can, in principle, be used to describe, and can be applied to, any electrical circuit. However, he said that: "in practice lumped-element theory is generally simpler and the preferred approach in situations where the physical dimensions of the elements is very short compared to the wavelength." and added later: "… when the lines are electrically short, the lumped-element approach provides a simple, intuitively accessible, and accurate analysis tool. Furthermore, in the decades leading up to February 1992, lumped circuit theory lay at the very core of undergraduate electrical and electronic engineering courses in Australia. Lumped circuit theory pervaded these courses, and an engineer in Australia in February 1992 would automatically turn to lumped circuit theory to solve problems where the circuit elements are electrically short." As already observed, Professor Tucker did not contend that transmission line theory cannot be applied to the problem of cross-talk in the RJ-45 connector. Rather, he said that transmission line theory is "not necessary in calculating cross-talk in RJ-45 connectors". 91 Mr Scott agreed that it may not be necessary to use transmission line theory at the frequencies mentioned in the specification, that is, up to 16MHz, but said that transmission line theory would be essential at higher frequencies in the order of say 100 MHz: "Treating circuits or circuit elements [in terms of lumped element circuit theory] …can, where appropriate, be useful because it often simplifies the mathematical analysis of the circuit or element in question. Such a treatment is an approximation only, but inaccuracies involved are negligible in some practical situations. Generally, however, signal propagation delays become more important as signal frequency rises, (as is the case at the frequencies indicated in the AT&T Specification). Because of this, lumped element circuit theory is generally only appropriate in lower frequency analysis, and transmission line theory more appropriate for high frequencies. In principle, however, transmission line theory is of universal application, even to DC circuits. The likelihood of a lumped impedance solution being adequate decreases as frequency rises." Mr Georgevits acknowledged that some cross-talk in an RJ-45 connector might "arise from effects [which were] not necessarily … transmission line effects" but that it would not be significant and that transmission line effects would form the primary source of cross-talk at high frequencies. 92 Professor Tucker himself stated that: "The criterion for determining what is an electrically short circuit element will depend to a degree on the level of precision that is required in the engineering calculations." 93 I find · that where a transmission line was regarded as electrically long, transmission line theory (or travelling wave theory) was regarded as necessary; · that where conductors were regarded as electrically short, the use of transmission line theory was regarded as appropriate but not necessary and an alternative simpler though less accurate analysis, in particular, "lumped-element" circuit theory, was also regarded as appropriate; · that due to the greater accuracy of transmission line theory as opposed to lumped circuit theory and the common general knowledge of electrical engineers that Australian standards would soon have the effect of requiring the RJ-45 connector to operate at higher frequencies of the order of 100MHz for which greater accuracy of calculation was desirable, coupled with the fact that that connector was, at least to a substantial degree, of the nature of a transmission line, transmission line theory would have been treated by skilled electrical engineers as the theory most obviously applicable to solving the problem of cross-talk originating within the RJ-45 connector; · that as the conductors in the connector are short, only one cross-over would be tried at first, particularly because this would be less complicated than multiple cross-overs. 94 Evidence was led from Professor Tucker directed to showing that the source of cross-talk within the connector was not simply an analogue of parallel transmission lines. In particular, Lucent relied on his evidence as showing that cross-talk within the connector was sourced, in part, to the "bent back section" and that transmission line theory was inapplicable to that section. As noted earlier, Professor Tucker calculated the contribution of the bent back section as 33 to 40 per cent. 95 The point of contact between the conductors and the plug are in the nature of "parallel plates" which, according to Professor Tucker, "behave electrically as lumped capacitors and will introduce crosstalk". There seems to be no particular significance for present purposes in the fact that the configuration of part of the connector is "bent back". It is bent back in order to provide tension to facilitate a tight connection of the plug with the jack. But for the purpose of the present discussion about the obviousness of the applicability of transmission line theory, the position would be the same if the conductors continued in "unbent" parallel straight lines, on the theoretical hypothesis that the nature of the contact with the jack remained the same (in fact, apparently it could not remain the same). 96 Professor Tucker said that some cross-talk arose from the "parallel plates", each of which was about 6 square millimetres in area. Professor Tucker did not calculate the contribution to cross-talk within the connector of the bent back section alone: he included that of the plug contacts as well. His calculation was based on an overall effective length of all conductors in the jack and plug that contribute to cross-talk of 34.2 millimetres as measured by Mr Georgevits or 25 millimetres as estimated by Professor Tucker himself based on a drawing in evidence, and a length of the bent back section (including the contacts of the plug) of 17 millimetres. Of this length of 17 millimetres, 15 millimetres represented the length over which there was plug contact. Professor Tucker estimated that the capacitance of the parallel plates would be roughly the same as the capacitance of a 1.5 cm length of parallel conductors of the kind used in the RJ-45 jack and concluded, therefore, that "[i]n terms of the total capacitive contribution to crosstalk the effective length of the bent back sectio[n], including the contacts of the plug is of the order of 1.7 cm". 97 This evidence gave rise to the following cross-examination of Professor Tucker: "What you did is you took a number 1.7 centimetres - can I call that 17 millimetres? In that you included 15 millimetres for the plug, did you not, plug contacts?---Yes, that's correct, yes. So what you actually took in order to calculate, as you said, the crosstalk contribution by the bent back section, you didn't take only the length of the bent back sections, you took 2 millimetres plus 15 millimetres for the plug equalling 17 millimetres. That is right, isn't it?---Yes, I took a conservative - I did what one would call a conservative engineering calculation where I took the capacitance of the parallel plates on the jack which lie along the bent back sections and come in contact with it, along the region of … [the] gold plated area …, and in contact with those bent back sections where the gold is plated, the capacitor squares fit. In my engineering calculation, I took the effect of the parallel capacitors to override the bent back section in the region between - in the region where the parallel plates contact the bent back sections, and to that I added the section - the 2 millimetre section that protrudes beyond the parallel plate capacitors which is the 2 millimetres you identified a moment ago. The point is you included 15 millimetres for the plug contacts?---That's correct, an effective value. So what you calculated is not really the contribution by the bent back section alone, is it?---No, it is not. If you took the plug measurement out, the 15 millimetres of the plug, you would then get a number of two to be divided by the length of the conductors in the jack, 34.2, wouldn't you?---No, I would not. Why not?---If I was to remove the effect of the parallel plate capacitors, and if that was a correct thing to do, then I would be left with the full length of the bent back section which is approximately 1 centimetre long … . If there were no bent back sections there at all, for instance, suppose there was not, the plug would still make a contribution to the crosstalk in the connector, wouldn't it, the plug contact?--- No, it would not. Why is there a difference between when the bent back sections are there and when they're not?---Because if the bent back sections are not there, the jack could not make contact with anything and there would be no mating and there would be no crosstalk. The bent back sections have to be in place in order to permit the jack and plug to properly interconnect." 98 However one may assess the effect of this cross-examination, Lucent's submissions do not detract from the proposition that a substantial part of the conductors within the RJ-45 connector was in the form of a transmission line. Even on the basis that 33 per cent to 40 per cent of the cross-talk originating in the connector arose from the bent back section, it has not been suggested that the invention eliminates only the remainder that originates in the remaining "transmission line" part or that if it did no more than that it would not be useful. But, more importantly, Lucent's submission is that a reasonably skilled but non-inventive engineer as at the priority date would have understood that the feature that 33 per cent to 40 per cent of the cross-talk emerged from the bent-back section rendered transmission line theory inapplicable and it is because of Lucent's inventiveness that it has now been shown to be applicable after all. I do not, however, accept this submission. 99 I find it difficult to think that the crossing of conductors, being a device used in the form of "twisting" in the UTP cabling leading up to the connector, would not have suggested itself as something worth a try within the connector itself. And I observed earlier, even if, contrary to my view, the hypothetical skilled but non-inventive electrical engineer would have thought of a lumped solution first, in my opinion he or she would have thought of the crossing of conductors very soon afterwards. Crossing of conductors was a very well known and tried device for overcoming cross-talk in transmission lines. A substantial part of the layout of the wires within connectors was of the nature of a transmission line. More than half of the cross-talk originating within the connector came from that part. In my view, skilled engineers would have thought the crossing of conductors within the connector obviously "worth a try".
Attacks on the evidence of the individual expert witnesses called by Krone 100 Lucent also made submissions dealing individually with the evidence of Krone's respective expert witnesses relating to the applicability of transmission line theory. I will refer to Lucent's attacks on their testimony in turn. 101 In his affidavit, Mr Scott described the conductors within the connector as a simple transmission line problem and said that both the cause of, and the solution to, the problem described in the specification would have been immediately apparent to him from his basic elementary professional knowledge in February 1992. He said: "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 opinion I … would consider and would have adopted before the priority date." 102 Lucent submits that it was central to Mr Scott's position as expressed in this passage that the bent back section in the RJ-45 jack would not make a significant contribution to cross-talk. In cross-examination Mr Scott accepted that if the bent back section made a 33 per cent to 40 per cent contribution to cross-talk within the connector that would in fact be a "significant" contribution. In cross-examination, he further conceded that the RJ-45 connector could not be seen as "just a transmission line". Later, he said that the lead frame could be considered, not as a simple layout of transmission lines, but as "a number of transmission line sections connected in cascade that have different characteristics". He said that the conductors within the connector could be considered "as transmission lines over their whole length but not a single transmission line, a number of different ones whose characteristics change as the geometry of the conductors changes." This analysis was not one which Mr Scott had advanced in his affidavit. I am not persuaded, however, that it was central to the substance of Mr Scott's position that the bent back section in the RJ-45 jack did not make a "significant" contribution to the cross-talk within the connector. 103 Mr Georgevits stated in his affidavit that he considered the bent back section of the connector not to be of any importance and stated that it would not have a significant effect on overall cross-talk within the connector. In cross-examination, however, he conceded that there were a number of features in the RJ-45 connector which could contribute to cross-talk and agreed that if the bent back section contributed 33 per cent to 40 per cent of the cross-talk, this was a "significant" contribution. He recalled reading in Professor Tucker's affidavit that Professor Tucker had calculated the bent back section's contribution to be of that order. 104 Although Dr McDonald said in his affidavit that it would have been obvious to him at the priority date to try crossing the conductors in an RJ-45 connector if and when cross-talk became a problem, he also said that although he had, by that date, seen and used many different types of high frequency connectors and designed and manufactured some, he was not familiar with RJ-45 plugs and sockets. Lucent submits that in the light of this, his evidence cannot be accorded any weight and is an illustration of hindsight analysis. 105 Mr Freestone said that it would have been obvious to him in February 1992 to adopt the principles in a MOD-TAP "White Paper#18-Cross Talk" published in 1989 but went on to say that adoption of the principles in that paper would have signified the use of UTP cabling with unmodified standard RJ-45 connectors. 106 In sum, Lucent submits that ultimately the evidence of the expert witnesses called by Krone is in accord with that of Professor Tucker, that is, that the connectors with which we are concerned cannot properly be seen as presenting a simple transmission line problem to which transmission line theory would have been seen to be obviously applicable. 107 Professor Tucker testified that "lumped circuit theory" was likely to be applied by the hypothetical skilled but non-inventive engineer leading to a "lumped solution". He said that such an engineer would have introduced a capacitor to overcome cross-talk. In support, Lucent points to the facts that the RJ-45 connector is "electrically short, even at 100 MHz"; that the '568 Standard recognised that the connector was electrically short; that it was accepted, by Mr Scott for example, that the connector could be analysed by reference to lumped circuit theory; and that lumped circuit theory could be implemented by an engineer much more efficiently and easily than transmission line theory, having regard to the fact that the connector was a complex structure rather than a simple one. 108 In relation to cost, Lucent points to evidence that capacitors and inductors cost only cents each; that there would be no additional labour costs involved in assembly; and that capacitors could be used on connectors employing lead frame technology. Lucent submits that the evidence of Krone's witnesses on the cost of production "really resided in no more than generalised assertions of desiderata", and that: "Anyone could say it is certainly worthwhile keeping costs down and avoiding the addition of parts and so forth and so on, but the fact is that these techniques [senior counsel referred to "printed circuit boards with capacitance compensation"] were being used in the industry at the time." 109 Lucent makes more particular attacks on the expert evidence adduced by Krone. It submits that Mr Georgevits had not been presented with the problem of reducing cross-talk in connectors before the priority date and that when he first came to consider the matter he had the benefit of AT&T's specification which gave him the answer. As well, he had a long association with Krone. Lucent points out that when Mr Georgevits had to consider the present problem in August of 1992, the solution which he was directed to adopt involved the mounting of RJ-45 jacks on printed circuit boards, using multiple parts and incurring the associated costs. That is, Mr Georgevits did not find it obvious to suggest the crossing of conductors. Later, Mr Georgevits applied for a patent which used the crossing of conductors. In doing so, he was, according to Lucent's submission, taking a stance that was inconsistent with that which he has taken in his expert testimony as a witness called by Krone. 110 Lucent submits that Mr Scott also did not give consideration to the question of reduction of cross-talk in connectors in high speed communications networks before the priority date. Moreover, when his affidavit was prepared, he had the benefit of having read a draft of Mr Georgevits' affidavit, that is, of having read the views of another expert to be called by the same party. It is therefore doubtful, according to Lucent's submission, that the views expressed by Mr Scott in his affidavit testimony represent his independent views uninfluenced by the views of others. 111 Lucent submits that Dr McDonald does not represent the skilled but unimaginative workman who possessed the common general knowledge in the art at the priority date because he was inventive, having been named as inventor or co-inventor in several granted or pending patent applications, and because he did not seem to have possessed, at any relevant time, knowledge on which Krone relies as common general knowledge in the art. For example, he had no familiarity with RJ-45 plugs and sockets or with the standards applicable to them. 112 I do not consider it incumbent upon me to address the above submissions. They do not detract from what is important to my mind, namely, that the crossing of conductors was a very well known technique for eliminating or reducing cross-talk in transmission lines; that at least a substantial part of the disposition of conductors within the RJ-45 connector was in the nature of a transmission line; and that the crossing (in the form of twisting) of conductors would, in the form of the UTP cabling leading up to the connector, have been before the eyes of an engineer charged with the task of eliminating or reducing cross-talk originating within the connector. These considerations made the crossing of conductors an obvious solution worth a try within the connector. 113 Since I am satisfied that 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 of claim 1, 24 February 1992, to try the crossing of conductors as a solution to the problem of cross-talk in the RJ-45 electrical connector, in my opinion, claim 1 does not involve an inventive step. 114 For the above reasons, I agree with the decision of the Commissioner. Claim 9 is narrower than claim 1 because it is tied to Figures 1 to 7 and 10 of the drawings. Claim 9 also fails for lack of inventive step for the reasons given above in relation to claim 1. 115 Senior counsel for Lucent submitted that if his other submissions should not find favour, his client should be allowed to amend to overcome deficiencies. He properly conceded, however, that this course might present difficulty in the case of a finding of obviousness. Since what I have held to be obvious is the solution of crossing of conductors within the connector and this is the heart of the supposed invention, it seems to me that amendment to overcome the objection is impossible.
CONCLUSION 118 In my respectful opinion, for the reasons given above, Lucent's application should be dismissed with costs.
I certify that the preceding one hundred and eighteen (118) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren.
Counsel for the Respondent: Mr J F Lyons QC and Ms E A Strong
Solicitors for the Respondent: Davies Collison Cave
Date of Hearing: 18, 19, 20, 21, 22, 25, 26, 27, 28, 29 October 1999
Lucent Technologies Inc
Krone Aktiengesellschaft
(1983) 3 IPR 449
(1981) 148 CLR 262
(1977) 180 CLR 236
(1971) 45 ALJR 593
(1968) 119 CLR 156
(1961) 106 CLR 588
(1954) 92 CLR 17
(1988) 13 IPR 385
(1991) 32 FCR 491
(1992) 25 IPR 173
(1980) 144 CLR 253
(1978) 141 CLR 305
(1989) 15 IPR 686
(1937) 59 CLR 30
(1989) 14 IPR 330