COMMON GENERAL KNOWLEDGE
93 We do not understand any aspect of his Honour's findings in this area to be in dispute other than that concerning the AT&T 110 connector. At [198], the primary judge said:
"The affidavit evidence initially read on behalf of Tyco did not establish that the AT&T 110 connector was available in Australia before the priority date. I permitted Tyco to read an affidavit by Mr Freestone relatively late in the hearing. I did so after giving 3M an opportunity to make enquiries concerning Mr Freestone's proposed evidence. 3M made diligent enquiries, but did not seek to cross-examine Mr Freestone or to adduce evidence at odds with his. Nor did it seek an adjournment to take its enquiries further."
94 In par 128 of Mr Weir's affidavit filed on 26 July 2000 he asserted:
"Exhibited to me and marked are exhibits JGW3 to exhibit JGW10 are examples of IDC connectors which I can say with confidence were available in Australia for purchase and use before the priority date."
95 Exhibit JGW10 is the AT&T 110 block connector. Similarly, Mr Georgevits said at par 68 of his affidavit sworn on 14 June 2000:
"Now exhibited to me respectively are exhibits GG7 to GG13 which are examples of connectors which I know were available, and in commercial use, before the priority date."
96 Exhibit GG8 is the AT&T 110 block connector. It seems that the trial proceeded upon the basis that these opinions were not sufficient to establish that this piece of equipment was relevantly part of common general knowledge. Nonetheless the primary judge inferred from the evidence of Mr Freestone and Mr Ward that it:
"formed part of the background knowledge and experience available to all in the relevant field considering the making of new electrical connectors or the making of improvements to old electrical connectors … ."
His Honour considered that this inference was reinforced:
"… by the composition of the hypothetical skilled worker in this case. It is further reinforced by evidence that the AT&T connector was widely known shortly after the priority date. It is a fair inference that the promotional activities of Honeywell Pty Ltd before the priority date were by no means insignificant. Having regard to Mr Douglas's limited experience, I do not regard the fact that he could not recall seeing the AT&T connector prior to 1989 as being of significant weight on this issue."
97 Before us, neither 3M nor Tyco suggested that any other evidence in the case supported the conclusion that the AT&T 110 connector was part of common general knowledge at the relevant time.
98 The decision of the High Court in Minnesota Mining and Manufacturing Co v Biersdorf Australia Ltd (1979-1980) 144 CLR 253 (the "3M case") has long been accepted as defining the basis of obviousness for the purposes of the 1952 Act. Pursuant to par 100(1)(e) of that Act it was a ground of revocation that:
"… the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim … ."
99 The words "what was known or used in Australia on or before the priority date of that claim" describe what is usually called "common general knowledge". This expression was defined by Aickin J in the 3M case at 292 as follows:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
100 In Patents for Inventions and the Protection of Industrial Designs by T A Blanco White (5th ed) at par 4-207, the learned author observed:
"The term 'common general knowledge' is used in patent law to mean that which is 'known to duly qualified persons engaged in that art or science'; or (in different words) that which is 'part of the mental attitude of a well-instructed representative of the class to whom the specification is addressed' and nothing else; or again, that which is 'part of the mental equipment of those concerned in the art under consideration'.
…
Common general knowledge is normally proved by reference to commonly used books; or by reference to what students of the art are taught; or by evidence of expert witnesses generally. It is not sufficient to show that information was published in a document having wide circulation in the art concerned, unless that information is also shown to have been 'generally accepted without question' (or at least, 'generally regarded as a good basis for further action') by the bulk of those in the art, and this is unlikely unless the information was actually used. A practice established amongst an important section of those in the art is part of the 'common general knowledge' for this purpose even though others in the art may not know of it, for a claim is invalid if it claims what was obvious to some, although to others what it claims was not obvious."
101 In ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577 at [111] - [112], Emmett J observed:
"111.
The notion of common general knowledge involves the use of that which is known or used by those who are in the relevant field or area. It forms the background knowledge and experience which is available to all in that field in considering the making of new products or making of improvements in old products. It must be treated as being used by an individual as a general body of knowledge … .
112.
The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorized and retained at the front of the skilled worker's mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
standard texts and handbooks;
standard English dictionaries;
technical dictionaries relevant to the field;
magazines and other publications specific to the field."
102 The 3M case marked an Australian divergence from the English position concerning the meaning of the expression "what was known or used" for the purposes of determining an assertion of obviousness. In HPM Industries Pty Ltd v Gerard Industries Ltd (1957) 98 CLR 424, Williams J (sitting as a single justice), had held that the words "known" or "used" embraced more than the common general knowledge of a skilled worker in the relevant field at the priority date and included everything disclosed by the literature on the subject, including prior specifications. His Honour had relied upon English decisions in reaching that conclusion. However, in the 3M case, the High Court took a different view.
103 At 294 - 295, Aickin J observed:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. … But this is not so in all fields or in all countries. There was no evidence in the present case that those working in Australia in the field of adhesives or of surgical tapes followed such a practice or that any of the specifications relied upon was part of the common general knowledge of those working in these fields in Australia.
The respondent relied upon a number of prior specifications which had been available in Australia for public inspection before the priority date as providing a basis for the argument that the invention claimed was obvious. For the reasons which I have set out above I do not regard such specifications as capable of sustaining that argument without evidence that they were part of common general knowledge at that time. There was no such evidence and accordingly it is not necessary for me to examine those specifications."
104 The difference in approach is demonstrated by the decision of Waddell J in Windsurfing International Inc v Petit (1983) 3 IPR 449 and that of the Court of Appeal in Windsurfing International Inc v Tabru Marine (Great Britain) Ltd (1984) 3 IPR 498. In each case a plea of obviousness was based upon prior public use. Waddell J applied the 3M case and found that the prior use was not relevant to obviousness, primarily because it was not shown to have become part of common general knowledge. In the English case, prior public use was held to establish obviousness without such proof.
105 The evidence on this aspect of the case was at best, equivocal. Out of fairness to Tyco it is appropriate to refer to the affidavits themselves rather than to his Honour's understandably brief summary. Mr Freestone was the general manager of a large manufacturer of electrical, electronic and data communication products, including electrical connectors. He held a certificate in electrical engineering from a South African college and had lived and worked in South Africa until 1986. He came to Australia in May of that year and from that time until the beginning of 1987 was employed by a firm of electrical engineers as an estimator. This involved him in some telecommunication and data communication work. In January 1987 he joined a company called Shuttle Data Com Pty Ltd, which company distributed Mod-Tap cabling products. He was initially Victorian sales manager and in 1988, he became national sales manager. He held the latter position until December 1989. He was responsible for the distribution in Australia of products which were manufactured by a United States corporation, Mod-Tap System Corporation, including electrical connectors.
106 He participated in regular seminars at which he was informed of new Mod-Tap products and received regular updating by "white papers". These dealt with the theoretical aspects of structured cabling systems. He was also supplied with information concerning methods of effecting "interface" between the equipment of other manufacturers and the Mod-Tap system. He was familiar with competitors' products. Mod-Tap System Corporation published a catalogue of its available equipment which was extensively promoted throughout Australia prior to April 1989. There were frequent seminars and workshops, usually attended by about 200 people, including representatives of competitors such as Honeywell. Mr Paul Andres, the International Sales Director of MOD-TAP System Corporation, regularly visited Australia and advised as to new products being developed by that company and its competitors. Mr Freestone said that in 1987 he was aware that Honeywell was promoting the AT&T cabling system known as the Premises Distribution System ("PDS").
107 At some time in 1987 Mr Freestone attended the annual meeting of the Australian Telecommunications User Group (the "ATUG meeting") in Sydney. This was a major cabling and trade show for those working in the telecommunication and data communication industry. At that time new cabling standards were being developed for commercial building cables, and there was considerable interest in cabling systems. He thought that between 600 and 1,000 people attended the meeting on each of its three days. Large international and local telecommunications and networking companies were represented and had stands exhibiting their products. He said that the AT&T connector was prominently displayed at the AT&T stand and that the stand was "well attended". He paid particular attention to the AT&T 110 connector because Mr Andres had previously shown it to him and provided him with relevant literature. It was considered to be in serious competition with a MOD-TAP product. Mr Freestone said that prior to the ATUG meeting he had learnt that Honeywell was the exclusive distributor of the AT&T 110 connector and that it was using it in the PDS. He was also aware that MOD-TAP System Corporation was manufacturing products which were compatible with other manufacturers' products. AT&T had licensed that company to use the AT&T 110 connector in its products, and it was using the IDC unit from that connector in its systems. In 1988, in Australia, Mr Freestone saw a prototype involving such use. Curiously, he said that in 1988, he was aware of certain aspects of the AT&T 110 connector design, having been shown it by Mr Andres and having seen it at the ATUG meeting. One wonders why he referred to his knowledge in 1988 rather than at any earlier time.
108 Mr Ward was the managing director of Jamsam Ltd, an importer, manufacturer and distributor of electronic goods, holding a degree in electrical engineering from the University of Technology in Sydney. From 1972 until 1979 he was employed at Amalgamated Wireless Australia Pty Ltd in technical positions relating to electrical engineering. From 1979 until October 1987 he was employed as a telecommunications engineer at the Overseas Telecommunications Commission in which capacity he supervised a number of people who installed telecommunications cables in telephone exchanges. In October 1987 he joined the Commonwealth Bank as a project manager in the Information Services Department. One of his roles was to design telecommunications facilities, including a "universal signal reticulation system" for the new computer centre at Burwood in New South Wales. In order to perform this task it was necessary that he be acquainted with the "practices of cabling and connections that were available in Australia at the time".
109 He said that in early 1988 he became aware of the AT&T 110 connector block and subsequently visited the Honeywell premises at Waterloo in New South Wales to inspect it. During the visit he saw the connector as part of the PDS. He also saw a mock-up of the PDS and slides describing the AT&T 110 connector, as well as several other examples of it. He later incorporated the connector into the system being designed for the Burwood Computer Centre, the plans for which were submitted to the bank "by about May 1988". In mid-1988 the system was tested on a small scale and then installed. The centre opened on 16 December 1988.
110 It is worth adding that Jane Maree Hogan, a solicitor employed by Freehills, 3M's solicitors, gave evidence based on her enquiries. She said that the 1987 ATUG meeting was held early in April of that year. She also said that despite inquiries, 3M had been unable to discover any significant evidence as to the marketing of the AT&T connector in Australia at any relevant time. As we have observed, his Honour noted that the material upon which Tyco eventually relied in this regard was introduced into evidence at a late stage. Although 3M had an opportunity to respond, Ms Hogan's affidavit demonstrates the difficulties which were understandably experienced given the passage of time since the events in question and the late stage at which the matter was raised. It seems that 3M tried to obtain documentation from Honeywell and also from Lucent Technologies Pty Ltd, to which AT&T had transferred some of its business. Honeywell identified Michael Gordon Adcock as an employee who had been involved in the PDS business conducted by that company. Mr Adcock was not aware of any sales records concerning AT&T block connectors. Honeywell "virtually exclusively sold systems, not discrete connectors in PDS." Connectors were a minor part of such a system which was substantially composed of cabling. Honeywell had been selling the PDS for approximately two years prior to Mr Adcock joining the company in 1991. This suggests that Mr Freestone was in error in his belief that Honeywell was marketing its PDS prior to the ATUG meeting. Mr Adcock said that at the time he joined Honeywell, the revenue from its PDS business was about $10 million per annum.
111 Mr Freestone's evidence focussed on the 1987 ATUG meeting. By that time he had some knowledge of the AT&T 110 connector and for that reason, paid particular attention to it when he saw it on the stand at the meeting. No doubt, as he suggested, a substantial number of people attended the meeting, but it is difficult to know how significant those numbers were in the absence of any evidence as to the size of the skilled workforce in the industry. It is also impossible to know how many of the 600 to 1,000 people who attended on each day of the meeting would have been relevantly skilled persons or how representative they were of such persons in the industry. Mr Freestone asserted that the AT&T 110 connector was featured on the AT&T stand and that the stand was well patronized, but it is impossible to infer from these subjective assessments that those visiting the stand looked at the product sufficiently closely to have identified the relevant aspects of it. After all, the question must be whether or not the strain relief and wire retention features of the AT&T component became part of common general knowledge as a result of its exhibition. No doubt many people would have looked in a general way at the equipment without necessarily identifying such features.
112 Mr Freestone also referred to a catalogue of Mod-Tap products which was widely distributed within Australia. However there is no evidence to suggest that the relevant features of the AT&T 110 connector were disclosed in it. As to the suggestion in par 16 of his affidavit that Honeywell was distributing their PDS prior to the ATUG meeting and that it contained the AT&T 110 connector, there was really no evidence as to the extent of such distribution. Ms Hogan's information (derived from Mr Adcock) suggested that it was first marketed in 1989. There was no evidence as to when the Mod-Tap product, which also included the AT&T connector, was first marketed in Australia or as to the extent of such marketing. It is of some significance that notwithstanding Mr Ward's involvement in the industry prior to 1988, he did not become aware of the AT&T 110 connector until early in that year. This suggests that the disclosure made at the ATUG meeting had no impact upon his share of common general knowledge. If Honeywell was, at that time, marketing the PDS which included the AT&T connector, there was no evidence as to the extent of that marketing, save that Mr Ward acquired the product for the Commonwealth Bank's use. Such use itself could hardly have resulted in the product becoming widely known throughout the industry.
113 We were not referred to evidence from any of the experts called in this case as to the status of the AT&T connector as part of common general knowledge. Disclosure at a trade meeting may lead to particular information becoming part of common general knowledge. If such information were disclosed in a paper, for example, and if the evidence established wide distribution of the paper thereafter, or even that the relevant group of skilled workers was well-represented at the meeting, there may well be a basis for inferring that the information became so widely known and accepted as to be part of common general knowledge. Public use may be a different matter, especially where the relevant information comprises only one aspect of the equipment in question. Some disclosures will be more likely than others to result in incorporation of relevant information into common general knowledge . Incorporation may be inferred, but it may not be assumed.
114 We are well aware of the need to accord due deference to opinions as to matters of fact formed by a trial judge. He or she has usually seen the witnesses and developed a deep understanding of the case, often over a period of days, if not weeks. It is not always possible for members of an appellate court to acquire the same depth of understanding. However, where the question is one of inference from largely undisputed facts, an appellate court cannot always avoid assessing the trial judge's view in light of that which it has itself formed. This is such a case. In our view there was insufficient evidence to justify the conclusion that the AT&T connector was part of the relevant common general knowledge as at the priority date. It should have been possible to ascertain the extent to which the AT&T connector had been distributed prior to that date. Similarly, it should have been possible to obtain anecdotal evidence from relevant engineers and technicians as to their knowledge of it, however derived. Such evidence would have had direct bearing upon the question of whether it had become part of common general knowledge.