NOVELTY
11 The applicant's want of novelty case relates to Claims 1, 2, 6, 7, 9-16, and 18-23.
12 It is a ground of opposition that the invention is not a patentable one (s 59(b)), and that would be the situation if the invention, so far as claimed in the claim concerned, were not novel (s 18(1)(b)(i)). Under s 7(1), the matter of want of novelty is to be considered in the light of, amongst other things, prior art information made publicly available through doing a single act, or through doing two or more related acts if the relationship between them is such that a person skilled in the relevant art would treat them as a single source of that information. For these purposes, "prior art information" is "information that is part of the prior art base in relation to deciding whether an invention is or is not novel", the prior art base comprising, relevantly to the present case, "information made publicly available through doing an act, whether in or out of the patent area".
13 On its novelty case, the applicant called two witnesses of fact, Desmond Erickson and Benjamin David Hughes. Mr Erikson is a metallurgical engineer who was employed by Quality Steel Foundries Ltd ("Quality Steel") of Nisku, Canada, from 2 February 1997 until 1 July 2005. At the times which are presently relevant, his position was Metallurgical Engineer, IT Manager and Specialist. He was responsible for all foundry metallurgical operations, supervision of the melt lab and quality control, failure analysis and root cause analysis. His office overlooked the foundry floor, and he was on the floor "multiple times every day". He was very familiar with all aspects of the manufacture of products by Quality Steel, including the development of those products from concept to pattern-making to casting, heat treatment and finishing.
14 Mr Hughes is a mechanical engineer with experience in the area of engineering which is relevant to this case. From 1998 to 2000, he was employed by ANI Wear Resistant Products, then the exclusive distributor for ESCO branded products in Australia. He was employed initially as a graduate engineer (responsible for product design and analysis), and then as an engineering supervisor (responsible for product management and management of the product design team in relation to ground engaging tools).
15 Between 2000 and 2010 Mr Hughes was employed by Shark Abrasion Systems Pty Ltd ("Shark"): as a Design Engineer until 2003 (responsible for the design and development of parts for Shark), then as an Engineering Manager until 2008 (responsible, additionally to the responsibilities of his role as Design Engineer, for supervising the graduate engineer employed by Shark), and finally as Research and Development Manager until 2010 (now responsible also for several new projects and for the supervision of manufacturing in Malaysia). Shark's primary business involved the development and production of components for use in the mining industry, particularly proprietary systems for the attachment of ground engaging tools to mining equipment such as excavators. Shark did not manufacture its own products, but used third parties to manufacture products to its design and specifications. A major part of Mr Hughes' roles as Design Engineer and Engineering Manager was working with the third party manufacturers on these products.
16 In September 2003, Mr Hughes and a director of Shark travelled to the premises of Quality Steel in Nisku. Quality Steel had been engaged by Shark to develop a shroud, a project which involved creating the necessary tooling and manufacturing and heat treating the finished product. Over the course of a week, Mr Hughes attended the foundry on "at least three or four days". During that time, he was commonly on the production floor, where there was a large number of products being manufactured, stored and prepared for shipment.
17 One of the products which Mr Hughes noticed was a wear attachment adapted to be secured to a lip adaptor on an excavator bucket by means of a locking pin. In the examples which Mr Hughes saw, the locking pins were fitted to the attachments. He noticed the locking pin because it was different to other locking pins available on the market at the time, and he thought it was "an easier and simpler solution to the problem of how to secure the teeth onto the lip adaptor, as being hammerless it would take less time and require less labour." The locking pin was threadably mated with a polymer retainer, such that the pin could be inserted into the retainer and secured by turning. Mr Hughes touched, picked up, and closely inspected the locking pin. He understood from his inspection of the pin that it was a very tight fit in the retainer, as the pin did not move when he picked it up.
18 Mr Hughes also saw a number of locking pins located within teeth (wear attachments used on excavator buckets). Here he could see the top of the pin, but could not see the retainer as it was within the cavity in the teeth. The head of the pin was proud of the surface of the teeth, which meant (to him) that the pin was not in the secured position. Had it been in the secured position, as Mr Hughes understood the situation, the pin would have been rotated such that the top would be approximately flush with the surface of the teeth, while the bottom would be protruding into the cavity of the teeth. The teeth which Mr Hughes saw were painted blue, and secured to a pallet located in the dispatch area of the foundry.
19 Mr Hughes discussed these wear attachments with employees of Quality Steel. They were "very open" in discussing the locking pin and in explaining how it worked. What Mr Hughes understood from his examination of the product was confirmed to him by those discussions, namely, that the polymer retainer was fitted to a recess in the cavity in the teeth and the locking pin was "inserted from the other side of the tooth, through the tooth and into the polymer retainer".
20 The locking pin/retainer arrangements which Mr Hughes saw at Quality Steel were the "Torq Lok" product of that company. Mr Erickson said, in his evidence, that the Torq Lok had been developed by Quality Steel prior to 2000, a process in which he was not directly involved, but which he observed. He described the Torq Lok as "a hammerless method of fitting a wear component" to an excavator. He said the Torq Lok was a screw that fitted through the wear component and into a polymer retainer. When the screw was tightened with a ratchet, the Torq Lok caused the wear component to be held in place. The wear component was manufactured with a cavity for locating the polymer retainer. When assembling the Torq Lok, the first step was to fit the polymer retainer, which was interference fitted to the cavity of the wear component. The screw was then securely threaded into the retainer (there was a very tight fit between them) but was not, at its distal end, protruding beyond it. Originally (in July or August 2000), according to Mr Erickson, some screws were inserted too far, such that they did protrude beyond the retainer, and Quality Steel received multiple complaints from customers that it was necessary to back the screw off in order to fit the wear attachment to the corresponding base on an excavator. This issue was resolved by the development of a "gauge" into which the distal end of the screw would come into contact at the point of alignment with the underside of the retainer and which would provide the workers with an indication of when to stop screwing. The wear attachment was shipped to customers with the Tork Lok in this position.
21 While at Quality Steel in September 2003, Mr Hughes took some photographs of the Torq Lok which he observed. I set out below three of those photographs, the first and second of which show the locking pin/retainer arrangement as such on a bench, and the third of which shows wear attachments, with the Torq Lok incorporated, stacked on a pallet ready for shipment. Corresponding photographs (without the identifying letters) were shown to Mr Erickson (after he had provided the information on which so much of his affidavit as is referred to in the previous paragraph was based), and he confirmed that they showed the Torq Lok product of Quality Steel.
22 The photographs follow below:
This photograph shows two locking pins (A and B). The one on the left (A) is the locking pin itself. The one on the right (B) is the locking pin as threaded into the polymer container (C), coloured red in the photograph. The pin on the right has been threaded into the retainer to the extent that about one turn of thread is visible above the retainer.
This photograph shows the same components as the previous one, save that the locking pins have been turned upside down. Mr Hughes noted that it may here be seen that the surface of the locking pin on the right (D) which is now visible is "generally flush with the level of the polymer retainer." He understood that this represented the unlocked position, in which the attachment would not be secured to the equipment but could be placed over, or removed from, the corresponding engaging member on the equipment. In the locked position, the pin would have been threaded further into the retainer (ie further "up" as depicted on the right), such that point (D) would now be proud of the retainer.
This photograph shows excavator teeth (E) with locking pins (B) located in them. These were manufactured by the foundry and placed on, and secured to, a pallet. Mr Hughes understood that the locking pins, shown here in the unlocked position, were of the same kind as shown in the two previous photographs, save that, here, they have been fitted to the teeth and painted blue.
23 At the request of the applicant's solicitors, Mr Hughes caused some drawings to be made of the wear attachment and locking pin arrangement that he viewed at Quality Steel. Reproduced below are four of those drawings, showing, from left to right, the stages of the attachment of the wear member to the base on the equipment and the engagement of the locking pin.
24 Mr Erickson said that, from its launch until the time that he left the employ of Quality Steel in July 2005, about 500 teeth units, and about about 100 shrouds and adaptors, incorporating the Torq Lok were sold per month. The arrangement was marketed with an emphasis upon the simplicity, safety and ease of installation of the wear member on the excavator which it made possible. One of Quality Steel's major selling points was the fact that it was not necessary for anything to be done to the attachment before installation.
25 In its novelty case, the applicant relies, first, on the public display of the Quality Steel wear members, with the Torq Lok incorporated, on the pallet in the third photograph above (a single act); secondly, on the display of the Torq Lok itself on the foundry bench as shown in the first and second photographs above together with the display of the wear components on the pallet (two, or possibly three, related acts); thirdly, on all of those displays together with oral descriptions of the Torq Lok provided to Mr Hughes by employees of Quality Steel; fourthly, on the sale and supply by Quality Steel to the public of the Torq Lok assembly incorporated into wear members (a number of related acts); and fifthly, on the sale and supply by Quality Steel to the public of the Torq Lok assembly incorporated into wear members and the installation of those members, using the Torq Lok, by the public (also a number of related acts).
26 The respondent had two main lines of attack on this aspect of the applicant's case. First, it was said that the Torq Lok did not fall within Claim 1. To a large extent, this involved an issue of the construction of the claim, but it also involved reliance on certain functional features of the Torq Lok. Secondly, the applicant's proposition that the acts laid out in the previous paragraph were not sufficient to make "publicly available" information that would be sufficient to constitute anticipation under s 7(1) of the Act.
27 As to the first matter, it was submitted on behalf of the respondent that the Torq Lok stood outside Claim 1 in the patent as applied for because it did not have "a hold position where the lock can secure the wear member to the base and a release position where the wear member can be released from the base". It was said that these words required that there be two unique, predetermined, positions between which the lock would be moved - one position for when the wear member was held to the base for operation and the other position for when it was to be removed from the base. On behalf of the applicant, it was submitted that a construction which proceeded from an understanding of the function of the lock would require only that the lock could be moved to a position in which the wear member was held to the base (during operation) and to a position in which the wear member could be released from the base.
28 This issue of construction is important in the context of the Torq Lok because, as the respondent emphasised, the precise location of what was said (by the applicant) to be the hold position would depend to a large extent upon the condition of the cavity in the base which received the pin - whether it be new or worn, clean or dirty, etc. The so-called hold position, it was said, was no more than the limit to which the pin could be inserted into the cavity in the base. Likewise, the precise location of what was said (by the applicant) to be the release position would depend to a large extent upon how far the particular operator found it necessary to unscrew, or chose to unscrew, the pin in the course of removing the wear member from the base. The so-called release position was no more than some point reached, ad hoc as it were, by the manipulations of the operator. So it was submitted by the respondent.
29 The description of the invention in the specification and the associated diagrams are, regrettably, of little assistance on this constructional question because they are substantially concerned with specific aspects of the invention which are much narrower than those covered by Claim 1. Otherwise, the reader is told, in the Abstract, that -
… [t]he lock is movable between hold and release positions to accommodate replacing of the wear member when needed, and secured to the wear member for shipping and storage purposes.
In the "Background of the Invention", the reader is told, apropos arrangements commonly found in the prior art, that "[t]he assembled nose and point cooperatively define an opening into which the lock is received to releasably hold the point to the nose".
30 In the "Summary of the Invention", the following appears:
In one other aspect of the invention, the lock is integrally secured to the wear member for shipping and storage as a single integral component. The lock is maintained within the lock opening irrespective of the insertion of the nose into the cavity, which results in less shipping costs, reduced storage needs, and less inventory concerns.
In another aspect of the invention, the lock is releasably securable in the lock opening in the wear member in both hold and release positions to reduce the risk of dropping or losing the lock during installation. Such an assembly involves fewer independent components and an easier installation procedure.
This latter passage looks as though it might be directed to the problem of present interest, but the reference to "releasably" relates not to a release position of the lock apropos the removal of the wear member from the base but to the ability to remove the lock from the opening in the wear member where it is, in both the hold and release positions, normally secured.
31 The experts called by the parties - William Hunter by the applicant and Howard Robinson by the respondent, both mechanical engineers of considerable experience - said nothing of any value about the present controversy. In his first affidavit, Mr Robinson said that the Torq Lok "was not an integral lock having a hold position and a release position as described in the Opposed Application"; and "did not have a clearly defined hold position and release position for the lock". He was not cross-examined on those opinions and, in an affidavit filed subsequently, Mr Hunter made no reference to them. Notwithstanding those omissions, however, I am bound to say that Mr Robinson here appears to have assumed a particular construction of Claim 1 rather than given the matter any specific consideration. The qualifier "clearly defined" appears neither in the claim nor elsewhere in the specification.
32 All of which means, for better or for worse, that the constructional question arising with respect to Claim 1 must be resolved within the four corners of the claim itself, against an understanding, of course, of the relevant field of engineering and the industrial settings in which arrangements of the kind proposed by the inventors would be used.
33 To the extent that the hold position and the release position are given definition in Claim 1, those definitions are functional ones. The hold position is "where the lock can secure the wear member to the base", and the release position is "where the wear member can be released from the base". In my view, a lock which could be moved between a position where the wear member would be secured to the base and a position where it could be released from the base would come within these words in Claim 1. So long as those two functional criteria are satisfied, the claim is, in my view, unconcerned with the precise location of the two positions referred to. That is not to say, of course, that an arrangement that operated other than by reference to two positions, such as one that involved the progressive application of force, for example, would come within the claim. The construction I prefer would not airbrush out of the claim the need for the lock to operate in a way which might broadly be described as binary. But it is to say that the pre-determination of exact positions, abstracted from the industrial usage of the lock, is not, in my view, a requirement of the claim.
34 The Torq Lok of Quality Steel had a hold position and a release position in this sense. Once the wear member was engaged with the base, the lock would be moved to a position where it would "secure the wear member to the base". When the wear member needed to be replaced, the lock would be moved to a position where "the wear member [could] be released from the base".
35 The respondent placed a deal of store by difficulties which had been encountered by Quality Steel in the assembly of wear members containing the Torq Lok before the "gauge" was introduced into the operation. This was said to demonstrate the absence of a singular "release position" at which the lock could be set before being shipped to the customer. Once the gauge was introduced - and this occurred before Mr Hughes' visit - however, there was such a position. I cannot understand why the necessity to use the "gauge", a workshop tool like any other, to fix this position should make any difference to the matter under consideration. As it happens, little or nothing turns on considerations at this level of detail: as I have held above, Claim 1 does not require the presence of a precise, pre-determined, position as the release one.
36 It might also be said, with some force, that the claim is concerned not with the position of the lock ex works, as it were, but with the position to which it would be moved for the purposes of releasing the wear member from the corresponding base on some excavating equipment. So long as there is such a position - and I have held that there was in the case of the Torq Lok - it is neither here nor there that the lock might not have been in that position at the point of shipment from the supplier.
37 The respondent also sought to make some point of the risk that, when the Torq Lok was being assembled the thread as between the pin and the retainer might be crossed, as Mr Erickson accepted had happened on occasion. But I should not resolve the applicant's novelty point by reference to isolated, aberrant, occurrences in the manufacturing process. The point must be determined in the context of the undoubted fact that Quality Steel did produce wear members with the Torq Lok properly fitted according to specification.
38 For the above reasons, and applying the reverse infringement test, I conclude that the Torq Lok fell within the terms of Claim 1 in the patent applied for.
39 The other main area of contest under s 7(1) of the Act in relation to Claim 1 related to the matter of "publicly available". In Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20, 44 [124], the Full Court said:
In respect of the issue whether information was "publicly available" before the priority date, the following principles emerge from the cases:
• The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it: PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 226 per Aldous J cited in Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155, 183] at [141]. (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887 in Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen LJ.)
• It is immaterial whether or not the invention has become known to many people or a few people (Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 at 111 … per Windeyer J). As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality: Formento Industrial SA & Biro Swan Ltd v Mentmore Manufacturing Co Ltd [1956] RPC 87 at 99-100; Re Bristol-Myers Co's Application [1969] RPC 146 at 155 per Parker LJ.
• The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity: Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31 ….
• In order to be "available", information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention: compare RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 593-4 ….
• In order to be "available", information said to destroy novelty must "enable" the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point (Stanway Oyster Cylinders Pty Ltd v Marks (1996) FCR 577] at 581-2).
40 As to the facts of the matter here, it was submitted on behalf of the respondent that the evidence of Mr Hughes and Mr Erickson should be "scrutinised with care". I agree, and shall do so. It was submitted that the evidence of Mr Hughes should be "treated with caution insofar as he attempts to characterise the Torq Lok as having certain features in language reminiscent of the claims of the Patent Application (eg, a locked position or locked position)." That relates to the question with which I have already dealt, and I have done so without paying any regard to the particular terminology of Mr Hughes' evidence. It was submitted that Mr Hughes should have disclosed, in his affidavit, that he was "not only a director but also a shareholder (through a trust) of the [a]pplicant and also a good friend of another director and shareholder of the [a]pplicant." This was said to be especially important to the extent that Mr Hughes purported to give expert evidence. I accept that submission so far as it goes, but, on pure questions of fact, Mr Hughes was a competent and credible witness and there appears to be no doubt as to the truth of his evidence insofar as it relates to the events of September 2003 at the premises of Quality Steel. In important respects, that evidence derives, of course, strong corroboration from that given by Mr Erickson, as to objectivity of whom there could be no question.
41 Putting those essentially adjectival matters to one side, it was accepted by the respondent that the information conveyed by the display of the Torq Lok components on the bench, and by the palletised wear members containing Torq Loks, at the Quality Steel premises in Septemer 2003 was publicly available within the meaning of s 7(1) of the Act. No serious attempt was made by the respondent to contend that the information was not sufficient to satisfy the various conditions set out in Insta Image. I would hold that it was sufficient. It follows that I accept the applicant's case in relation to the first, second and third of the circumstances laid out in para 25 above.
42 With respect to the fourth and fifth of those circumstances, I have Mr Erickson's direct evidence as to the approximate number of the teeth and shrouds that were sold, with the Torq Lok fitted, by Quality Steel per month. Prima facie at least, each sale was a public act in accordance with the principles which apply in this area of the law. From there, it is plainly to be inferred that, for the most part as a minimum (and one instance would be sufficient), once supplied to customers the wear members were put to their intended use, that is, they were installed on excavation equipment and secured thereto by operation of the Torq Lok; and, again inferentially, eventually removed as the occasion required. These events - sale, supply, installation, use and removal - would, in my view, have given the notional person skilled in the relevant art information sufficient to satisfy the conditions set out in Insta Image.
43 That prima facie position was, however, put in contest by the respondent in this way. It was said that there was no evidence that each customer of Quality Steel was "free in law and equity" to make use of the information as he or she thought fit. The only basis upon which he or she might not have been so free, as proposed by the respondent, was that the prospect of the wear members in question having been purchased from Quality Steel subject to confidentiality or like restrictions, whether contractual or rooted in equity, was not excluded by the applicant's evidentiary case. In my view, the applicant was not bound to have led evidence on this specific aspect. There is nothing in the evidence to suggest that the sale of these wear members by Quality Steel was other than a normal transaction in the way of the sale of goods in which the complete, untrammelled, property in the goods passed to the purchaser. Had the respondent wished to make good a special defence that the purchasers were not free in law and equity to use the wear members as they thought fit, it was for itself to do so.
44 For the reasons I have given, I would uphold the applicant's novelty case in relation to Claim 1.
45 With respect to Claim 2, it was submitted on behalf of the respondent that the action of the pin being turned inside the retainer in the Torq Lok could not be described as "pivotal movement", and that the notional centre line of the pin as it was turned could not be described as a "pivot axis". By contrast, it was submitted on behalf of the applicant that to "pivot" was "quite simply to turn or twist". This contest concerned, therefore, the meaning of the words "pivot" and "pivotal" in context. Here two things should be said at the outset. First, Mr Hunter and Mr Robinson were agreed that there was no part of the specification, including the claims, that used words in senses other than their normal, everyday, ones. Secondly, although the "pivotal" action of the form of the lock described in the specification is there exposed in great detail, the relevant passages, if anything, teach away from the position for which the applicant contends. As it seems to me, the applicant's position is at its strongest when the wording of Claim 2 is considered in isolation against what the applicant contends is the normal meaning of the words.
46 But that normal meaning does not take the applicant the required distance. According to the Oxford English Dictionary, 2nd ed, a "pivot" is "a short shaft or pin, usually of metal and pointed, forming the centre on which a mechanism turns or oscillates, as the pin of a hinge, or the end of an axle or spindle; a fulcrum"; and the adjective "pivotal" is "of, relating to, or acting as a pivot". In the expression "pivot axis", the first word is used adjectivally, but the expression is not amongst the substantial number of compound expressions in the OED in which the word has been so used over the ages. I take it from that that the expression is not one of art in this field of technology and has, therefore, what I would take to be its normal meaning as a synonym for a pivot as such, ie, the short shaft or pin referred to.
47 The pin in the Torq Lok is not, in my view, a pivot; when screwed into place it does not move pivotally; and its notional centre line is not a pivotal axis. The Torq Lok moves pivotally no more than does, for instance, a screw fastener inserted by a carpenter, a bolt inserted by a motor mechanic or the lid of a drink bottle replaced by a consumer.
48 It follows that I would reject the applicant's novelty case in relation to Claim 2.
49 Although the language of Claim 6 varies in minor respects from that of Claim 1, there are no presently material differences. For the reasons I gave in relation to Claim 1, I would uphold the applicant's novelty case in relation to Claim 6.
50 Neither does Claim 7 involve any presently material differences from Claim 1. For the reasons I gave in relation to Claim 1, I would uphold the applicant's novelty case in relation to Claim 7.
51 Neither does Claim 9 involve any presently material differences from Claim 1. For the reasons I gave in relation to Claim 1, I would uphold the applicant's novelty case in relation to Claim 9.
52 Claims 10, 11 and 12 depend, directly or indirectly, on Claim 9, and do not otherwise introduce any integer (of present relevance) differing materially from those dealt with above in relation to Claim 1. Thus the applicant's novelty case in relation to those claims should also be upheld.
53 For the reasons I have given in relation to Claim 1, the invention, in so far as claimed in Claim 13, was anticipated by the Torq Lok. Thus the applicant's novelty case in relation to Claim 13 should also be upheld.
54 Claims 14, 15, 16 and 18 depend, directly or indirectly, on Claim 13, and do not otherwise introduce any integer (of present relevance) differing materially from those dealt with above in relation to Claim 1. Thus the applicant's novelty case in relation to those claims should also be upheld.
55 Although using different language, Claim 19 is relevantly indistinguishable from Claim 1, save in one relatively minor respect. Whereas Claim 1 describes the release position as one in which "the wear member can be released from the base", Claim 19 describes that position as one in which "the lock permits installation and removal of the wearable body on and from the base". That is to say, Claim 19 requires there to be a position at which the wear member not only may be released from the base but also may be installed on to the base. This means that the comment I made in para 35 above in the context of Claim 1 cannot be made here. However, taking the view, as I do, that the existence of a pre-determined, precise, position, either hold or release, is not a requirement of Claim 1, and likewise taking the view that Claim 19 should be similarly understood, I would also hold that the Torq Lok fell within the terms of the latter because the pin was, as observed by Mr Hughes and as inferentially supplied to customers, in the position in which the wear member would be installed on the base, being the same position as the pin would occupy when the wear member was subsequently released from the base. Thus the applicant's novelty case in relation to Claim 19 should also be upheld.
56 Claims 20, 21, 22 and 23 depend, directly or indirectly, on Claim 19, and do not otherwise introduce any integer (of present relevance) differing materially from those dealt with above in relation to Claim 1. Thus the applicant's novelty case in relation to those claims should also be upheld.