NOVELTY
47 The respondent contends that the invention the subject of the Patent, so far as claimed in claims 1, 2, 4, 6 and 7, was not novel in June 1997. Here the question which arises under s 7(1) of the Patents Act 1990 (Cth) ("the Act") is whether the invention was not novel in the light of two kinds of prior art information relied on by the respondent, namely (1) the public use of an extension drilling system by Colrok Mining Pty Ltd ("Colrok") at collieries in New South Wales, including Ellalong and Macquarie, between 1989 and 1994, and (2) the public use of an extension drilling system at the West Wallsend, Gretley and Wyee Mines by an entity described in the evidence (and in the respondent's Particulars of Invalidity) only as "Wilson Mining".
48 Darrell Geatches was the respondent's principal witness called to provide evidence of the extension drilling system used by Colrok. He worked in the mining industry in New South Wales between 1956 and 1994. From 1976 to 1994 he was a co-owner and director of Colrok, a service contractor to the coal mining industry. He was directly involved in the day-to-day management of Colrok's business and the provision of its services throughout that period. Because his lack of engineering qualifications was highlighted during his cross-examination by counsel for the applicants, I shall refer to the nature of his experience in the mining industry. In 1962, he started work at Newstan Colliery at Lake Macquarie, where he worked as an electrician and leading hand electrician from 1964 to 1969. During that time, he returned to technical college where he obtained his third class certificate of competency in coal mining. His employer then promoted him to Deputy in Charge - Maintenance, Production Units (with continuous miners). This role involved him overseeing a full production crew, he being primarily responsible for safety in the relevant section of the mine. His role included overseeing roof control, gas testing and shot firing. He was Deputy in Charge between 1969 and 1976.
49 In 1976, Mr Geatches left Newstan Colliery and joined Barry Webb as a co-owner and director of Colrok. Mr Webb had been a project manager for some of the larger mining companies before that time, including Allied Construction and Dravo. He had a background in metalliferous mining, which included hard rock and mineral extraction. It was Colrok's intention to provide support services to companies carrying out stone excavation in coal mines, such as by drilling through igneous intrusions, which were very hard intrusions formed by molten stone coming up through coal steams, which had to be drilled and blasted rather than cut.
50 One of Colrok's first contracts after he joined it involved drilling holes for roof bolts at the Liddell Colliery. Because of the presence of igneous intrusions, it was necessary to use rotary percussive drilling. Mr Geatches was in charge of overseeing that contract, and was also the site manager for the project.
51 In 1978, Colrok was contracted to undertake what was described as "long hole firing" at the Liddell Colliery. This contract involved not the drilling of holes for roof or cable bolts, but the drilling of holes running between seams, generally of about 25 m in length, for the placement of explosives in the construction of interseam storage bins. The rotary percussive drilling method was used for this project. They used a Roc 601 Airtrack drill rig supplied by Atlas Copco to drive vertical holes from the lower seam to the upper seam. The drill string was made up of rods with male threads on both ends, joined together female/female-threaded couplings. A drill rod was coupled to a "shank adapter" attached to the drive head of the drill. This adapter drove through a male rope-threaded protrusion which connected to the female/female-threaded coupling attached to the first rod.
52 Drilling was commenced and, when the lower end of that first rod was close to the roof of the mine, the rotation of the drill head was stopped, and the rod clamp (effectively what has been described above as the gripper jaw) was engaged so that it gripped the existing rod (at its lower end, near the roof) and held it in place. The drive head was then engaged in reverse, uncoupling the female/female coupling between the shank adapter and the bottom end of the rod. The male end of a second rod was then threaded into the coupling on the lower end of the first drill rod. The lower end of the second rod was then coupled to the male coupling of the shank adapter using another female/female coupling. The drilling process then resumed. Additional rods were added in the same way.
53 Once the hole was drilled to the required length, the rods had to be removed. The percussion function in the drill was used to hit the drill string to loosen the tension in the couplings. The drive head was lowered, and the rod clamp was engaged to clamp the second last rod so as to hold it in place. At this point, there were two female/female couplings between the rod clamp and the shank adapter: the first being the coupling between the shank adapter and the lowermost rod, and the second being the coupling between the lowermost rod and the one above it. The drive head was then operated in the reverse direction, uncoupling one of the two female/female couplings. The other coupling was then uncoupled manually, and the lowermost rod removed.
54 Mr Geatches and his colleagues found this to be a time-consuming process. In order to save time, they usually left one female/female coupling on one end of each male/male-threaded drill rod, and stored them as such. The result was that the drill rods were effectively like male/female-ended rods, each having a female thread at one end and a male thread at the other. Subsequent drill strings were assembled using components stored as such. This practice later led to Mr Geatches' development of "speed rods", which were male/female rods like this, but with right-hand rope threads (unlike the rods actually used in the long hole firing operation at the Liddell Colliery which, because percussive rotary drilling was used, were conventionally left-hand threaded). I shall refer to that development in its proper order presently.
55 After the completion of the project at Liddell Colliery, Colrok bought the Roc 601 Airtrack machine and carried out a similar project at West Wallsend Colliery creating an interseam bin.
56 In the mid-1980s, Colrok began installing cable bolts, an early instance being at the Stockton Borehole Colliery at Teralba. In Mr Geatches' understanding, cable bolts were already then being extensively used in metalliferous mines to support main roadways, but not in coal mines. For the project at the Stockton Borehole Colliery, Colrok had to decide what equipment was best suited to drill the 55 mm diameter holes required to accommodate the cable bolts. Previously, they had drilled 29 mm holes for standard rock bolts. The seam at Stockton gave them only about 1.5-1.8 m within which to work, which meant that they had to use shorter drill rods, but many of them. They commenced by using the Roc 601 Airtrack with a rotary percussive drive head, but this was, Mr Geatches said, "quite savage on the roof strata and started to cause breaks in the roof from the hammering motion".
57 Mr Geatches and Mr Webb decided that using a (non-percussive) rotary drive head was more likely to be successful in this situation. That required them to source suitable rotary drill rods. It was also on this project that they started to develop suitable rotary drill rig machines. Confident in the future of cable bolting in coal mines, Colrok purchased a number of additional (second-hand) drill rigs, namely, two Joy drill rigs, two Gardner Denver drill rigs and two Atlas Copco drill rigs which were generally similar to its existing Roc 601 Airtrack machine. Those rigs all included rotary percussive motors and were designed to be used on the surface for drilling downwards, rather than drilling upwards. Colrok converted some (Mr Geatches thought three) of these rigs so that they could be used underground to drill vertically into the roof. They also built new drill masts for these drill rigs, as the existing masts were too long. The new masts were fitted with drill rod clamps and feed mechanisms for chain or screw feeds (so that the drive head could be moved up and down the mast). They trialled different types of drill rods with different types of couplings, to see what rods could be coupled and uncoupled most quickly. To increase the speed of uncoupling the drill rods, Mr Geatches thought to use rope-threaded connections. He tried to source suitable drill rods with right-hand rope threads, but without success. In his evidence-in-chief, Mr Geatches said that he did find drill rods with right hand rope thread (male at both ends) available, but they were 19 mm or 20 mm only across the flats, and thus too small for driving the big rotary drill bits that were to be used for the installation of the cable bolts at Stockton. It was put to him in cross-examination that he was mistaken in his recollection that he had found these drill rods, a subject to which I shall return.
58 In the result, Messrs Geatches and Webb, and Brian Woolnough, a mining engineer at Colrok, decided to make their own set of male/female right-hand rope-threaded drill rods with a diameter of 25 mm. Mr Geatches sourced Q7 steel from Roy Gambly (now deceased) at Awaba Road in Toronto. Mr Gambly was, according to Mr Geatches, "a fine precision machinist" who did a lot of machining for Colrok. He made the ends for the new drill rods: an end with a male right-hand rope thread, and an end having a hexagonal outer profile (32 mm across the flats) with an internal female right-hand rope thread. They were made to specifications provided by Mr Geatches, although it became clear, under cross-examination, that he could not recall the actual form of the instructions which he gave to Mr Gambly. That is a subject to which I shall return in due course below. Mr Gambly made about ten sets of the drill rod ends in that first batch. Then, in Colrok's own workshop, Murray Pearson, a leading hand fitter employed by Colrok, inserted the spigots for the ends into a section of drill pipe and welded around both ends to make the drill rods.
59 In operation, the female end of a drill rod was inserted (and here I quote from Mr Geatches' affidavit) "directly into the drive chuck (which was in effect an adaptor) on the drill rig, which had a hexagonal shaped socket." The chuck drove the rod by engaging with the hexagonal external surface of the female end of the drill rod. The new drill rods proved very successful. Being easy to extend and to uncouple, their use led to an increase in the speed at which rods could be inserted into and removed from a drill string. In part, this was because there was no longer the need to uncouple (ie by unscrewing) the lowermost rod from a male shank adapter when building or dissembling the drill string. These were the rods that Mr Geatches and his colleagues described as "speed rods". In Mr Geatches' recollection, it was in the mid to late 1980s that Colrok reached this point.
60 At some stage after Colrok had trialled its speed rods, it was visited by Kell Kellstad, the owner of a small drilling equipment and consumables company called Quarry Mining and Construction Pty Ltd ("QMC"), at its (Colrok's) premises at Toronto. Mr Geatches showed one of the rods to Mr Kellstad, and told him that he had to start making the rods, because they worked. Because of this conversation, which he did recall, Mr Geatches thought that it may have been QMC which subsequently made the rods for Colrok. But Mr Geatches could not say positively that it was.
61 Colrok used these rods in the late 1980s at Ellalong Colliery to drill the holes required to install cable bolts for the establishment of secondary roof support in restitution work after a roof collapse on a conveyor road. Based on his own observation, Mr Geatches described the process in which they were used as follows (in which the rods are referred to as "Geatches rods"):
Step 1 A drill bit was connected to the male end of the first (top) Geatches Rod in the drill string. This was done via a drill bit adaptor. The adaptor had a female right hand rope threaded end that coupled with the right hand rope thread at the male end of the Geatches Rod. The drill bit was connected to the drill bit adaptor.
Step 2 The female end of the top Geatches Rod was placed into the drive chuck socket. It fitted snuggly into the socket, because the socket was of the same hexagonal shape and approximately the same measurement across the flats (i.e., 32 mm).
Step 3 The top Geatches Rod was drilled into the strata. This was done by feeding the drill motor and drive chuck up the drill mast with the right hand rotation and water flushing turned on.
Step 4 Once the top Geatches Rod was drilled into the strata to a point near to its female end, a pair of clamps (fixed to the drill mast) were clamped onto the external surface of the female end of the top Geatches Rod. This provided the support necessary to retain the first rod in the bore hole. The drive motor and chuck were then dropped back down the drill mast to near the ground level.
Step 5 The female end of the second Geatches Rod was placed into the drive chuck socket. The drive motor and drill chuck were raised up the drill mast so that the male end of the second Geatches Rod entered the female end of first (top) Geatches rod.
Step 6 The pair of clamps on the top Geatches Rod were released and the right hand rotation turned on to screw the male end of the second Geatches Rod into the female end.
Step 7 The drill string (i.e., the first and second Geatches Rods) was drilled into the strata by feeding the drill motor and drive chuck up the drill mast with the right hand rotation and water flushing on.
Step 8 Once the second Geatches Rod had entered the bore hole to a point near its female end, steps 4 to 7 above were repeated in order to extend the drill string. At Ellalong, the bore holes were about 8 meters [sic] deep. 6 or 7 Geatches Rods were used per hole.
Step 9 Once the last (bottom) Geatches Rod had been connected to the drill string and drilled into the strata to a point near to its female end, the drive motor and drive chuck were dropped back down the drill mast to a position above ground level. This lowered the drill string such that the last (bottom) and second last (i.e., second from the bottom) Geatches Rods were removed from the bore hole.
Step 10 The pair of clamps was engaged to grip the second last (i.e., second from the bottom) Geatches Rod at its hexagonally shaped female end.
Step 11 The drive motor was driven in reverse (left hand rotation). This broke the threaded connection between the male threaded end of the bottom Geatches Rod, and the female threaded end of the second bottom Geatches Rod. The drill motor and drive chuck were then lowered further down the drill mast and the motor disengaged from the hex drive end.
Step 12 The bottom Geatches Rod was then removed manually by the drill operator.
Step 13 The drive motor and drive chuck were raised up the drill mast and the female end of the second bottom Geatches Rod fitted into the socket of the drive chuck.
Step 14 The pair of clamps on the second bottom Geatches Rod were released.
Step 15 The drive motor and drive chuck were dropped back down the drill mast to a position above ground level. Again, this lowered the drill string. Steps 10 to 14 were then repeated until all of the Geatches Rods had been removed from the bore hole.
62 Colrok subsequently used the new drill rods made by QMC in a number of other projects, including a project at Macquarie Colliery at Teralba between 1987 and 1993. The work carried out by Colrok under that project involved the drilling of holes from inside the underground seam vertically or on an angle to create a methane drainage hole. The methane trapped in the strata would be released into the seam through the drilled holes, and would then be carried out of the mine by the return airway. The drilling at Macquarie Colliery was conducted with Colrok's rotary drill rigs, using male/female right-hand rope-threaded drill rods, the lowermost of which was seated directly in the chuck.
63 Mr Geatches believes that, before he retired from Colrok in 1994, the drilling rods described above were also used at other projects including secondary support work at each of Wallarah Colliery, Chain Valley Colliery and Wyee Colliery, but he did not recall seeing the rods in use in those places, which he visited less frequently than Macquarie and Ellalong. It was submitted on behalf of the applicants that there was, in the circumstances, no evidence of the use of these rods other than at Ellalong and Macquarie collieries. I am prepared to proceed on that basis.
64 The applicants go further, however, and say that Mr Geatches' evidence, to the extent that it related to the development and use of the rods described above, should not be accepted at all. They point out, correctly, that that evidence was not supported by the production of any of the chucks or drill rods used, of any contemporaneous drawings or sketches of the rods, of the specifications provided to Mr Gambly, of any photographs of the components that Mr Gambly supplied to Colrok, of any drawings, sketches or photographs of the rods that Colrok assembled from those components, or of any drawings, sketches or photographs of the components actually used at Ellalong. In a number of respects, the applicants' use of the word "any" in these criticisms reflects the fact that it has not been established that there ever were artefacts of the kind mentioned. It was not suggested on behalf of the applicants that either Mr Geatches or the respondent had selectively opted to withhold from the eye of the court objects, photographs or drawings which might have been led in evidence. Elsewhere in his evidence, Mr Geatches made it clear that he did not regard his rods as inventive (unlike another, in some respects similar, item which he devised, and for which he applied for a patent), and he had, I would hold, no reason, before he retired from Colrok in 1994, to anticipate that a record of their development or use might later be useful in litigation. I regard the absence of the things referred to by the applicants from the evidentiary record as relevantly neutral in its impact on the task in which the court is engaged: the fact is that there is no such evidence, but that fact should not introduce an additional element of unreliability into the evidence which was led.
65 The applicants also drew attention to what they described as five "errors" in Mr Geatches' recollection of the events of the late 1980s and early 1990s. The first related to the following paragraph in his first affidavit:
Annexed hereto and marked "DWG-2" are photos of me and other Colrok employees working on the West Wallsend Colliery project in around 1978 and a range of other photographs of various dates showing drill rigs that drove extension drill strings directly on the external surface of square and hexagonal profile drill rods, also taken by Brian R Andrews.
This paragraph came before Mr Geatches' first mention of the installation of cable bolts by Colrok in the mid-1980s. It came well before his first mention of the development of rods which were driven via the external surface of a female-threaded lower end. Of that paragraph, the applicants made the following submission in their written outline:
In cross-examination, however, he identified only one photograph which showed extension drill strings and this was a photograph which showed:
(iii) male/male extension rods joined together by female/female couplings; and
(iv) which engaged with the drive motor via male shank adaptor - the male shank adaptor screwing into the bottom-most female coupling and driving it on the internal surface,
not a male/female extension rod being driven on the outside surface of the female end at all.
66 A number of things may be said about this submission made on behalf of the applicants. First, the passage, "he identified only one photograph" should not be understood as implying that Mr Geatches was invited to identify any photograph which showed an extension drill string: he was taken to the photographs in the annexure and answered the questions that were put to him about them. Secondly, responding to one such question, Mr Geatches accepted that the drill string which he did identify was (using cross-examining counsel's words) "a left-hand percussion device". He did so readily and in a way which, to my observation, reflected a thorough command of the subject. Thirdly, to the extent that the cross-examination of Mr Geatches in these respects was intended to underline the absence from the evidence of any photographic representation of the rods that Mr Geatches and his colleagues later developed, it was legitimate and justified. What might otherwise have been the impression left by the corresponding paragraph in Mr Geatches' affidavit as such was thereby corrected. But the additional step of building upon that cross-examination a submission that the reliability of Mr Geatches' evidence generally was undermined because of this "error" was not, with respect to those involved, legitimately taken. Mr Geatches was not cross-examined along that axis. Self-evidently the error arose in the compilation of the annexures to the affidavit and, while Mr Geatches might legitimately be criticised for failing to check the annexures for accuracy, that was not the thrust of the cross-examination and, further, it does not, in my view, reflect adversely upon his ability to recall, and to describe, the events of which he gave evidence.
67 The second error which, according to counsel for the applicants, Mr Geatches had made in his evidence was to state that he had, in the mid to late 1980s, found 19 mm or 20 mm right-hand threaded drill rods (see para 57 above). In his affidavit, he had said that, to the best of his recollection, he had seen these rods at a supplier to the industry called "Atlas Copco". In cross-examination, it was put to him that he must have been mistaken in this regard because Atlas Copco only sold the applicants' products, and the applicants' range did not include rods of this specification. In response to this, Mr Geatches enquired of counsel whether another company, called "Coromant" might have made these rods. Counsel's response was that Coromant was owned by the applicants (or, I presume, one of them or a company in the same group). Mr Geatches' answer to that was to say that, as he understood it, Coromant was not, in those days, a Sandvik company. And there the matter remained, until the final submissions made on behalf of the applicants, which contained the proposition, not developed orally, that Mr Geatches must have been mistaken in his understanding of when one of the applicants or a related company bought out Coromant because of what was to be found in two documents placed into the evidence for other purposes. The first was a "Sandvik Coromant" rock drilling tools catalogue produced in 1989. Because of the date of that catalogue, the name appearing on the cover cannot be regarded as inconsistent with Mr Geatches' evidence that, in the mid-1980s or perhaps later, Coromant was not part of the Sandvik group. The second was an exhibit to one of the affidavits of Murray Clair, managing director of Nupress Tools Pty Ltd, and was described as "a set of technical drawings … provided to me by Phillips Ormonde Fitzpatrick Lawyers". These drawings were provided to Mr Clair so that he might "comment on the threads shown in the drawings, including as to the nature of the thread, the relative ease of manufacture and whether I am aware of that thread having been used on products in the past, including mining products." The corporate heading on the drawings was "Sandvik Coromant", and the page to which my attention was drawn carried the date 17 February 1982. The difficulty here is that the assignment of that date to the occasion when this drawing was first done on a paper carrying that heading is not otherwise the subject of evidence. The court is being asked to make an inference, favourably to the party who tendered the document for an unrelated purpose and did not lead any evidence about the timing of the adoption of this corporate name, as a means of controverting the direct oral evidence of another witness. By the time of Mr Geatches' cross-examination about this matter, Mr Clair had left the witness box. I do not suggest that it need have been otherwise, since the "Coromant" connection was raised only by Mr Geatches in response to questions from counsel for the applicants. But the problem for the court remains: there is no reliable evidence of when it was that one of the applicants or a related company acquired Coromant. Although the latter of these documents was put to Mr Geatches under cross-examination in connection with the purpose for which it was tendered (referred to in detail below), the significance of the corporate name and date shown on the header was not raised with him. The former document was not put to him at all.
68 In the circumstances, all I need to say is that Mr Geatches' evidence was not undermined by this approach on the part of the applicants. He was quite firm in his recollection that he had found these small diameter right-hand rope-threaded rods; and he was convincing in the way he gave that evidence. It is, moreover, no more than part of the narrative apropos the development of the rods which are said to have anticipated the invention in suit. The real issue is whether he did build and use those rods, in relation to which the matter of Mr Geatches' sighting of these small-diameter rods is tangential at best.
69 The third error is related to the second. It was said that Mr Geatches' evidence about whether Colrok had used, or he had only "found", such rods was "extremely confused". To consider this submission, it is necessary to set out what Mr Geatches actually said on the subject. In his first affidavit, he said:
I tried to source suitable drill rods with right hand rope thread at that time, but was not able to do so from suppliers. I did find drill rods with right-hand rope thread available, but they were only 20 mm rods which were too small for driving the big rotary drill bits we needed to use for the installation of the cable bolts.
In his second affidavit, he said:
I do not have a clear recollection whether the right-hand rope-threaded rods that I found at the time (the mid-1980s) were 19 mm or 20 mm across the flats. To the best of my recollection, it was Atlas Copco who were offering these rods in right hand rope thread at the time. The rods had male connections at both ends.
At the time, we used these rods for advanced exploratory extension drilling of the dyke stone with hand held rotary percussive drills. The bore holes we made in the exploratory drilling were about 32 mm in size.
I did not regard the 19 mm or 20 mm rods to be suitable for drilling the larger (55 mm) holes we used for cable bolting. I considered them too small for attaching a 55 mm drill bit, and also too flexible to withstand the drilling thrust required to drill the larger size bore holes.
To this point, Mr Geatches had said nothing further than that he had found the 19 mm or 20 mm rods at Atlas Copco. He had not said that he had purchased any.
70 Under cross-examination on this aspect, counsel commenced by reiterating the effect of Mr Geatches' affidavit evidence. Cross-examination continued as follows:
And you say you found them but they were too small?---Yes.
And you purchased them, you say, from Atlas Copco?---We purchased them .....
You found them but you didn't acquire them?---Didn't acquire them, no.
Okay. In the mid to late 1980s, what I want to put to you is that Atlas Copco didn't offer 19 or 20 millimetre right-hand rope thread rods?---Well, it's unfortunate a man called Ron Levitsch is not here because - - -
Well, I'm asking you what you know, Mr Geatches, not someone who's not here?---All I know is that we did acquire rope thread rods from Atlas Copco - right-hand rope thread rods, either 20 or 19 mil, and I had used them. In fact, I probably had some at the workshop at the time.
Well, just pausing there, I thought you just told his Honour that you found them but you didn't acquire any?---Well, I didn't, no.
Be clear. You did not acquire any right-hand rope threaded rods?---No, I did not.
With respect to those involved, it does seem a bit rich, if I may put it that way, to accuse Mr Geatches of giving "extremely confused" evidence on this subject. The point of the cross-examination was to challenge his evidence-in-chief that he had found these rods at Atlas Copco. That was a perfectly legitimate project. It was counsel who first introduced the possibility that the rods might have been purchased and, for a moment, Mr Geatches went along with that. Some confusion undoubtedly followed. It was counsel himself who sought to clarify the position and, in my view, rightly so. Whether the rods had been acquired or only found was never the issue. Importantly, I could not, and do not, feel any heightened sense of disquiet as to the reliability of Mr Geatches' evidence generally by reason of such minor confusion as appears from the extract from his cross-examination set out above.
71 The fourth error related to an adjustment which Mr Geatches made to the evidence to which he had sworn in his first affidavit when he came to swear his second. It concerns the matter covered in para 61 above. In his first affidavit, he swore as follows:
One of Colrok's first uses of the male/female right hand rope thread drill rods made by [QMC] took place at Ellalong Colliery near Cessnock in the late 1980s. To the best of my recollection, this took place in about 1989.
In his second affidavit, Mr Geatches swore as follows:
Having reflected further, I cannot now recall with certainty that additional Geatches Rods were manufactured and supplied to [Colrok] by Quarry Mining. I believe it is likely that Quarry Mining supplied [Colrok] with additional Geatches Rods, because [Colrok] sourced various different rods from Quarry Mining at the time and I cannot now recall any other company who may have supplied additional Geatches Rods.
The difficulty which this submission on the part of the applicants presents is that the divergence between Mr Geatches' two affidavits was not the subject of the cross-examination of him by their counsel. One of the consequences of litigation being framed around the sequential filing of affidavit evidence well in advance of trial is that the preparation of evidence-in-chief often lacks the focus associated with the immediacy of the hearing at which the evidence is to be presented. It is not unknown for a witness to swear a later affidavit which contains corrections to things previously said. By proceeding this way the witness does, of course, expose himself or herself to the criticism of inconsistency, and might well anticipate an uncomfortable time in the witness box. But it is another thing altogether for a party with interests opposed to those involved in calling the witness to allow the inconsistency to pass untested in cross-examination and then to submit that the witness's evidence generally (ie not only in relation to the subject of the inconsistency) should be treated as less reliable because of the inconsistency. The witness ought at least to have had the opportunity to provide a benign explanation for it.
72 The fifth error was said to be Mr Geatches' mistaken recollection that, at the Ellalong Colliery, Colrok's air track machine was used only to drill 55 mm holes for cable bolts. That evidence was given under cross-examination, as was his related evidence that the drilling of holes of smaller diameter, and all single-pass drilling, was done with "hand-held bolters" (counsel's term). It was submitted on behalf of the applicants that other evidence demonstrated that the air track machine had indeed been used for single-pass drilling and to drill 44 mm holes for the later insertion of polyurethane resin ("PUR") for strata stabilisation (a form of extension drilling).
73 As to the former, the other evidence on which the applicants relied was given by two of the respondent's witnesses who were concerned in the PUR process, Messrs Yates and Nielsen. I shall refer to their evidence, in a broader context, presently. The passage in the evidence of Mr Yates referred to in the applicants' outline in their challenge to this aspect of Mr Geatches' evidence had nothing to do with single-pass drilling. The passage in the evidence of Mr Nielsen did, but, although (as will become apparent) he took particular interest in the drill rods being used by Colrok at Ellalong, he did not in fact ever see a drilling operation being undertaken. Further, the evidence as to the use of the air track machine for single-pass drilling was led from him under cross-examination in way which suggested that counsel knew what he was talking about:
Now, at Ellalong Colrok was concerned with both single pass drilling and extension drilling, was it not?---Yes, it was.
And how many rigs did Colrok use?---At Ellalong?
Yes?---I only seen the one there.
And it was used, I take it, for both single pass drilling and extension drilling?---Correct.
The applicants were, of course, fully entitled to take that evidence at face value, but it would be another matter altogether to use it as an uncontroversial platform from which to challenge the accuracy of the evidence given, on the same subject, by Mr Geatches.
74 As to the latter (drilling for the later insertion of PUR), the applicants' submission was that "to drill extension holes 44 mm in diameter for PUR injection … would be too small for rods the size claimed by Geatches". The evidentiary reference for that submission was the affidavit of Murray Clair, the managing director of Nupress Tools Pty Limited, at the time a manufacturer of tooling used in the mining industry. In the last three paragraphs of a lengthy affidavit, Mr Clair said:
127 I note that Mr Geatches says that he was drilling 55 mm holes.
128 As far as I am aware, the standard size hole for cable bolts is, and always has been, 42 mm. Nupress has been making components for DSI and Jennmar, the two suppliers of cable bolts in Australia, for many years and all components Nupress has made for those companies have been for cable bolts to fit that size of hole.
129 If the rods described by Mr Geatches were used in the standard 42 mm bore hole, the size of the hexagonal section referred to by Mr Geatches would not allow any room for the cuttings to be flushed out.
It was para 129 on which the applicants relied. The simple answer to their submission is that there is no suggestion in the respondent's evidence that Colrok used 42 mm drill bits in extension drilling for cable bolts. When Mr Geatches himself was under cross-examination, that was not put to him. Indeed, it was treated as uncontroversial that Colrok used 55 mm drill bits for that purpose. Furthermore, what Mr Clair's evidence had to do with the drilling of holes for PUR insertion is not apparent. Indeed, in his affidavit he said nothing about PUR. If the court is supposed to perceive that the applicant's point is that it was established otherwise that holes of 44 mm were used for PUR insertion, and that the use of Colrok's 32 mm rods in holes of that diameter would not "allow any room for the cuttings to be flushed out", I can but say that this would require the joining of a number of dots in a technical area where the matter was not dealt with while Mr Geatches was under cross-examination. I would not be prepared to take that step.
75 For the reasons I have given, I do not accept that Mr Geatches' evidence should be regarded as likely to be the less reliable on account of what the applicants referred to as "errors" made by him. To the extent that the matters canvassed above might be viewed as errors - and for the most part they were not - I consider that they were either irrelevant, or at most tangential, to any assessment of the reliability of his evidence. I am also bound to add that, in a number of respects to which I have drawn attention, the applicants appear here to be taking advantage of dimensions of Mr Geatches' evidence that were not, it seems, considered, at the time, to be of sufficient importance to warrant a direct challenge while he was under cross-examination.
76 But Mr Geatches was not the only witness on whose evidence the respondent relied for the proposition that, at Ellalong Colliery, Colrok used a system of extension drilling that had the features later claimed in Claim 1 of the Patent, and specifically the utilisation of a method which involved the external hexagonal profile of the lower end of the lowermost rod in the string being directly driven by a hexagonally-shaped socket in the chuck of the drill. The other two witnesses were Messrs Yates and Nielsen, to whom I have already referred.
77 Ian Yates started as a coal miner in 1969 at South Bulli Colliery. In about 1970 he worked for Swift MIP ("Swift"), an importer of longwall equipment. In about 1981 he transferred into the chemical division of Swift, where he worked on the possible application of chemicals to coal mining conditions. Between 1985 and 1988, he worked for Delta Control Systems, a division of Genkem Pty Ltd the importer and supplier of PUR. In about 1988 he was working at both Liddell Collieries (Liddell State owned by the electricity commission and Liddell Colliery owned by Coal and Allied) to assist in recovering a collapsed longwall. It was there that he first met Barry Webb, one of the owners of Colrok. In 1989, Carbo Tech, the manufacturer of PUR, and Colrok collaborated to create a new division of Colrok called "Colrok Grouting". In about 1991, Carbo Tech and Colrok formed a new company, Ground Consolidation.
78 In about 1990, Colrok and Colrok Grouting were engaged by Ellalong Colliery to increase the height of a conveyor belt that was, at the time, located in a heading that was so low as to limit the inspection, maintenance and repair of the conveyor, particularly where a roller jammed leading to damage to the belt and down time of the conveyor. Over the course of about 5 months, Colrok worked to stabilize the roof strata at the Ellalong Colliery with cable bolts, to lift the conveyor structure and suspend it above the floor, to dig out the floor to a lower depth of 1-2 m, and then to reposition the conveyor to that lowered height. The purpose of the PUR injection process was to bind the broken roof strata prior to cabling in order to improve the effectiveness of the cable bolting process.
79 Colrok used a number of small hand bolters and air track machines to drill holes at various angles of 8-10 m in depth. Colrok then installed flexible cable bolt strands and pumped cementious grout into the holes to anchor the cables to the strata. The size of the holes drilled by Colrok for cable bolts was about 52 mm in diameter. At the same time that Colrok was installing cable bolts in the roof strata above the conveyor, they drilled holes, of 6-8 m in depth, for the installation of PUR. These holes were 44 mm in diameter, which was the optimal diameter for PUR high pressure packers to install, expand and stay in place.
80 During the first few weeks of Mr Yates' involvement with the Ellalong project, he observed, on at least three occasions, the drilling of cable bolt holes and PUR holes by Colrok operators at Ellalong using semi-automatic drilling rigs with extension drill rods. Throughout the project, he estimated that he observed Colrok drilling operators using a semi-automatic drilling rig, with extension drill rods, a total of approximately 10 times.
81 The extension drill rods being used at Ellalong by Colrok in 1990 featured a male rope threaded end and a hexagonal shaped female end. The process observed by Mr Yates was described by him as follows:
A. The drive motor with hexagonal drive chuck of the semi-automatic drill rig sat empty at the bottom of the mast.
B. The female hexagonal end of the drill rod was placed manually into the drive chuck.
C. The operator then controlled the drive chuck to rise up the mast so that the male end of the drill rod with the drill bit attached was almost touching the roof of the mine.
D. The operator then rotated the drive chuck while at the same time turning on the water and raising the drive chuck further up the mast causing the drill bit to drill into the strata.
E. When the first extension drill rod had drilled almost the full length of that drill rod into the strata, the operator stopped the drive chuck from rotating and applied the gripper jaws to clamp onto the flat surface of the drill rod on the hexagonal female end.
F. The operator then lowered the drive chuck down, which slipped off the end of the hexagonal drill rod and came down empty.
G. The operator then loaded a second drill rod directly into the drive chuck by placing the female end of the drill rod into the empty drive chuck.
H. The operator then operated the drive chuck so as to rise up the mast and insert the male end of the second drill rod into the female end of the drill rod held by the gripper jaws.
I. The operator then rotated the drive chuck so as to screw the second drill rod into the first by way of the rope threaded components.
J. The operator then released the gripper jaws and recommenced drilling (rotating the drive chuck and raising the drive chuck further up the mast) with the now connected together drill rods forming a drill string.
K. The process described at steps A through to J was repeated as many times as needed to achieve a drilled hole of the depth required.
L. To uncouple an extension drill rod from the drill string now in the strata, the operator lowered the drive chuck which by operation of gravity brought the last drill rod out of the strata. That drill rod was lowered beneath the gripper jaws.
M. The operator then applied the gripper jaws to clamp the extension drill rod directly above the coupling with the lowest drill rod.
N. The operator then reverse rotated the drive chuck which uncoupled the lowest drill rod and allowed another operator to remove the drill rod.
O. The now empty drive chuck was then raised to fit the bottom of the clamped drill rod on the hexagonal end.
P. The operator then released the gripper jaws and process described at steps L and O were repeated until all the drill rods forming the drill string were removed from the strata and uncoupled.
82 This evidence, which was contained in Mr Yates' affidavit, supports that of Mr Geatches, and favours the respondent's case. But, for the reasons to which I shall now turn, it was submitted on behalf of the applicants that the evidence should not be accepted.
83 It was said that Mr Yates' evidence was based "purely on recollection of events occurring some 25 years in the past." That is true so far as it goes, but the question remains whether the recollection, when held up to the light and placed in the context of other evidence available to the court, is seen to be reliable. The fact that 25 years have passed is relevant to, but by no means determinative of, the answer to that question.
84 It was next said on behalf of the applicants that, as a technician concerned in the PUR process, Mr Yates was not directly concerned, and therefore not particularly interested, in the details of the system that was employed to drill the holes required for the PUR, or for the associated cable bolts for that matter. Indeed, under cross-examination he accepted that the aspects of the drilling operation that specifically caught his attention were the use of grippers to hold a drill rod steady while the rod beneath it was inserted or removed (which he had not seen before) and the facility of being able to adjust the angle of the mast on Colrok's machine, a most important benefit in a working environment with such a limited height.
85 Under cross-examination, Mr Yates said:
[W]hen it comes to drilling my principal interest is to get the holes that I need to pump resin into so I don't particularly spend a lot of time trying to understand too much about how the holes get there so long as I get the holes that I need.
Asked to describe "the configuration of the rods", Mr Yates said:
The rods I think were a metre, maybe a metre and a half, in length but I could well be wrong on that. The - to my way of [thinking] it was a pretty clever system because we could really get down to a one man operation. But I recall there being two men. I think that may have had something to do with safety requirements or union requirements. The - the guy running the Air Track had a control bag in front of him. He would simply take one of the rods. There was very little hands-on stuff but this was one time he would have to get involved, and he would take a rod, put it into - into the chuck, put the drill screw - this drill bit on top. Normally you would just run a bit of water at that stage to make sure the holes - the centre of the rod is clear. I've seen him do that. He would run the rod up through - along the mast to the clamping arrangement and get it up close to the hole, and again squirt water; once the water was flowing, rotate the drill and just push it into the - into the -into the coal roof. It was predominantly coal roof when I was there, and in fact I think it was always coal roof. And then the - the - I call them the grippers - the [grippers] would come out and grab the flats at the bottom end of the drill rod, hold it in place so it stayed up the hole. And that to me was clever because normally you would have to have somebody involved with a pair of Stillsons or something like that. At Ellalong we working [sic] at various different heights. Basically, where the conveyor belt was there was very minimal height. The idea was we were going to bob the floor out, cut the floor out, and given height so this drilling mast had the capability of getting into areas that would be difficult for a man to go in with Stillsons. So that's the reason I could remember it. Then the mast - the - well, the rod was grabbed by the grippers, the chuck would come back down, another rod put in place. So that's where the driller would come in, have to pick this rod up and put it back in place and then just slowly roll it up the mast, find the bottom of the drill rod, run it in and just keep on going.
Mr Yates was specifically tested on whether he had spoken to anyone else about the subject of this evidence, or consulted any records or resources, and he said that he had not. It is true that his focus of concern did not relate to drilling technology, but he observed the way the drilling operation was carried out and, subject to the qualifications which he expressed, and to the matter referred to in the next paragraph below, the clarity of his recollection could not be fairly criticised. His oral evidence under cross-examination, like that set out in his affidavit, is consistent with that of Mr Geatches.
86 At the end of his cross-examination, Mr Yates performed what could only be described as a stumble. Unrelated to the general drift of the evidence leading up to this point, he was asked the following question, and gave the answer indicated:
What I want to put to you is that the rods were engaged with the drive chuck via a threaded adaptor which was inserted into the drive chuck and threaded into the bottom of the rods?---Yes, I can recall that.
That answer was, and struck me at the time as, conspicuously inconsistent with all the evidence which Mr Yates had hitherto given, including that set out above. Over the objection of counsel for the respondent, I permitted the re-examination of Mr Yates on this subject. That proceeded as follows:
Please describe for his Honour your recollection of how the lowermost drill rod, the end of the lowermost drill rod, engaged with the drive chuck?---With the chuck?
Just describe how that arrangement worked and your recollection of it?---Okay.
Well, the - even though it had the - the - the rope female thread, the outside of the area at the bottom of drill rod was where the hexagonal flats were. And they were not only just for the gripper at the top, they were also the - the drive chuck itself was hexed to drive the rod. So when the hex flats were grabbed by the grippers there was - at the bottom of the rod it was just a matter of lowering the middle weight, the - the drive mast down the - the chuck down the drive mask to allow it to come away.
So can you describe precisely what was the engagement between the chuck and the hexagonal shape at the lower - at the end of the drill rod?---Well, it was a hex - a hex section at the bottom of the drill shaft that would - the female hex section would take the drill bit - the - the drill rod.
Yes. And are you able to describe for his Honour your recollection of how an operator would remove the drill rod from the drive chuck?
[Further objection made at this point. Not upheld.]
So please explain to his Honour your recollection as to how an operator would remove a drill rod from the drive chuck at the Ellalong project when they wanted to take it out?---Just from the driveshaft?
Yes?---Just pull it out. Just lift it out.
It was submitted on behalf of the applicants that this evidence given in re-examination should be disregarded. I do not propose to do that.
87 Counsel for the respondents had, and took, the opportunity to cross-examine Mr Yates further on this evidence, and it was not undermined. This was, in my view, a fairly vivid instance of a witness misunderstanding a question put to him in cross-examination, a question which came, more or less, out of the blue. It would have been fortuitous for the applicants, and unfair for the respondent, had the subject been allowed to remain where it rested at the point where Mr Yates answered that question. He was independent of the respondent, and had no reason to craft his answers in ways that would favour its perceived case. I was assisted by having the point clarified in re-examination, and was left with a firm satisfaction that the evidence set out in his affidavit fairly reflected his own recollection of the drilling method which he observed at Ellalong, including the absence of an adaptor in the chuck with a threaded connection to the lowermost rod.
88 Ron Nielsen works as a consultant in the mining industry and manages an underground equipment leasing company. In about 1983, he started his diesel fitting apprenticeship with Max Turners in Camden, and he worked there until 1989. Between April 1989 and 2004 he worked for Colrok as a fitter, and later for Ground Consolidation as a supervisor and manager. Between April 1989 and December 1989 he worked for Colrok at Tower Colliery building an underground workshop, excavating the floor, shotcreting the ribs, installing benches and installing bolts for the installation of a crane and digging a pit for working on machines. In 1990, while working at Tahmoor, he repaired some DP35 PUR grout pumps that had failed and were causing trouble for the PUR injection side of the Colrok business, known as Colrok Grouting. While he was repairing the pumps he met Mr Yates, who was then the manager of Colrok Grouting. He began work for the Colrok Grouting division of Colrok as well as the main Colrok operation, including at Metropolitan Colliery at South Sydney, Angus Place Colliery at Lithgow and then at Ellalong Colliery in Newcastle. His role at Colrok Grouting was as a supervisor of PUR injection workers. This involved organising the logistics, liaising with customers and working with the Colrok bolting operators who were drilling the holes into which the PUR was injected.
89 Mr Nielsen's involvement in the Colrok project at Ellalong - the details of which have been sufficiently summarised above - was on the PUR side of the roof strata stabilisation. He was one of four personnel, including Mr Yates, who were so involved. He would enter the mine with the Colrok Grouting crew over the weekend and inject PUR into holes that had already been drilled in the roof strata by the Colrok drilling operators on the previous shift, a sequence which limited the number of people exposed to the chemical vapours from the PUR injection process. Thus he rarely observed the Colrok drilling operators actually drilling the holes, because most of the drilling had occurred prior to the Colrok Grouting team arriving to inject the PUR into the roof strata.
90 But Mr Nielsen did observe that Colrok's semi-automatic drilling machine at Ellalong Colliery featured a hexagonal drive chuck. When he did so, the drive chuck was empty in that it did not have an adaptor in it. To Mr Nielsen, this was unusual, because the other semi-automatic drilling rigs that he had observed in other mines either had a male shank adaptor in the drive chuck (which, he agreed under cross-examination, involved the chuck having inserted into it an adaptor that was then threadably engaged into the bottom of the female end of the drill rod) or a male left-hand rope thread as part of the drive chuck. Questioned by counsel for the applicants about the care with which he examined this chuck, Mr Nielsen said that he was "an inquisitive guy [who liked] to see what's new out there and it stood out." It stood out because it was hexagonal. Mr Nielsen also observed the drill rods that were used in the machine at Ellalong Colliery. They were stored underground close to the machine. He noticed that they were "different" in that they "were hexagonal and they drove … in the chuck, itself." He noticed that each rod had an enlarged end with a female internal thread.
91 Annexed to Mr Nielsen's affidavit were drawings which he prepared of the drill rod and the drive chuck that he recalled seeing at Ellalong Colliery. When it was put to him that, although he had given the drawing careful consideration, it might not be perfect, he responded that he had "spent a lot of time in getting my evidence right for this affidavit" and that he believed that it was correct. When it was put to him that he could not say that the matters in his drawing were necessarily what he saw at the time, his response was, "It is very, very close, if it's not." Mr Nielsen also affirmed that the thread which he saw on the rods at Ellalong was a rope thread.
92 Mr Nielsen's drawing was as follows:
93 In submissions made on its behalf, the applicants were unable to go further than to point to some possible explanations for Mr Nielsen having been mistaken about what he saw at Ellalong. They referred to the passage of time since the events in question, to the fact that he was not directly involved in drilling and did not physically handle or closely inspect the rods and chuck which he saw, to the dim lighting conditions in the mine, and to his imperfect recollection of the outside profile of the chuck. It was suggested that Mr Nielsen might in fact have seen a chuck into which an adaptor was to be inserted, but failed, in the dimly lit conditions, to notice any adaptor nearby. But Mr Nielsen's credibility, and the reliability of his recollection, were not undermined by indirect considerations of these kinds. I was left with the firm impression that he had a clear recollection of what he had seen at Ellalong, as stated in chief and as generally depicted in his drawing reproduced above.
94 I turn next to so much of the applicants' submission as proposed "what did happen" on the probabilities at Ellalong. It was submitted that, contrary to the evidence of Messrs Geatches, Yates and Nielsen to which I have referred, Colrok used the then conventional system of interposing an adaptor between the chuck on the drill and the lowermost rod. The applicants were not categorical as to the means by which the adaptor engaged with the chuck: some of their cross-examination implied that the court should allow for the possibility that it was by way of a hexagonal socket in the chuck, while at other times it seemed to be hypothesised that it was by way of a standard 25 mm square socket. The applicants would say, of course, that this was not their evidentiary case - it was for the respondent to prove, specifically and firmly, the existence of the prior acts that would defeat novelty. But one aspect upon which the applicants did advance a positive submission was the nature of the engagement between the adaptor which they said was present and the lower end of the lowermost rod: the adaptor had a male protrusion which threaded into the corresponding female thread on that end of that rod. In other words, the applicants proposed that Colrok was using the system of extension drilling that was uncontroversially part of the prior art described in the Patent.
95 There were two circumstances which, according to the applicants, warrant the inference that, on the probabilities, Colrok was not using a system whereby the chuck directly drove the outside, hexagonally-profiled, surface of the female end of the lowermost rod. The first was the configuration of the chuck as depicted in the following rather grainy photograph which was annexed to Mr Geatches' first affidavit.
The circle shown on the apparatus to the left of the man in this photograph has been added (for the purposes of these reasons) to identify what the applicants contended was a male-threaded protrusion on the top of the chuck (remembering that the mast on this machine, as shown, is in a close to horizontal position, and that the normal direction of drilling would be from left to right).
96 In his affidavit, Mr Geatches described this photograph in the following terms:
[A] photograph of Vince Martin at the [Colrok] Toronto workshop in front of a drill rig created by Mineequip (a related entity to [Colrok]) taken in around 1989 which shows the hydraulic drive head with the drive chuck before the female adaptor has been screwed on it for use in the extension drilling system.
This passage was not associated with Mr Geatches' description of Colrok's method of work at Ellalong: indeed, it floated, in effect, at the end of the affidavit without any explanation of its relevance. Although not taken up in cross-examination, the concluding words in the passage - "… before the female …" - are confusing when read alongside Mr Geatches' categorical insistence in his second affidavit that an adaptor was not used in the Colrok system. Ultimately, however, nothing turns on this point of confusion: as appears below, under cross-examination Mr Geatches did not seek to identify the contentious aspect of the photograph as representing the drive head before a chuck was screwed onto it.
97 Mr Geatches was not able to affirm that the machine shown in this photograph was the one used by Colrok at Ellalong. But he allowed for the possibility. Under cross-examination, however, he rejected the suggestion that the machine which was used had (in counsel's words) "a male-threaded end of an adaptor … screwed into the female end of the lowest rod to connect the machine and the rod". Describing what he saw in the photograph, he said:
[T]hat thread, to me, looks like it would screw into another set of drill rods - a different type of drill rods. But if you wanted to convert it to use as a hexagon drive, you would turn the thread inside of the hexagon drive chuck to suit that particular thread.
Mr Geatches' evidence as to the kind of system which Colrok employed at Ellalong was not shaken by his having been referred to this photograph.
98 Mr Yates was also taken to the photograph during cross-examination. Before it was shown to him, he said that the machine he recalls being used at Ellalong was track-mounted with a single mast and a control panel. Shown the photograph, he agreed with counsel that the machine there depicted was a Colrok rig on caterpillar treads, that its mast was lying on a horizontal angle, that its drill head was fed by hydraulic lines, that it had a water line and swivel, and that "to the right of the drill head there [was] a drill chuck with a protrusion". Counsel himself then added an aside, to which Mr Yates was not asked to respond, "And there's evidence that that's a threaded protrusion", and then asked the witness, "Is that the sort of device that you saw at Ellalong?". Mr Yates' response was, "it looks the same, yes."
99 Of Mr Yates' evidence, it was submitted on behalf of the applicants as follows:
Yates confirmed that the drilling rig he saw was the same as the machine shown in DWG-5. As shown in that photograph, this machine was used with a male adaptor when engaged in extension drilling.
That was neither an accurate nor a fair description of Mr Yates' evidence. Under cross-examination, it was never directly put to him that the setup of the chuck on the machine shown in the photograph implied a system of drilling which differed materially from that which he had described in detail in his evidence-in-chief. Counsel went no further than to have him accept that the machine was "the sort of device" that he saw at Ellalong, and I can well understand that he would have recognised it as such. It is not, however, established by Mr Yates' evidence that the chuck as actually used at Ellalong had an adaptor with a male-threaded protrusion for engagement with the female thread on the lowermost rod. On no view does that evidence compromise Mr Geatches' evidence that it did not. Taken overall, Mr Yates' evidence is strongly consistent with that of Mr Geatches.
100 The second circumstance relied on by the applicants was that the system described by Mr Geatches would have been unworkable in practice because it had no adequate water seal at the point where the lowermost rod engaged with the chuck. Here I need to return to the aspect of extension drilling which I introduced at para 28 above: the necessity for the drill string to be adapted to accommodate the passage of water to flush the cuttings away from the environment where the drill bit is operating. In what the applicants submit I should find was the system employed by Colrok at Ellalong, there would be no water-leaking issue at the point where the upper male end of the adaptor (internal to which was the water passage) was threaded into the female end of the lowermost rod. But, according to the respondent, that was not the system in fact employed by Colrok. This raised the question: if the engagement between the chuck and the lowermost rod was no more watertight than would result from the placement of the hexagonal end of the rod into the correspondingly-shaped socket built into the chuck, why would not the water, presumptively being supplied by a pump of sufficient pressure to propel it up a drill string of as much as 12 m in height, leak at this point of engagement?
101 I should make it clear, at the outset of my treatment of this issue, that the question is not whether the presence or absence of some effective water sealing means in Mr Geatches' system would directly affect the matter of whether that system anticipated the present invention in so far as claimed in Claim 1. If the system could be employed only at the expense of water leaking all over the place it might still have anticipated the invention. Rather, the present question is the purely factual one whether Colrok is likely to have used the system described by Mr Geatches when, according to the applicants, it would not have been viable in practice.
102 In his first affidavit, Mr Geatches said nothing about this water sealing issue. Neither need he have, of course, since (as the respondent stressed in its submissions) Claim 1 in the Patent does not touch upon the matter. But the issue was recognised by Mr Charlton when he read that affidavit. In his own responding affidavit, Mr Charlton noted that there was, in MrGeatches' affidavit, no discussion about the prevention of water leakage at the point of engagement as between the chuck and the lowermost rod. He said that the sealing of that point, under such a system as Mr Geatches described, would not have been straightforward. He referred to the serious reservations which he had expressed, elsewhere in his affidavit, about the quite different sealing principle involved in a system which incorporated a square locking chuck with a spigot, and to attempts, of which he was aware, by participants in the industry to combine effective water sealing with the direct engagement of (single pass) drilling rods with corresponding chucks. Mr Charlton concluded: "Given the water leakage problems that would have arisen with the system as described by Mr Geatches, I consider it very unlikely that such a system was ever used. Certainly, it would have been much less efficient than the conventional system Mr Geatches said he was trying to improve on."
103 In his second affidavit, and in response to Mr Charlton on this point, Mr Geatches said that water did not leak at the point because of the presence of a ring-shaped hard rubber seal in the bottom of the socket in the drive chuck. The lowermost rod simply sat on that seal. The weight of the drill string, and the upward thrust of the drive chuck during drilling, compressed the rubber and provided an effective seal. From time to time, Mr Geatches said, it was necessary to replace the rubber seals due to wear, but he could not remember how often this occurred.
104 It was at this stage that Steven Weaver, Vice President of Product Line (Mineral Ground Tools) of Sandvik Mining and Construction BV, and one of the inventors under the Patent, swore what was his third affidavit. Without objection, he there offered the opinion that the sealing arrangement described by Mr Geatches "would not provide an effective seal" for the system which he said he used. Mr Weaver said that, in the development of the applicants' extension drilling system which became the subject of the Patent, designing of an effective water seal was a real issue which needed to be overcome. In the initial prototypes and testing, there was no seal in the socket of the chuck adaptor, and "a great deal of water sprayed out from the top of the adaptor". So they placed a "hard rubber wad" in the bottom of the socket of the adaptor, in the form of a square washer (because the profile of the socket was, at that time, square) with a central hole. There were two problems with that. First, if the water was, for any reason, turned on when there was no rod in the adaptor, the washer was "blown out of its seat". Secondly, "the washer was quickly destroyed in the course of the drilling operation" because of the downwards force exerted on it by the combination of the weight of the drill string and the upwards thrust of the chuck - a combined thrust, Mr Weaver said, of 2-2½ tons. This second problem was exacerbated by the nature of drilling operations, which Mr Weaver said was "not smooth". The lowermost rod does not sit precisely in the one position in its socket in the adaptor (or, I presume, chuck), but moves around in response to the changing conditions and forces being experienced by the drill string above it, the result of which was the application of uneven forces to the rubber washer, "causing greater stresses and exacerbating wear and tear." Although Mr Weaver was cross-examined extensively and in great detail, he was not challenged on this aspect of his evidence.
105 Under cross-examination, Mr Geatches withdrew the suggestion, made in his second affidavit, that some additional pressure as between the drill string and the rubber seal was brought about by the upward thrust of the drive chuck during drilling. He asserted that, once the drilling process began, the torque generated between the internal hexagonal faces of the chuck and the corresponding external faces of the lowermost rod would be considerable, and would of itself support the upwards thrust exerted by the chuck. The pressure exerted on the seal would be no more than that which existed before the rotation of the chuck commenced, that is, that contributed by the weight of the drill string as such. Mr Geatches rejected the suggestion, put to him in cross-examination, that "the forces involved would quickly destroy the seal" which he claimed to have used at Ellalong. Indeed, he made it clear that, in point of fact, those forces did not quickly destroy the seal.
106 Mr Charlton was not led to give any further evidence-in-chief with respect to the torque effect proposed by Mr Geatches, but the subject was covered in his cross-examination in the context of a corresponding disagreement between him (Charlton) and Peter Fuller, a consultant geotechnical engineer called by the respondent, principally on the question of obviousness. In that context, Mr Charlton said that, in practice, the relationship between the lowermost rod and the socket into which it sat was neither a precise nor an unchanging one. Under conditions of the kind encountered in extension drilling, the bottom of the rod tended to wobble about in response to the uneven nature of the task being carried out by the drill string. He accepted only that a "very small proportion" of the downwards force on a seal of the kind proposed by Dr Fuller was transferred to the side walls of the chuck.
107 Dr Fuller himself supported what had been Mr Geatches' empirical experience, namely, that, once the chuck was in rotation, the forces of torque would be considerable. Responding to a suggestion put in cross-examination that there would be some inevitable misalignment between the rod and the chuck, such that the bottom end of the rod would not stay in constant contact with the horizontal surface of the bottom of the chuck, Dr Fuller said:
[S]tatically with it not rotating, yes. Once the thrust is applied on the chuck onto the driven surfaces of the rod there will be an aligning effect as a result of that. And I guess an analogy of that effect is that if you take a ring spanner and put it on the … hexagonal head of a bolt and you apply a torque to the ring spanner it's very difficult even at small torque to remove the ring spanner. So even though you might start off … with the ring spanner being misaligned [a]s soon as the torque is applied, the mating surfaces will align. And the effect of that will be that the drive has the effect of actually gripping on the driven surfaces. So then the forces that are operating as I would see it as an engineer at the driven end of this rod would be axial force coming from whatever drive system is applied to the drill motor. In addition there is a gripping effect - and it's frictional - due to the torque applied by the chuck on the external surface of the drill rod.
The size of the applied torque at the driven end of the rod would depend to an extent on the resistance being encountered by the drill bit: in softer drilling conditions, the torque would be less than if drilling in rock, for example.
108 The result of my consideration of all of this evidence is that, if otherwise Mr Geatches' evidence about the system used at Ellalong is to be accepted, it was not undermined by the proposition that that system would not have worked because of the leaking of water at the point of engagement between the chuck and the lowermost rod. He explained the sealing arrangement which he used, and there was a sufficient, credible, engineering response to the applicants' contention that that arrangement would not have worked. The practical viability of a similar arrangement may not have been Mr Weaver's experience, but the fact that his arrangement did not work does not persuade me that Mr Geatches' arrangement could not have worked, or most likely did not work.
109 Additionally to the two circumstances said to warrant the conclusion that, at Ellalong, Colrok was not using a system whereby the chuck directly drove the outside, hexagonally-profiled, surface of the female end of the lowermost rod, the applicants advanced a third reason why the system used there did not anticipate Claim 1 of the Patent. It is, they say, quite unlikely that Colrok's system involved the use of rope-threaded connections between the rods. It is the respondent's case that rods with such connections were not commercially available in right-hand configuration, and that Mr Geatches had to have the ends for his "speed rods" specially made by Mr Gambly. For the purposes of this argument, the applicants accept that case. But they say that, with the technology which he had available to him in his workshop at the time, it is most improbable that Mr Gambly was able to build rope threads. It is more likely that he built ends with another coarse, wave-like, thread, such as what was described as the "T-thread", but which was not a rope thread as such and which, therefore, would not have come within the terms of Claim 1. Indeed, it was the T-thread which counsel for the applicants put to Mr Geatches had most likely been the thread used by Mr Gambly.
110 In para 67 above, I have referred to Mr Clair from Nupress Tools. It is now necessary to refer to his evidence about rope threads, and to do so in some detail. He said that a rope thread was a broad thread which got its name because (in the case of an external thread) it looked somewhat like a piece of rope loosely wound around the shaft. Rope threads had a particular configuration which was set by an international standard. They were unlike other conventional threads commonly seen in everyday components in that they were curved in all three dimensions. Also, a rope thread had a very large cross section width (or pitch) at 12.7 mm. As far as Mr Clair was aware, rope threads were used solely in the mining industry.
111 Mr Clair said that the machining of rope threads was a very specialised skill, one that was known (even when he made his affidavit in May 2015) to only a few in Australia. He named only five business in Australia, including his own and those of the parties in this case, who had ever made rope-threaded components. He said that there were three ways to make such components: on a manual lathe, on an off-centre copy lathe and on a computer numerical control ("CNC") lathe (the latter of which, it became clear under cross-examination, was to be understood as including also a numerical control (or "NC") lathe). He explained that lathes worked by rotating the component being machined at speed and applying a cutting tool to the surface of the component to cut away metal from it. The cutting tool is moved both along the axis of rotation and perpendicular to that axis to cut the required profile. Cutting tools took one of two forms: a form tool (a tool that had the form or shape of the thread to be cut), and a single point tool (a tool with a sharp point or tip which did the cutting).
112 Mr Clair said that, in the case of a threaded component, there would be matching male and female components. The machining of an external rope thread was reasonably straightforward as it could be done with a form tool. No specific machine was required for that, only a precision ground form tool. The machining of an internal thread was, however, more difficult because the cutting tool would be working inside a narrow space. In this situation, the cutting tool needed to extend longitudinally into the bore of the component, and then press laterally into the wall of the bore to cut the thread. The diameter of the bore limited the thickness of the tool. Also, the pressure applied to the cutting tool to machine the thread was high, such that the cutting tool would tend to bend as it was pressed against the wall of the bore. An additional difficulty arose as a result of the large 12.7 mm pitch length. The large cross section of a rope thread made a huge surface contact area on which it was very difficult to get the required surface finish using a form tool.
113 Mr Clair said that one way in which it might have been possible to machine a rope thread was to use a manual lathe and a form tool. Such a tool would have had a cutting blade with a contour that matched the thread, being long enough to cover a single pitch length (12.7 mm). Because the rope thread had an asymmetric shape in cross section (viewed axially) the form tool had to move longitudinally along the length of the work as the component rotated. That is, on a standard engine lathe, for every revolution of the component, the cutting tool would have moved longitudinally the length of one pitch (12.7 mm). The result was that machining a rope thread would have required the cutting tool to move much faster than in the case of machining a conventional thread with a pitch of 2-3 mm. For any given rate of rotation of the component in the lathe, the speed of the surface being machined would depend on the size of the bore: the surface of a small bore would be travelling more slowly than the surface of a larger bore rotating at the same number of revolutions per minute ("rpm"). Consequently, for smaller thread sizes the lathe would have been spinning at a higher rpm rate than for larger thread sizes. However, the rate at which the cutting tool moved in and out of the bore longitudinally was the same regardless of the size of the bore: 12.7 mm per revolution. This meant that, for smaller threads, the cutting tool had to move in and out longitudinally very rapidly, at a rate which was beyond the capacity of standard engine lathes.
114 Mr Clair said that, as a result of the inability to use sufficiently rigid cutting tools and the limitations of lathes, the machining of small diameter, internal, rope threads with form tools on manual lathes was extremely difficult. He was not aware of anyone who had actually machined a rope thread by this technique other than a rod supplier in Melbourne called Goldfields Diamond Drilling Co Pty Ltd. He described what I understood him to regard as a highly idiosyncratic approach to machining which was taken by that company. The method was "long and tedious and required special in house form grinding." Stephen Fleming, employed by that company during the period to which Mr Clair's evidence relates, was not aware of this approach or method, and it is unnecessary for me to make any finding about this aspect of the latter's evidence.
115 Mr Clair said that, as at the mid-late 1980's, it would have been theoretically possible for someone to machine right-handed rope-threaded components of 32 mm or larger diameter. He expressed the opinion, however, that it would not have been possible to produce smaller right-hand rope threads, such as those of 25 mm diameter, "because of the difficulty involved in using small form tools, and the fact that several pieces of expensive toolmaking equipment would be required."
116 Mr Fleming, to whose evidence I have briefly referred, took issue with Mr Clair's evidence in a number of respects, specifically in areas where the latter had emphasised the difficulty of machining rope threads. However, Mr Fleming's evidence related wholly to NC and CNC machining, where, he said, the making of rope-threaded components, even where the diameter was less than what Mr Clair proposed as the absolute minimum for internal machining, was conventional and, as I understand it, commonplace. But, to the extent that I have referred to Mr Clair's evidence to date in these reasons, it has been in the context of the use of a manual lathe. Mr Fleming's evidence did not touch upon that area. With respect to the production of rope-threaded components on a manual lathe, Mr Clair's evidence remains unchallenged by Mr Fleming. And, as counsel for the applicants pointed out, at least relevantly to the matter presently under discussion, it was not challenged during cross-examination. The significance of Mr Clair's evidence about machining with a manual lathe, of course, lies in the circumstance that, according to Mr Geatches who gave the only evidence on the subject, Mr Gambly's lathe was a manual one.
117 If there were no evidence from persons who had physically viewed Colrok's "speed rods", and the question were the subject of inference from indirect indications, I would be disposed to the position that the respondent had not established that the connections on those rods were rope-threaded ones. Mr Clair's evidence in particular would have influenced me to that result.
118 But there is evidence from persons who had physically viewed those rods. The first of these was Mr Geatches himself. He could not recall the actual terms in which he provided instructions to Mr Gambly. He thought that he "would have" shown Mr Gambly a (then commercially available) left-hand threaded rod (as used in percussive rotary drilling) and asked him to make the same item, but in right-handed configuration.
119 It was suggested to Mr Geatches under cross-examination that he mistook the threads produced by Mr Gambly for rope threads, something with which he was familiar in their left-handed configuration. It was put to him that the threads actually machined by Mr Gambly were "T-threads", a coarse wave-like thread that was much easier to produce and, according to Mr Clair, could readily have been achieved on a manual lathe. Under cross-examination, Mr Geatches said that he thought that he had heard of a thread identified as "T", but he was not familiar with it. He was taken to the set of technical drawings to which I have referred in para 67 above, which related to T-threads. Mr Geatches appeared to understand the drawings, but he was manifestly unfamiliar with the product there identified. It was put to Mr Geatches that T-threads provided extremely quick coupling and uncoupling, to which his response was, "No experience with them so I can't comment." It was put to him that T-threads were suitable for rod diameters of 25 mm or thereabouts, to which his response was, "If you say." He said that he had "never seen them". He was shown a marketing brochure, not in evidence but marked "MFI-1", with a very clear, close-up, photograph of a male T-thread on the end of a rod or shaft of some kind, and he said that it was not a thread with which he was familiar in 1989. He was shown what purported to be one of the respondent's own catalogues, also not in evidence but marked "MFI-2", depicting what counsel suggested were T-threaded items, and he reiterated that, in 1989, he was not familiar with "coarse threads of that type" (counsel's words). When it was put to him that what Mr Gambly made was "a coarse wave-like thread that was a T-thread, not a rope thread", Mr Geatches' response was, "incorrect".
120 It was made quite clear on behalf of the applicants that they made no suggestion that Mr Geatches was doing otherwise than genuinely attempting to recall events of about 25 years ago. The honesty of his evidence was not challenged. From his evidence summarised above, I gathered that Mr Geatches knew enough about his subject, and recalled enough of the events of which he spoke, to be able to affirm the proposition that the threads made by Mr Gambly were rope threads rather than some other kind of threads, specifically T-threads. When he was under cross-examination, he gave me no impression that he did not know what he was talking about, or that he was unable to make distinctions at the level required by the nature of the matters with which he was required to deal.
121 Turning next to the evidence of Mr Nielsen, I have referred above to the drawing which he made of the rods which he observed at Ellalong, and to his evidence that the threads on the rods were rope threads. When asked under cross-examination about T-threads, he said that he was "not too sure" about them. He said that he did not know the difference between a rope thread and a T-thread. But he was familiar with rope threads, because left-handed configurations of them had been used at one of his previous workplaces, Tahmoor Colliery. When it was put to him that he could not, with any certainty, say that the coarse thread that he drew was a rope thread rather than a coarse wave-like thread such as a T-thread, his response was, "No, it was a rope thread. That there was a rope thread. I … don't know what … you say is a T-thread but that was definitely a rope thread." Mr Nielsen was a diesel fitter by trade, and his firm recollection of what he saw at Ellalong deserves, on account of that circumstance, to be given some weight. I should add that there was nothing in the way that he gave his evidence that would cast any question upon the reliability of his recollection.
122 Mr Yates also gave some evidence on this subject. Additionally to this evidence as set out in para 80 above, under cross-examination he said that, at Ellalong, "the drill rod had a female rope thread on the bottom of it which took the male rope thread at the top of the next rod". That evidence was not, as it happened, responsive to the question which he had been asked, but, for whatever reason, Mr Yates was not challenged on it.
123 When the evidence of Messrs Geatches, Nielsen and Yates is taken together, the respondent's factual case that rope-threaded connections were used between the drilling rods used by Colrok at Ellalong is a strong one. Those witnesses, particularly Mr Geatches, were legitimately cross-examined by reference to circumstantial factors which might be thought to raise problems with that case, and which may well have been fatal if the case were wholly an inferential one. But it is not. None of these witnesses had any interest in the outcome of this proceeding, and it was not suggested that they proceeded otherwise than conscientiously in the giving of their evidence. Each was asked whether he had consulted with the others before making his affidavit, and answered in the negative. The two who were cross-examined on the subject of rope threads remained positive and convincing in affirming that that is what they saw at Ellalong. The evidence of all three should be accepted.
124 I find, accordingly, that, in the system of extension drilling used by Colrok at Ellalong Colliery, the connections between the drilling rods were right-hand rope-threaded ones.
125 In the result, I accept Mr Geatches' evidence about the extension drilling system which Colrok used at Ellalong Colliery. In a number of specific respects above, I have made clear why I do so. Subject to the matters there mentioned, I would say that there was nothing in his evidence, or in the way that he dealt with the questions put to him under cross-examination, that would provide any basis to doubt the reliability of his recollection.
126 It remains to consider an overarching submission which the applicants made with respect to the respondent's evidence about the system used by Colrok at Ellalong Colliery. Mr Woolnough, to whom I have referred at para 58 above, was a co-owner of Colrok, and was the person who had the day-to-day supervision of Colrok's operations at times which are presently relevant. An affidavit by Mr Woolnough was filed on behalf of the respondent and, in its Statement of Facts and Contentions filed before the trial, it was foreshadowed that he would be one of four witnesses who would give evidence of the system used at Ellalong. As it happened, and without explanation by the respondent, his affidavit was not read and he was not called.
127 Quite correctly in my view, it was not submitted on behalf of the applicants that the respondent's failure to call Mr Woolnough justified the court in supposing that any evidence which he might have given would not have been helpful to it. Rather, the applicants' point was a more limited one. It was submitted on their behalves that the respondent had failed to avail itself of an opportunity to corroborate the evidence of Messrs Geatches, Yates and Nielsen on a subject which, because of the passage of time and the absence of documentary records, would manifestly have benefited from further exposure: see Windsurfing International Inc v Petit [1984] 2 NSWLR 196, 231. As that authority demonstrates, an allegation of prior public use should be strictly proved.
128 The applicants' point is well-made. The respondent's unexplained failure to call Mr Woolnough has given me substantial cause to pause. However, having paused, I find that the situation remains that I have the direct observation of three then workers in the industry whose evidence is credible. The court is not required to act upon inference, and in that sense the respondent's allegation has been strictly proved. By limiting its evidentiary case in the way that it did, the respondent ran the risk that, for one reason or another, that case might not have crossed the bar. But the view I take is that it did cross the bar, and I would not be justified in turning away from that view by reason of what was, apparently, the respondent's choice not to conduct a more comprehensive evidentiary case. In short, I would hold that the belt was sufficient for the respondent's purposes. It did not also need the braces.
129 Although the situation at Ellalong Colliery provided the basis for much of the factual debate about the Colrok system, and about Mr Geatches' recollection of it, his evidence-in-chief was that the same system was used, at around the same time, at Macquarie Colliery. The applicants advanced no challenge to that evidence, separate from their challenges in respect of Ellalong with which I have dealt above in detail. In the circumstances, I formally find that the system used at Macquarie was substantially the same as that used at Ellalong.
130 The uses of the Colrok system at Ellalong and Macquarie collieries were, of course, some time before the priority date of the Patent.
131 Subject only to the resolution of the factual issues which I have decided against them, I do not understand the applicants to contest the respondent's proposition that, in so far as claimed in Claims 1, 2, 4 and 7, the invention was anticipated by the system used by Colrok at the Ellalong and Macquarie collieries. That leaves Claim 6. The specific relevance of the Colrok system to the validity of that claim was not the subject of any submission made on behalf of the applicants. In a summary of the respondent's novelty case which accompanied its final written submission, the following was said:
The extension drilling system used at Colrok was substantially in accordance with the system described by reference to figures 1 and 2 in the patent, because it too is an embodiment where the flat outer surface of the bottom extension rod are [sic] driven on their [sic] outer surface by the socket of a drive chuck. See the comparison with claim 1, above. The Colrok system is not substantially in accordance with figures 3, 4 or 5 of the patent, because it does not utilise a twist lock mechanism and/or a drive chuck adaptor. However, this is not needed to establish anticipation. It is enough that the Colrok system was substantially in accordance with an embodiment (figures 1 and 2) falling within the scope of claim 6.
The applicants did not respond to this submission, but, for reasons which follow, I am not disposed to accept it.
132 Claim 6 is an omnibus claim. Where such a claim is expressed to be limited by reference to one or other (or more than one) of the diagrams set out in the specification, there will, depending on the language used of course, usually be discernible as many separate notional claims as there are alternatives referred to: Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) (2015) 113 IPR 280 at 305, [168]. The claim refers to two embodiments, namely, one which conforms with Figs 1 and 2 and the other which conforms with Figs 3, 4 (including 4A and 4B) and 5. Although grammatically clumsy, it is clear from the specification that Fig 3 represents an alternative adaptor that may be used in place of that depicted in Figs 4, 4A and 4B. Overall, the claim does, therefore, include three alternatives: (1) Figs 1 and 2; (2) Figs 4 and 5 and (3) Fig 4 with the chuck replaced by that shown in Fig 3, and Fig 5.
133 It was not suggested on behalf of the respondent that Mr Geatches' system anticipated the second of these alternatives. Neither, so far as I can see, is it suggested that that system anticipated the third. In that latter respect, there is a controversy as to the detail of the sealing member disclosed in Fig 3, and therefore claimed in this third alternative under Claim 6, but, assuming for the moment that nothing more than a flat washer-type arrangement is disclosed, the modular construction of the adaptor in Fig 3 is, of itself, sufficient to set the invention apart from Mr Geatches' system.
134 On the other hand, on the basis of the findings which I have made, it is clear that Mr Geatches' system did anticipate the first. That leaves the court with a procedural issue of some delicacy. Subject to the respondent's other grounds of invalidity, it would not, in my view, be just to revoke Claim 6 in its entirety on the basis of those findings. But neither, so far as I am aware, is there any precedent for attempting to revoke only a notional compartment of a claim as printed. The solution, if there be one, lies in s 105 of the Act. If want of novelty based on Mr Geatches' system were the only reason for the revocation of Claim 6, before making a final order adverse to the applicants on this aspect of the Cross-claim, I would allow them time to apply for an amendment which would confine the claim to the second and third alternatives as I have identified them.
135 Turning now to the extension drilling system used by Wilson Mining, the respondent called Bill Goodwin to give evidence about that system. At the time when he swore his affidavit in this proceeding, 11 August 2015, he was Operations Manager and co-owner of Bolt Up Mining Pty Ltd, a contracting support company supplying secondary support, ventilation and mining services to the underground coal mining sector. He commenced work as a first year apprentice electrician at Munmorah Colliery in 1990. After completing his electrical trade course, he worked as a mine electrician/production worker at the Dartbrook Mine, where his primary role was to ensure electrical compliance in its production process. During the miners' crib breaks, and at each shift changeover, Mr Goodwin and a fitter who worked with him would, as he put it in his affidavit, "regularly start the continuous miner up and cut a bit of coal while awaiting for the miners to return from their break". During this process, he would (as he put it) "also occasionally install primary support (7 foot roof bolts) and secondary support (flexi bolts) when required".
136 Between May 1995 and March 1997, Mr Goodwin worked at Cumnock Colliery and then at the South Walker Creek Open Cut Mine in central Queensland.
137 In about March 1997, Mr Goodwin took up employment at Wilson Mining as an underground miner. His role covered secondary support, ventilation, long hole drilling, PUR application and fall recovery. In time, he was promoted to the positions of shift supervisor, site supervisor, and eventually operations manager for Wilson Mining. He moved on to other employment in 2002, but it is unnecessary here to recount the details of that other employment.
138 When Mr Goodwin commenced working at Wilson Mining, the drilling machines which they owned included about three "CRAM Proram" machines and about two "CRAM Ramtrak" machines, the latter being, functionally a Proram machine mounted on tracks. These machines featured a "through the spindle" drive chuck that gripped the external surface of round drill rods. Unlike the chucks referred to previously in these reasons, the chuck used in a system of this kind was not a socket into which the base of the lowermost rod sat. Rather, the rod passed right through the chuck and extended beneath it. The rod, which was either round or hexagonal in the system described by Mr Goodwin (he observed both at Wilson Mining), was held firm in the chuck by jaws within the chuck, which could be applied or released as the occasion required.
139 The drill rods used by Wilson Mining were fitted with male and female threaded connections. For those of a smaller diameter (18 mm - 25 mm) the thread type was mainly rope thread, while for those of a larger diameter (43 mm) the thread type was generally what Mr Goodwin described as "an AW thread". All the drill rods featured an internal hollow passage to allow water to be pumped to the end of the drill string where the drill bit made contact with the strata. The water entered the drill string through a water swivel that was attached, by a matching thread, to the lower end of the lowermost rod (ie where that end protruded below the chuck).
140 In his affidavit, Mr Goodwin described the process used for drilling PUR holes at the West Wallsend Colliery using the Proram drilling machine, which he observed during the first two months of his employment by Wilson Mining, in the following terms:
1. A male female drill rod with a right hand rope thread and a drill bit attached to the male end (possibly by use of bit adaptor) was inserted into the drive chuck of the CRAM drilling machine. The drive chuck was a "through" drive chuck …. It had a hole in which the drill rod would sit, containing jaws to clamp the external surface of the drill rod.
2. The external surface of the drill rods used at Wallsend were round …. The drive chuck clamped the external surface at the female end of the drill rod, so that the maximum length of the rod above the female end was available for drilling.
3. A water swivel was fitted into the internal female coupling at the female end of the drill rod to allow for flushing water to pumped up the drill bit end of the drill rod.
4. The rotation motor rotated the drive chuck which gripped the drill rod on its external surface.
5. The rotating drive chuck was then moved up the drill mast, forcing the drill bit to drill into the strata and created the drilled hole.
6. When most of the length of the drill rod had been drilled into the strata, the rotation of the drive chuck was stopped. The rod grippers were then engaged. The water flushing was turned off and the water swivel was removed.
7. The jaws of the drive chuck were then released from around the drill rod (which was held in place by the rod grippers).
8. A new drill rod was partially screwed into the bottom of the drill rod being held by the rod grippers.
9. The drive chuck was then lowered down over the new drill rod to the female end of the rod.
10. The jaws of the drive chuck were then engaged to grip the external surface of the new rod.
11. The water swivel was connected to the female end of the new drill rod.
12. The drive chuck was then used to tighten the partial coupling between the new drill rod and the drill rod held in place by the rod gripper, by rotating the drive chuck.
13. When the two drill rods were completely coupled the rod grippers were released and drilling of the hole recommenced.
14. The process described above … of adding another drill rod to the drill string was then repeated, until the desired length of hole had been drilled.
141 Mr Goodwin described the process used for dismantling the drill string in the following terms:
1. The rod rippers [sic - grippers] were deactivated.
2. The drive chuck lowered with the lowest drill rod so that the female end of the next lowest drill rod was equal with or slightly lower than the rod grippers.
3. The rod grippers were engaged and clamped the second lowest drill rod.
4. The drive chuck was then reverse rotated to break the coupling between the male end of the lowest drill rod and the female end of the second lowest drill rod.
5. The drive chuck jaws were then released and the drive chuck moved up the mast to the female end of the second lowest rod and gripped the external surface of that rod.
6. The lowest drill rod was removed.
7. The process of lowering and uncoupling … was repeated, until all drill rods had been removed.
142 In a later affidavit, Mr Goodwin provided more detail about step 5 in the dismantling process, specifically with regard to the point on the second lowest rod where the jaws gripped as described in that step. He said that the jaws "were capable of gripping the drill rod … at any location between the very bottom of the … rod, through to about half way up the rod". He said that "sometimes" this gripping was done "almost immediately after the female end of the second lowest drill rod entered the drive chuck". In such a case, he added, "the jaws of the chuck gripped the drill rod on the external surface of the female rope threaded coupling at the bottom of the rod."
143 Subject only to some clarification of points of detail, Mr Goodwin's evidence was not challenged in cross-examination.
144 The respondent submitted that the Proram through-the-chuck system satisfied every integer of Claim 1. Specifically, according to the respondent, the system involved "a drive chuck … for driving the outside surface of a female coupling of an extension rod at one end of the drill rod string, in either forward or reverse direction …."
145 The applicants contested this submission. Their first point was that, as a matter of construction, Claim 1 was confined to a "socket-type" chuck, that is to say, a chuck which acted as a kind of a socket into which the base of the lowermost drill rod would sit, and which did not, by jaws, grip the rod. In his affidavit sworn or affirmed (it does not state which) on 31 August 2015, Mr Charlton explained that this would be his understanding of the invention disclosed in the specification in the Patent, and claimed in the claims.
146 In this respect, Mr Charlton referred first to the "primary problem" in the existing art as identified in the specification: see para 32 above. He pointed out that, in a through-the-spindle system, there would not, by definition, be two threaded couplings between the grippers and the chuck. Having read this early passage in the specification, Mr Charlton would have been aware that the field of technology in which the inventors were operating did not include a through-the-spindle system. That perception of things was reinforced by the "secondary problem" referred to: a through-the-spindle system did not use an adaptor.
147 Mr Charlton next noted that the discussion in the specification, and the accompanying drawings, were concerned solely with socket-type chucks.
148 With respect to the claims, Mr Charlton noted that Claim 1 required that the chuck be able to drive the outside surface of the female coupling of the relevant extension rod in either a forward or a reverse direction. In the case of a through-the-spindle system, he said, when the rod is being driven in a forward direction (ie during drilling), the water swivel will be connected to the bottom end of the rod. From the photographs of the Proram machine used by Wilson Mining placed into evidence, it is apparent that, at this point, the jaws of the chuck could not have engaged with the rod at the point of the female coupling: the end of the rod would have had to have been at least a little proud of the bottom of the chuck motor to facilitate the fitting of the swivel, the length of the female thread was only about 50 mm, the chuck itself was mounted on top of the motor, and the total height of the motor/chuck arrangement was about 500 mm. Although Mr Charlton himself did not descend to this level of detail - it was made possible only after the evidence of Mr Goodwin - it reflects what he understood. From that understanding, he proposed that, at least apropos operation in the forward direction, Claim 1 could only have been referring to a system which incorporated a socket-type chuck.
149 Mr Charlton next referred to the requirement in Claim 4 that the chuck or adaptor have "a socket therein of similar cross-section to the extension rods". Additionally to the specific mention of a "socket", and to the possibility of using an adaptor, these words implied that the chuck or adaptor would have a "cross-section", a notion which would make no sense in the context of a chuck used in a through-the-spindle system. Mr Charlton made a similar point with respect to the wording of Claim 5.
150 Additionally, in final submissions, counsel for the applicants drew my attention to parts of the specification which, it was submitted, compelled the conclusion that the invention related only to a system which employed a socket-type chuck. All but one of those references were, I would have to say, utterly irrelevant to the matter presently under discussion: they used the word "socket" with reference to the space or cavity in the female end of each drill rod into which the male end of an adjoining rod would be screwed, not with reference to the space or cavity in the chuck in which the lower end of the lowermost rod was presumptively placed. The remaining reference was to so much of the lengthy passage set out in para 43 above as commences, "the rod is then slid down". I am, with respect, unable to accept counsel's submission, which followed immediately, that this was language which could only be describing a system with a chuck having "an internal socket, that is, it stands beneath the bottom of the rod, and it receives the rod either in circumstances where the socket is the chuck itself or where the socket is that of an adaptor inserted into the chuck."
151 However, based on Mr Charlton's exposition of how he, as an expert in the area, would understand the problem confronted by the inventors, and how they sought to resolve it - evidence which was not seriously challenged so far as it went - I regard it as clear that they did not have through-the-spindle systems in mind at all. I accept and, with respect, agree with what Mr Charlton said in this respect. The question remains: is it permissible for the court to read down Claim 1, which, in terms, neither confines itself to socket-type chucks nor excludes through-the-spindle systems, by reference to how a person skilled in the art would understand the invention from his or her reading of the specification as a whole? For the moment, I am not concerned with what was the applicants' next point, namely, whether Claim 1, internally construed, excluded a through-the-spindle system.
152 In Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155, the Full Court said (at 168 [67]):
[W]hile the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221 at 224-5; (1938) 56 RPC 23 at 39 ….
153 In H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151, 179-180 [120], Bennett J said (with the agreement of Middleton J):
It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification (Kimberly-Clark at [15]; Welch Perrin at 610). This is particularly relevant when the question concerns infringement of a claim or the sufficiency of a claim to define the invention. However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification (Welch Perrin at 610; Kimberly-Clark at [15]). The language of the claims may have no positive meaning when read apart from the specification but the meaning may become clear and the invention sufficiently defined when read using the body of the specification as a dictionary of the jargon and ascertaining the nature of the invention (Welch Perrin at 616).
154 These principles, which are not in dispute, have been referred to by the Full Court on a number of other occasions, some of which were mentioned in PAC Mining Pty Ltd v Esco Corporation (2009) 80 IPR 1, 13-15 [26]-[29].
155 The position is, therefore, that, if the meaning of Claim 1 in the Patent is clear, the scope of the claim cannot be narrowed by reference to the language used elsewhere in the specification. This is so even if, as appears to be the case, the inventors had in mind only the narrower form of the invention. It would be otherwise, of course, if Claim 1 were, in some respects, ambiguous, obscure or, for example, excessively compendious. Then it would be permissible to have resort to the specification as a whole to understand what the wording of the claim conveyed. But a perceived discordance between the terms of the claim, clear in themselves, and what the inventors apparently intended is not enough. This is an important distinction, since the claims in a patent go further than merely tracing out the nature of the invention: they assert the statutory monopoly which the inventors claimed for themselves. Whatever they actually had in mind, the validity of the claims must stand or fall by reference to the terms actually used in them, subject, of course, to the accepted principles of construction to which I have referred.
156 There is nothing in Claim 1 which, as a matter of language, would confine it to socket-type chuck systems. The point made about the claim by Mr Charlton, as laid out in para 148 above, valid though it may be in its own right (and I discuss it further below), is not, in my view, sufficient to impress upon the claim a meaning, applicable in all situations, which would confine it in this way. The conclusion I reach, therefore, is that, as a matter of construction, Claim 1 is not so confined.
157 The applicants' next point in this area of the case was that the system used by Wilson Mining, as described in the evidence of Mr Goodwin, did not anticipate the invention in so far as claimed in Claim 1. They submitted that the Wilson system did not incorporate a drive chuck for driving the outside surface of the female coupling of the lowermost extension rod in both a forward and a reverse direction. Apropos the forward direction, this submission must be accepted: as noted above, the presence of the water swivel made it inevitable that the jaws of the chuck would not engage at the point on the rod representing the outside surface of the female coupling thereof. The only real debate related to the question whether the chuck used by Wilson Mining engaged with the rod at that point when operating in reverse.
158 Before coming to that question, I would say that, in my opinion, the answer does not matter. In Claim 1, the sense conveyed by the phrase "in either forward or reverse direction" is that the rod may be driven, as the occasion demands, either way. That is to say, operation in both directions (albeit not at the same time) must be possible, in the way described. The claim is not, in my view, concerned to claim any system which involves operation in the forward direction only, and cannot be used in reverse; or vice-versa. It follows that, whether or not the chuck engaged with the outside surface of the female coupling when operating in reverse, the Proram system used by Wilson Mining did not anticipate the invention so far as claimed in Claim 1 because the chuck did not do so when operating in the forward direction.
159 As to the question which I have identified, the respondents focussed upon the stage in the dismantling of the drill string represented by step 5 in the list in para 140 above, and upon Mr Goodwin's second affidavit, referred to in para 142 above. They submitted that, when the chuck was raised to engage with the second-last drill rod, the lower end of which was protruding below the grippers, it so engaged at the very lowest point of that rod, that is, the point of the female coupling. The difficulty for the respondents here, however, is that Mr Goodwin himself said no more in chief than that "sometimes" this engagement came about "almost immediately after the female end of the second lowest drill rod entered the drive chuck". There was no mechanical or other operational necessity for the chuck jaws to engage with, and therefore to drive, the very end of the rod corresponding to the location of the female coupling. It seems to have been very much a matter of the technique of the person who happened to be operating the machine at the particular time, and perhaps of the conditions under which the drilling was being undertaken. When Claim 1 speaks of a chuck "for driving the outside surface" of the female coupling, it requires, in my view, a chuck which operates (in reverse) by driving that surface specifically. The claim is, after all, speaking of a system, not of day-to-day operational choices which correspond with what is claimed only "sometimes".
160 As has frequently been stressed, anticipation requires close correspondence with the invention as claimed. For the reasons given above, and to the extent that it matters, I would hold that the Proram system used by Wilson Mining did not anticipate the invention so far as claimed in Claim 1 because it did not incorporate a chuck for driving the outside surface of the female coupling on a drill rod in the reverse direction.
161 Counsel dealt with this aspect of the respondent's anticipation case as though a favourable result for the applicants under Claim 1 would carry through to all other relevant claims. I have no reason to depart from that approach.