6.1 Vector's criticisms of Dr Glass's evidence
138 Vector accepted that the inventors of the E-Chem patent are Dr Glass, Dr Davison, and Mr Roberts. Vector did not suggest that some other person who was or is employed by Fosroc is an inventor.
139 I accept that Dr Glass, Dr Davison, and Mr Roberts have an interest in the outcome of the proceeding. So too does Mr David Whitmore, the President of Vector, who gave evidence for Vector. The evidence of Dr Glass, Dr Davison, and Mr Roberts also relates to events and circumstances from many years ago. It is unsurprising that they each had to refresh their memories from documents before they prepared affidavits. They are not to be criticised for this necessity. Nor did their evidence disclose any sign of expedient reconstruction of events and circumstances to suit their interests. To the contrary, I found their evidence direct, cogent and persuasive.
140 Dr Glass, who might fairly be described as the principal inventor of the invention the subject of the E-Chem patent, came in for particular criticisms from Vector. I do not accept those criticisms to be justified. Dr Glass was extensively cross-examined over video-link for three days. The time difference between Sydney and the United Kingdom (where Dr Glass resides) meant that he was being cross-examined from 4.30 or 5.00am in the morning over many hours by reference to numerous electronic and hard copy documents. Dr Glass's evidence was not evasive or unnecessarily discursive in these circumstances. It is apparent he was trying to ensure he understood the questions being asked and gave accurate answers.
141 The proceeding was commenced in February 2019. Vector's case narrowed significantly over the course of the proceeding to its ultimate claims for entitlement. This proceeding is also not the first legal dispute between Vector and E-Chem about the invention the subject of the E-Chem patent. As far as Dr Glass is concerned, in 2004 Fosroc made his continued research untenable so he left Fosroc and took the risk of establishing E-Chem. While at E-Chem he (in the main) conceived of the invention the subject of the E-Chem patent. Dr Glass, Dr Davison, and Mr Roberts took all of the risk in developing and commercialising the invention. Fifteen years after the conception and ten years after its acquisition of Fosroc, Vector claims entitlement to the E-Chem patent. Given this perspective (whether it be right or wrong) and the circumstances under which he gave evidence, Dr Glass is not to be criticised for the occasional signs of exasperation and exhaustion which he manifested during his evidence.
142 The specific criticisms Vector made of Dr Glass are also not justified.
143 Dr Glass was criticised for saying in his first affidavit that he understood an email from Mr Robert Viles (intellectual property manager at Fosroc) to him of 8 April 2003 which referred to an anode "connected, at least temporarily, to a DC source" meant "connected until the battery runs flat". I do not find this evidence implausible or self-serving in the least given that:
(1) the issue is Dr Glass's understanding in 2003;
(2) the immediate context was Dr Glass's email of 8 April 2003 referring to a battery powered zinc anode;
(3) in the same email of 8 April 2003 Dr Glass referred to including "an electronic gizmo that will connect the zinc directly to the steel when the battery runs flat";
(4) Dr Glass was responding to an email from Mr Viles of 7 April 2003 referring to a "battery anode", being a "galvanic anode connected in series with a battery to boost its potential";
(5) these were the points Dr Glass was trying to make when he said "- if you look at those words today in - in - from 2021 and looking at those words, there's no words of a battery going flat. The mention of a battery going flat is in my email from the previous day, or whenever it was, or from earlier this day. I can't remember … my email from two hours before. Just two hours before we were mentioning the battery going flat"; and
(6) what Dr Glass could not remember was if his email was from two hours before or the previous day. He was not suggesting that he could not recall his own understanding from 2003. Given the number of documents in evidence and the number to which he was taken in cross-examination, it is not surprising that Dr Glass could not recall the time his earlier email had been sent, but he certainly had a firm grasp of the context and his own understanding from that time.
144 Dr Glass's understanding to this effect does not conflict with "the very concept that he had sent to Mr Viles in his email earlier that day, which directly raised the concept of there being a temporary connection between a battery and the zinc anode". The point Dr Glass had made to Mr Viles was that a battery powered zinc anode would be unlikely to be patentable given the disclosed art. Dr Glass's email included a form of 'musing out loud' when he said that to be patentable there would need to be a further "innovative" step and listed possibilities including "an electronic gizmo that will connect the zinc directly to the steel when the battery runs flat".
145 Far from Dr Glass's contemporaneous evidence about his then state of mind being inconsistent with his email, it is entirely consistent with his email - that the temporary power source was a battery which would run flat and then there might be other possible steps including "an electronic gizmo that will connect the zinc directly to the steel".
146 A musing in an email, about a possibility (unexplored) of an "an electronic gizmo that will connect the zinc directly to the steel when the battery runs flat" is not an inventive concept (let alone the invention or the inventive concept of the E-Chem patent). A "gizmo" is an undefined or unidentified "gadget" (Macquarie Dictionary Online) or a "gadget, gimmick, 'thingumajig'" (Oxford Dictionary Online). The essence of a "gizmo" is its lack of definition or identification. Dr Glass said by "gizmo" he meant a "device to be invented". It is not that an inventive concept cannot include a "gizmo" in the sense of an undefined or unidentified "gadget", as the creation of the "gizmo" may involve nothing more than a reduction to practice of a known product, process or method. As will be discussed further, that is not the case here, however.
147 For present purposes, what is relevant is Dr Glass's evidence that he understood Mr Viles's reference to a temporary connection between a battery and the zinc anode as meaning that the battery would run flat. This evidence is entirely consistent with the context and content of the surrounding contemporaneous evidence. It casts no doubt upon the credibility of Dr Glass.
148 Nor is it the case that Dr Glass and Mr Roberts understood in 2003 "that a practical workaround for his gizmo idea was that if a wire was connected to each of the zinc anode and the steel and each wire projected out of the concrete, then that would facilitate the relevant direct connection being made when the battery ran low". To the contrary, and for good reasons, that formed no part of Dr Glass's thinking at the time. Dr Glass said (emphasis added):
If the entire assembly was buried in concrete, it would have been… ridiculous to try and connect a sacrificial anode assembly. This was a fit and forget unit. We would be trying - ridiculous to try and connect the sacrificial anode of the assembly to the steel. There was no suitable connector you could use, there was - everything was buried in concrete. You would have to break the concrete and the sacrificial anode to get to the - and the assembly - to get to the sacrificial anode of the assembly.
…
So if I assume there was a wire from the sacrificial anode of the assembly that was extending from the sacrificial anode of that assembly outside the concrete to form a second connection - second lead, as it were, into the sacrificial anode - so now we have two leads. And if I assume that the concrete had a lead connected to it, then it would be a simple matter - well, it would be useful to have connected the sacrificial anode to the steel if there was enough sacrificial anode material left to connect to the steel.
…
… you're asking me about a hypothetical scenario which starts with an assumption, and you're asking me when I already have the knowledge of all the 20 years after the event, or whatever it is. That could be an alternative means to achieving the effect of the gizmo I describe, but the problem with that kind of a means is that it now involves monitoring and maintenance, and that just removes completely the - would have removed completely the advantage of the fit and forget assembly, which was no maintenance, and - you know, only monitoring, sort of, in the circumstances that you really need monitoring - and so, those - the fit and forget assembly had that - that was a selling point. Its selling point wasn't 25 to 50 years of anode life. That was 10 years. Its selling point was no maintenance, no monitoring, so you would be required to assume a construction that we are dealing with here which isn't a real one. You would be producing something that would be taking away the very benefit of the fit and forget assembly.
…
And can I ask you, please, if the battery was external to the concrete - outside it - the connection of the zinc to the steel could be done easily, couldn't it? It could have been done easily. In fact, it could have been done easily in the ENSA pattern. So there, they had a zinc anode in concrete and a battery on the outside. But if you look at the prior art, the teaching at the time was teaching away from doing that sort of stuff. It would have been - if you were going to have a battery external to the concrete and you were going to add the monitoring and maintenance to your system, you are now talking about something completely different. You are talking about an impressed current system, and if your battery is outside the concrete and it ran flat, you wouldn't choose to connect the anode up to the steel to continue providing cathodic protection. Your system would be designed to be an impressed current system, and you would just simply replace the battery - that is, that's what you would choose to do in those scenarios. So we are talking now - in a sense, we are talking about a very hypothetical, "can we construct a new invention", but we have no benefit. We have no - what is the problem we are solving, or what are the things we are doing, here? We are in fact removing the known benefits of what we already did. So they sound daft. That's what I'm saying.
149 Mr Roberts gave this evidence to the same effect (emphasis added):
…assume the scenario for me where there's no difficulty accessing your anode at all. If you want to take advantage of the part of the anode that hasn't been consumed when the battery was still running, and you want it - and therefore you need to connect that anode to the steel so that you can take advantage of its galvanic - its sole galvanic operation, it's straightforward to connect those two wires, isn't it? I don't think it's straightforward at all, in practice, because there would have to be wires sticking out of the concrete structure, and for every anode, there would be a wire sticking out to make the connection. I just don't think that was it's - it's not straightforward at all and
Well, going back to 2002, as a matter of principle, in order to take advantage of the balance of the anode that hasn't been consumed, as a matter of principle, all that needs to be done is to connect the wire between and the steel and the zinc? I don't think that was ever entered anyone's head at the time then - it's - it's a ridiculous thing to do back then.
150 What is apparent is that the evidence of Dr Glass and Mr Roberts is reflecting their states of mind in 2002/2003 whereas the questions to them assume a different conceptual landscape - a conceptual landscape that (anachronistically) includes the inventive concept of the E-Chem patent.
151 Dr Glass's evidence otherwise was not of the character proposed in Vector's submissions. He was careful, but not argumentative. I did not form any impression that Dr Glass was tailoring his evidence to suit his case. The examples on which Vector relied do not support any such suggestion. Dr Glass was frank that he had to do "a lot of memory-jogging", which is unsurprising given the level of detail he provided in his affidavit. That does not mean he did not recall the material circumstances. Conceiving of the E-Chem inventive concept involved "eureka" moments for Dr Glass which he clearly recalled. He had good reason to recall it - it was a form of culmination of his life's work.
152 Dr Glass also explained that the Bell Street carpark project, identified by Dr Glass, Dr Davison and Mr Roberts as involving circumstances critical to the formulation of the inventive concept, was a project run by Faber Maunsell (to whom Dr Glass was contracted to do the work) so Faber Maunsell held the relevant documents in relation to the project. I do not find it surprising that E-Chem did not hold documents relating to the Bell Street carpark project. The lack of documents does not undermine the credibility or cogency of the evidence of Dr Glass, Dr Davison and Mr Roberts. Given the importance of the Bell Street carpark project to the formulation of the inventive concept in Dr Glass's mind it is not surprising that he recalled "quite a bit" about the project despite the lack of documents held by E-Chem.
153 Dr Glass's evidence supported this characterisation of his recall. He said:
I recall we took a photograph, at that time, showing, like, potholes in the car deck where you could drive up to the car park, you could park your car, and you didn't have to take your handbrake off, because you could just drive into the potholes where the car tyres stood on the car park, because that's where all the salt drained off the car wheels onto the deck, and - and your car was now sitting in a pothole. You didn't need a handbrake to stay in the parking bay, and it was very, very badly damaged…
… the car park led up to another car park on top of a building next door, and this gave particular access problems for the client, because that was - that access to the car park next door was like a right of way, and so we - there was a lot of problems and - and in - in the context of chloride extraction on that car park, six weeks was simply too long a time for such a temporary ... treatment. It wasn't short enough…
154 Faber Maunsell had contracted Dr Glass (not E-Chem) to assist on the Bell Street carpark, but according to Dr Glass was fully aware of Dr Glass's involvement in E-Chem. There is no reason to doubt this evidence. Because of the difficulties presented by the client's needs for the Bell Street carpark project (for continued access), Dr Glass took Dr Davison to see the site for assistance. According to Dr Glass they initially considered using Galvashield (a range of Fosroc products comprising a form of sacrificial anode) but rejected it as the corrosion damage was too bad. They then decided that they needed to stop the corrosion first and thought of using a temporary impressed current before using Galvashield, musing together at the site as follows:
… the way it came it came up was, "I wonder if we could do a temporary impressed current treatment with Galvashield?" You know, drive - drive a huge current of Galvashield, and we said - and - and we - and what triggered in our mind and triggered that we had an invention wasn't the fact I wondered whether we could do a temporary impressed current treatment with Galvashield, but if we did that we would corrode through all the Galvashield connectors - connections, but the trigger that led to the - to the what was for me, my eureka moment was we would corrode away all our connections if we tried to do that … we thought we can't do it with any of the anodes that are on the - on the market, essentially.
155 It is also apparent that Dr Glass, Dr Davison and Mr Roberts understood in the context of the proceeding that it was important they not collaborate about their evidence; Dr Glass noting that when he did ultimately scan (albeit not in detail) Dr Davison's affidavit after the affidavits had been filed he was surprised by the very different perspective he had on some events. However, none of these different perspectives relate to the timing or circumstances of the formulation of the E-Chem inventive concept. As Dr Glass put it, "I think - even our - our - as it were, our recognition of the invention in the E-Chem patent came to each of us, I think, in different ways". That is so, but one clear consistency in their evidence is that the inventive concept was conceived of in the context of their work leading up to and including the Bell Street carpark between October 2004 and March 2005, after they had left Fosroc.
156 The fact that Dr Glass identified the invention as "my invention" is no cause for criticism of him. It is clear he was the principal inventor. It is not that Dr Glass's subjective state of mind as to when he conceived of the inventive concept is determinative. It is that there is no doubt that it is the process or act of conception of, principally, Dr Glass with which we are concerned. To explain further: (a) the process or act of conception of the inventive concept (what it is and when it came into existence) is critical, (b) those issues are to be determined objectively on the basis of the whole of the evidence, and (c) Dr Glass's subjective views about the inventive concept (what it is and when it came into existence) are not determinative, but nor are they irrelevant.
157 Dr Glass is entitled to his own view about what he invented and when he invented it. He should not be expected to be a neutral observer about his own invention or his own thought processes. His thought processes were what they were and are what they are. Nor is he to be expected to know the law about the distinction between an invention which is patentable and an inventive concept. None of this is cause for criticism. Far from being a rigid and compartmentalised thinker, it is apparent that Dr Glass is highly inventive and creative - his mind appears to have been constantly drawing connections and working for solutions.
158 Dr Glass is also not to be criticised for saying that one "eureka" moment for him was realising that the connector of all sacrificial anodes on the market would corrode if a high (or "huge") temporary impressed current was applied to them. Nor is he to be criticised for saying he had multiple "eureka" moments. He said there were multiple such moments because the E-Chem hybrid process (that is, the two stage process) was "so different to anything that we had previously seen".
159 Dr Glass's recognition about the connectors was important because it meant that there was a commercial opportunity to make a sacrificial anode capable of operating in the two phases envisaged by the E-Chem hybrid process: high impressed current (far higher than conventional cathodic protection but lower than for temporary protection treatments) and then low galvanic current. It is not the case that this suggests that Dr Glass did not see the inventive concept of the E-Chem patent as involving the two stage hybrid process using the same anode. Dr Glass also did not say that the inventive concept was the connectors which would not corrode. None of his evidence, fairly read, supports the submission that "Dr Glass appreciated that the other aspects of the E-Chem hybrid process [that is, other than the connectors] had already been conceived of at Fosroc". That submission is untenable given the evidence.
160 Nor is it fair to say that Dr Glass acknowledged that he "withheld ideas that he had developed while at Fosroc because of his falling out with the new owners". It would be unrealistic to expect Dr Glass to look kindly upon those whom he considered had effectively made him redundant from Fosroc. He clearly recalled that this period at Fosroc involved an "emotional rollercoaster". But he did not say he withheld ideas from Fosroc while still employed by it. To the contrary, the reason he would "not be developing anything for Fosroc any more" was because "[p]roduct development in the UK was hit by a sledgehammer from our new company owners in Dubai". In hindsight, he also considered a proposed new employment contract from those new owners to be "completely unlawful". His evidence that he "didn't, at the time, want to give everything that was in my head or all my new ideas to this new owner any more because there was no reward" does not mean he withheld any idea - it means from his perspective the new owners had effectively discontinued his research and the research of the other scientists so he had no incentive to develop further ideas.
161 I do not accept that Dr Glass's filing of a patent for the E-Chem hybrid process in the United States in December 2009, which claimed priority from the Fosroc 2004 application, involved Dr Glass in giving "spurious" explanations seeking to avoid damage to E-Chem's case. I will return to the Fosroc 2004 application below. For present purposes what is relevant is that:
(1) Dr Glass is an inventor of the invention claimed in the Fosroc 2004 application (the so-called high voltage anode invention and the associated Fosroc patents for this invention);
(2) by October 2009, Dr Glass was aware of what he perceived to be illegitimate attempts by Vector to claim priority over the E-Chem patent priority documents by amending the claims of the Fosroc 2004 application patents;
(3) Dr Glass did not have the benefit of a patent attorney in the United States. E-Chem was a small company with limited resources financed by Dr Glass, Dr Davison and Mr Roberts initially; and
(4) Dr Glass claimed priority from the Fosroc 2004 application in the US patent application in December 2009 in this context.
162 These circumstances do not support any inference about Dr Glass's subjective state of mind in 2009 being that he conceived of the inventive concept in the E-Chem patent while working at Fosroc, let alone that, objectively determined, he in fact conceived of the inventive concept in the E-Chem patent while working at Fosroc up to 8 March 2004. Accordingly, the December 2009 patent application in the United States is not "powerful evidence that Dr Glass conceived the E-Chem hybrid process when he was at Fosroc".
163 Just as Dr Glass's evidence about a battery providing a "temporary" power source made sense in context, equally his evidence about the meaning of "passivity" was no cause for criticism of him. His evidence merely recognised that the word could take different meanings depending on the context. Characterising his evidence as involving some form of "push back" against the cross-examiner is unfairly pejorative. Similarly, he is not to be criticised for making it clear that in 2003 "we" (meaning he and others with whom he was working at Fosroc) were focused on currents and current densities, and not charge. The point Dr Glass was making, as I understand it, is that it was common knowledge or assumed or unquestioned in 2003 that a high charge to a sacrificial anode could cause the anode to fail. Dr Glass said:
In 2003, we understood that applying a high voltage to a sacrificial anode could have caused a lot of problems with the sacrificial anode and could have caused it to fail prematurely.
164 This is why (or one reason why), as Dr Glass put it, it never crossed "our minds" (meaning he and others with whom he was working at Fosroc), that "if you applied a source of DC power in series with a sacrificial anode, the resulting current density was the result of the voltage from the source of power and the voltage from the galvanic potential between the anode and the steel". The focus in 2003 at Fosroc was a "set and forget" sacrificial anode solution.
165 There is also a difference between the current density, which is the rate of charge measured at the steel, and the charge from the power source which is necessary to achieve the desired current density at the steel. While the current density is a product of the charge per unit area, Dr Glass's evidence exposes that the conceptual landscape of the relevant person(s) at the time is critical. As he put it in response to a question about the work he and his team at Fosroc were doing in 2003, "the problem you have there is me talking about current density and the other one is you talking about charge". He explained that "[w]e had not, at this point at all, attempted to determine how much charge we needed to do this" (that is, arrest corrosion), which was analysis that was started "after the first priority document" (for the E-Chem patent) and presented in 2006.
166 As Dr Glass also explained, in 2003 at Fosroc he was not considering the same problem as he was considering in 2005 in respect of the Bell Street carpark and thereafter. He said:
…the thing is, I just didn't do the calculations in that way at that time because I was not considering the same problem. So after we got - after we started on the concept of press [impressed?] supply chloride extraction and then move it to galvanic protection. Now we were addressing the problem, can we actually get the charge in for chloride extraction. Now we start thinking about charge. Chloride extraction, for us, was the charging to equivalent about to 3600 kilocoulombs. And re-alkalisation was equivalent to a charge of about 600 kilocoulombs. And we had started to realise - just knowing from, I think, that we were going to struggle to get these ..... chargers [charges?] delivered with our discrete - with our multi-treatment anodes. And that was the development that took place between March 2005 and March 2006 or about, really, I think, October 2005…So we were working on two things at that time. One was, can we get more charge. And the other one is, can we get more current in steel for anodes.
167 These distinctions being drawn by Dr Glass are not quibbles. They reflect the changes in his conceptual landscape between 2003 and late 2004/2005. They also reflect the different focus of the work done for Fosroc in 2003 and the work prompted by the challenge by the Bell Street carpark in 2005.
168 Dr Glass's point that he knew in 2003 that a high current applied to a sacrificial anode would have caused the anode to fail is not inconsistent with the terms of the Fosroc 2004 application. The Fosroc 2004 application identified that impressed current cathodic protection needs an external power supply whereas in sacrificial anode cathodic protection it is the voltage between the sacrificial anode and the metal that drives current through the electrolyte between these components and the voltage is limited by the natural potential difference between the metal and the sacrificial anode. The Fosroc 2004 application said that, as a result, there is a need for a sacrificial anode assembly that can give rise to a voltage greater than the natural potential difference between the metal and the sacrificial anode. The invention, by the particular configuration of the assembly, enabled this to occur by ensuring the anode and cathode (a cell) are not in electronic contact but are in ionic contact so that current can flow between the anode and cathode, with the anode electrically connected to the metal (for cathodic protection) and the cathode electrically connected in series to the sacrificial anode, the cell otherwise being isolated so that current can only flow into and out of the cell via the sacrificial anode and the connector. This assembly enabled greater current because the current was not being impeded by the resistance of a material (such as an electrolyte) through which it had to flow between the sacrificial anode and the cathode.
169 The inventive concept of the Fosroc 2004 application is thus an improved sacrificial anode assembly. The improvement allowed greater current to be delivered to the steel. It has nothing to do with the kind of high charges used in temporary electrochemical protection treatments (chloride extraction or realkalisation).
170 There is no inconsistency in Dr Glass's thinking processes or his evidence once the different contexts in 2003 and 2005 are recognised.
171 Dr Glass did not avoid answering a question that he knew in October 2003 that once you had achieved passivation of the steel, connecting a sacrificial anode in the galvanic-only mode would be likely to protect that steel from actively corroding again. He answered "no" to this question on the basis that what he knew in 2003 was that if you applied a high charge to a sacrificial anode it would fail.
172 There was also no "ready acceptance" by Mr Roberts that in 2003 he knew that once you had achieved passivation of the steel, connecting a sacrificial anode in the galvanic-only mode would be likely to protect that steel from actively corroding again. The context was a paper prepared by Dr Glass, Dr Davison and Mr Roberts in 2007. Mr Roberts agreed that he knew that once the environment around the steel was improved a lower current density would provide ongoing protection and then this exchange occurred:
And for example, you could use a galvanic-only protection?---That would work, yes.
Thank you, Mr Roberts. No further - - -?---This is back in 2003, isn't it. So it's difficult to remember everything.
173 The answer "that would work", even if referring to 2003, does not mean that in 2003 Mr Roberts conceived of any treatment involving first improving the environment around the steel by a high charge to a sacrificial anode and then providing continuing protection by a galvanic charge from the sacrificial anode.
174 For these reasons I conclude that Vector's criticisms of the evidence of Dr Glass as variously defensive, argumentative, or implausible are unfounded. There is no doubt that Dr Glass feels vexed by this proceeding and, indeed, more generally over many years by Vector. But nothing in Dr Glass's evidence suggested to me that he was other than frank, direct, careful and truthful. I formed the same impressions about the evidence of Dr Davison and Mr Roberts.