Professor Field's evidence
56 As indicated above, VIP maintained its objections to the admissibility of that part of Professor Field's evidence provisionally admitted pending final submissions. For the reasons that follow, I would uphold VIP's objections.
57 As noted above, Professor Field was Associate Professor of Engineering at Monash University and an engineering consultant. Professor Field's first affidavit disclosed that he was a mechanical engineer and had published books and papers on engineering design theory, engineering education, the innovation process, and mechanical equipment research and development. In oral evidence, Professor Field stated that he had acted as "solely [a] professional engineer for the wool industry for 10 years in the 1980s" and, since then, he had "mainly been an academic, teaching in the area and consulting in minor ways for engineering".
58 Section 76(1) of the Evidence Act 1995 (Cth) ("the Evidence Act") provides that "[e]vidence of an opinion is not admissible to prove the existence of a fact about the existence of which the opinion was expressed". Section 79(1) provides, however, that "[i]f a person has specialised knowledge based on the person's training, study or experience, the opinion rule does not apply to evidence of an opinion of that person that is wholly or substantially based on that knowledge". Evidence that is not relevant is inadmissible: see s 56. Further, under s 80, evidence of an opinion is not inadmissible only because it is about a fact in issue or an ultimate issue. Thus, if evidence of an opinion is otherwise admissible, the opinion may be about a fact in issue or an ultimate issue.
59 The first important point to make about Professor Field's evidence is that Professor Field is not in the class of skilled addressees. Indeed, in cross-examination, Professor Field readily conceded that he was not in the class of people that he himself had described as skilled in the art of dip tubes, and that Mr McFadyen and Mr Mandile were in this class. Professor Field simply did not fall within the class of people who could be regarded as "a skilled addressee and in a position to give expert evidence of assistance to the Court, or a person whose evidence, together with other evidence, creates the construct of the skilled addressee": see Fina Research SA v Halliburton Energy Services Inc [2003] FCA 55 ("Fina") at [3] (Moore J).
60 Of course, in a case such as this, a court may receive expert evidence from persons other than skilled addressees if it is otherwise relevant. There was, however, a serious difficulty with Professor Field's evidence in another respect: it was not just that he was not a skilled addressee but that he had no history of working in the fields of dip tubes or plastics, or some related field. Without this specialised knowledge, based on training, study or experience, Professor Field was not in a position to give relevant evidence to the court bearing on the meaning of the VIP Patent or a prior publication, the issue of novelty and the issue of obviousness: compare Fina at [8].
61 The second point to note is that, to the extent that Professor Field gave evidence based on his specialized knowledge of the industrial innovation process, he did not give evidence within the art. Opinion evidence of this kind was not relevant to any issue in the proceeding: compare British Celanese Ld v Courtaulds Ld (1933) 50 RPC 63 at 90.
62 A further difficulty with Professor Field's evidence was that, in so far as he expressed opinions involving mixed questions of fact and law, his opinions were in some key instances apparently based on mistaken understandings of the relevant legal principles. See, in this regard, Minnesota Mining and Manufacturing Company v Tyco Electronics Pty Ltd (2002) 56 IPR 248 at 259 [49].
63 Moreover, as already noted, on the issue of obviousness, in his 8 August 2009 report (referred to below as "BWF 8") at par [4.5.5], Professor Field posited "the inverted solution", which he relies on in his 20 August 2009 report (referred to below as "BWF 20") to justify his opinion of obviousness. In BWF 20, Professor Field noted that he had received the Nufarm sample on 19 June 2009 but did not also mention that the Nufarm sample dip tube had an internal tube running partially through the bellows section of a lower outer tube, when discussing obviousness. The Nufarm sample dip tube has at the least a "close ... arrangement to the VIP Dip Tube".
64 It is evident from Professor Field's lack of relevant qualifications and, indeed, his own evidence, that he could not give reliable evidence of the state of the common general knowledge of a skilled addressee in the relevant art as at 24 February 2000: contrast Wellcome at 287.
65 The following paragraphs outline Professor Field's evidence and state the rulings on VIP's objections to admissibility.
66 In BWF 8, Professor Field gave evidence as to the class of persons that were to be regarded as skilled addressees and as to the state of common general knowledge of those skilled addressees as at the priority date. Thus, in BWF 8, Professor Field said that:
[T]he person who was skilled in the art of dip tubes as at 24 February 2000 and was in a position to comprehend problems and solutions with dip tubes required two attributes: a practical understanding of the function of dip tubes and a basic knowledge of manufacturing methods and economies relevant to dip tube production.
Broadly speaking, this conformed to Mr Mandile's evidence on the point.
67 Professor Field went on to describe "[t]he types of person with the relevant practical understanding of dip tubes"; "[t]he types of person with the relevant knowledge of manufacturing alternatives of dip tubes"; and the common general knowledge that he attributed to them as at 24 February 2000. He stated that he was unaware of "any particular text or articles that reflected the general knowledge assumed to be held by the person skilled in the art". As counsel for VIP noted, his statements about this common general knowledge were "couched in the language of supposition". VIP did not, however, disagree with Professor Field's statement that "only very few persons skilled in the relevant art would have accessed" "information about dip sticks ... available from patent literature in February 2000" "as a matter of course". In this regard, Professor Field's evidence was also consistent with that of Mr Mandile.
68 In BWF 8, Professor Field also expressed the view that a person skilled in the art of dip tubes and motivated to address the "buckling problem" might either have engaged an outside expert or have attempted to solve the problem himself. Professor Field outlined various possibilities that might have led to a solution from the perspective of a professional innovator, as opposed to the perspective of the skilled addressee. That Professor Field placed himself in this former category was clear from his evidence in his cross-examination. The perspective of a professional innovator is not, however, relevant to any issue in the proceeding. Professor Field's description of what a skilled worker within the field might do was almost entirely speculative. He was unable to give evidence about the nature of the routine tests and procedures that those skilled in the art would conduct.
69 Possibly too, his report was further compromised by reference to "common sense" as a subset of suggested relevant experience or knowledge - a subset introduced by the question to which he was asked to respond. As VIP's counsel pointed out and BMW's counsel conceded, this was not a relevant category of knowledge.
70 For reasons stated below, omitting formal parts, much, if not all, of BWF 8 was inadmissible. To the extent that it was admissible, I would accord BWF 8 little weight.
71 In his 14 August 2009 report (referred to below as "BWF 12"), Professor Field expressed a view about the "basic knowledge of plastics manufacturing methods that would have been held by a person who had a practical understanding of the function of dip tubes". This short additional report suffered from the same defects as those already outlined. For these reasons too, BWF 12 was largely, if not wholly, inadmissible. In so far as any of BWF 12 was admissible, I would accord it little weight.
72 BWF 20 depended for its admissibility, first, on whether it could be said to be wholly or substantially based on Professor Field's training, study or experience. As set out above, Professor Field was not a skilled addressee and his training, study and experience was not in dip tubes, plastics, or any relevantly related field. His evidence as to the common general knowledge of a skilled addressee and as to the "routine" tests that such an addressee would conduct lacked any proper basis: it was in the nature of mere surmise. I note too that this report is also compromised by reference to the irrelevant category of "common sense experience".
73 For the reasons stated, omitting formal parts, that which remains of BWF 20 was inadmissible. To the extent that it was admissible, I would accord BWF 20 little weight.
74 In a second affidavit of 9 February 2010, Professor Field responded to Mr McFadyen, stating that, in his opinion:
(a) A tube "is a construction which has a fully enclosed internal space with a substantially uniform wall thickness and is of substantially uniform cross-section lengthwise … [A] person skilled in the art of dip tubes would have the same understanding".
(b) As to the requirement that "a lower end of the first tube extends to a position just below the end of the collapsible and extensible portion so that the first tube inhibits bending of the collapsible and extensible portion" the skilled addressee would (so Professor Field thought) interpret these features of claim 1 as requiring inhibiting of both: (1) sideways displacement of the lower end of the bellows with respect to the axis of the first tube; and (2) bending angularly, to prevent the central axis of the lower end of the bellows from adopting an oblique angle to the axis of the first tube. His view was that, in the case of the VIP Patent, "[t]his pair of constraints was achieved by making the lower portion of the second tube a clearance fit over the first tube, and of sufficient common length that the tubular parts remained largely concentric and parallel".
(c) In comparison, it was (so Professor Field said) the bellows in the BMW dip tube that was used to guide axially the lower end of the "second tube". The short (and what he described as "zero") axial length of contact between the lowest convolution of the bellows and the first tube on the BMW design, coupled with their very large clearance, meant that the BMW arrangement inhibited only lateral deflection of the bellows and the lower foot portion. According to Professor Field, the BMW arrangement did not inhibit angular bending of the bellows, "and the person skilled in the art of dip tubes would interpret the functionality of the VIP clearance fit … as a requirement to inhibit significant angular bending".
(d) The lower cylindrical extension of the BMW "second tube" only had one functional purpose - to rigidly connect the castellated opening to the bellows. The BMW design, so Professor Field said, did not have a lower tubular portion (in the functional meaning of "tube") at all, but the lower portion of the foot had a unique self-aligning characteristic.
75 Professor Field summarized his conclusions in drawings, concluding that the BMW product did not have all the features of claim 1 of the VIP Patent. Nor, in his opinion, did the BMW product have all the features of the other allegedly infringed claims.
76 The first difficulty with Professor Field's 9 February 2010 affidavit is that the opinions expressed in it are not shown to be wholly or substantially based on his specialised knowledge based on his training, study or experience. Unless this is shown, then Professor Field's opinion evidence is inadmissible. Secondly, even if it is assumed that his opinion evidence is based on his training, study and experience as a mechanical engineer, it is an irrelevant opinion. Professor Field is not a skilled addressee and he cannot therefore give a skilled addressee's opinion. As indicated above, Professor Field is unable, relevantly, to comment on the state of the relevant common general knowledge as at the priority date. His field of training, learning and study is mechanical engineering but this is not the art in question. An opinion based on this training, learning and study is not relevant to an issue in the case. I would not, therefore, regard Professor Field's opinion evidence about the meaning of "tube", "loose clearance fit" and "fit" as relevant and admissible in this case. If I were wrong about this, however, I would, for the reasons stated, accord his evidence less weight than that of Mr McFadyen, whom the parties accepted was a skilled addressee. In any event, as already indicated, Mr McFadyen impressed me as a most reliable witness with a great deal of practical knowledge and experience in the relevant field.
77 For much the same reasons, I would not accept Professor Field's evidence as to what a skilled addressee would understand the promise of the VIP Patent to be, with respect to the inhibition of bending. As I have said, Professor Field is unable to give relevant and admissible evidence as to what a skilled addressee would understand and as to the common general knowledge as at 24 February 2000. Further, the claims of the VIP Patent do not support the construction that Professor Field seeks to give. I would therefore reject the distinction that he seeks to draw in this regard between the invention as claimed in claim 1 of the VIP Patent and the BMW product. For the same reasons, I would reject Professor Field's opinion evidence concerning the foot.
78 I would uphold VIP's objection to the remaining parts of Professor Field's 9 February 2010 affidavit on the basis that it is inadmissible because it is either irrelevant or fails to satisfy the requirements of s 79 of the Evidence Act. To the extent that it was admissible, I would accord the affidavit limited weight.
79 In a third affidavit sworn on 2 March 2010, Professor Field gave an opinion as to the economics of plastics processing and an opinion as to the versatility of the "Hancock design". In relation to the Hancock Patent, Professor Field said:
[I]t is obvious that the three-part Hancock design could easily be adapted to place the bellows anywhere along its length, and this makes the design more versatile for a range of applications. Larger or smaller openings 151 can be cheaply cut in the more rigid lower extruded portion, allowing liquids of differing viscosities and flow rates to be optimally accommodated. Consequently, it is feasible that a greater number of dip tubes of the Hancock design could be sold, and the larger production volume could well lead to economies of scale and a cheaper product than a two-piece alternative. The point here is that the two-part versus three-part manufacturing choice makes no difference to the functional performance of concept, and principally affects the versatility.
80 The opinion evidence sought to be adduced in Professor Field's third affidavit suffered from the difficulties already identified. First, this suggested evidence would not apparently satisfy s 79 because it does not appear to be wholly or substantially based on his specialised knowledge based on his training, study or experience. Secondly, since it cannot be the opinion evidence of a skilled addressee or of a person having training, study or experience within the relevant art, the suggested evidence is irrelevant. For the reasons stated, I would uphold VIP's objections to the remaining parts of Professor Field's third affidavit. To the extent that it was admissible, I would accord the affidavit limited weight.
81 The remaining parts of a fourth affidavit, also sworn on 2 March 2010, contain much that is speculation and without proper basis. For the reasons previously outlined, it also contains inadmissible or irrelevant assertions. Amongst other things, in this fourth affidavit, Professor Field states that the non-inventive person skilled in the art of dip tubes would read the disclosure in the Hancock Patent not as a three-piece arrangement but as consisting of suitable material welded so as to consist of two parts. Professor Field's evidence as to how a skilled addressee would read the Hancock Patent is inadmissible, first, because he is not, relevantly, a skilled addressee; second, the evidence is not shown to be wholly or substantially based on his specialised knowledge based on his training, study or experience so as to fall within s 79 of the Evidence Act; and third, to the extent his opinion is drawn from his specialised knowledge based on his training as a mechanical engineer, it is irrelevant as not within the relevant art. I would therefore uphold VIP's objections to the admissibility of Professor Field's fourth affidavit. To the extent it was admissible, I would, for the reasons stated, not accord it much weight.