What man dost thou dig it for? – Mine drilling technique patent found to be invalid
Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2016] FCA 236
Patents – mine drilling techniques – novelty – best method – infringement by section 117 – need to establish primary infringement
Jessup J held that all the claims of Sandvik’s patent in issue in the proceeding (not all claims were in issue) were invalid by reason of the patent failing to disclose the best method known to the patent applicant of performing the invention, that certain claims lacked novelty in light of prior art uses, that all claims in issue lacked an inventive step and that one claim was not useful.
But for his conclusion on invalidity, his Honour would have found that certain of the claims were infringed by Quarry Mining’s supply of certain items, in certain circumstances, pursuant to section 117 of the Patents Act and that Quarry Mining had engaged in misleading or deceptive conduct in contravention of section 18 of the Australian Consumer Law by not warning its customers that their use of Quarry Mining’s products would or may infringe Sandvik’s patent. However, even if the patent were valid, Sandvik had failed to establish that Quarry Mining was a joint tortfeasor with its customers in their infringement of the patent or had “authorised” their conduct within the meaning of section 13 of the Patents Act.
This invention of the patent relates to an extension drilling system for use on a semi-automatic drilling rig and used to drill holes (bores) in subterranean mining operations (such as coal mining) where the structure of the roof of a tunnel is to be rendered more secure by the insertion of rock bolts into holes drilled into the roof structure.
The case on lack of novelty involved detailed consideration of evidence from witnesses regarding the use of prior art machines. His Honour accepted the evidence of Quarry Mining’s main witness in that regard, Mr Geatches, notwithstanding various attacks made on his recollection and credibility. One particularly interesting question concerned how to deal with the lack of novelty of an omnibus claim (claim 6) of the patent that was expressed to be limited by reference to one or other of the diagrams set out in the specification. His Honour agreed with Middleton J in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) (2015) IPR 280 at 305, [168], that in such a case, there will usually be as many separate notional claims as there are alternatives referred to. His Honour concluded that one of the alternatives in the omnibus claim was anticipated by Mr Geatches’ system but the other alternatives were not.
His Honour then observed that, subject to Quarry Mining’s other grounds of invalidity, it would not have been just to revoke the omnibus claim in its entirety on the basis of a finding that only one alternative was anticipated. However, his Honour was not aware of any precedent that it was possible to revoke only a notional compartment of a claim as printed. His Honour’s solution would have been, had the other grounds of invalidity not been made out, to allow Sandvik an opportunity to seek leave to amend the omnibus claim before making orders for the revocation of the claim.
On the question whether the invention, so far as claimed in claim 1, was obvious, it appeared that a majority of the features of the system were a recitation of the prior art and the inventive step would be assessed by whether it would have been obvious to the notional skilled addressee to incorporate one particular connection in the mining equipment.
An expert called by Quarry Mining arrived at the invention in claim 1, but did not in that solution include a seal in the connection which would be water tight – if it was not water tight, it would not have been a workable solution. However, his Honour observed that there was no requirement in claim 1 regarding water sealing, and so it could be no answer to the inventive step argument that the expert did not include a water sealing solution. In any event, his Honour concluded that the skilled addressee necessarily would add a water seal. His Honour found that the integers added by the dependent claims were also obvious, but for the second alternative in the omnibus claim. His Honour would have given leave to amend the omnibus claim to overcome the lack of inventive step of the first alternative in that claim.
On the question of lack of best method, his Honour accepted that the specification did not properly disclose a sealing member used in the drilling equipment that was known to the patent applicant prior to filing the application for the patent, and the patent applicant understood this was crucial to how the machinery worked. As noted above, his Honour had observed that the presence of a sealing member formed no part of claim 1 of the patent. But his Honour observed that the claims of a patent must concern one invention only pursuant to section 40(4) and that, while a best method of performing the invention need not be claimed, it must be described. His Honour concluded that it was not.
His Honour then turned to section 138(3)(f) of the Act, which provides for revocation of a patent either wholly or so far as it relates to a claim on grounds that include a failure of the specification to comply with the best method requirement in section 40(2)(a) of the Act (as it applied before the amendments made on 15 April 2013). His Honour formed the view that the “invention” in section 40(2) concerned the one invention in section 40(4) and that it would have been appropriate to revoke the patent as a whole for failure to comply with the best method requirement. However, his Honour noted that the particulars of invalidity were limited and did not address claim 5 and, accordingly, revocation would only be ordered in respect of the other claims.
On the question of utility, Quarry Mining said that because the claimed invention in claims 1 to 4 did not include a water seal, it would not be useful. However, the judge found that the person skilled in the art would include a water seal as a matter of course and so there was no lack of utility in that regard. Claim 4 was found to lack utility as a result of how the claim would be construed.
Sandvik has sought and obtained a stay of the orders for revocation and has sought leave to appeal Jessup J’s decision to the Full Court. The stay was given upon Sandvik undertaking to the court to prosecute the appeal expeditiously, not to assert infringement of the claims found to be invalid and, interestingly, not seek to amend “any claims of the Patent, otherwise than in the course of” the appeal. That undertaking is curious in that it is limited to amendment of the claims of the Patent while best method issues typically would be solved by amending the body of the patent. Furthermore, the need for the undertaking seems odd given that the Act provides that a patent cannot be amended other than by the Court, while proceedings relating to that patent are on foot. The authors also note that, given that some claims of the patent remain on foot because they were not technically in issue in the proceeding but would notionally be invalid because the lack of best method affected all claims, Sandvik could seek to protect those claims by asking the Commissioner to amend the patent after the proceedings are determined. Unlike the Court, the Commissioner has no discretion not to amend a patent.
The authors note that in the Les Servier v Apotex case concerning perindopril, the patent had been found invalid for lack of best method disclosure. Les Servier then applied to the Court to amend the patent and failed in that regard by reason of the court refusing to employ its discretion under section 105 of the Act. The decision on best method and amendment of the patent was upheld on appeal. Sandvik has not applied to the Court to amend its patent to overcome the lack of best method ground of invalidity, or any other ground. The authors reiterate that Jessup J noted that he would have given Sandvik an opportunity to apply to amend the omnibus claim to overcome anticipation, but his Honour made no such comment in relation to an application to rectify the best method ground.
