- Aen MN Rardin ee a A ee te a IN THE FEDERAL COURT OF AUSTRALIA JUDGMENT NO. ssrmrDseneal esd Si VICTORTA REGISTRY ) V.G. No. 111 of 1977 ———oo— ) - ) GENERAL DIVISION i QUESTTON RESERVED BY TIM SUPREME COURT OF VICTORIA BETWEEN : LUCAS INDUSTRIFS LIMITED Plaintiff CHLORIDE BATTERIES AUSTRALIA LIMITED Defendant ORDER JUDGES MAKING ORDER: Bowen C.J., Smithers and Nimmo JJ. DATE OF ORDER: 3rd March, 1978 WHERE MADE: Sydney THE COURT ORDERS THAT: i. The question reserved for the consideration of this Court by Crockett J. by his order of 17th November 1977 be answered : No ' 2. The applicant pay to the respondent its costs of the application in this Court and in the Supreme Court of Victoria. CATCIIWORDS Practice' 'and Procedure - Action for infringement of patent and counter-claim for revocation - Order for examination of witness overseas - Relevance of evidence - Obviousness of invention. Patents Act 1952 s.100(1) Rules of the Supreme Court of Victoria 0.37 r.5. LUCAS INDUSTRIES LIMITED v. CHLORIDE BATTERIES AUSTRALIA LIMITED V.G. 111 of 1977 Coram: Bowen C.J., Smithers and Nimmo JJ. 3rd March, 1978. Sydney. IN THE FEDERAL COURT OF AUSTRALIA ) ) VICTORIA REGISTRY ) V.G. No.111 of 1977 ) ) GENERAL DIVISION QUESTION RESERVED BY THE SUPREME COURT OF VICTORIA BETWEEN: LUCAS INDUSTRIES LIMITED Plaintiff ' AND: CHLORIDE BATTERIES AUSTRALIA LIMITED Defendant CORAM: Bowen C.J., Smithers and Nimmo JJ. Bea rared, February, 1978. JUDGMENT BOWEN C.J.: The question before the Court is whether a letter of request should issue for the examination of one Sven Uno Falk in London in the United Kingdom or such other place in the United Kingdom as may be thought proper or, in the alternative, whether the Court should order a special examination of the said Sven Uno Falk. During the hearing it appeared that if the Court were in favour of making an order, the parties would prefer that it be an order for special examination rather than for a letter of request. It also appeared that the applicant might wish to extend the order to another witness or witnesses, if it were granted. It was thought likely that the parties could agree upon the examiner and substantially upon the terms of the order, if after judgment, leave was given to bring in short minutes. at at i ceo harm RaSh chet apn eden tte Eade oem 3 Lk Re neal HON Ra aE kms aemcats Nm te Lana stent ne ainttlatinnathee afin atteilniflien AALERA miek THE PROCEEDINGS The question arises in an action for infringement of Australian Letters Patent No. 407,778 brought by Lucas Industries Limited, the plaintiff, against Chloride Batteries Australia Limited, the defendant, by writ of summons issued out of the High Court of Australia on lst May 1975 pursuant to s.113 of the Patents Act 1952 as that section then stood. The defendant filed a defence denying infringement and also alleging invalidity of the patent for reasons appearing in particulars of objections delivered with the defence. The defendant also counterclaimed for revocation of the patent on the grounds alleged in the particulars of objections. The counterclaim was brought by virtue of s.115 of the Patents Act 1952 as it then stood. The statement of claim with particulars of infringement was delivered on 4th June 1975, the defence and counterclaim with particulars of objections on llth July 1975 and reply and defence to counterclaim on 22nd December 1975. On 9th October 1975 minor amendments were made by the defendant to the particulars of objections by consent. On 5th August 1976 an order was made which provided (inter alia) that expert evidence be on affidavit with the usual rights of cross examination and affidavits of each party in chief be filed and served on or before 13th September 1976. Provision was also made fixing times for filing and serving affidavits in reply. Pursuant to this order the plaintiff filed and served two affidavits and the defendant filed and served four, On 28th September 1976 a further order was made giving to the defendant leave to make certain amendments to its amended particulars of objections on certain terms and conditions. The defendant delivered further amended particulars of objections dated 12th October 1976. On lst February 1977 the Patents Amendment Act 1976 came into force. That Act amended ss.113, 115 and 116, inserted a new s.6A and substituted new ss.146 and 148. On the same date s.9 of the Judiciary Amendment Act 1976 came into force and that section inserted a new s.44 in the Judiciary Act 1903 as amended. The effect of these amendments was that the Supreme Court of. Victoria became a prescribed court under the Patents Act having jurisdiction to hear and determine patent infringement actions and counterclaims for revocation and the High Court had power to remit to the Supreme Court pursuant to s.44 of the Judiciary Act cases which had been commenced in the High Court (Beecham Group Limited v. Bristol-Myers & Co. (1977) 14 A.L.R. 591). On 5th October 1977 it was ordered that this action and counterclaim be remitted to the Supreme Court of Victoria. It was further ordered that the action proceed in the Supreme Court as if the steps already taken had been taken in the Supreme Court. Following the order of 28th September 1976, three further affidavits were filed and served by each of the parties. Subject to a special agreement between the parties providing for the supplementing of cxpert evidence in chief by affidavits by each party upon one specific subject matter, this completed the expert 'evidence in chief. In early November 1977 both parties desired to apply to the Supreme Court of Victor1ia to fix times for filing and serving affidavits in reply, save that the plaintiff desired for the purpose, inter alia, of preparing its affidavits in reply, first to obtain production and inspection of certain documents in the possession of persons not parties to the action. It issued a writ of subpoena duces tecum and a summons pursuant to Order 37 Rule 7 of the Rules of the Supreme Court of Victoria. By orders of the Supreme Court dated respectively the 10th and 16th November 1977 the writ of subpoena was set aside and the summons dismissed . Appeals (Nos. V.G. 108 and 109 of 1977) from each of these orders were heard by this Court immediately before this matter. By summons dated 8th November 1977 the applicant/ defendant applied to the Supreme Court of Victoria for an order that a letter of request do issue for the examination in the United Kinadc: of Sven Uno Falk. By an order of the Supreme Court made by consent the summons was amended to include an application in the alternative for an order that Sven Uno Falk be examined before a special examiner in the United Kingdom to be agrecd upon by the parties. In support o its summons the applicant/defendant filed and served an affidavit sworn on 8th November 1977 by Michael John Owen. In opposition the respondent/plaintiff filed and served an affidavit sworn Mee ener on 15th November 1977 by Tan Sydney Goddard. The summons came on for hearing before the Supreme Court on 16th and 17th November 1977. The learned Supreme Court Judge did not decide the matter. Instead he decided the question should be reserved for the consideration of this Court pursuant to s.26 of the Federal Court of Australia Act 1976. The question reserved, which has already been mentioned, was stated in the form of a special case pursuant to Order 6 Rule 2 of the Federal Court of Australia Rules. Before the Supreme Court Judge, objection had been taken to paragraphs 10 and 11 of the affidavit of Michael John Owen sworn on 8th November 1977 in support of the application. These paragraphs were admitted by his Honour subject to objection. He did not rule upon them. When the matter came before this Court application was made for leave to file a further affidavit by Michael John Owen sworn on 9th December 1977. This was not opposed and leave was given to the applicant/defendant to file this affidavit. Leave was also given to the respondent/plaintiff to file an xwffidavit in reply sworn by John Michael Dowling on 13th December 1977. Some argument took place on objections to the admissability of paragraphs 10 and 11 of Mr. Owen's earlier affidavit and paragraphs 4 and 5 of his later affidavit. But in the result these objections were withdrawn and the evidence in question was admitted. oe pe ee rere em aR ee ehh ne Aiemaet seein ated oa Laan Ne ARORA mmr anal bin st OPEN Sete Niele et Nee eRe ta a a ar Hamel eas oe ww EXAMINATION OF WITNESS ABROAD . An order for examination of a witness abroad may be Made by the Supreme Court of Victoria "where it shall appear necessary for the purposes of justice" (Victorian Supreme Court Rules 0.37 r.5; c£. High Court Rules 0.37 r.3). Alternatively, a letter of request may be issued (Victorian 0.37 r.6A; cf. High Court 0.37 r.4). The granting of an order is a matter of judicial discretion to be exercised according to the circumstances of the particular case. The party seeking the order must show to the satisfaction of the Court that the witness is out of the jurisdiction, that his evidence is material and that his attendance within tre jurisdiction cannot be procured. If these matters are established, as a general rule an order will be made. However, it is a deperture from the normal method of trial. The Court recognizes it may involve delay and expense and if the credibility of the witness is likely to be in issue will deprive the trial Judge of the opportunity of seeing and assessing the witness. The rule refers to its being "necessary for the purposes of justice". The Court in exercising its discretion will weigh the interests of both parties (see generally Hardie Rubber Co. Pty. Limited v. General Tire & Rubber Co. (1972) 129 C.L.R. 521 at p.528 and cases there cited on appeal at p.547; see also Hume-Williams and Macklin, Evidence on Commission 2nd edn. pp.30 et seq.) In the present case, there is no doubt that Sven Uno Falk, the witness proposed to be examined, resides out of the jurisdiction in Sweden and cannot be compelled to attend. The evidence is less satisfactory regarding the possibility of his being persuaded to come to Australia for the trial. There has been litigation regarding a similar invention in London in the United Kingdom between companies associated with the the parties. Mr. Falk attended in London and gave evidence. However, the evidence of Mr. Owen is that a Mr. King, Patents Officer of Chloride Group Limited of London, informs him he has made enquiries of Mr. Falk who has told him that he is not willing to come to Australia though he is prepared to come to London to give evidence upon commission or pursuant to a letter of request. Mr. King further informs him that Mr. Falk's employer, Nife Junger A.B. of Sweden, has also advised that it will not release Mr. Falk to come to A ustralia although it would agree to his visiting London to give evidence. Having regard to the time-scale and costs involvec with modern transport, it is not easy to appreciate why this attitude is taken. However, that is the evidence and Mr. Falk's attendance cannot be compelled. The main issue remaining, therefore, is whether the applicant has shown to the Court's satisfaction that Mr. Falk can give evidence which is material. The degree of satisfaction required may vary with the circumstances of each particular case. I proceed, however, on the general principle that it is sufficient for the applicant to establish it according to the balance of probabilities (Hardie Rubber Co. Pty. Limited v. General Tire & Rubber Co. (1973) 129 C.L.R. 521 at p.558). The main contest between the parties has been as to the materiality of Mr. Falk's evidence, that is, its relevance and admissibility. On this aspect it is necessary to consider, the letters patent, the issue to which his evidence is said to relate, namely, obviousness or , . lack of inventive-step and the nature of the evidence which it is Claimed Mr. Falk could give. LETTERS PATENT Letters Patent No. 407,778 in respect of "Electric Storage Batteries" were granted upon an application lodged on 15th April 1966. According to the specification hitherto the battery box and lid have generally been made of hard rubber with the lid secured to the box with a pitch adhesive. It has also been standard practice to make the intercell connections with connectors of inverted U-shape extending over the partition walls. The primary use of these batteries is in motor vehicles. Vehicle batteries are subject to severe stresses arising from their conditions of use. With these stresses in mind, it will be appreciated that effective sealing of the battery lid to the battery box around its periphery and also along the partition walls is of substantial importance to avoid loss of battery electrolyte and inter-cell leakage. Various adhesives have been considered from time to time but as mentioned the commonly used adhesive is pitch. There has been extensive research and development to devise improvements in battery construction and methods of manufacture. Despite this, the hard rubber and pitch adhesive construction has remained in production and use for generations. The specification asserts that the primary object of the present invention is to provide a convenient and reliable method of manufacturing improved electric storage batteries. The a i enti ee en en method includes the steps of: moulding a thermoplastic battery box having:a top box peripheral edge and integral partition walls defining separate battery compartments or cells; moulding a thermoplastic battery lid for the said battery box, said battery 11d having a lid peripheral edge adapted to engage said box peripheral edge and wall engaging zones adapted to engage the top edges of said partition walls; placing packs of battery plates and separators within said battery compartments, forming inter-cell connections through said partition walls, placing a box heater in physical contact with said box peripheral edge and said wall top edges in order to soften them by heating, placing a lid heater in physical contact with said 1id peripheral edge and the wall engaging zones of said lid in order to soften them by heating, disengaging said box and lid heaters from said physical contact with said battery box and battery lid respectively, and pressing said battery lid onto said hattery box to weld the softened lid peripheral edge to the softened box peripheral edce and the softened wall engaging zones of said lid to their respective softened wall top edges to thereby seal said battery lid to said battery bos and said battery compartments from each other. Claim 1 claims a method of manufacturing an electric storage battery including the above steps. The preferred thermoplastic material mentioned in the specification is polypropylene. Claim 7 claims a method as claimed in any preceding claim, wherein the said battery box and said battery lid are both made of polypropylene. OBVIOUSNESS As has been mentioned the only ground of invalidity to which Mr. Falk's evidence is claimed to relate is obviousness or lack of inventive-step. This ground is based on s.100(1) (e) . of the Patents Act, which is as follows: "100(1) A patent may be revoked, either wholly or in so far as it relates to any claim of the complete specification, on one or more of : the following grounds, but on no other ground: - eoees (e) that the invention, so far as claimed in any claim, was cbvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim; " eeeee When the matter comes to trial the Court will have to consider what was known and used in Australia at the priority date, namely, the 15th April 1966. The question will be whether in Australia at the 15th April 1966 the particular step claimed as inventive would have been obvious to an "unimaginative skilled technician" (Technograph Printed Circuits Limited v. Mills and Rockley (Electronics) Limited (1972) R.P.C. 346 at p.355). This hypothetical technician will have to be assumed to be in possession of everything which was then common general knowledge. On one view he will also have to be assumed to know everything disclosed by the literature on the subject (including prior specifications) and revealed by articles then in use. On the other view, he will have to be assumed to have knowledge of documents naw ok a a a subject to some qualification, as for example, that he should be assumed only to have knowledge of those which would have been known to a diligent searcher skilled in the particular art (See Graham Hart (1971) Pty. Limited v. S.W. Hart & Comvanv Limited, Full High Court, 22nd December, 1977, unreported). As to which of these two views should be adopted has not been finally and definitely resolved. In this case, I will proceed upon the basis that the former view, less favourable to the inventor, which was taken by Williams J. in I.P.M. Industries Pty. Limited v. Gerard Industries Limited (1957) 98 C.L.R. 424 should be applied. (See Graham Hart (1971) Pty. Limited v. S.W. Hart & Company Limited (supra) per Aickin J.). In any event, presumably, the Court will confine its attention to the documents stated in the particulars (Patents Act, s.166; Sunbeam Corporation Limited v. Morphy Richards (Aust.) Pty. Limited (1961) 35 A.L.J.R. 212 at p.219). FALK'S EVIDENCE As a starting point as to the evidence which Mr. Falk might give, we have a transcript of the evidence which he in fact gave in the patent suit in London heard before WurkoeDS in the Iligh Court in which judgment was delivered on 4th April 1977. In the United Kingdom Letters Patent No. 1087466 obtained by a Lucas Company (associated with the respondent) with a priority date in February, 1964 were in issue in proceedings -— between the Lucas Company as plaintiff and a Chloride Company (associated with the applicant) as defendant. The specification is not before us. However, from the reasons for judgment of WrattreR0),, which we have, it may be gathered that the invention claimed was in respect of the butt welding of the lid and case of an electric storage battery constructed of polypropylene or other suitable thermoplastic material. The claims appear to have been expressed somewhat differently from those in the Australian patent. The validity of the patent was attacked on the ground (inter alia) of obviousness. Various witnesses gave evidence bearing on this issue, including Mr. Falk. He gave evidence that he lived in Sweden and was employed by Nife Junger A.B. ("Junger"), a Swedish company engaged in the manufacture of batteries. He said he was an electro-chemist. He graduated at the Technical College at Malmo in Sweden in 1948. Thereafter he joined a company G.C. Faxe which produced lead acid batteries. After about eighteen months ne joined Junger. At first, he was head of the physical laboratory. Then he held various positions usually connected with research and development. In 1961 he was head of the Battery Development Division, which at that time took care of lead-acid batteries and alkaline batteries. In 1968 he became Technical Manager of the Battery Division and has held this position since. He is an inventor holding about ten patents. He is the author of various papers in learned journals published in America, the United Kingdom, Sweden and Norway dealing with battery systems from the electro-chemical point of view. He is the co-author of a book entitled "Alkaline Storage Batteries" which was written with a Dr. A.J. Salkind of E.S.B. published in ~~ 1959. Junger started in the thirties with lead-acid batteries and later, around 1960, had lead-acid battery factories in Sweden, Norway, Finland and Brazil. Junger was presently concerned mainly with alkaline batteries, though one subsidiary, the company in Brazil, was still concerned in lead-acid batteries. Though based in Sweden, Mr. Falk visited the other companies. When plastics appeared, he looked into them and started to use some of them in the fifties. In late 1961 Junger was using polyethylene for some batteries for static use. The lid was joined by oxyacetylene flame. In late 1961 faults worried them. Junger looked into different kinds of welding methods. Falk tested three methods: gas torch, already in use; an automised version of that; and, butt welding. It was found butt welding produced a stronger case. He produced a laboratory report dated 12th March 1962 relating to his tests. Heating was effected by hot plates placed between the lid and case and later removed to permit the lid and case to be pressed together. Following Mr. Falk's successful tests, Junger adoptec the process of butt-welding the lid and case of its batteries. The evidence proceeded: "Q. We go back just a little time, just before you designed your machine yourselves in February 1962. How did you first carry out experiments with hot plate welding? What brought it to you? What did you try? A. The thing that brought us to it was that we studied the literature and we found this method is tried ~- one of my engineers found it in a German journal and I myself also saw this method described in what I think was an American journal - I am not quite sure about that. But this led us into trying the method and the first tests we made were Made very simply using more or less a flat ironing tool for this. So we did not have any very advanced apparatus in the beginning. Q. Using that flat ironing tool, what sort of results did you get? A. The very first results were not so good, because we experienced sticking of the plastic material to the hot steel. Q. How did you deal with that? A. The first thing we tried was to spray a silicone coating on to the hot iron, but this turned out not to be very effective. After that we tried with a Teflon spray instead, but that also showed to be not so very good. Q. Did you try again? A. Yes, we then went over to Teflon foils or Teflon cloth and that proved to be very efficient, Q. What brought you to Teflon? A. I think it was general knowiedge at the time that Teflon was something that you could heat up to, say, 200°C. without problems and it did not stick to most things." The two journals referred to were not identified. It is not suggested they were in the Australian literature particularised for the purpose of the proceeding in the Supreme Court of Victoria. Mr. Falk also gave evidence that in September 1961 he had worked with polystyrene and recently with opaque polypropylene but had at that time developed no good method for sealing covers to containers. Apparently he was then referring Patt a oe dns ROAR a af panei te erent te nent to no good method of cementing that material. WHitto@D),, in his reasons for judgment, used Mr. Falk's evidence in the following way. He said: "In Sweden a well-known manufacturer of batteries, Jurgens (sic), as I was told by Mr. Falk, their technical manager, having started on heat welding by another method, came to butt welding for polyethylene. They came to it having experienced some difficulties with the earlier welding technique which they had operated, as I was told by Mr. Falk, through a consideration of the technical literature in 1961. The fact, however, that the approach was quite plainly thought by Mr. Falk to be no more than an obvious development of the system of heat welding originally adopted by them is in no sense conclusive." Later he said: "There is undoubtedly evidence of a predisposition among battery manufacturers favouring tongue and groove construction, and, indeed, if possible, cement. It 1S against this background that I have to decide whether butt welding by contact heating was obvious at the relevant date in this particular field of manufacture. As I have said, heat welding was plainly an obvious possibility for thermoplastics, particularly a meat -- meee ete polypropylene. Contact heat sealing was one obvious method of heat sealing. From the evidence it now stands established that both Globe-and Jurgnen (sic) and Biel, and indeed Chloride, quite independently, as well as Lucas, arrived at this particular technique. Three of the organisations, apart from Lucas, 1ndependently arrived at butt welding. In the world of today it is, to my mind, absurd to suggest that activities in other countries and the way in which techniques have developed in other countries should be disregarded." It seems that the method of butt-welding for batteries discovered and used by Falk in 1962 was not known or used in the United Kingdom in 1964, otherwise it could have been relied upon as an anticipation. His Lordship uses Falk's evidence only on the issue of obviousness. On that issue presumably, he was concerned with what would have been obvious to an unimaginative skilled technician in February 1964, having regard to what was then known and used in the United Kingdom. Perhaps the reference to "the world of today" is intended to suggest that in this field knowledge was common or universal and so, presumably, the knowledge which Mr. Falk had was available in the United Kingdom. In a world of speedy communications, in which international corporations operate directly and through subsidiaries with little regard for territorial boundaries, it will not be surprising to find that this is so in relation to many fields of knowledge. But in a patent suit, if it is so, presumably it can be established by appropriate evidence. It cannot be simply a basic assumption in patent suits. So far as this Court is advised, it was not established by the evidence to be the case in the United Kingdom, but this is not a matter for this Court and I say no more about it. A question I deal with later, is whether the evidence before us suggests or establishes it was the position in Australia at the relevant date. The Court was informed by Counsel that an appeal was pending from the decision of Wanted 3:. Counsel for the applicant said that the evidence given in the case in the United Kingdom was not put forward as being precisely the evidence it was proposed to tall from Mr. Falk; he said further he did not put it forward as saying that Wuiored) 's acceptance of it and the way in which he used it was necessarily correct. He put it forward to indicate to this Court that the applicant was not engaged simply on a wild goose chase. Counsel for the applicant then argued that if a relevant technician takes a step analogous to the alleged inventive step, the evidence of what he did is material evidence to assist the Court in determining whether the step is inventive or obvious; that the test of whether the step is obvious is an objective test and it does not matter where in the world the step is taken so long as it is taken by a relevant technician and viewed in the light of what was known and used in Australia; and, that the evidence was important and not simply peripheral or corroborative. He referred to four cases in which he submitted the Court had consicéered overseas evidence: Technograph Printed Circuits Limited v. Mills and Rockley (Blectronics) Limited (1972) R.P.c. 346; General Railway Signal Co. Limited v. Westinghouse Brake and Signal Co. Limited (1939) nl lt ne ns rn renrey caren ee eee nn a en a hatte ender ane ee 56 R.P.C. 295; The General Tire and Rubber Co. v. The Firestone Tyre and Rubber Co. Limited (1971) R.P.C. 173; and Douglas Packing Co. (Incorporated) v. William Evans & Co. (Hereford and Devon) Limited (1929) 46 R.P.c. 493. Counsel for the respondent submitted that it was important that relevance and admissibility of the suggested evidence be decided now rather than at the trial, because of the prejudicial nature of the evidence. He stressed the territorial nature of knowledge and usage against which an Australian patent must be judged. Indeed he argued the material was not only limited territorially; it was further restricted on the issue of validity to things or documents of which particulars had been given. He submitted that evidence of what was done in other countries and the general history of the development of the art was admitted in patent cases where what was done elsewhere had been published in the jurisdiction. As to the cases relied on by the applicant for the admission of overseas evidence, he submitted these were distinguishable. In Technograph Printed Circuits Limited v. Mills and Rockley (Electronics) Limited it appeared the matter referred to had become known in the jurisdiction, perhaps part of the common general knowledge. In General Railway Signal Co. Limited v. Westinghouse Brake & Signal Co. Limited and in The General Tire and Rubber Co. v. The Firestone Tyre and Rubber Co. Limited the overseas evidence admitted was agreed or accepted by both sides. Douglas Packing Co. (Incorporated) v. William Evans & Co. (Hereford & Devon) Limited fell into the same category as the Technograph Case. In any event the passage ana ena ea ease CS meme meni ttNereateAaeea na Ne ng nT i Da a ae AEE anmte t etetg a letr E e ARLAUR LER RO Sel ARI aml Rue in the judgment of Romer J. on which the applicant placed reliance (at p.508) did not assist the applicant in relation to the use which he sought to make of it to support the use of Mr. Falk's evidence on the issue of obviousness. Alternatively, it was argued for the respondent that if the evidence of what Mr. Falk did in Sweden could be relevant on the issue of obviousness, it could only be so if there were linking evidence, that is, if it were established Mr. Falk's knowledge was substantially the same as the relevant knowledge in Australia at the priority date or if the common general knowledge and other known material in Sweden in 1962 was substantially the same as that in Australia in 1966. Counsel for the respondent submitted that the evidence before this Court was that what put Falk on to the method of butt-welding was a German journal which his assistant had read and an American journal which he had himself read at the time. It was not suggested that either of these journals were published in Australia and, of course, they were not cited in the particulars. The evidence before this Court did not establish that common general knowledge in Sweden in 1962 was the same (or less) then common general knowledge in Australia in 1966. The affidavits of Michael John Owen sworn 8th November and 9th December 1977 fell far short of establishing that conclusion. And in any event, as he had said, Mr. Falk was assisted to his result by the two journals which were not shown to be part of the common general knowledge of either country. nn et es soe elit eet naa neha Enemies ean aes OE a acca, Counsel for the respondent further submitted that Mr. Falk was not himself the hypothetical unimaginative skilled technician envisaged by the authorities and his evidence of the step which he took, whether it was regarded as an inventive step or an obvious step having regard to his knowledge and qualifications, could not assist the trial Judge. He also argued that to the extent Mr. Falk would be giving evidence of what he did and when he did it, he was a witness as to facts. In view of some suggested unsatisfactory features of his evidence before WH'TFORD), it was desirable he should be tested in cross-examination before the trial Judge, particularly as to the accuracy of his recollection. The questions raised are of some importance. A patentee who faces a determined attack upon validity upon the ground cf obviousness or want of inventive step is already confronted with the difficuity that the Judge, who has to decide this issue, necessarily does so from the vantage point of hindsight. In addition the Judge has to envisage a hypothetical technician who is supposed to have a fund of knowledge, which includes what the experts say 1s common general knowledge and also everything which is disclosed by the literature on the subject (including prior specifications) and revealed by articles then in use or, at least, so much of this latter information as would be known to a diligent searcher skilled in the art. This knowledge is particularised and given in evidence we we ee ep ee Aen ee so that by the end of the case the Judge has to assume a technician with a fund of knowledge which is such, that one may sometimes doubt whether any single technician alive at the time in fact possessed it. If, in addition, on the issue of obviousness or inventive step, the patentee must also face what has been done by technicians abroad in a different context, this could well introduce a new dimension into patent suits. If one party can call evidence of a technician who solved the problem in Sweden before the Australian priority date, can the other party call evidence of technicians in, say France and Italy, who wrestled with the problem and failed to solve it? And will evidence establishing it was an inventive step or, on the contrary, was obvious in any of these countries, really assist the Australian Judge in his consideration of the hypothetical Australian technician? If evidence was given establishing what was known and used in those countries at the time was the same as what was known and used in Australia at the priority date, then, the evidence might be of assistance. This would involve a difficult enquiry and it is unlikely that proof of substantial identity would often be achieved. One difficulty is that what is known and used in any country at any particular time involves both positive and negative factors. In some cases it is part of the conventional wisdom that something is not worth trying or is unlikely to be successful. Each technician is the captive of his own community. an ee efi Ae nt os. entre AARE RL A ARN Pg od Notwithstanding my misgivings 'in this regard, if it were proved that what was known and used in Sweden in February 1962 was substantially similar to (or no greater than) what was known and used in Australia at 15th April 1966 I would not be disposed to rule out the evidence at this stage as irrelevant or inadmissible. Turning to the evidence before us on this aspect of the case, which is mainly contained in the affidavits of Michael John Owen sworn on the 8th November and 9th December 1977 and the affidavit of John Michael Dowling swocn i3th December 1977, it appears to me that the evidence falls far short of establishing on the probabilities that what was known and used in relation to the battery and plastic arts was substantially similar in both countries. \ But Counsel for the applicant argued that it was not necessary to prove what was known and used in Sweden in February 1962. It was sufficient to prove Mr. Falk's state of knowledge 'and then, to compare that with what was known and used in Australia at the priority date and to show that Mr. Falk's knowledge was the same or no greater than that of an Australian technician. There are grave difficulties in regarding Mr. Falk as divorced from his own community and in comparing his knowledge with that available to a hypothetical Australian technician But there is a more fundamental objection. On the evidence before us Mr. Falk's knowledge included the American and German journals, which he said were what brought him to his solution and these journals a levee primar Sanath dR et etd hare AR ene! ere " were not available in Australia. In other words, Mr. Falk's knowledge appears to be greater than that which would be possessed by an Australian technician at the priority date. Indeed, even if it had been established that what was common general knowledge and what was published in Sweden in 1962 was substantially the same as that in Australia in 1966, this additional knowledge possessed by Mr. Falk would be a fatal objection to the application. I consider there is substance in the conteution of Counsel for the respondent that Mr. Falk was far removed from the notion of the unimaginative skilled technician. I am less impressed by his submission on the need to test Mr. Falk in cross-examination before the trial Judge. The point is not without substance, but if I thought the applicant was otherwise entitled to an order, I would not reject the application on this ground alcne. I should perhaps add, that I do not consider that the cases* ciced by Counsel for the applicant as to the use of overseas evidence are of any assistance to him having regard to the facts of the present case. In the result, I conclude that the applicant has failed to establish on the balance of probabilities that Mr. Falk will be able to give relevant and admissible evidence on the issue of obviousness. re tte "+ . The order I propose is that the application be dismissed with costs, ae Icertify that thisandthe 23 preceding pares o- 2 a true copy of the Reasons for Juha ant herein of his Honour tne Chief Jude, d1r Nigel Lowen R Urite Associate Dated: jb (2 /1d7e pldatnsnh satin bonis Re AAE ALA SeSe rane Silene see nen de anes walevtnltnen etl tend. rye bien nan baatneninresiin ie innlannn bie eaten! er eas ch eR OS ene ee eh) SaNweeD Taney IN THE FEDLRAJ. COURT OF AUSTRALIA GENERAL DIVISION VICTORIA REGISTRY VG No..111 of 1977 www QUESTION RESERVED BY THE SUPREME COURT OF VICTORIA BETWEEN: LUCAS INDUSTRIES LIMITED Plaintiff CHLORIDE BATTERTES AUSTRALIA LIMITED Defendant CORAM: Bowen C.J., Smithers and Nimmo JJ. 3rd March, 1978. JUDGMENT SMITHERS J: I have had the advantage of reading the reasons for judgment prepared by the Chief Judge in this matter. For the reasons expressed by the Chief Judge I would make the order proposed therein. 5 a ~_ —_——— Sint ARES T-Aemaneon Se ne ae a le ee ee RE et i ete em eta alt Laetitia tells mia te ital raat int Amaia Ami de art ahha ahem anni ll tty Nakina nem late le tan bis ciemmnnndannsiintam ah "AN TUE FEDERAL COURT OF AUSTRALIA GENERAL, DIVISION MG No.111 of 1977 VICTORTA REGLSTRY QUESTTON RESERVED BY THE SUPREME COURT OF VEICIORIA BETWEEN 3; LUCAS INDUSIRIPNS LIMITED Platnts ff AND : CHLORIDE RATTERTES AUSTNA Lid Defendant NEMMO J. REASONS FOR SURPGMENT 3rd March, 1978 Ihave liad the advantage of reading the Reasons for Judvmene prepared by Bowen C.J.. For the reasons so expressed 1 would dismiss the application with costs. N iN :