- JUDGMENT No..4320. S85 CATCHWORDS Patents — Revocation - Petition "by any other person" - Petition after expiration of term - Costs of applicant. re Patents Act 1952 — ss. 99, 100(1)(e), (g) ri IN THE MATTER of the Patents Act 1952 (as amended) Section 99 and IN THE MATTER of a Petition by ENVIROTECH AUSTRALIA PTY. LTD. for revocation of Australian Letters Patent No. 438,566 in the name of ENVIRO-CLEAR COMPANY INC. No. VG245 of 1987 seyoce Jenkinson J. Melbourne 12 August, 1988 mans ee we IN THE FEDERAL COURT OF AUSTRALIA ) VICTORIA DISTRICT REGISTRY ) No. VG245 of 1987 GENERAL DIVISION ) CORAM: PLACE: DATE: IN THE MATTER of the Patents Act 1952 (as amended) Section 99 - and - IN THE MATTER of a Petition by ENVIROTECH AUSTRALIA PTY. LTD. for revocation of Australian Letters Patent No. 438,566 in the name of ENVIRO-CLEAR COMPANY INC. MINUTES OF ORDER Jenkinson J. Melbourne 12 August, 1988 THE COURT ORDERS THAT: 1. (NOTE: Patent numbered 438566 in the Register of Patents be revoked. The applicant serve on the Commissioner of Patents an office copy of this order. The respondent Enviro-Clear Company Inc. pay to the applicant the applicant's costs (including reserved costs) of the petition. Settlement and entry of orders is dealt with in 0.36 of the Federal Court Rules.) IN THE FEDERAL COURT OF AUSTRALIA ) VICTORIA DISTRICT REGISTRY ) No. VG245 of 1987 GENERAL DIVISION ) IN THE MATTER of the Patents Act 1952 (as amended) Section 99 ~- and - IN THE MATTER of a Petition by ENVIROTECH AUSTRALIA PTY. LTD. for revocation of Australian Letters Patent No. 438,566 in the name of ENVIRO-CLEAR COMPANY INC. CORAM: Jenkinson J. PLACE: Melbourne DATE: 12 August, 1988 REASONS FOR JUDGMENT Petition for revocation of a patent. Australian patent numbered 438,566 was granted to American Sugar Company on a Convention application for a term reckoned from 14 November 1969 which expired on 14 November 1985. The priority date of each claim of the complete specification was 26 November 1968. The title of the invention was "Method and apparatus for separating liquids from solids". The invention is concerned with finely divided solids in suspension in a liquid. On 30 June 1983 the patentee assigned its whole interest in the letters patent to Enviro-Clear Company Inc., by which a licence wm epee 2. was granted the next day to Bulk Materials (Coal Handling) Services Pty. Ltd. Both transactions were the subject of entries in the Register of Patents. A petition for extension of the term of the patent was presented to the Supreme Court of New South Wales by the patentee and the licensee, but the petition was withdrawn in about June 1987. This petition for revocation was presented on 3 September 1987. The patentee and the licensee having entered appearances in the proceeding on the petition, the licensee was excused from further attendance by an order made on 25 September 1987. Other orders made that day were an order dismissing a motion by the patentee that the petition be dismissed and an order that, unless the patentee should give to the applicant's solicitors notice within a specified time that the patentee desired to oppose the petition, "the petitioner need not serve copies of its affidavits in support of its petition on" the patentee. No such a notice was given and there was no appearance for the patentee or the licensee on the hearing of the petition. The principal ground of the petition is that the invention was not novel in Australia on the priority date. The other ground supported by evidence and submission was that the invention so far as claimed in the claims of the complete specification was obvious and did not involve any inventive step having regard to what was known or used in Australia on and before the priority date. The specification declares the methods proposed for continuously separating finely divided and suspended solids from liquids to have application to a wide variety of mixtures of such 3. solids and liquid : "commercial and municipal waste waters, such as factory waste liquors and partially clarified sewage .... waste liquids from beet and cane sugar manufacture, waste liquids from canneries, breweries, meat packing plants, rendering plants and other food processing plants .... pigments or suspended particles of coal from aqueous suspensions .... effluents in pharmaceutical operations" are given as examples. The evidence of prior use and publication is concerned only with mixtures of the juice of sugar cane and the finely divided solids which are found in suspension in that liquid in the course of cane sugar production. The applicant manufactured and sold in Australia during the term of the patent equipment used in separating liquid from solids in cane sugar production. I accept the submission of Dr. Emmerson Q.C., who appeared with Mr. Shavin for the applicant, that a petition for revocation may be entertained and granted after the expiration of the term of a patent. In accepting that submission I follow the decisions of Romer J. in John Summers & Sons Ltd. v. The Cold Metal Process Coy. (1948) 65 R.P.C. 75 and of Wild C.J. in Usher v. Nordhoff and Company (Pty.) Ltd. [1972] R.P.C. 636. I accept also the submission that the applicant is a person entitled to present the petition. The contrast between, on the one hand, the limitations expressed in s.59 of the Patents Act 1952, by which the right to oppose the grant of a patent is restricted to the Minister "or a person interested", and in s.86 of the Patents Act 1903, by which the right to petition for revocation of a patent was restricted to several specified classes ween ere ent iN 4. of persons and the Attorney-General, and on the other hand the expression "any other person" in s.99 of the Patents Act 1952 gives good ground for understanding the latter phrase in its literal, unrestricted sense. It was in that sense that Bryson J. appears to have understood the phrase in E. I. Du Pont De Nemours and Co. v. Commissioner of Patents (1978) 8 I.P.R. 293 at 297, 307-308. The first claim of the complete specification reads: "A continuous process for rapidly separating finely divided suspended solid materials from Liquids at a predetermined controlled rate, comprising the steps of forming a slurry of solid agglomerates in an influent feed of liquid containing finely divided and suspended solids by the addition of a settling aid, forming a settling zone having a relatively stationary upper boundary and containing previously formed solid agglomerates, introducing said influent liquid slurry at a position within said settling zone, altering the direction of motion of the influent feed to cause it to flow outwardly through said previously formed agglomerates to cause additional agglomeration of the solids and the formation without additional agitation of a dense settleable mass of the solids and agglomerates, removing a dense underflow from beneath said settling zone at a rate to maintain said relatively stationary upper boundary, and continuously removing an overflow of clarified liquid from above said upper boundary of said settling zone, whereby separation of the solids and liquids rapidly occurs in said settling zone." Other claims disclose the means of altering the direction of Motion of the influent feed to be a baffle so placed as to deflect, at a point adjacent to the point of entry of the influent feed into the settling zone, the vertical motion of the influent 5S. to a substantially horizontal motion. Other claims disclose a means of removing the dense underflow from beneath the settling zone to be a moveable rake to direct the underflow solids to the bottom outlet. The evidence in support of the petition was of three persons who before the priority date were employed by the Bureau of Sugar Experiment Stations, a body constituted under legislation of the State of Queensland, and of Dr. John Ronald Allen, who was concerned at material times with the publication of a periodical entitled "Proceedings of the Queensland Society of Sugar Cane Technologists", in which the prior publication on which the applicant relies had occurred. The principal deponent was Keith John Nix, who commenced employment by the Bureau in 1965 after taking baccalaureates in Applied Science and Chemical Engineering from the University of Queensland. One of the functions of the Bureau has been research to improve cane sugar production. From that time until November 1966 Mr. Nix and other officers of the Bureau carried out studies of the functioning of each of two large vessels used in the production of cane sugar in Queensland and known as ATV clarifiers. Each was at a different cane sugar mill and may be conveniently identified by a word from the name of the company operating the mill : the Isis clarifier and the Fairymead clarifier. Papers written by Mr. Nix giving the results of these studies were published in one or other of the issues of the periodical to which I have referred for the years 1966, 1967 and 1968, all three of which issues were published before July 1968. Publication was by delivery to all Australian members of the Queensland Society of Sugar Cane Technologists, who numbered more ows " aoe _ 6. than 600 persons, to all overseas members, who numbered more than 50 persons, to the National Library, the Queensland State Library and the Queensland Parliamentary Library. Copies were also available immediately after publication for purchase by any member of the public from the Society. Summarily stated, the evidence for the applicant is that all the essential integers of the claims of the complete specification were manifested in the operation of the ATV clarifiers at the Isis and Fairymead cane sugar mills during the several years preceding the priority date and were before that date disclosed in the papers published by Mr. Nix. It is convenient to deal with the first and eighteenth and nineteenth claims of the complete specification together. The latter two claims read: -"18. In an apparatus for rapidly and continuously separating finely divided and suspended solid materials from liquids at a predetermined and controlled rate, a settling vessel having a top and bottom outlet means, inlet means including conduit means extending to a position within said settling vessel, means for introducing a substantially vertical flow of influent feed of liquid containing freshly agglomerating solid materials to the point of entry established by said conduit means, baffle means adjacent the point of entry established by said conduit means for altering the direction of motion of said influent feed whereby the influent feed is directed in a horizontally outward direction with respect to said point of entry, means controlling the rate of discharge of solid Materials through said bottom outlet means to control and thereby establish settling and sludge zones above and below said point of entry of influent feed, and means for withdrawing a clarified effluent through said top outlet. 19. Apparatus as in Claim 18 in which said means for altering the direction of flow of said influent feed comprises baffle means ' ae ee vo we eo eee ee 7. positioned closely adjacent said point of entry for said influent feed." The slurry with which ATV clarifiers were before the priority date, and are, concerned consists of sugar cane juice, a sucrose solution containing phosphate, in which soil, protein and other impurities are suspended, and to which has been added calcium hydroxide. A product of chemical reaction between the phosphate and the calcium hydroxide is calcium phosphate, which forms solid agglomerates with material suspended in the solution, This slurry is introduced into the clarifier after being heated. Each of the Isis and Fairymead clarifiers consisted before the priority date of four compartments in vertical sequence, but for the purposes of this proceeding attention may be confined to a single compartment. The compartment is a circular metal chamber about 5 feet high, 24 feet in diameter in the case of the Isis clarifier, 32 feet in the case of the Fairymead. The influent flows vertically down a feed pipe in the centre of the compartment which it enters in what is called in the claims and in the evidence "the settling zone". At the bottom of the compartment during operation of the clarifier is a dense mass of solid matter saturated in liquid. At the top is clear liquid almost free of solids. Those solids and that clear liquid are what it is the object of the process within the clarifier to separate. Between those two zones is a zone in which occurs the process of agglomeration, and of settling towards the lower zone, of solid particles. This is called "the settling zone". Within that zone and immediately below the point at which the influent enters the compartment is a baffle plate lying in a substantially horizontal 8. plane, by which the vertical motion of the influent 1s altered to a substantially horizontal motion through the settling zone. Across the lower part of the compartment a rake moves the "dense underflow", as it is called in the first claim, into the centre of the compartment where a circular depression called "the boot" receives the mud, which is drawn out of the clarifier through a pipe in the boot. The clarified sugar cane juice is drawn out of the clarifier through a pipe or pipes at the top of the compartment. The rates of flow, which is continuous, into and out of the compartment, of influent and of clarified juice and mud, are so controlled as to maintain relatively stationary the boundaries between the three zones to which I have referred. The agglomerates in the influent cohere with the agglomerates already in the settling zone to form larger solid particles which settle without agitation, except that which the centrifugal passage of the influent causes. Liquid drawn out of the clarifier at predetermined points is passed through a turbidimeter consisting of a photo-electric cell, and sounding an alarm to alert operators when suspended solids in the liquid at that point exceed what is desirable. The operators thereupon manually adjust the rate of discharge either of the clarified cane juice or the subjacent mud; and they adjust also at need the rate of introduction of the influent into the clarifier. The foregoing description of ATV clarifiers and their operation was proved to have been true of the Isis and Fairymead clarifiers in 1965 and 1966 when Mr. Nix and other officers of the Bureau were studying their operation with a view to evaluating, and if possible improving, the efficiency of cane sugar juice —-, 9. clarifiers in Queensland. The texts of the articles published in the Proceedings of the Queensland Society of Sugar Cane Technologists before July 1968, together with the photographs and diagrams accompanying and illustrating the articles, disclosed all that I have described as the normal operation of the two clarifiers. Each clarifier exemplified each of the elements of the description. In any event, each article other than the first contained a reference to each previously published article. Claim 20 of the complete specification reads: "Apparatus as claimed in Claim 18 or Claim 19, in which said means for controlling the rate of discharge through said bottom outlet means includes pump means and light-responsive means for controlling said pump means in accordance with the turbidity of liquid at a predetermined point within said settling vessel." The diagrams by reference to which claim 26 is formulated make it clear, as does the text of the complete specification, that the control of the pump is effected automatically by "suitable electric circuitry". Control of the pumps of the ATV clarifiers in use before the priority date at Isis and Pairymead mills was, as I have stated, manually effected in response to automatic alarm signals. TI accept the evidence of Mr. Nix that at the time he was studying those clarifiers in 1965 and 1966 he had the technical knowledge necessary "to create and install a means of causing the Turbidimeter which I was using to initiate the operation of a pump instead of merely sounding an alarm in the manner I have described. The creation and installation of such a means would a Leet eg 10. not have required an inventive step on my part". Claim 1 specifies "the addition of a settling aid" as the means of forming "a slurry of solid agglomerates" in the influent feed. Claims 2, 3 and 4 read: "2. A process as in Claim 1 in which said settling aid is a member of the group of organic polyelectrolytes. 3. A process as in Claim 2 in which said polyelectrolyte settling aid is an organic copolymer of acrylamide of molecular weight from about 2,000,000 to 3,000,000. 4. A process as in any one of Claims 1 to 3, in which said settling aid is added ina proportion ranging from about 0.1 to 30 parts per million of said influent feed." A substance sold under the trade name Separam AP30, to which reference is made in the specification, and another substance sold under the trade name Sedipur TF2, were both used by Mr. Nix and his colleagues as settling aids added to the influent during operation of the Fairymead clarifier before the priority date. Both substances were members of the group of organic polyelectrolytes and were both organic copolymers of acrylamide having molecular weights between two and three million. Although settling aids were not used during the tests carried out in the Isis clarifier, Separam AP30 was available for use at that mill. The settling aid was added to the influent at Fairymead in proportions within a range from about one to about five parts per million. I accept the evidence of Mr. Nix that the greater range specified in claim 4 would be required to comprehend the wide range of mixtures mentioned in the specification. And I accept wee nes 11. the evidence of Phillip Gwyther Atherton that no higher proportion of settling aid than 5 parts per million is used in the cane sugar industry because the Food and Drugs Administration Authority of the United States of America has made rulings which would preclude the importation into that country of sugar in the production of which a higher proportion was used. Mr. Atherton is a Bachelor of Applied Science and holds a post-graduate Diploma in Sugar Technology. He is a Fellow of the Royal Australian Chemical Institute and of the Institution of Engineers Australia. His experience of the Queensland sugar industry has been continuous since 1955. It was one of his duties as Senior Mill Technologist of the Bureau to oversee the research work carried out by Mr. Nix and other officers of the Bureau at the Isis and Fairymead sugar cane mills in 1965 and 1966. In one of the articles published before the priority date the addition of "flocculating agents" to the influent is recorded. The use of such settling aids was common in cane sugar juice clarifiers in Queensland before the priority date. I defer consideration of claim 5. Claim 6 reads: "A process as in any one of Claims 1 to 5, in which at least a portion of said additional agglomerates are of an average size greater than the average size of said previous agglomerates." I accept the following evidence of Mr. Atherton concerning this claim: Ro 12. "Concerning claim 6, to my knowledge no-one in Australia has measured whether the additional agglomerates are of an average size greater than the average size of the previous agglomerates. However, as the whole object of the clarifying exercise is to increase the size of the agglomerates so that they settle to the bottom of the clarifier tank and as this settling is achieved, claim 6 is axiomatic." Claims 7, 8, 9, 10 and 11 read: "7. A process as in any one of Claims 1 to 6, in which the dense underflow is continuously removed at a predetermined rate in proportion to the rate of anfluent feed to thereby continuously maintain said zone of settling below a relatively stationary, upper boundary. 8. A process as in any one of Claims 1 to 7, in which said clarified liquid is continuously removed at a rate which is substantially directly proportional to the rate of influent feed. 9. A process as in any one of Claims i to 8, in which said influent feed containing agglomerates is introduced in a substantially vertically flowing stream and is deflected to flow substantially horizontally outward therefrom to rapidly effect said additional agglomeration. 10. A process as in Claim 9 in which said substantially horizontal outward flow of the influent feed is accomplished by arresting the vertical motion of said influent feed while permitting free outward circulation of the feed. 11. A process as in Claim 10 in which the vertical motion of the influent feed is arrested at a point at least two inches vertically displaced from the point of introduction of the influent feed." It may be inferred from the description previously given wayne 13. of the operation of the Isis and Fairymead clarifiers that in erder to maintain the boundaries between the three zones relatively stationary there 21s maintained an appropriate proportionality between the rates of flow of the single influent and the two effluents. The rates were "predetermined", but were subject to modification in response to what the turbidimeter showed to be the turbidity of the liquid in the clarifier at a particular point in the clarifier. The content of claims 9, 10 and 11 has been comprehended in that description, except that the vertical distance between the baffle plate, by which "the vertical motion of the influent feed is arrested", and "the point of introduction of the influent feed" has not been stated. In both the Isis and Fairymead clarifiers that distance was about 8 inches. The diagrams illustrating the articles to which I have referred and which were published before the priority date make it clear that the distance is more than 2 inches, although the exact measurement is not given. Claim 5 is in these terms: "A process as in any one of Claims 1 to 4, in which said influent feed of liquid slurry is introduced at a rate ranging from about 3 to 10 gallons per minute per square foot of cross-sectional filtering area within said zone of settling, said rate of influent feed being sufficient to induce a degree of percolation within said zone of settling to increase the rate of additional agglomeration." The rate at which influent was introduced into the Isis and Fairymead clarifiers before the priority date was about one third wow teen 14. a gallon per minute per square foot of cross-sectional filtering area within the settling zone. I accept the evidence of Messieurs Atherton and Nix that the rate of introduction of influent feed will be affected by the size and type of claryifying vessel and the kind of slurry being introduced (including the type and proportion of settling aid added to the influent). The experiments narrated in the complete specification which disclosed quantitative rates of introduction of influent were concerned with first carbonation beet sugar juices. I accept the evidence of Mr. Ahterton that a higher rate of introduction of influent could be obtained with beet juice than with cane sugar juice because the former carries far less suspended matter than the latter. I also accept the evidence of Mr. Nix that first carbonation beet juice permits a higher rate of influent introduction because the clarification process is not intended to produce a liquid virtually free of solids, as the clarification of cane sugar juice is, and because the calcium carbonate precipitant formed in beet juice influent feed provides a more rapidly settling flock than the calcium phosphate precipitant formed in cane sugar juice influent feed. And I accept the evidence of Mr. Atherton that any percolation of the influent through the settling zone will increase the rate of additional agglomeration, so that any rate of antroduction of influent sufficient to effect that percolation will increase the rate of additional agglomeration. If all the essential integers disclosed in claims of the patent in suit other than claim 5 were published before the priority date, then achievement of the claimed rate of introduction of influent would be, as Dr. Emmerson submitted it was, no more than a matter of "workshop adjustment", in my opinion, provided that the properties Lae 15. of the influent feed were not such as to make that achievement a practical impossibility. (See Blanco White : Patents For Inventions (4th ed.) para. 4-212; Dennison Manufacturing Co. v. Monarch Marking Systems Inc. (1983) 66 A.L.R. 265 at 274). Claim 15 reads: "A process as in any one of the preceding claims in which said influent feed is introduced at a rate of the order of 7.5 gallons per minute per square foot of cross-sectional area of said settling zone." I find nothing in the claims intervening between claim 5 and claim 15 or in the evidence to make the observations and the conclusion I have expressed concerning claim 5 inapplicable to claim 15. Claim 12 propounds the direction of the flow of influent feed into the settling zone to be upwards. It is convenient to set out with claim 12 the claims numbered 21, 22 and 23: "12. A process as claimed in any of Claims 9 to 11 whenever said influent stream is an upward flowing stream introduced centrally of the settling zone and is deflected to flow radially outward. Pe es 21. Apparatus as claimed in any one of Claims 18 to 20, in which moveable rake means are positioned between said inlet and bottom outlet means, said rake means surrounding said inlet means, and movable with respect thereto to positively discharge underflow solids to said bottom outlet means. 22. Apparatus as in any one of Claims 18 to 21, in which said top outlet means comprises a 16. peripheral opening in the top of said settling vessel, and conduit means associated therewith for receiving a gravity overflow of clarified liquid. 23. Apparatus as claimed in any one of Claims 18 to 23, in which said conduit means for the influent feed comprises a standpipe passing through the bottom of said separation vessel, and extending vertically to a position intermediate the top and bottom of said separation vessel." Claims 18, 19 and 20 have been set out above. Claims 25 and 26 are in identical terms, except that the former commences with the words "A process" and the latter with the word "Apparatus". Claim 25 is in these terms: "A process for rapidly and continuously separating finely divided and suspended solid materials from liquids substantially as hereinbefore defined with reference to the accompanying drawings." I defer consideration of claims 19, 21 and 22. It will be observed that claims 12 and 23 indicate that the influent is introduced into the separation vessel from the bottom and that therefore the vertical flow of the influent to the baffle plate is upwards, whereas in the Isis and Fairymead clarifiers the vertical flow was downwards. The drawings to which reference is made in the last two of the claims, numbered 25 and 26, are, respectively, of process and apparatus in which the flow is upwards. I accept the evidence of Mr. Nix that "it would make no difference whether the influent is introduced through the top or the bottom of the clarifier because it is introduced in a closed pipe through either the bottom or the top of the clarifier and released into the " mee pee = 17. clarifier substantially horizontally at a predetermined location. Ordinarily, until such time as the influent is released into the clarifier, it has no effect on the practical working of the invention. The practical working of the invention is not affected by the mode by which the influent is released. This would be obvious to anyone skilled in this field. It would only be useful to introduce the influent at the bottom of the clarifier if physical constraints prevented top entry and, in that event, such a workshop variation would be obvious to a man skilled in the field." Accordingly I find that, so far as the patented invention was claimed as involving vertically upwards, rather than downwards, motion of the influent feed between the point of introduction of the feed to the settling zone and the point at which vertical motion is altered to cause the influent feed to flow substantially horizontally outward, it was obvious and did not involve an inventive step having regard to what was known and used in Australia before the priority date. Claims 21 and 22 may now be considered. The rake in use at the Isis and Fairymead mills was described, and shown in diagrams, in the articles published before the priority date; and from those articles it can be appreciated that the rake was positioned between the feed inlet and the bottom outlet, that the rake surrounded the inlet and was movable with respect to the inlet, and that its radial operation discharged the underflow solids to the bottom outlet pipe in the boot of the compartment. Such a rake, as propounded in claim 21, was in common use in Queensland sugar cane juice clarifiers before the priority date. The means for drawing off clarified juice which is propounded in ~ a meow wee a nn we meewn wg a wee nee em 18. claim 22 was in use in the Isis and Fairymead clarifiers and was described in the articles. Each compartment of the Isis and Fairymead clarifiers was equipped with several such peripheral openings and associated conduits. Claims 13 and 14 read as follows: "13. A process as in any one of Claims 10 to 12, in which the said relatively stationary, upper boundary of the settling zone is at least two inches above the point of arresting the vertical motion of said influent feed. 14. A process as claimed in any one of the preceding claims in which the point of introduction of said influent feed is at least six inches above the point of removal of said dense underflow." The minimum distances propounded in these claims were exceeded by substantial margins in the Isis and Fairymead clarifiers and the diagrams in the articles published before the priority date make it apparent that those distances were exceeded. Claims 16 and 17 are in these terms: "16. A process as claimed in any one of the preceding claims in which a portion of said dense underflow is recirculated and intermixed with the influent feed, such recirculation permitting a degree of control the rate of agglomeration and the density of the underflow removed from the settling zone. 17. A process as claimed in any one of the preceding claims in which the average retention time of said influent feed in said settling zone is less than about five minutes." we rmeteenee ne 19. Before the priority date experimental remixing of the underflow with the influent had been undertaken by Mr. Nix at the Fairymead mill and had been discussed in an article in the Proceedings of the Queensland Society of Sugar Cane Technologists published before the priority date. It had not been the practice to intermix the solid effluent with the influent in the Australian sugar cane undustry, but rather to return to the influent the cloudy filtrate removed from the mud by a filtration process. It was, however, established and well known practice before the priority date in this country in sewage treatment and in the aluminium industry to add back solids recovered from a clarification process into the influent. The experiments in 1965 and 1966 at the Isis and Fairymead mills had in some instances demonstrated a retention time of influent feed in the settling zone of less than about five minutes and a person knowledgeable in the technology upon which the clarification process was based would have been able to deduce that that had occurred from the experimental results disclosed in the articles published before the priority date. Claim 24 reads: "Apparatus as claimed in Claim 23 when appended to Claim 19, in which said standpipe and baffle means are adjustably mounted with respect to each other in the bottom of said settling vessel." I accept the evidence of Mr. Nix that making the influent standpipe and the baffle adjustable each in relation to the other would be "an obvious workshop adaptation requiring no inventive 20. skill" and his evidence that such an adaptation would be of use only in a clarifying vessel intended for experimental use. In other uses the adjustments would be required only when the vessel and its associated equipment were being set up for the process to be undertaken. Claims 25 and 26 do not disclose a significant integer not found in the other claims. My conclusion is that each of the essential integers of the claims of the patent either was not novel in Australia on the priority date of the claims, by reason of prior use at the Isis or Fairymead mill or by reason of prior publication in the Proceedings of the Queensland Society of Sugar Cane Technologists, or was obvious and did not involve an inventive step having regard to what was known in Australia on the priority date. Accordingly I should accede to the prayer for revocation of the patent. Dr. Emmerson sought an order that the applicant's costs of the petition be paid by the patentee. Threats had been made by the patentee to customers of the applicant concerning infringement of the patent alleged to have been committed in the vending of equipment manufactured by the applicant. In July 1987 the applicant's solicitor had invited the patentee to offer to surrender the patent, but the invitation was declined. The patentee's motion for dismissal of the petition, which was refused on 25 September 1987, was grounded upon a contention that the offer of an undertaking to the Court by the patentee not to take any proceeding for infringement of the patent had the result that wacke wen ce a Ae en er et ni ee 21. maintenance of the petition thereafter was an abuse of process. For reasons which his Honour gave, Northrop J. rejected that contention. In those circumstances I think that the applicant should have an order for its costs against the respondent patentee. (Cf. In the Matter of Aylott's Patent (1911) 28 R.P.Cc. 287.) I certify that this and the 20 preceding pages are a true copy of the Reasons for Judgment herein of the Honourable Mr. Justice Jenkinson. Dated: 12 August, 1988 Counsel for the Petitioner : Dr. J. McL. Emmerson QC and Mr. D. Shavin Solicitors for the Petitioner: Freehill, Hollingdale & Page Dates of Hearing : 23, 24 and 25 May, 1988 ape eine ww eee