FEDERAL COURT OF AUSTRALIA Mather v Lockwood Australia Pty Ltd [2001] FCA 856 PRACTICE & PROCEDURE – admissibility of evidence – opinion rule – specialised knowledge exception – appeal from an opposition decision by Commissioner of Patents in relation to patent for lock barrel assembly – where applicant seeks to adduce evidence demonstrating commercial success of invention – where respondent objects to relevance and specialised knowledge of witness Evidence Act 1995 (Cth) s 79 SEIJA AULIKKI MATHER v LOCKWOOD AUSTRALIA PTY LTD NG 1000 OF 1997 EMMETT J 20 JUNE 2001 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 1000 OF 1997 BETWEEN: SEIJA AULIKKI MATHER APPLICANT AND: LOCKWOOD AUSTRALIA PTY LTD RESPONDENT JUDGE: EMMETT J DATE OF ORDER: 20 JUNE 2001 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The affidavit of Walter Brewer, sworn 30 May 2001, be rejected. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 1000 OF 1997 BETWEEN: SEIJA AULIKKI MATHER APPLICANT AND: LOCKWOOD AUSTRALIA PTY LTD RESPONDENT JUDGE: EMMETT J DATE: 20 JUNE 2001 PLACE: SYDNEY RULING ON EVIDENCE 1 This proceeding is an appeal under s 60 of the Patents Act 1990 ("the Act") against a decision of the Commissioner of Patents in relation to an opposition to the grant of a patent to the applicant. The applicant seeks to read the affidavit of Walter Brewer sworn 30 May 2001. Mr Brewer is a self-employed security consultant, who was employed by the Attorney-General's Department from 1983 to 1997. Amongst other duties, Mr Brewer was responsible for the construction and evaluation of security hardware equipment. 2 Mr Brewer gives evidence that, as a member of the Commonwealth Security Hardware and Construction Working Committee and subsequently as its chairman, he considered an application made by the original patent applicant for a grant under the national procurement development program. The present applicant seeks to prove that a grant was made by the committee following the evaluation of the project for the development of a lock that would be an embodiment of the invention. 3 In his affidavit, Mr Brewer says that high security locks were difficult to find in 1990 and 1991. He also gives his opinion that the lock that was the subject of the application for a grant: · was simple; · had the potential to be cheap to manufacture; and · had features that one would expect to find in a high security lock. A prototype of the proposed lock was made available to Mr Brewer at the time of his consideration of the application. In the affidavit, he gives his opinion concerning what he described as "very noteworthy features" of the lock that was the subject of the application. 4 Objection is taken to the reading of the affidavit on a number of grounds. First, insofar as the affidavit deposes to matters of fact concerning the application for a grant, counsel for the respondent says that the facts are irrelevant. Insofar as the affidavit deposes to opinions of Mr Brewer, counsel for the respondent says that Mr Brewer is not qualified to express those opinions. 5 The relevance of the fact of the application and the grant is said to be to demonstrate the commercial potential for the invention. As I understand it, the argument will be that there was some need for a security lock in 1990 and 1991, such that the Australian Government was prepared to fund a project designed to develop such a lock. It was prepared to fund the inventor of the lock in the development of a product that would satisfy the Government's requirements. 6 While Mr Brewer provides evidence of such a need, and that delegates of the Commonwealth perceived potential in the proposal that was put to them in 1991, the affidavit says nothing about the obviousness or novelty of the invention. It may be that on full examination of the material that was before the Committee of which Mr Brewer was Chairman and before the Industry Research and Development Board, an inference could be drawn that there was some commercial potential for a lock such as is described in the complete specification. However, at present, it is only part of the application and a press release by the Commonwealth announcing that a grant has been made that is being tendered. 7 Mr Brewer describes the lock as having certain features to which I have already referred. However, that of itself does not seem to me to take the matter further in relation to the assessment of the obviousness or novelty of the invention. It might be different if it could be shown that, as a result of the development, the invention was in fact shown to be a commercial success. Such a fact would be relevant to the question of whether an invention is obvious, as it would demonstrate a demand for the product. If there were a demand, and the demand were not satisfied, an inference can be drawn that the invention was not obvious. 8 Insofar as Mr Brewer's affidavit is relied on to prove the opinion of an expert it is significant that there has been no attempt to qualify him in accordance with the Court's Guidelines for Expert Witnesses. Certain of the views that Mr Brewer expresses in his affidavit may well have relevance to the proceeding, for example, the features of the prototype that he considers were noteworthy: "(a) Simple manufacture and assembly. (b) The inability by whatever means to discover the combination of a given lock without having the correct key or disassembling that lock. (c) The need to use the machine to make a duplicate key." One of the objects of the invention stated in the complete specification was to overcome disadvantages of conventional locks described as follows: "These conventional locks are prone to tampering and may be picked with relative ease. In addition the number of possible combinations is limited. The lock bar is of complex construction and is therefore expensive to manufacture, repair, or alter requiring a vast number of parts to be held in stock by locksmiths." The first two of the features described by Mr Brewer as noteworthy are clearly contemplated by that statement in the complete specification. 9 However, there is no evidence that Mr Brewer had any expertise as a locksmith. Certainly, he has the potential to give evidence on behalf of the Commonwealth as a prospective consumer of devices made in accordance with the invention. However, the view that he expresses concerning those features does not seem to me to require any particular expertise. Even if it does, I am not satisfied that Mr Brewer has that expertise. For example, in relation to the first feature, he says that the lock can be made with a set of disks all of which are identical, which would considerably reduce the costs of manufacture and re-keying. That view does not require any expertise. It is either correct or it is not. 10 In relation to the noteworthy feature concerning inability to discover the combination of a given lock, relevant opinions would be the opinions of a witness who is well qualified in relation to the picking of locks. Mr Brewer may well have had considerable experience in assessing locks from his examination of catalogues and patent specifications. However, for his opinion to be admissible, it must constitute an exception to the opinion rule in s 76 of the Evidence Act 1995. 11 Section 79 provides: "If a person has specialised knowledge based on a 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." The difficulty I have with material before me at the moment is that I am not satisfied that the opinion is based on specialised knowledge, in circumstances where there has been non compliance with the Court's guidelines. 12 On the hearing of an appeal under s 60 of the Act, the Court has a discretion under s 160 of the Act as to the admission of further evidence. I am not satisfied, having regard to the nature of this proceeding, that I should admit the affidavit. I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett. Associate: Dated: 16 July 2001 Counsel for the Applicant: Ms J Baird Solicitor for the Applicant: Chrysiliou Moore Chrysiliou Counsel for the Respondent: Mr S Burley Solicitor for the Respondent: Phillips Ormonde & Fitzpatrick Date of Hearing: 20 June 2001 Date of Judgment: 20 June 2001