Synthetic Turf Development Pty Limited v Sports Technology International Pty Limited [2005] FCA 69 (11 February 2005)

Synthetic Turf Development Pty Limited v Sports Technology International Pty Limited [2005] FCA 69

PATENT – infringement – synthetic turf – construction of patent – validity of patent – novelty – obviousness – fair basing

Patent Act 1990 (Cth), s 183
Conveyancing Act 1919 (NSW), s 12

Décor Corp Pty Limited v Dart Industries Inc (1989) 13 IPR 385
Flexible Steel Lacing Co v Beltreco Limited (2000) 49 IPR 331
Doric Products Pty Limited v Lockwood Security Products Pty Limited (2003) 56 IPR 479
Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58
Rehm Pty Limited v Websters Security Systems (International) Pty Limited (1988) 81 ALR 79; (1988) 11 IPR 29
The Wellcome Foundation Limited v VR Laboratories (Aust) Pty Limited [1981] HCA 12; (1981) 148 CLR 262
Allsop Inc v Bintang Limited (1989) 15 IPR 686
Minnesota Mining and Manufacturing Co v Tyco Electronics Pty Limited (2002) 56 IPR 248 Bristol Myers Squibb Company v F H Faulding & Co Limited [2000] FCA 316; (2000) 97 FCR 524
Meyers Taylor Pty Limited v Vicarr Industries Limited [1977] HCA 19; (1977) 137 CLR 228
Olin Corporation v Super Cartridge Co Pty Limited [1977] HCA 23; (1977) 180 CLR 236
Radiation Limited v Galliers & Klaerr Pty Limited [1938] HCA 17; (1938) 60 CLR 36
Catnic Components Limited v Hill & Smith Limited [1982] RPC 183
Populin v HB Nominees Pty Limited (1982) 41 ALR 471
Commonwealth Industrial Gases Limited v MWA Holdings Pty Limited [1970] HCA 38; (1970) 180 CLR 160

SYNTHETIC TURF DEVELOPMENT PTY LIMITED v SPORTS TECHNOLOGY INTERNATIONAL PTY LIMITED
N662 of 2003

JACOBSON J
11 FEBRUARY 2005
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N662 of 2003

BETWEEN:	SYNTHETIC TURF DEVELOPMENT PTY LIMITED APPLICANT
AND:	SPORTS TECHNOLOGY INTERNATIONAL PTY LIMITED RESPONDENT SPORTS TECHNOLOGY INTERNATIONAL LIMITED CROSS-CLAIMANT SYNTHETIC TURF DEVELOPMENT PTY LIMITED CROSS-RESPONDENT
JUDGE:	JACOBSON J
DATE OF ORDER:	11 FEBRUARY 2005
WHERE MADE:	SYDNEY

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	N662 of 2003

BETWEEN:	SYNTHETIC TURF DEVELOPMENT PTY LIMITED APPLICANT
AND:	SPORTS TECHNOLOGY INTERNATIONAL PTY LIMITED RESPONDENT SPORTS TECHNOLOGY INTERNATIONAL LIMITED CROSS-CLAIMANT SYNTHETIC TURF DEVELOPMENT PTY LIMITED CROSS-RESPONDENT

JUDGE:	JACOBSON J
DATE:	11 FEBRUARY 2005
PLACE:	SYDNEY

1 The applicant, Synthetic Turf Development Pty Limited ("the applicant") is the patentee of Australian Standard Patent No 664427 ("the Patent") which was originally granted to Kingsford Ross Heylen ("Mr Heylen"). The title of the invention which is the subject of the Patent is described in the specification as "synthetic bowling green". It is a patent for a synthetic playing surface and for the preparation of the surface, for use in playing fields of the kind used in lawn bowls, croquet, tennis and like applications.

2 The Patent has a priority date of 10 May 1989, which was the date on which a provisional specification was filed.

3 Mr Heylen assigned the Patent to the applicant by a Deed of Assignment dated
13 January 2003 ("the Deed of Assignment").

4 The Patent contains product claims and method claims. The applicant sues the respondent, Sports Technology International Pty Limited ("STI"), for infringement of seven of the product claims. STI denies infringement, and cross claims for a declaration of invalidity of nine of the product claims. The method claims are not in issue but it is relevant to refer to them because they bear upon questions of construction, novelty and obviousness.

5 There are ten product claims in the patent. Claim 1 is for a playing surface comprised of artificial turf with a plurality of fibres which are sand filled so that each fibre has a buried stem and a free end protruding from the particulate and in which at least 10% of the free ends are "crimped at an angle to the stem so that they lie in different compass directions such that noticeable bias in any one direction is avoided".

6 The object of the Patent is to overcome leading bias resistance in synthetic surfaces used for lawn bowls. Leading bias resistance caused uneven draw in the bowls and was due, in part, to the directional pile of fibres used in the turf. The problem was known at the priority date. The invention that was claimed in the patent was the solution to this problem, consisting of non-directional fibres produced by "crimping" the free ends at an angle to the stem.

7 STI produces a synthetic playing surface known as Promaster ^TM ("Promaster"), which the applicant says infringes several of the product claims in the patent. STI has produced Promaster using the same manufacturing technique since at least the early 1990’s. Promaster is crimped but, unlike the applicant’s product which is crimped when it is laid on the surface, STI induces a crimp in the manufacturing process through heat in an autoclave. Promaster is therefore described as pre-crimped turf.

8 STI contends that the expression "crimped at an angle to the stem" in Claim 1 of the Patent means pressed into folds. STI says that, when the specification is read as a whole, "crimped" means pressed by the application of a rolling device when the turf is laid. This, it is said, does not import any gloss on that term drawn from other parts of the specification; see Décor Corp Pty Limited v Dart Industries Inc (1989) 13 IPR 385 ("Décor") at 400 (Sheppard J); see also Flexible Steel Lacing Co v Beltreco Limited (2000) 49 IPR 331 ("Flexible v Beltreco") at [70] – [81] (Hely J).

9 Thus, STI contends that the pre-crimped Promaster turf does not infringe Claim 1 in the Patent. Moreover, STI submits that Promaster does not infringe any of the other product claims relied upon by the applicant because each of the other claims builds upon and incorporates Claim 1.

10 That is to say, although the remaining product claims add various integers which have the effect of narrowing the claim, each requires that the fibres be crimped at an angle to the stem. On the construction proposed by STI, the Promaster turf does not infringe the product claims in the Patent, for it is pre-crimped.

11 The applicant contends that it is sufficient that the Promaster turf is crimped. Indeed, the applicant points to an admission on the pleadings made by STI that Promaster is crimped.

12 However, STI submits that the applicant’s approach to the construction of the Patent raises a conundrum. If the words "crimped at an angle to the stem" are to be construed narrowly, as contended by STI, then there is no infringement. But if the words are to be construed broadly, as submitted by the applicant, the claim is not fairly based on the matter described in the specification.

13 Lack of fair basis is therefore the first ground on which STI seeks revocation of the product claims. STI submitted that its approach to this issue would not be affected by the outcome of an appeal which was pending at the time of the hearing from the decision of a Full Court of the Federal Court in Doric Products Pty Limited v Lockwood Security Products Pty Limited (2003) 56 IPR 479. After I reserved my judgment, the decision of the High Court was handed down; see Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ("Doric"). The issue of fair basing must therefore be considered in accordance with the principles stated by the High Court.

14 STI’s second ground of attack on the validity of the claims is obviousness. STI contends that the invention would have been obvious to a person skilled in the art of installing synthetic turf surfaces in the light of common general knowledge at the priority date.

15 The common general knowledge is said to be evidenced by, inter alia, the installation of two synthetic surfaces before the priority date. The first of those surfaces was the Sydney City Bowling Club ("City Bowling") which was installed in late 1986 and completed in February 1987.

16 City Bowling was installed by Supergrasse Pty Limited ("Supergrasse"). Mr Rooks was the General Manager of Supergrasse and he was responsible for the installation.
Mr Rooks gave evidence of the installation of the synthetic turf at City Bowling. His evidence was that the free ends of the turf protruded between 3 and 5mm above the sand fill and that the free ends were rolled with a conventional, unheated, roller in multiple directions. He said that this had the effect of crimping or pressing the pile so that the free ends lay multi-directionally to produce non-directional pile.

17 The second installation which STI relied upon on the ground of obviousness was a bowling green at Port Germein in South Australia ("Port Germein"). Port Germein was installed in November 1988 by AE Williams Pty Limited ("AE Williams") using a surface known as an Evergreen-Williams system.

18 Mr Brian Williams, who was a principal of AE Williams, gave evidence of the installation at Port Germein. His evidence was similar in effect to that of Mr Rooks.

19 Accordingly, the thrust of the evidence of Mr Rooks and Mr Williams was that the solution of multi-directional crimping to produce non-directional pile was known and applied several years before the priority date.

20 STI also called evidence of an expert, Mr Rossi, that multi-directional crimping could be achieved by the application of a conventional unheated roller to the synthetic turf.

21 The applicant made a substantial attack on the credit of Mr Rooks and Mr Williams. The effect of the applicant’s evidence was that crimping could not be achieved by cold rolling of the surface and that crimping could only be achieved by the application of a heated roller.

22 It is a preferred embodiment of the applicant’s invention that the turf be pressed by rolling at elevated temperatures. However, heated rolling does not form part of the product claims. It is stated as one of the method claims.

23 This led to another apparent conundrum in the applicant’s case. STI contended that if, as was alleged by the applicant in its evidence, multi-directional crimping could not be achieved by cold rolling, the Patent was procured by false suggestion.

24 Accordingly, whilst STI’s primary contention was that the cold rolling method could, and did, produce a playing surface within the relevant product claims, if this is not correct the claims should be revoked pursuant to s 138(3)(d) of the Patents Act 1990 (Cth) ("the Act").

25 The claim of false suggestion in the present proceedings is unusual but it is put by STI as an alternative to the other grounds of invalidity.

26 The evidence which the applicant relied upon to meet the evidence of Mr Rooks was, primarily, that of Mr Heylen and Mr TAV West ("Mr West").

27 Mr West was the Honorary Secretary of City Bowling at the time of the installation of the green. His evidence was that the free ends of the turf protruded by only 1mm above the sand fill and the free ends were vertical rather than crimped. The effect of this was, on Mr West’s evidence, that the bowls ran over the upright tips of the turf which were non-directional.

28 The gravamen of the applicant’s case on this issue was that the solution adopted by Supergrasse (and also by AE Williams) to the problem of non-directionality was to fill and straighten the pile with sand. The surface was then brushed to achieve the result that the 1mm exposed ends were vertical.

29 It was common ground that if the free ends were only 1mm long, it would be difficult to crimp them.

30 The applicant relied on the evidence of Mr Heylen and of Mr Norman Ellice
("Mr Ellice"), Mr Arthur Lehmann ("Mr Lehmann") and Mr Alan John Hannaford
("Mr Hannaford") to support the contention that Mr Williams’ greens were not crimped.

31 Mr Ellice was a member of the Broken Hill Bowls Club ("Broken Hill").
Mr Lehmann was a member of the Roxby Downs Bowling Club ("Roxby Downs").
Mr Hannaford was a member of the Parkdale Bowling Club ("Parkdale"). Each of those bowling clubs had synthetic turf greens which were installed by AE Williams. Broken Hill and Roxby Downs were installed before the priority date but Parkdale was installed shortly after that date, in early 1990.

32 The playing surfaces installed by AE Williams at Broken Hill, Roxby Downs and Parkdale were the same as that which was installed at Port Germein.

33 The applicant also relied on the evidence of an expert, Mr Kosior, who said that crimping could not be achieved by cold rolling of synthetic turf surfaces.

34 STI has raised a further ground of defence, namely the absence of Mr Heylen as a party to the proceedings. This issue arises because STI contends that the Deed of Assignment, which was entered into about five months before the commencement of these proceedings, did not take effect as a legal assignment under s 12 of the Conveyancing Act 1919 (NSW). This is because it is said that "express notice in writing" was not given as required by s 12.

35 It would follow, in STI’s submission, that the applicant was a mere equitable assignee when it commenced the proceedings and that it did not have the necessary title to do so without joining Mr Heylen.

36 Before the commencement of the hearing I made an order under O 29 r 2 of the Federal Court Rules that the question of liability be heard separately from, and prior to, the determination of any issue of pecuniary relief.

37 The question of the validity of the Patent is to be determined by the provisions of the Act. This is because the Patent was granted pursuant to an application filed after the commencement of the Act, on 29 July 1993, notwithstanding that the priority date is 10 May 1989. Accordingly, the transitional provisions contained in s 234 of the Act in respect of applications filed under the Patents Act 1952 (Cth) do not apply.

38 The specification begins by describing the background to the invention and the prior art. It states that the invention relates to a synthetic playing surface for use in playing fields of the kind used for lawn bowls, croquet and the like, and the preparation of those surfaces.

39 It then states that the invention is described with particular reference to a synthetic playing surface for lawn bowls but that it is to be understood that the invention is applicable to surfaces on which other sports may be played.

40 Artificial turf is said to be, typically, a carpet-like construction in which fibres, for example of polypropylene, are tufted or woven to a backing coated with a rubber polymer latex.

41 Examples are given of two brand names under which artificial turf was sold in Australia. The named brands are "Superior Grass" and "Supergrasse".

42 Reference is made to the construction of the base on which the surface is laid, but this is only background information, and has nothing to do with the invention or the claims that are in issue in these proceedings.

43 Reference is also made to an earlier patent application No 24686/88 made by Mr Heylen. This relates to the base construction which, as I have said, has nothing to do with these proceedings.

44 The problems in the prior art are expressly disclosed. The essential problem was "leading bias resistance". This was described as follows:-

45 The object of the invention, namely reduction of leading bias resistance is then stated as follows:-

46 There then follows a "consistory clause" which broadly states the claimed invention as follows:-

47 A second aspect of the consistory clause is a description of the method of preparing a playing surface comprising the steps of:-

48 The consistory clause is followed by references to various preferred embodiments of the invention. These include rolling the turf with a heated roller until the desired number of free ends have been crimped and brushing the turf prior to rolling so that the orientation of the protruding free ends is substantially vertical to the plane of the turf.

49 There then follows what appears to be a full description of the invention including the best method of performing it known to Mr Heylen as the inventor in accordance with
s 40(2)(a) of the Act.

50 This is described, in part, by reference to schematic drawings which depict a playing surface and a hot roller.

51 The description commences with a statement of how to prepare the base or subsurface, although this has no relevance to the product claims.

52 It then describes what turf is suitable and how it is laid, but it does so in a way which makes it plain that there can be no secrets attached to these aspects.

53 The specification states that any "conventional" artificial turf having a plurality of fibres tufted or woven to a backing material, as depicted in Figure 1, is suitable. I reproduce Figure 1 as follows:-

54 Moreover, the selected turf is to be laid on the base according to "well known methods". Particulate matter, ie sand, is to be applied between the fibres "in the usual manner" so that the fibres have a buried stem and a free end protruding from the sand, as depicted in Figure 2.

55 A description of the particulate is given. It is preferred that the individual particles be "sub-round to sub-angular". It is highly preferred that the particles have a size distribution as stated.

56 The specification states that during application of the particulate matter it is preferable to ensure that each fibre remains substantially vertical by careful brooming or brushing. If non-vertical fibres are used, the turf is to be brushed during application of the sand.

57 Although this part of the description is not expressed as though it were common general knowledge, STI called evidence to show that it was standard practice to groom synthetic turf during and after application of sand to the playing surface.

58 There is then another step in the process of preparation of the surface, namely the distance between the level of the particulate matter and the protruding free ends as described in Figures 2 and 3. I will reproduce Figure 3 as follows:-

59 It is said to be highly preferred that the layer of particulate matter is applied so that the finished level of the sand is between about 2mm and 7mm below protruding free ends and more preferably between about 5mm and 7mm below the free ends. No explanation is given for why this is preferred. Nor is it included in the consistory clause.

60 The next step is that the particulate-filled turf is pressed until the protruding free ends are crimped at an angle to the stem "as illustrated" in the drawings. Although the description does not say which of the figures contains the illustration, it is clear enough that this is a reference to Figure 3.

61 Pressing or rolling of the turf is then described. The preferred method is said to be by way of a heated roller as illustrated in Figure 4. I will reproduce Figure 4 as follows:-

62 The description then returns to the crimping of the free ends as illustrated in Figure 3. It is said that although the diagram shows the orientation of the ends to be the same, rolling is to be carried out in a plurality of directions. Thus, the orientation of the free ends shown as item 7 in Figure 3, is in a direction which "is substantially random so as to produce a multidirectional pile having negligible leading bias resistance".

63 Rolling is to continue until the protruding free ends of at least about 10%, and preferably more than about 90%, of the fibres have been crimped at an angle to the stem. It is preferred that the free ends have been crimped so that they lie in a substantially horizontal plane adjacent to the surface of the particulate fill.

64 There is then an extremely wide definition of "horizontal" to mean more nearly horizontal than vertical and to include instances where the fill ends of the fibres are at an angle of less than 45º to the surface of the fill, and preferably close to zero degrees.

65 The specification ends with 24 Claims "defining the invention". The Claims follow the structure to which Gummow J referred in Rehm Pty Limited v Websters Security Systems (International) Pty Limited (1989) 81 ALR 79 at 85; (1988) 11 IPR 289 at 294 ("Rehm"). That is to say, there is a progressive narrowing of the claims, the patentee hoping that somewhere along the line, it may find a claim sufficiently narrow to be valid and sufficiently wide to catch an infringer.

66 There are two categories of claims. The first, which are found in Claims 1 to 10, are product claims. The second, which are found in Claims 11 to 24, are method claims.

68 STI contends that this Claim does no more than define a playing surface having characteristics that were well known and obviously desirable before the priority date.

69 Evidence was called by STI with a view to establishing that there were other bowling greens in existence at the priority date that had those characteristics and that there were other ways envisaged of achieving the same result without making use of the invention.

70 STI submits that the Claim is invalid for want of novelty and, in the alternative, on the ground of obviousness. Even if synthetic surfaces having the characteristics defined in Claim 1 did not exist before the priority date, STI submits that the claim is invalid because it merely defines an obviously desirable result.

71 Further, as with each of the other claims challenged by STI, it submits that the claim is invalid because it is not fairly based on the matter described in the specification.

72 Claim 2 introduces a further integer, namely the length of the protruding free end. It is described as a claim according to Claim 1 wherein the free end protruding from the particulate matter is from 2mm to 7mm long.

73 As stated above, there is no basis in the specifications for an invention described by reference to the length of the free ends and there is no mention of this integer in the consistory clause.

74 Claim 3 is a variation of the integer described in Claim 2. It is defined as a surface according to Claim 2 wherein the free end protruding from the particulate matter is 5mm to 7mm long.

75 Claim 4 narrows one of the integers in Claim 1, namely the percentage of free protruding crimped ends. The claim is for a surface according to the three preceding claims in which the number of free protruding ends which are crimped at an angle to the stem exceeds 90%.

77 Claim 5 is for a playing surface according to any of the preceding claims wherein the particulate matter is sand.

78 There is abundant evidence that sand was used on other synthetic turf surfaces before the priority date.

80 STI contends that the evidence establishes that this claim merely states the typical grading of sand used in synthetic turf surfaces for bowling greens before the priority date.

81 Claim 7 introduces a new integer in the form of a horizontal orientation of the free ends. The claim is for a playing surface according to any of the preceding claims wherein the protruding free ends are crimped so that they lie in a "substantially horizontal" plane adjacent to the particulate matter.

82 This claim must be construed in light of the fact that the patentee has chosen to include within the specification a definition of the term "horizontal". I referred to this at [64]. The term used in Claim 8 must therefore be given that meaning: see Décor at 410-411 (Sheppard J).

83 Clearly enough, the term "horizontal" in Claim 7 is given the widest possible meaning by the patentee.

84 Claim 8 limits the claims to a playing field for lawn bowls or croquet having a playing surface according to any of the preceding claims.

85 This seems to add nothing because the surfaces described in the earlier claims are plainly intended for use in lawn bowls or croquet as well as other sports..

86 The same comment applies to Claim 9 which is for a tennis court or playing field for hockey, soccer, football or athletics having a playing surface according to any of the Claims 1 to 6.

89 It is unnecessary to set out the method claims made in Claims 11 to 24 because STI does not seek a declaration that any of those claims is invalid.

90 However, it is to be noted that these claims merely state in general terms a method of preparing playing surfaces comprising the steps of laying the turf, spreading particulate matter and pressing it until the protruding free ends are crimped.

91 The method of rolling the turf is introduced in Claim 18 and it is not until Claim 19 that hot rolling is referred to.

92 The construction of the word "crimped" and the phrase "crimped at an angle to the stem" which appear in Claim 1, and on which all the other claims are dependent, is critical to the outcome of the proceedings.

93 It is true, as Sheppard J said in Décor at 400, that it is not legitimate to confine the scope of the claims by reference to the limitations appearing in the body of the specification. However, his Honour also said that in constructing the patent it is necessary to read the whole specification and to give it a purposive rather than a purely literal construction.

94 In Flexible v Beltreco at [76] Hely J referred to the observations of Sheppard J in Décor as the modern approach to construction which requires the context to be considered in the first instance.

95 The Macquarie Dictionary, 3^rd Ed, 1988, p 514 defines the word "crimp" as meaning to press into small rectangular folds. This is the ordinary meaning of the word. It is to be noted that it incorporates the concept of pressing.

96 The context in which the word "crimped" and the expression "crimped at an angle to the stem" appear in the body of the specification strongly imply that the word "crimped" is used in its ordinary sense as involving the notion of pressing.

97 What the specification teaches is that the problem of leading bias resistance can be overcome by pressing the turf multi-directionally with a hot or cold roller so that the free ends of the fibres are "crimped at an angle to the stem". Mr Heylen said in his evidence that the patent is directed at installers. This further illustrates the emphasis of the patent upon multi-directional pressing or rolling of turf at the time of installation.

98 The word "crimped" and the expression "crimped at an angle to the stem" are to be interpreted in light of what is disclosed in the specification, in particular its emphasis upon multidirectional pressing or rolling at the time of installation; see Décor at 391 (Lockhart J); Flexible v Beltreco at [81] (Hely J).

99 Although the first aspect of the consistory clause does not specifically refer to the notion of pressing, the second aspect does. Whilst the second aspect is concerned with method rather than product, the whole emphasis of the specification is upon a method of preparing a playing surface. Thus, further on, the specification states that synthetic turfs prepared according to the present invention have been found to exhibit negligible leading bias resistance.

100 It seems to me therefore that the word "crimped" and the expression "crimped at an angle to the stem" in Claim 1 incorporate, and are limited to, the concept of pressing. Moreover, what is meant by these words is that the turf is to be pressed into folds after it has been laid on the base or sub-surface.

101 The evidence elicited from Mr Rossi in cross-examination makes it clear that the STI’s product is not crimped at an angle to the stem in the sense in which that expression appears in Claim 1. Rather, it is pre-crimped.

102 Mr Rossi’s company manufactures the turf for STI. The relevant evidence is as follows:-

103 Mr Heylen was cross-examined as to his understanding of the meaning of the word "crimped". He agreed that it was a word of broad import and that he got the term from his patent attorney. His answers to the questions which Mr Nicholas, counsel for STI, asked him about the meaning of the term and what was involved in his own "crimping" process reflected poorly on his credit.

104 In particular, he refused to concede that the method described as "crimping" in the patent could be said to be "bending" or "folding" of the free ends. He gave the fanciful evidence that he did not understand the meaning of the words "bend" or "fold". I set out the transcript below, at [162].

105 Mr Rooks’ evidence was that non-directionality in the synthetic turf used at City Bowling was achieved by four steps in the manufacturing and installation process.

106 The first step was that a straight pile product was used, that is to say, one in which the fibres protruded essentially vertically from the backing material. The pile height from that material was in the order of 25mm.

107 The second step was that a relatively fine gauge material was used. That is, finer than the gauge on tennis courts, which were by that time already using synthetic turf as an established playing surface. A finer gauge was used because it crimps more easily. I will deal with this further when addressing the evidence of Mr Rossi and Mr Kosior.

108 The third step was to fill the fibres with sand to a height of about 20mm leaving a finished exposure of about 3mm to 5mm which was ready to roll.

109 The fourth step was to roll and groom or brush the surface thoroughly on installation so as to flatten the exposed fibres. The rolling was multi-directional so that the fibres were not all bent in one direction.

110 Mr Rooks’ evidence was that a standard ride-on, unheated, lawn bowls roller was used (as used on natural grass greens) and that the rolling or grooming was carried out daily for a period of about three months following installation.

111 Mr West’s evidence was quite different. He agreed that the pile height was 25mm but said that it was filled with 24mm of sand, leaving only a 1mm tip exposed. He said that the surface was brushed to ensure that the tips remained vertical and to enable the bowls to run non-directionally over the exposed tips.

112 Both Mr Rooks and Mr West may be regarded as independent witnesses. Mr Rooks was a former employer of Supergrasse and STI, having retired in December 2002 after 20 years working in the field of synthetic grass surfaces. Supergrasse went into liquidation in 1990. Its machinery and name were purchased by a German company, Balsam AG, which operated in Australia under the name "Balsam Pacific Pty Limited" until it changed its name to STI.

113 Mr West was, as I have said, the Honorary Secretary of City Bowling and, between about 1987 and 1990, a consultant to Supergrasse. Mr West was present when Supergrasse installed the synthetic turf at City Bowling.

114 I found Mr Rooks to be an acceptable witness and, although I do not consider that Mr West was in any way untruthful, I prefer Mr Rooks’ evidence to that of Mr West. It seems to be that the differences between them are to be explained by differences of recollection. There are a number of reasons why I prefer Mr Rooks’ evidence.

115 First, Mr Rooks was involved in the manufacture and installation of Supergrasse at City Bowling; he supervised the installation process. It was his job to ensure that the turf was laid according to the specifications and he impressed me as a person who would have taken care to see that the job was done properly. This was of some importance at City Bowling because it was Supergrasse’s first bowling green installation.

116 Whilst I accept Mr West’s evidence that he was present and involved in the installation, it seems to me that Mr Rooks had a sufficient degree of involvement to make the necessary observations. As he was responsible for the installation of the surface, I am satisfied that he was very familiar with the methods used and features of the turf being installed. Mr Rooks was present at least once during the sanding process. He was also present when the turf was brushed and rolled. He regarded the rolling as the most critical aspect of the job and I accept this evidence notwithstanding that some of Supergrasse’s documents might have suggested otherwise.

117 Mr Rooks said under cross-examination that he spent more time at City Bowling during rolling of the surface than he did during sanding. He regarded this part of the process as critical and he attended once a fortnight in the three month, period from installation to handover, to ensure that the greenkeeper rolled the surface multi-directionally.

118 Mr Rooks returned to inspect the surface in about the last quarter of 1987. His close observation of the surface was that all of the exposed ends of the fibres were "flattened essentially horizontally along the top of the infill in differing directions". He also observed people playing bowls on the surface and commented that it appeared to be "playing in a non-directional manner".

119 The second reason why I prefer Mr Rooks’ evidence is that he seemed to me to be a careful witness who was doing his best to assist the Court. He told me that he got down on his knees and checked the height of the pile. He said that he did not have an instrument to measure it but that his previous experience in the installation of tennis courts enabled him to determine the length of the exposed pile. Of course he did not assess the length of every fibre, but he said "the majority or 99% would be 3 to 5mm".

120 It is true that there were a number of inconsistencies between Mr Rooks’ evidence and that of other witnesses, in particular, whether the turf had an inherent lean and what was meant by the term "fibrillation".

121 Mr Rooks’ evidence was that the turf did not have an inherent lean. However, other witnesses agreed that it was so affected; some thought it occurred in manufacture, others attributed it to the distribution process.

122 However, this did not cause me to reject Mr Rooks’ evidence on other aspects of manufacture and installation. He accepted that there was some lean, but only in about the first two metres of a 30 metre roll of turf, and he said that Supergrasse tried to manufacture the turf as straight or upright as possible.

123 The expression "inherent lean" is somewhat general and I do not think that Mr Rooks’ dissent from the proposition that the whole of the turf was affected by it casts doubt on his evidence about Supergrasse’s manufacture and installation processes. In particular, I do not think it detracts from his evidence about the length of the exposed fibres and the multi-directional rolling to produce a non-directional playing surface.

124 Nor did Mr Rooks’ difficulty with what was meant by the term "fibrillation" of the yarn cause me to reject him as a witness of truth or a witness whose evidence I could rely upon.

125 On the other hand, without any disrespect to Mr West, I did not find him to be a helpful witness. During cross-examination, he had a tendency to try to deflect questions by responding with his own questions rather than answering them.

126 Moreover, there was a serious discrepancy in Mr West’s recollection of a critical aspect of his evidence; this was on the issue of rolling. Initially, he said in cross-examination that the green was rolled, but for not more than one hour a day during installation. He confirmed this later by agreeing that "we did some rolling", yet he concluded by saying "(a)ctually I’ve got no recollection of the green being rolled at all".

127 Mr Williams’ evidence of the installation of the bowling green at Port Germein was, as I have said, to similar effect to the installation at City Bowling. A polypropylene fibre product was used with a pile height of 25mm. Mr Williams said that it was filled with sand to a depth of about 20mm leaving about 5mm of pile exposed. He said it was rolled in different directions with a ride-on roller for two to three months after installation.

128 There was exhibited to Mr Williams’ affidavit a document described as "Evergreen Village Green Bowling System Guide Lines for Maintenance". The document included the following statement:-

129 I accept Mr Williams’ evidence that the exhibit was not the actual document that was sent to the owners of Port Germein. His evidence was that the exhibit was in the form applicable to retirement bowling greens, which are smaller than standard greens and consequently cause difficulties in multi-directional rolling and so feature higher sand levels than standard greens.

130 Mr Williams’ evidence, which I accept, was that the document sent to Port Germein was similar to the exhibit, but it instructed that the level should be 4 to 5mm, rather than the level of 1.5 to 2mm referred to in the exhibit.

131 Mr Ellice’s evidence corroborates Mr Williams’ evidence that it was part of
AE Williams’ installation method to roll the greens in multiple directions.

132 Mr Ellice was a member of the Broken Hill Bowling Club in 1988 when it arranged for AE Williams to install two synthetic bowling greens. He had been a member since 1972 and remained in membership until 1997 when the Club ceased to exist.

133 He said in his affidavit that the maintenance instructions given by AE Williams included an instruction to roll the greens in multiple directions to try to bend the plastic stems in order to trap the sand.

135 This evidence provides strong support for the proposition that multi-directional rollng was in use as a technique for ameliorating directional bias before 10 May 1989.

136 However, Mr Ellice gave evidence to suggest that the technique did not work. This was part of the applicant’s case that multi-directional crimping could not be achieved by cold rolling. But on close analysis, I do not think that Mr Ellice’s evidence bears out the applicant’s contention.

137 It is true that Mr Ellice said in his affidavit that the exposed ends of the fibres could not be bent and the greens produced an uneven draw. But the effect of his evidence in cross-examination was that this occurred only in some areas.

138 Mr Ellice was an honest and impartial witness. He conceded that some of the exposed ends were bent and some were straight but in what proportion he could not say. He agreed that those which were bent appeared to be bending in different directions. He did not get down on his hands and knees to count them, but it seems to me that the evidence given by Mr Ellice on this question is not sufficient to demonstrate that cold multi-directional rolling did not induce a crimp. Nor does it establish to a sufficient degree of specificity that cold rolling did not ameliorate directional bias.

139 Mr Ellice took a sample of turf from the Broken Hill green and this was tendered to support a finding that the protruding ends were not crimped.

140 However, the Broken Hill Bowling Club ceased to exist some seven years before the sample was taken and the greens had not been maintained during that time. Nor do I know what area of the green the sample was drawn from. Accordingly, I found the sample of synthetic turf to be of no assistance.

141 Mr Lehman was the voluntary greenkeeper at the Roxby Downs Bowling Club when AE Williams installed a synthetic turf bowling green in 1988. His evidence was similar to that of Mr Ellice. He corroborated Mr Williams’ evidence that instructions were given to roll the green in multiple directions, but he said that the inherent lean of the turf created interference with the natural bias of the bowls.

142 Mr Lehman attributed this interference with the bias to the fact that the green was installed lengthways, rather than cross-ways, which he said is the current way that greens are laid.

143 As with Mr Ellice’s evidence, I do not think that Mr Lehman’s evidence establishes that multi-directional rolling failed to ameliorate directional bias. The evidence was given in general terms and it was put forward by the applicant, a patentee whose own patent states that rolling of the turf so that the fibres lie in different directions will ameliorate leading bias resistance.

144 I would need far more specificity than is contained in Mr Lehman’s affidavit, or indeed in the evidence of Mr Ellice and Mr Hannaford, to be persuaded that one aspect of the applicant’s own claimed invention did not work.

145 Nor do I accept that the general observations made by Mr Lehman of the appearance of the green supports a finding that, prior to 1989, the length of the fibres on the synthetic turf greens at Roxby Downs was 1-2mm, rather than about 5mm as stated by Mr Williams. Mr Lehman was not cross-examined. I have no doubt that his evidence was honest and impartial but it does not assist the applicant’s case.

146 Mr Hannaford was another experienced bowler. He has been a member of the Parkdale Bowling Club for 27 years and he was a member of the Club when AE Williams installed a synthetic turf green in 1990.

147 As with the evidence of Mr Ellice and Mr Lehman, Mr Hannaford said that the Club’s instructions from AE Williams were, inter alia, to roll the greens.

148 The effect of Mr Hannaford’s evidence was that he played a significant role in the maintenance of the greens but that, notwithstanding the instructions given by AE Williams, the Club was unable to eliminate the uneven draw of the bowls. In 1993 the Club arranged for Mr Heylen’s company to modify the green, which he did by pressing it with hot plates to induce a permanent crimp. The modified green was crimped in random directions, resulting in the draw of the ball being even.

149 In cross-examination Mr Hannaford attributed some of the problems with the draw of the bowls on the original green to the fact that AE Williams installed it lengthwise so that there were humps across the length of the seam at the joins.

150 Mr Hannaford did not concede that this lengthwise installation was the sole cause of the difficulties, and he was of the view that an inherent lean in the turf was inevitable. However, it seems to me that this evidence supports a finding that the problem of uneven draw on the original Parkdale green was far more complex than was put forward by the applicant in support of its contention that cold multi-directional rolling did not work.

151 Mr Hannaford was an honest and impartial witness but it is plain from the evidence elicited from him in cross-examination that the problem of uneven draw was due in some part to the humps at the joins.

152 In my view, the evidence of Mr Hannaford reveals that the lengthwise direction and the humps or bumps at the joins contributed in a substantial way to the uneven draw. There were about 7 or 8 "longitudinal joins or bumps" on the green. In light of this, it is quite unrealistic to suggest that the cause of the problem was attributable solely, or indeed at all, to an "inherent lean" of the turf. Moreover, it seems to me to indicate a flaw in the proposition that cold multi-directional rolling failed to induce a crimp; as I have said, the uneven draw was due in a substantial part to the joins.

153 Indeed this approach is consistent with the evidence of Mr Lehman, who said that the cause of the uneven draw at Roxby Downs was the lengthways installation of the green.

154 Mr Heylen had a lengthy background in the installation of artificial turf tennis courts before he began installing bowling greens in 1987.

155 According to Mr Heylen, he inspected the greens at City Bowling in 1987 and at Port Germein in 1988 and again in early 1989. He said that the sand was kept to a very high level and that the pile was brushed to keep it vertical. He claimed that on one of his visits to the City Bowling green there was a "rooster-tail" of sand trailing the ball on its journey down the green.

156 Mr Heylen gave evidence that in about 1987, he and a friend inspected a natural grass bowling green and noticed that the tips of the grass lay in multiple directions. He said that he observed that this was to be contrasted with "synthetic courts", which is a reference to tennis courts, where the pile was either upright or one-directional. He said that he then conducted some experiments with an employee of his turf installation company to try to obtain the effect of a natural grass green.

157 The experiments were conducted on artificial turf of a kind used for tennis court installation. The gauge was 7600 denier and the pile was 19mm high. This may explain the results which Mr Heylen claimed to have obtained from his experimental work, for as Mr Rooks explained in cross-examination, denier is a measure of the tape width of the pile; tennis court turf is a higher denier and therefore harder than bowling green turf, which is 5700 denier and 25mm, thus softer and more flexible.

158 He said that he used conventional unheated flat steel rollers to try to "fold the tips over" in multiple directions. However, he said that he observed that "the ends failed to crimp in multiple directions".

159 It was only when he later noticed that tips which were positioned near a galvanised iron fence "were crimped in 3 directions" that he reached a conclusion about the effect of heat on the process. He said he concluded that the heat produced by the reflection of the sun off the fence must have softened the yarn and caused the tips to fold under the weight of a bob-cat wheel so as to overcome, at least partially, the inherent lean in the turf.

160 Insofar as Mr Heylen’s evidence is inconsistent with that of Mr Rooks and
Mr Williams, I prefer the evidence of those two witnesses. I do so for the following reasons.

161 First, in my opinion, Mr Heylen was an unsatisfactory witness. Some of his evidence was quite fanciful. I referred earlier to what he said about his understanding of the meaning of the word "crimped" and I will set out his evidence in cross-examination about that topic. This passage illustrates the impression which I obtained of Mr Heylen, namely that his evidence lacked candour and objectivity and that it was highly argumentative.

162 According to Mr Heylen, he did not understand the meaning of the word "bend". Nor did he fully understand the meaning of "fold". His evidence was as follows:-

163 The view I have formed of Mr Heylen’s evidence is that he gave an exaggerated account of the merits of his own work and an exaggerated or false account of the deficiencies in his competitors’ products. The passage which I have set out above from his cross-examination shows the lengths to which he was prepared to go to argue the applicant’s case. He was unwilling to make any concessions, even those which he was honestly bound to make, which he thought might assist STI.

164 His evidence that there were rooster-tails at City Bowling’s green due to high sand levels in the turf was not accepted by Mr Rooks. Moreover, it seems to me to be inconsistent with a contemporaneous letter dated 2 October 1987 written by the then President of City Bowling speaking in complimentary terms of the quality of the surface; Mr Rooks’ evidence was that there would be "uproar in the whole bowling business" if there was a rooster tail.

165 The second reason I reject Mr Heylen’s evidence is that he has a financial interest in the outcome of the case. He conceded this in cross-examination. It was a matter which should have been disclosed in his first affidavit because he was required to do so under the Guidelines for Expert Witnesses. He did disclose his interest, albeit obliquely, in a supplementary affidavit filed shortly before the hearing, but it seems to me that his financial interest may be the cause of his refusal to acknowledge facts which are adverse to the applicant’s case.

166 Mr Heylen’s evidence that he was unable to induce a crimp in the turf during his experiments with a conventional roller does not advance the applicant’s case because the experiments were conducted on turf which was used for tennis courts and thus, because a different denier and pile length to bowling green turf, responds differently to rolling. I refer to [157] above.

167 In any event, I regard the proposition that cold multi-directional rolling could not induce a crimp as extraordinary because it is flatly contradicted by the applicant’s own patent.

168 Mr Kosior has impressive qualifications. He is the Senior Research Development Manager, Polymers & Recycling for Visy Industries with specialist expertise in the field of plastic material and technology. However, he does not have direct experience in the manufacture of the fibres that are used to make synthetic grass.

169 This may explain why Mr Kosior’s opinion was expressed in general terms. He said that "in general" it would be very difficult to crimp the fibres. He also said that if the fibres were placed under pressure by a roller they would flatten and then "largely" spring back to their original position.

170 In cross-examination Mr Kosior agreed that in making these statements he was generalising and that he was not purporting to make definitive statements.

171 Mr Kosior also agreed that whether or not it would be difficult to crimp the fibres would depend upon whether or not, and to what extent, the fibres had been stretched and how thick the fibre was before it was stretched. He added that it would also depend upon the stiffness of the fibre, which I understood to be a reference to the denier or gauge; ie a measure of the thinness of the fibre.

172 Mr Kosior gave evidence of his observations of the various samples of turf from Broken Hill and Roxby Downs. However, this was of no assistance for, as mentioned earlier, the surfaces from which the samples were taken had not been maintained and there was no evidence as to whereabouts on the green the samples were drawn from.

173 Mr Rossi, on the other hand, has no formal qualifications as a chemist or a materials scientist. His expertise was acquired at the practical level and it was clear from his evidence that he was very well placed to express the opinions which he gave.

174 Mr Rossi is the Managing Director of Tapex Pty Limited ("Tapex") which is one of the largest suppliers of extruded polypropylene in Australia. He was personally responsible for bringing Tapex into the business of suppling synthetic grass for sporting surfaces, which he did in 1979.

175 Although he is now the Managing Director, Mr Rossi commenced work with Tapex on the factory floor. He still spends time working on the floor of the factory and he physically handles the products on a regular and routine basis. He experiments and tests the products extensively in the company’s laboratory.

176 It was put to Mr Rossi on cross-examination that he rose to the position of Managing Director through "a bit of nepotism", a proposition which Mr Rossi rejected as demonstrably false.

177 Mr Rossi expressed the view in his affidavit and in cross-examination that it is possible to crimp the yarn which is used to manufacture surfaces for bowling greens. He said that, in his 20 years of experience, crimping is achieved by reason of the thinness and degree of stretch of the product. There was some debate between Mr Rossi and Mr Kosior as to whether "denier" is properly used to describe the thickness of the product but nothing turns on this.

178 The only reservation which I have about accepting Mr Rossi’s evidence was his failure to disclose in his affidavit the business relationship which exists between Tapex and STI. This was a matter which he was bound to disclose under the Guidelines for Expert Witnesses but it was not until Mr Nicholas elicited the information from him in his evidence in chief that the relationship was made known to the Court.

179 Mr Rossi revealed that Tapex is a supplier of products to STI, and he said that STI is an important customer. He was cross-examined as to the precise amount of STI’s business with Tapex which he said was about $150,000 per month. However, this must be compared with the total value of Tapex’s monthly turnover which is about $3.5m per month.

180 In my view, it is most unfortunate that Mr Rossi did not disclose Tapex’s business relationship with STI earlier, but it does not automatically lead me to reject his evidence. I accept that the failure to disclose it was an oversight, albeit a fairly serious one.

181 Nevertheless, I was impressed with Mr Rossi as a witness. His answers were clear and, as I have already said, it is plain that he is very well qualified. Indeed, it seems to me that, notwithstanding Mr Kosior’s weighty qualifications, Mr Rossi was better equipped to deal with the question at hand. Moreover, as I have said, Mr Kosior’s evidence was in general terms and it seemed to me to include an acceptance of the proposition advanced by Mr Rossi that it is possible to crimp the fibres, for this depends on the sort of material used in the manufacturing process.

182 Section 18(1)(b)(ii) of the Act provides that one of the requirements for an invention to be patentable as a standard patent is that the invention "when compared with the prior art base as it existed before the priority date ... involves an inventive step".

183 STI contended that the invention did not involve an inventive step and hence was obvious. Thus it sought revocation on this ground because, if it is made out, the invention was not patentable; see s 138(3)(b) of the Act.

184 Whether an invention involves an inventive step is guided by s 7(2) of the Act which provides:-

185 Under s 7(3), prior art information consists of any single piece of information or a combination of any two or more pieces of information. Prior art information consists of information made publicly available in documents or though doing certain acts.

186 The test of obviousness was stated by Aickin J in The Wellcome Foundation Limited v VR Laboratories (Aust) Pty Limited [1981] HCA 12; (1981) 148 CLR 262 at 270 and referred to by a Full Court in Allsop Inc v Bintang Limited (1989) 15 IPR 686 ("Allsop") at 700-701 (Bowen CJ, Beaumont and Burchett JJ). Although these cases were decided before the present Act came into force, the same principles continue to apply; see Minnesota Mining and Manufacturing Co v Tyco Electronics Pty Limited (2002) 56 IPR 248 ("3M v Tyco") at [38] – [41] (Heerey, Emmett and Dowsett JJ).

187 The applicable test is whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in the particular field, as at the priority date.

188 As the authorities to which I have referred make clear, the hypothetical worker must be assumed to be non-inventive, but he or she must also be assumed to be a person skilled in the art to which the invention relates. He or she is likely to have a practical interest in the subject matter; see 3M v Tyco at [39].

189 Inventiveness involves more than novelty, but even "a scintilla of inventiveness" is sufficient; 3M v Tyco at [42].

190 The cases abound with warnings against the seductive clarity of hindsight; see eg Allsop at 701.

191 In the present case there is evidence of obviousness in the form of acts which were being done at the priority date and in the description of the problem addressed in the body of the specification of the patent. As a Full Court said in Bristol-Myers Squibb Company v F H Faulding & Co Limited [2000] FCA 316; (2000) 97 FCR 524 at [30] (Black CJ, Lehane and Finkelstein JJ), the Court would ordinarily proceed on the basis that knowledge described in the body of the specification formed part of the common general knowledge before the priority date.

192 Thus, the problem identified in the body of the specification, namely leading bias resistance due, in part, to directional pile, must be taken to have been part of the common general knowledge as at 10 May 1989.

193 There is further evidence that the problem of directional pile was well known prior to 10 May 1989. Mr Rooks said he was aware of it. So too did Mr Williams. Moreover, in a letter written by AE Williams dated 9 May 1989, the author said that the "grass is manufactured as a non-directional pile, however during transit it tends to crush slightly to one direction".

194 It is thus plain, as I said earlier, that if there was any inventiveness, it lay in the solution and not in the identification of the problem. However, it seems to me that the evidence clearly shows the solution was obvious to the hypothetical non-inventive worker in the field.

195 The idea of rolling the turf was apparent to Mr Heylen when he carried out his experiments with one of his employees in 1987. I set out at [156] –[158] his evidence that they used conventional steel rollers across the surface in multiple directions. I do not accept that this solution did not work because that suggestion is at odds with the body of the specification in Mr Heylen’s own patent.

196 Mr Rooks’ evidence also supports a finding that the solution was obvious to the hypothetical non-inventive worker, because he said that this was what was done at City Bowling in late 1986 or early 1987. He said that the rolling of the surface was conducted in different directions across the playing surface, rather than in one direction, so as to ensure that the flattened pile did not all lie in one direction and that the surface played in a non-directional manner.

197 The solution was also apparent to Mr Williams because he said that the surface at Port Germein was rolled in different directions so as to flatten the exposed pile and orient it in different directions, thus creating a non-directional surface.

198 The evidence of the experienced bowlers, Mr Ellice, Mr Lehman and Mr Hannaford, to which I referred above, is to the same effect.

199 It follows, in my view, that the evidence establishes the solution posed in the patent, of pressing the turf in different compass directions so as to avoid bias in any one direction, was obvious to the hypothetical non-inventive worker before 10 May 1989. Thus, the "invention" did not involve an inventive step as required by s 18(1)(b)(ii) and I will order that Claim 1 be revoked pursuant to s 138(3)(b) of the Act. For the same reasons as are set out at [206] – [212], I will also order that Claims 2 to 8 and 10 be revoked on the ground of obviousness.

200 Section 18(1)(b)(i) of the Act provides that one of the requirements for an invention to be patentable as a standard patent is that it be novel. If it is not, then the ground of revocation contained in s 138(3)(b) is enlivened.

201 The High Court has recently observed in Doric that the grounds of invalidity are, and must be kept, conceptually distinct; see at [46]. But, as in the present case, matters of fact may be relevant to the grounds of both obviousness and novelty.

202 The essence of the requirement of novelty is that the subject matter of the claims be new. The basic test for anticipation or want of novelty has been said to be the same as that for infringement; see Meyers Taylor Pty Limited v Vicarr Industries Limited [1977] HCA 19; (1977) 137 CLR 228 at 235 (Aickin J). Thus, as his Honour said, one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.

203 Accordingly, to establish anticipation it is necessary to demonstrate that the earlier work contains all the essential integers of the patentee’s claim; see Olin Corporation v Super Cartridge Co Pty Limited [1977] HCA 23; (1977) 180 CLR 236 at 246 (Gibbs J).

204 STI relied upon the installation of the synthetic turf bowling greens at City Bowling and Port Germein as prior art information which was publicly available in accordance with
s 7(1) of the Act so as to render invalid the claims made in Claims 1 to 8 and 10 of the patent.

205 My acceptance of the evidence of both Mr Rooks and Mr Williams leads to the result that multi-directional rolling of the fibres to crimp them so that at least 10% of the free ends were crimped at an angle to the stem and lay in different compass directions was applied at City Bowling and Port Germein before 10 May 1989. The other integers referred to in the opening part of Claim 1 were also present. It follows that Claim 1 was not novel at the priority date.

206 The length of the protruding free ends of the fibres at City Bowling and Port Germein were within the range of 2 to 7mm and 5 to 7mm referred to in Claims 2 and 3. These claims were therefore not novel.

207 Mr Rooks said that more than 90% of the free protruding ends at City Bowling were crimped at an angle to the stem. Accordingly, Claim 4 also fails for want of novelty.

208 The evidence shows that sand was used on all artificial turf installations made before the priority date. Claim 5 was therefore not novel.

209 Mr Rooks also gave evidence that the sand used at City Bowling was a fine grade sand known as Hooker H1 sand, which fell within the specification contained in Claim 6. Therefore this claim was not novel.

210 The protruding free ends at City Bowling and Port Germein lay in a substantially horizontal plane within the extraordinarily wide definition of that term contained in the body of the specification. Claim 7 is therefore invalid for want of novelty.

211 Claim 8 is a dependent claim for playing fields for lawn bowls and other surfaces. The installations at City Bowling and Port Germein show that this claim was not novel.

212 The playing surfaces at City Bowling and Port Germein were prepared in accordance with Claim 1 and substantially as described in the drawings contained in figures 1 and 3 of the patent. Claim 10 was, accordingly, not novel.

213 I will therefore order that Claims 1 to 8 and 10 also be revoked pursuant to
s 138(3)(b) on the ground of want of novelty.

214 Section 40(3) of the Act states that the claims made in a specification must be clear and succinct and fairly based on the matter described in the specification.

215 In Doric, the High Court made it clear at [44] that issues which go to the question of invalidity under s 18 of the Act have no relevance to s 40.

216 When assessing whether there is fair basing within the meaning of s 40(3) it is necessary to split the patent into the claims and the body of the specification in order to see whether the claims are fairly based on what is disclosed in the body of the specification; Doric at [49].

217 The High Court has affirmed the formulation of the question stated by Barwick CJ in Olin v Super Cartridge at 240; see Doric at [57]. Thus, the question is whether the claim, as expressed, travels beyond the matter disclosed in the specification.

218 It is wrong to employ an over-meticulous and verbal analysis; Doric at [68]. The question is whether there is a real and reasonably clear disclosure in the body of the specification of what is claimed so that the alleged invention is, in a general sense, described in the specification; see Doric at [69] affirming the principle stated by Gummow J in Rehm Pty Limited v Websters Security Systems (International) Pty Limited (1988) 81 ALR 79 at 95.

219 The fact that a claim is couched in the same terms as the description of the invention in the consistory clause will not of itself establish fair basing; a coincidence of language will not lead to fair basing if that part of the language does not reflect the invention in the light of the specification as a whole; see Doric at [87].

220 In the present case there is consistency of language between the first limb of the consistory clause and Claim 1. If the word "crimped" is construed as I have interpreted it, that is to say, pressed into folds, then in my opinion Claim 1 is fairly based on what is disclosed in the body of the specification because it discloses that multi-directional pressing induces a crimp in different compass directions which reduces or eliminates directional bias.

221 However, if the word "crimped" is to be given the very broad construction relied upon by the applicant, then Claim 1 cannot be fairly based on the matter disclosed in the specification. As I have said several times, what the specification teaches and discloses is that multi-directional pressing by a hot or cold roller induces a crimp. There is not even the hint of a suggestion, let alone real or reasonably clear disclosure, of the idea of kinking through the application of steam-induced pressure in the manufacturing process.

222 Thus, if Claim 1 is to be construed to include pre-crimping by the method employed by STI, the claim cannot be fairly based on what is disclosed in the specification.

223 The same reasoning applies to Claims 2 to 8 and 10 because each of the claims is dependent upon Claim 1.

224 This issue does not arise because I have come to the view that the playing surfaces described in Claims 1 to 8 and 10 could be produced by cold rolling or pressing of the synthetic turf.

225 The claims on which the applicant led evidence of infringement were Claims 1 to 4, 7, 8 and 10. Since I have found that all of these claims are invalid for obviousness and want of novelty, it is, strictly speaking, unnecessary for me to decide whether STI’s product infringes those claims. However, for completeness, I will consider whether the claims are infringed.

226 It was, of course, common ground between the parties that there was no infringement unless STI has taken all of the integers of the claim. I referred above to the statement of principle of Gibbs J in Olin at 246 in support of this.

227 Nevertheless, the applicant called in aid the rule to which Gibbs J referred in the same passage of Olin that there can be infringement if the infringer has taken the "pith and marrow" or substance of the invention.

228 Reference was made by the applicant to the statement of Dixon J in Radiation Limited v Galliers & Klaerr Pty Limited [1938] HCA 17; (1938) 60 CLR 36 at 51 that the question is whether the substantial idea disclosed by the specification has been taken.

229 The applicant also referred to the observations of a Full Court in Populin v HB Nominees Pty Limited (1982) 41 ALR 471 at 476 that the question is to be determined not as a matter of abstract uninformed construction but by a commonsense assessment of what the words convey in the context of the existing common knowledge. Thus, the applicant urged a purposive construction.

230 The essence of the applicant’s argument was that STI produced the same product as the applicant using substantially the same method but with the order of the steps in the method reorganised.

231 The applicant pointed to evidence given by Mr Rossi that each fibre in STI’s product has a heat induced crimp . The fact that the crimp occurs in the fibres as an initial step in the manufacturing process was said to be an insubstantial difference.

232 Nevertheless, it is important to bear in mind that the applicant did not suggest that STI engaged in a form of subterfuge in producing the Promaster turf; cf Commonwealth Industrial Gases Limited v MWA Holdings Pty Limited [1970] HCA 38; (1970) 180 CLR 160 at 167-168.

233 The applicant relied on the evidence of Mr Limberg to support its case that the Promaster turf used at the Beresfield Bowling Club infringed the claims to which I have referred. Mr Limberg is a materials scientist. He used statistical analysis and physical inspection techniques to support the conclusion that STI’s product infringed the claims.

234 Mr Limberg was a most unsatisfactory expert witness. He was evasive and argumentative in cross-examination. He was an advocate for the cause propounded by the applicant rather than an independent expert. I cannot accept and do not rely upon his evidence unless it is otherwise consistent with objective fact.

235 As to Claim 1, the applicant relied strongly on an admission made by STI in its defence that the fibres used in the manufacture of Promaster turf are crimped. The applicant also relied on Mr Limberg’s observations of the turf at the Beresfield Bowling Club and his conclusion that the fibres were crimped.

236 However, the evidence makes it plain that the fibres in the Beresfield green were not crimped by any form of pressing or rolling. Mr Rossi’s explanation of how STI’s turf is produced in an autoclave clearly establishes that the turf was not produced by crimping in the sense in which that term is used in Claim 1 of the patent. In my view, this is not a case in which substantially the same method is used with the order of the steps reorganised.

237 Thus, the admission on the pleading does not assist the applicant. Nor is there any admission that the fibres are "crimped at an angle to the stem". Indeed, a visual inspection of the Promaster turf reveals that it is not.

238 This disposes of the contention that Claim 1 is infringed. Moreover, since the other claims which are alleged to have been infringed are combination or dependent claims, it also disposes of the contention that Claims 2 to 4, 7, 8 and 10 are infringed. Nevertheless, I will deal briefly with the other integers introduced by those claims.

239 Claim 2 introduces the integer that the free protruding ends are from 2 to 7mm in length.

240 Mr Limberg’s evidence did not establish infringement of Claim 2. His assessment was undertaken by reference to average lengths of the fibres. There was no warrant for this in the wording of the claim. In any event Mr Limberg’s evidence established that more than 10% of the fibres which he inspected fell outside the range of 2 to 7mm in length. There was no evidence, and nothing in the terms of the patent, to suggest that anything apart from strict compliance with the description of the claim was required; see Radiation Limited v Galliers Klaerr Pty Limited [1938] HCA 17; (1938) 60 CLR 36 at 46 (Starke J), 51-52 (Dixon J); see also Catnic Components Limited v Hill & Smith Limited [1982] RPC 183 at 243 (Lord Diplock).

241 Claim 3 is for free protruding ends of 5 to 7mm. The evidence fails to establish infringement for the same reason as Claim 2. The evidence was that 22% of the fibres fell outside the range. I repeat what I said about Claim 2.

242 Claim 4 is that 90% of the free ends are crimped at an angle to the stem. Mr Limberg said that the claim was not concerned with the actual angle of the fibres and is only concerned with the number of stems pointing vertically upwards. Thus, he assumed that any free ends which were not "actually pointing vertically upwards and without any crimping" fell within the expression "crimped at an angle to the stem". If there were more than 10%, which he said there were, then the claim was infringed.

243 This approach is not supported by the language of Claim 4 and the suggestion advanced by Mr Limberg that the claim is infringed must be rejected. There is thus no evidence of infringement of Claim 4.

244 Claim 7 is for a playing surface in which the free ends are crimped so that they lie in a substantially horizontal plane adjacent to the fill.

245 Mr Limberg’s approach to Claim 7 involved the consideration of equations. However, his approach fails at the threshold because he conceded that he did not measure the angle of the stem to the fill.

246 Claim 8 is for a playing field for lawn bowls or croquet. The contention that this claim is infringed fails on the ground that it is dependent upon Claim 1.

247 Claim 10 is for a playing surface according to Claim 1 substantially as described with reference to the drawings in figures 1 to 3. This is in the nature of an omnibus claim. The approach to be taken to such a claim was stated by Hely J in Flexible v Beltreco at [153]. The "accused product" must be shown to have the same appearance as the product shown in the drawings.

248 The evidence makes it plain that the Promaster turf bears no resemblance to Figure 3. Nevertheless, Mr Limberg persisted in his argument that it did. He insisted that Figure 3 was schematic and that the fibres had to be substantially horizontal even though this was not the language that was used in Claim 10.

249 This evidence, perhaps more than any other, showed the lengths to which Mr Limberg was prepared to go to support the unsupportable. I will set out a passage of the cross-examination which illustrates this as follows:-

250 It is unnecessary to deal with this issue because of the view I have reached on the question of infringement.

I certify that the two hundred and fifty-one (251) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jacobson.

Counsel for the applicant:	Mr ABS Franklin SC Mr M Vincent

Solicitor for the applicant:	Griffin Vincent IT and IP Lawyers

Counsel for the Respondent:	Mr J Nicholas SC Mr C Dimitriadis

Solicitor for the Respondent:	Phillips Fox

Date of Hearing:	30-31 August, 1-3 September & 22 October 2004

Date of Judgment:	11 February 2005

1.	The application is to be dismissed.
2.	Claims 1 to 8 and 10 of the patent are revoked pursuant to s 138(3)(b) of the Act on the ground that each of the claims is not novel and does not involve an inventive step.
3.	The applicant is to pay the costs of the application and the cross-claim.

Federal Court of Australia

Synthetic Turf Development Pty Limited v Sports Technology International Pty Limited [2005] FCA 69 (11 February 2005)